Following the results of the referendum and the resignation of David Cameron, Theresa May has now been appointed Prime Minister and shall lead the Brexit. As laid out in our previous articles on the Brexit (Brexit: How to prepare oneself for the consequences?; The consequences of Brexit on trademarks and patents), implications on intellectual property law are to be expected, and in particular, on trademark and patent law. Such implications however, are not yet clear.

As tensions rise between concerning their future relationship between the United Kingdom and the European Union, here is a brief overview of the systems the U.K. could adopt once the divorce has been finalized.

First option: membership with the EFTA together with a free trade agreement

The United Kingdom has first and foremost the possibility to join the European Economic Area. The country would be joining Norway, Liechtenstein and Iceland. This would allow the U.K. to have complete access to the Single Market while accepting the principles of freedom of movement of persons, capital, goods and services. It would therefore be bound by the majority of European legislation and be subject to the jurisdiction of the ECJ – without taking part in actually making the European legislation. As a member of the EFTA, the UK could negotiate its own trade agreements. However these principles, particularly the principle of freedom of movement of people, are one of the main reasons behind the Brexit campaign! Therefore, it seems unlikely that the United Kingdom will opt for this model.

Second option: EFTA membership without a free trade agreement

The United Kingdom could be a member of the EFTA without being a member of the EEA, like Switzerland who negotiates agreements with the EU bilaterally. The United Kingdom could thereby freely decide which sectors to open to the Single Market. This would be particularly relevant to the banking sector.

This scenario, just like the previous one, sees the UK as a member of the EFTA having necessarily to accept the free movement of persons and more specifically, of workers. It would also involve participation in the European budget. A bilateral agreement could then be signed with the European Union in terms of access to the Single Market. Consequently, even though in theory the United Kingdom would not automatically be bound by European legislation, it would in practice need to comply with it so as to guarantee mutual access to the Single Market. Just like Switzerland, it would be able to have restricted access to the European banking market.

Third option: abide by the rules of the WTO

Some say this would be the “safety net” if no agreement of free trade is entered into by the United Kingdom and the European Union. Unlike in the scenarios where membership to the EFTA is sought, the United Kingdom here, would not need to accept the principle of free movement and would hence be free to establish its own policies, especially in matters of immigration and trade. Moreover, the United Kingdom would be free to negotiate bilateral agreements – however, these would not necessarily be as advantageous as the ones applied when the United Kingdom was a member of the European Union.

In spite of this, the application of the rules of the WTO entail a number of complications, especially relating to customs since this would imply re-establishing customs barriers, evaluating goods at customs and verifying the origins of products.

To be continued!

The new gTLDs were launched in October 2013. More than 1000 new gTLDs have been created since, and more than 20 million domains bearing a new gTLD have been registered. While this development provides a wider choice to Internet users who want to register a domain name, it poses a threat to trademark holders who now face a higher risk of usurpation of their trademarks.

Still waiting for second round

There are less and less available domain names with standard extensions (like .com or .net), which is why a second round of new gTLDs is now becoming necessary. It would encourage more trademark holders to create their own domain name.

During its last meeting in Helsinki on June 27, 2016, ICANN annouced that the second round will not take place before 2018.

The review of rights protection mechanisms

Before opening a second round, ICANN must review and improve current trademark protection mechanisms. Indeed, the tools have not been changed since the emergence of new gTLDs in 2013 and are sometimes not in line with the current context.

ICANN has in particular worked on special procedures for post-delegation dispute resolution, and notably the URS and UDRP procedures. These procedures allow trademark holders to find alternatives for when their trademark is usurped as a domain name. The Trademark Clearinghouse, a general database allowing a trademark holder to check necessary information for the protection of his/her rights, has also been examined by ICANN.

The aim of all these improvements is to offer sufficient protection to trademark holders, especially in the current context where more and more new gTLDs may appear in the coming years.

Breakfast by Dreyfus / Petit-déjeuner – conférence

Tuesday, 27 September, 2016 – 9am to 11am / mardi, le 27 septembre 2016 de 9h à 11h

On behalf of Dreyfus, it is with great pleasure that our founder and director Nathalie Dreyfus invites you to what promises to be an insightful discussion on,

The protection of trademarks, domain names, social media networks and mobile application in Iran

Presented by Nathalie Dreyfus and special guest speaker, Mr. Mohammad Badamchi (Raysan Patent & Trademark Agents)

As of January 2016, economic sanctions on Iran were lifted and opportunities have since arisen in a market with 360 billion euros in GDP.

Today, Iran is considered an emerging market economy. With a population of 80 million people and a high growth forecast, Iran now offers opportunities for business development across a wide range of industries including: tourism and hospitality, the automotive industry and the oil and construction industries.

It is throughout the development of these industries that the protection and enforcement of trademarks, designs and domain names is becoming an increasingly complex area of discussion. Rapid economic growth makes this discussion fundamental for businesses involved in the advancement of the Iranian economy.

We will be addressing several key points during the meeting including:

• Setting up a company in Iran; ownership by foreigners
• Running fashion and fast-moving consumer goods companies in Iran
• Recent judicial decisions in the areas of trademarks, designs, domain names social media platforms and the impact these decisions have on major economic players in Iran
• How to fight counterfeit, in practice and in theory
• The best strategy to enforce your trademarks in Iran
• The current legal stance on domain names, social media networks and mobile applications

Nathalie Dreyfus
Founder and director of Dreyfus in Paris, Trademark Attorney and appointed expert consultant to the Court of Appeal of Paris.

Mohammad Badamchi
LLM., Attorney at Law, Raysan Patent & Trademark Agents, London and Tehran

The breakfast and discussion will take place in English.
Please RSVP by the 26th of August 2016

Nathalie Dreyfus a le plaisir de vous inviter à un petit-déjeuner et conférence sur le thème,

Iran: protection des marques, noms de domaine, réseaux sociaux, applications mobiles

Présenté par Nathalie Dreyfus avec l’éclairage de notre conférencier invité, Monsieur Mohammad Badamchi (Raysan Patent & Trademark Agents)

Depuis janvier 2016, les sanctions économiques contre l’Iran ont été levées et des opportunités d’un marché de 360 milliards d’euros de PIB s’ouvrent aux entreprises.

Aujourd’hui, l’Iran est considéré comme un nouveau marché émergent. Fort de 80 millions d’habitants, une prévision de croissance élevée, l’Iran représente un potentiel de développement pour les entreprises dans de nombreux secteurs : biens de consommation, tourisme, industries automobile, pétrolière et BTP. Dans ce contexte, la protection et la défense des marques, des dessins & modèles et des noms de domaine devient un sujet complexe et clé pour les entreprises.

• Problématique d’ouverture d’une société en Iran pour les étrangers
• Developper une société dans le secteur de la mode et des biens de consommation en Iran
• Jurisprudence récente en matière de droit des marques, dessins & modèles, noms de domaine, réseaux sociaux et impact sur les acteurs économiques en Iran
• Comment lutter contre la contrefaçon? Le droit et la pratique
• Quelle stratégie pour défendre ses marques en Iran?
• Situation au regard des noms de domaine, des réseaux sociaux et des applications mobiles

Nathalie Dreyfus
Conseil en propriété industrielle, fondatrice et gérante de Dreyfus, Experte près la Cour D’Appel de Paris

Mohammad Badamchi
LLM., Attorney at Law, Raysan Patent & Trademark Agents, Londres et Téhéran

NB: La conférence sera en langue anglaise
Merci de bien vouloir vous inscrire avant le 26 août 2016

JOIN US / REJOIGNEZ NOUS
contact@dreyfus.fr

In or Out? The majority of the British people (51.9%) voted in favor of leaving the European Union (EU) on June 23rd of this year. The consequences of a Brexit are still unclear but what we do know, is that there will be an undeniable impact on intellectual property rights in Europe.

It is important to keep in mind that the referendum is not legally binding. The referendum does not specify when or how the UK should leave the EU. The withdrawal of the UK from the European Union will not be immediate.

Article 50 of the Lisbon Treaty allows Member States the possibility to withdraw from the EU. A Member State who decides to withdraw, shall firstly notify the European Council of its intention. Following the notification, the EU and the UK will proceed to negotiate the arrangements for the U.K’s withdrawal as well as the framework for their future relationship. Article 50 also provides for a two-year period following the notification from the UK to the European Council, after which the treaties will cease to apply. The UK would therefore not completely leave the EU before the end of 2018.

Over the next two years, it’s “business as usual” in the field of intellectual property

It is important to note that no immediate change is expected: no loss of rights will occur and no immediate action needs to be taken. Indeed, throughout the negotiation period, European intellectual property rights (European trademarks, Registered Community designs and European patents) will be entitled to the same level of protection.

What are my options after the Brexit has become effective?

Patents:

The EPO, which operates independently from the EU is responsible for reviewing applications and issuing European patents. Non-EU member countries however (e.g. Switzerland) can also be a part of the EPO; therefore, in theory, this should allow the UK to maintain its position within the EPO. As such, European patents designating the UK may continue to be issued.

Moreover, the implementation of the Unitary Patent Court (UPC),, scheduled for early 2017 will be delayed. Indeed, the implementation of the UPC requires the ratification of the Regulation by 13 member states, including France, Germany and the UK. As EU membership is a condition of being part of the UPC and the Unitary patent, Brexit makes the setting up process more complex.

European trademarks (EUTMs) and Registered Community Designs (RCDs)

Council Regulation (EC) No. 40/94 of 20 December 1993 on the European trade Mark (“Community trade mark” at the time) and Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs didn’t foresee the hypothesis in which a Member State would leave the EU.

EUTMs and RCDs in force prior to the UK’s official withdrawal from the EU will continue to cover the UK.

We do not yet know the consequences of the UK’s withdrawal from the EU on EUTMs and RCDs nor when these changes will occur. What we can say, is that the new EUTMs and RCDs filed with the EUIPO will not maintain the same value, as they will no longer cover the UK. To benefit from the same level of protection, one must be the holder of a European IP right (excluding the UK) and a British national IP right; therefore, in order to guarantee the same level of protection, one has to proceed with the registration of a European trademark with the EUIPO and the registration of a British trademark (the latter may be done either through national registration with the IPO or by registering an international trademark).

However, there is still the possibility of the UK reaching an agreement under which EUTMs and RCDs in force prior to the Brexit, continue to be valid on UK territory: for example, the possibility of converting European titles into British national trademarks or designs.

Copyright law:

No change is expected in the area of copyright law insofar that copyright is not very harmonized in Europe and no registration is necessary for protection. Courts will still look to the Berne Convention and the Universal Copyright Convention, but legal interpretation in accordance with EU Directives, is still to be confirmed. One needs to be cautious however in the area of contracts relating to copyright law, once the UK leaves the EU (please see below).

Contracts:

It is advisable to review each contract, especially existing license agreements, in order to examine the clauses relating to ‘territory’ and whether the EU is mentioned. One should then determine whether the term ‘EU’ in the contract refers to the EU as constituted at the date of agreement or, refers also to changing circumstances relating to the EU. This is to ensure that such contracts are in line with the original intent of the contracting parties. Agreements which are signed over the next two years will need to clearly state what is actually meant by “European Union”.

Data protection:

Whilst the Regulation on the protection of data has only just been adopted by the European Parliament (April 27, 2016) it may not actually apply to the UK. We are not presently aware on how the UK will decide to organize the flow of data but specific arrangements on this particular subject between the UK and EU member states are foreseeable.

.eu domain names:

In order to register a domain name in .eu, it is necessary to have an address within EU territory (or in Iceland, Liechtenstein or Norway), proving the registrant is subject to European law and relevant trading standards.

The UK’s withdrawal from the European Union could also have an impact on hopeful British .eu registrants.

However, EURid, the registry manager in charge of .eu and .ею (.eu in Cyrillic script) confirmed that there will be no immediate change, provided the political and legal processes have not commenced. Moreover, for some, this should not be an issue insofar as large companies will have the ability to register .eu domain names through subsidiaries located on EU territory. For smaller businesses and individuals, solutions should be devised over the next few months.

National rights:

British intellectual property rights will not be affected by the Brexit, whether these concern the acquisition or the assertion of rights over trademarks, designs and patents.

Practical guidance:

Given the current uncertainty surrounding the Brexit decision, it is now essential to analyze your intellectual property rights portfolio and to establish a strategy for your existing rights and registrations to come.

For your existing core trademarks, consider filing a UK registration at the Intellectual Property Office in addition to your EUTM. This also applies to any new EUTM filing.

A national filing is neither too costly, nor too long a process but offers a priority right so it provides a better level of protection in case EUTM filings no longer apply in the UK.

On the other hand, if the EUTM continues to apply to the UK, a national filing would allow the possibility of a seniority claim, meaning that the EUTM also includes UK registration.

Dreyfus & associés can assist and advise you on the best strategy to enhance and protect your rights.

Read more on the Brexit

The manager of a company called Vizion’Air operates an e-commerce website specializing in model making and drones under the trade name Droneshop. It filed the domain name  www.ladroneshop.com in 2012. As of 2011, another company, Minigroup, is the owner of the domain names www.droneshop.fr and www.droneshop.com.

Following the filing of the French trademark “DroneShop” in 2013 and of a French semi-figurative trademark, Vizion’Air brought an action against Minigroup, on the grounds of unfair competition. Vizion’Air invokes the wrongful acts of Minigroup and requests the cancellation of the registration of the two contentious trademarks. To do so, Vizion’Air needed to etablish that a risk of confusion exists between the Minigroup trademarks and the domain name of the applicant. However, prior to the above, Vizion’Air needed to establish the distinctive character of the former signs.

The landmark decision of  “ Baby Dry” of the Court of Justice of the European Communities, 20 September 2001 establishes that the combination of several descriptive terms may acquire distinctiveness, provided that the sign presents an exclusively arbitrary construction.

Indeed, the European Court firstly highlights the elements of the disputed sign. The latter is composed exclusively of descriptive elements for the English-speaking consumer.

However, the Court also indicates that a sign which bears elements that allow one to designate the actual product , service or one if its characteristics, must be refused registration. Article 7 §1, c) of Regulation No 40/94 on the Community trade mark however, sets out that such a refusal for registration is not valid “unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics. (by the relevant public).”

Regulation n°40/94 is equally applicable if the trademark is registered in a different language or if the disputed sign is registered entirely in a foreign language. (CJCE, 20 September 2001, « Baby Dry », n°C-383/99P)

The case law has thus proven that such a sign will have to be assessed objectively. A sign cannot be distinctive merely by bringing generic or descriptive elements together. For a sign to be considered as non-descriptive, an unusual variation in particular as to syntax or meaning, must be introduced.

Therefore, for a trademark to meet the requirement of distinctiveness, the combination of the elements or the spelling must consist of unusual or arbitrary choices. Adding a figurative sign may also allow the targeted public to identify it as a trademark.

The judges of the French “Tribunal de grande instance”, the civil court of first instance, considered in the Vizion’Air vs Minigroup case that the “droneshop” sign cannot constitute an enforceable prior right: with regards to the activity in question, it lacks the distinctive character. Indeed, a “drone” is a small unmanned aircraft and refers to the very nature of the products and items offered for sale, both in French or English. The term “shop” is derived from the English language and thus, could have been more specific. However, this term is widely understood by the French public as being the common designation for a store. In the court’s view, the combination of these two terms remains purely descriptive of the operated activity. It does not allow “an identification of the company concerned in order to distinguish it from other companies of the same sector.” In addition, inclusion of the personal pronoun “la”  in the domain name of Vizion’Air, does not make the sign distinctive. The combination of different expresions in this case, does not form an unusual juxtaposition nor an arbitrary name.

The judges in this case also raised the issue that the use of foreign language is not enough to establish the distinctive character of the sign in question.

A term derived from a foreign language may be used as a trademark or as an element of a trademark. However, one should enquire whether, upon the filing of the expression, the term was already a part of everyday language for consumers or professionals. Furthermore, to be qualified for registration, the term should not be viewed as the term designating the product or service to a large section of the relevant public in France. This was found to be the case for the expression, “Air Sport Gun” for a compressed air gun destined to be used as part of a sports or leisure activity (, n° 07-82.105). The sign was not a distinctive one.

That the terms are descriptive in their original language will be of no relevance if they are not understood by a large section of the public concerned. This is not the case however for the expression “droneshop”.

In summary, this solution confirms that in France, using a foreign language is no longer considered as a distinctive feature of the sign when it is easily understood by the public at large, and the decision above proves a consistent approach in this area of the law.

Read on

French trademark cancelled for lack of distinctivity and declared well-known by two rulings of the same court

The French Supreme Court cancels the “Argane” trademark for lack of distinctiveness

Internationalized Domain Names (IDN TLD) allow people around the world to access domain names in their local language.

Cybersquatting has also expanded from the standard Top Level Domains like .com or .cn to non-Latin scripts including Arabic, Chinese and Cyrillic scripts such as .中国 (.china) or .рф (.rf).

A multilingual Internet

Since 2009, the extensions in Latin (letters a to z) and non-Latin characters, in numbers (0 through 9), or hyphens (-) have been allowed for first-level and second-level domain names.

Yet it is expected that the number of Internet users around the world will increase from some 413 million in 2000 to some 5 billion in 2020, logically accompanied by an increase in the number of cybersquatters!

History of internationalized domain names

Today, domain names play a major role in ensuring the success of a trademark. However, while many companies are setting up monitoring services for their trademarks or domain names, they should not underestimate the potential risks that may arise from domain names in non-Latin characters.

A significant number of domain names are being registered in non-Latin characters

To date, there are already more than 6 million registered domain names in non-Latin characters. The use of domain names in non-Latin characters is growing and becoming common practice, particularly because of the fact that web content now exists in numerous different languages: 10 % of websites are in English, 22% in Russian, 19% in Chinese and 12% in Japanese.

Intensification of a trend

In 2014, ICANN began encouraging the new extensions specific to certain communities, including extensions in Arabic, Cyrillic and Chinese. Since then, five different panels per country have been formed worldwide in order to establish labeling and regulate areas by nation. The accelerated procedure for creation of internationalized domain names was introduced in 2009 and allows countries and territories to submit their applications for the opening of domain name extensions in non-Latin characters.

A specific monitoring tool

The introduction of internationalized domain names (IDN TLDs) has generated significant technical changes in the representation of domain names and made traditional monitoring tools insufficient. The internationalized domain names are registered in encrypted form, which does not allow the recognition of a term as a trademark. Only a specific tool can detect cases of internationalized domain name cybersquatting.

It is now essential to monitor your internationalized domain names on the Internet and pursue cybersquatters by using the appropriate tools.

Dreyfus & Associés specializes in monitoring domain names and can help you manage and prevent abusive practices on the Internet. Do not hesitate to contact us for additional information.

It is rare, but not impossible for a recipe to be granted protection. A recipe is a combination of a list of ingredients and practical instructions and the result of a recipe can be the creation of an original dish. Authors of such recipes may feel frustrated when they see their recipes copied without their agreement nor any mention of them. However, the legal remedies against the copying of a recipe are limited.

Under French law, for a culinary creation to be protected by the French Intellectual Property Code, it needs to meet three requirements under copyright law. According to the terminology established by case law, the culinary creation needs to be an “intellectual work” (“oeuvre de l’esprit”), presented in some material form, and bear “the imprint of the personality of its author” (originality criterion).

Modern doctrine does not allow recipes to be protected, whether under the anglo-saxon copyright or the “droit d’auteur” of civil law jurisdictions. However, case law has not always been consistent in this area.

In a decision of the Paris Court of first instance (“TGI de Paris”) in 1974 [1], it was stated that “while recipes may be protected in their literary expression, they are not intellectual creations as such; indeed, they can be defined as a succession of instructions, a method; they belong to the category of know-how, which cannot be protected.” Case law does not completely exclude the protection of a recipe by copyright law. Indeed, case law considers that recipes are, in theory, know-how. As such, a recipe cannot be eligible for copyright protection in the same way as an idea or an instruction manual: it is not presented in a material form and the “originality criterion” is not met. However, a recipe which clearly stands out from others might still be eligible for copyright protection. Indeed, “add-ons” may allow a recipe to obtain legal protection: an original illustration, a creative narrative, a reference to a specific piece of music, a suggestion as to how the dish could be presented, a recommendation for wine pairing, a story of how the recipe was created or even an evocation of memories associated with the recipe. All the abovementioned elements may be protected by copyright or “droit d’auteur,” even if the recipe may not be entitled to such protection.

Thus, each copy of a recipe which is ‘upgraded’ using these methods must display its copyright protection status by displaying the symbol © along with relevant information (publication date) (the author’s name), despite these not being prerequisites for such copyright protection. Copyright protection will not prohibit anyone however from actually following the recipe, nor does it prohibit photography of the various stages of preparation or the final dish or even describing the recipe through different terms and expressions.

Moreover, while it is possible to name to a culinary creation and to protect it by filing a trademark application, this does not allow for the protection of the culinary creation or the recipe itself. It is important to note that the scope of copyright protection granted to culinary creations is limited: no intellectual property right permits a clear and unequivocal protection of the culinary creation, regardless of the form in which it is presented. If indeed intellectual property rights are ineffective, are there any other legal means? If we consider a recipe as know-how, it could be protected by trade secrets: in fact, major trademarks like Coca-Cola and

Kinder have used this practice to keep their recipe secret. A secret recipe is thus protected from theft and copying. This would however mean limiting access to the recipe to certain individuals who wouldl be bound by a confidentiality obligation or who have signed a non-disclosure agreement. One should carefully specify on each copy of a recipe that it is a “Trade Secret. Not for publication. All rights reserved.” Nevertheless, the protection of the recipe would be based on confidentiality agreements, the effectiveness of which relies only on the good faith of the signatories. For Jerome Banctel, consulting chef of Mama Shelter Group, the easiest way to protect one’s culinary creation today is indeed to get it published: “If we have a great idea, we hasten to broadcast it in order to prevent people from copying it. We immortalise the idea by disclosing information to the maximum.[2],”

Protection by copyright or as know-how is granted on a case-by-case basis. Remember that a touch of originality will help you obtain protection more easily!

[1] TGI Paris, July 10, 1974

[2] http://www.slate.fr/story/64233/recette-cuisine-propriete-intellectuelle

With the coming into force of the Madrid Protocol in Mexico, it was necessary to implement an opposition system to strengthen the registration process of trademarks and enhance the competitiveness as well as the dynamism of intellectual property rights’ protection in Mexico.

At the end of the year 2015, an amendment to the Mexican Industrial Property Law (IPL) was thus proposed. The proposed amendment relates to the implementation of an opposition system in Mexico in order to streamline the registration process of trademarks, thus harmonising the industrial property system in Mexico with global trends.

On April 28, 2016, the Chamber of Deputies approved a decree amending the IPL to implement a trademark opposition system in Mexico. On June 1^st, 2016, the amendment decree was published in the Official Gazette of the Federation. (Diario Oficial de la Federación). It will enter into force on August 30, 2016, 90 calendar days after its publication.

According to Article 120 of the decree, a third party can file an opposition within one month of the the trademark application being published in the Gazette. No extension of the one month opposition period is allowed.

This new procedure will allow for an improved assessment of trademark applications by the Mexican Trademark Office (MTO). Before the 2016 reform, the MTO unilaterally decided whether the proposed application might create confusion in respect of prior registrations. If a third party considered that a trademark application could infringe its rights, it would not be able to oppose the application for registration of the trademark and would simply hope that the MTO itself would find that there was a likelihood of confusion.

Following the reform, today any trademark owner may oppose the registration of a trademark application and as such, may submit information which may have been disregarded by the MTO.

However, the proposed opposition system has no binding effect on the Mexican Trademark Office’s conduct of the trademark registration process. In fact, the MTO may take into consideration the opposition made by a third party and the allegations filed by the applicant of the registration in response to the opposition, but this is not compulsory. An opposition will therefore not determine the outcome of the in-depth examination carried out by the MTO, nor will it result in any suspension of the registration process.

The MTO will still continue to provide absolute and relative grounds during the examination of a trademark.

It is therefore important to note that the new opposition system will not be considered as a procedure within the registration process. An applicant could decide not to respond to an opposition made by a third party. Failing to respond would not be deemed to be a tacit acceptance of the opposition.

It will be interesting to see how the case law develops.

Read also International Marks: from February 19th 2013, Mexico will also qualify

Although perpetually renewable, in practice the vast majority of trademarks have a limited life expectancy. They are born and they die. Yet, some experience a different type of fate fate: they resuscitate.

Needless to say, the term “zombie trademark” does not refer to the recent surge in popularity of zombie culture or the slew of trademark applications it has inspired. The term refers to the rebirth of an otherwise dead trademark. These so-called zombie trademarks are connected to the past: they are in fact former trademarks, often iconic, that have an established reputation.

Unlike patents and copyright, a trademark can exist perpetually as long as it is used and renewed every 10 years. However, a company may cease to use a mark. This abandonment can occur at any time, whether it is while the application is still being examined or even when the trademark has already been in use for some time. In terms of non-use, according to Article L 714-5 of the French Intellectual Property Code, a trademark will be abandoned when an owner stops using it for five consecutive years with no intention of resuming use of the trademark. But as we can see with the zombie trademark, abandonment is not necessarily permanent. Thus, these trademarks are defined as signs which have been abandoned but that still have marketing potential, a reputation: “residual goodwill.” The zombie trademark however, requires undeniable divestiture, that is abandonment both from a practical and a legal standpoint. The trademark will then fall into the public domain.

There are many arguments in favour of reviving zombie trademarks. They spark up nostalgia and an emotional connection with the past, and their reputation reflects consumer trust and loyalty. As the brand already has an established reputation, it also saves time and money which would otherwise be invested in marketing. As a result, the adoption of such a trademark can be less of a commercial risk.

However, some legal scholars do not speak in favour of the zombie trademark. Indeed, it would supposedly lead to an unfair advantage for the company which takes over the trademark. Furthermore, the trademark is said to  be fundamentally misleading.

If a company no longer uses a trademark, isn’t there a risk that protecting that trademark would result in a market freeze? Reuse of an old trademark by a new owner can well be perceived as being legitimate use. Furthermore, what is the advantage to keep protecting a trademark which, in any case, would remain dead and buried?

One should also be mindful of trademarks which have not been fully abandoned: for example, a trademark that is not effectively used by the owner but one that has still not reverted to the public domain. In that case, there is a risk of recovery while the trademark sign is still held by its owner. Here, we are no longer in the scope of common law but in that of counterfeit.

The notoriety of a trademark

A notorious trademark remains vivid in the consumer’s mind. The goal is that the consumer continues to associate the trademark to the goods or services of origin. The new trademark must however consist of entirely different products and services to avoid its new owner facing a lawsuit.

The reputation of the old trademark offers a twofold advantage for the new trademark. First of all, it can trigger instant demand for the new product, even if this interest is distorted because it is aimed at different products and services, not provided by the original owner. Finally, the reputation factor may reduce advertising costs for the new product and thus allow for increased profit.

Building a reputation is the very objective of any trademark. From a legal standpoint, this reputation is normally related to the trademark and to the company which registered and exploited it. But, in the context of the zombie trademark, the trademark does not symbolise the reputation of the present owner but that of the original owner.

Resurrecting a trademark therefore seems to pursue an essential goal:  making it so that consumers link the trademark to the original product.

Protection against the rise of zombie trademarks

Normally, a company who has abandoned its trademark rights cannot prevent a newcomer from bringing the dead trademark back to life. Indeed, the disputed trademark has reverted into the public domain, theoretically allowing anyone to use it freely.

An abandoned trademark is in principle, available to anyone.

In the United States, there is legal uncertainty surrounding the issue of consumer protection against zombie trademarks. Therefore, it is appropriate to turn to the US trademark law, the “Lanham Act”, effective on July 5, 1947, and the case law interpreting the Act. Three consecutive years of non-use is prima facie evidence of trademark abandonment. US federal law states however, that this is a rebuttable presumption.

An opposition filed by General Motors Corp against Aristide & Co., Antiquaire de marques (TTAB, Opposition, 21 avril 2008, General Motors Corp. c/ Aristide & Co., Antiquaire de Marques, n°91167007) helps us better understand the notion of the zombie trademark as well as the limitations regarding the protection of well-known trademarks which have fallen into the public domain. In the early 20th century, General Motors Corp. introduced cars under the brand “La Salle.” However, the company has not used that trademark since the 1940’s. In 2004, a company called Aristide & Co applied for the registration of the expression “La Salle” as a trademark for products in Class 12. When the application was published, the famous motor vehicles company decided to oppose it, unsuccessfully. Indeed, the “Trademark Trial and Appeal Board” (TTAB) wasn’t convinced by General Motors Corp’s arguments. It was held that after 65 years of non-use, General Motors did not have any serious intent of reintroducing the trademark. The focus here is on the parties’ intentions.

Furthermore, the TTAB did not find that there was sufficient residual goodwill attributable to the “La Salle” trademark owned by General Motors. According to the Board, the mere recognition of the trademark by car collector clubs was not sufficient evidence.

In this case, the “La Salle” trademark had not been used for many years. One might ask what happens to a popular trademark that has been abandoned for a shorter period of time, say, ten years. In that case, the transformation of the trademark seems more difficult and will depend on its residual goodwill with the public. North-American courts state that successful resurrection will depend on the popularity of the original trademark but also to what extent it is recognizable by consumers as a source indicator of the original products and services. In addition, it will also depend on arguments which courts welcome favourably.

In France, legal proceedings can be initiated on the grounds of misleading trademarks. Indeed, article L. 711-3 c) of the French Intellectual Property Code states that signs “liable to mislead the public, particularly as regards to the nature, quality or geographical origin of the of the goods or services” may not be adopted as trademarks. The former owner might also sometimes act on the grounds of passing off and unfair competition.

One can try to avoid that a zombie trademark be confusing or deceiving to the public. The new owner may duplicate the goods and services linked to the original brand, while making sure the quality remains unaltered. The new owner will also have to notify the public that he is not in any case connected with the original trademark owner. However, this is possible only if the goods and services are not protected by another Intellectual Property Right like design law, patents or copyright. Ultimately, any infringement to the original trademark will depend on the sovereign power of assessment of the courts.

Resurrecting a trademark can thus be of great interest for a business wishing to take advantage of the fame of a trademark that has reverted to the public domain.  However, some of these trademarks are not legally quite dead nor alive and one should be cautious as the French and  North-American caselaw on this issue is still rare and uncertain.

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