Dreyfus

The French Highest Court (cour de cassation) has recently reaffirmed the well-established principle that “the likelihood of confusion must be globally assessed, with regard to the content of the trademark registrations regardless of the consumer of the designated goods and the conditions under which the trademarks are used or the goods are marketed”. (Cour de cassation, chambre commerciale, 23 juin 2015, pourvoi n°14-13011)

In this case, a company commercializing vitamin products for kids under the trademark « Min’ours » (“our” meaning “bear” in French) sued for trademark infringement a competitor for the sale of similar products under the trademark in colors « Kid’ours ».

The Court of Appeal of Rennes considered that the similarity between the marks was diminished by the differences in the colors and the dactylography, as well as by the differences between the packaging of the goods at issue and the way the trademarks were displayed on such goodsverturning this judgement, the French Court recalled in a very clear decision that only an in abstracto assessment of the signs shall be conducted for the determination of the likelihood of confusion. This decision is the line with the Court’s traditional jurisprudence. In compliance with French law, the scope of the protection granted to the trademark is limited to the contents of the application filed with the Office.  Use or packaging of the products should have no influence on the Court’s findings on the issue of likelihood of confusion. By this decision, French Supreme Court shows it plays strictly its role of gatekeeper of the trademark system where rights are acquire through registration, not use.

The decision Specsaver of the Court of Justice of the European Communities of 2013 had opened a door to the inclusion of the actual use of a trademark when assessing the likelihood of confusion. This decision hold that “where a Community trademark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.”

However, the facts of the particular matter were different. Besides, packaging and actual use of the marks are traditionally examined by the courts in the light of unfair competition or free riding.

Presenting her best wishes from Ducasse cooking school, Nathalie Dreyfus delivered the present speech.

Good evening all,

 

It is a great pleasure to have you all here at the firm’s annual dinner tonight.

 

I always look forward to this event, one which gives us the opportunity to come together and share a wonderful feast and some celebratory drinks prior to the New Year.

 

This year was a difficult one for France, a year which commenced with the Charlie Hebdo and kosher supermarket attacks and is ending following a series of attacks on the Stade de France, the outdoor cafés of Eastern Paris and the Bataclan concert hall.

 

Throughout the year, we were humbled by the large number of messages of solidarity and support which were sent to us by our colleagues from all around the world. We were also lucky to witness strengthened relationships within the firm itself; it is important to feel part of a strong and solid community at such turbulent times.

 

We as a group at Dreyfus have held firm and have even gone ahead to develop despite these unsettling times in which we now find ourselves.

 

This development was made possible by all of you and all of your hard work, as well as the outstanding display of mutual support you have all shown each other during this past year.

 

The firm has and continues to develop further in the field of Intellectual Property and the digital economy.

 

For better or for worse, these technologies are omnipresent throughout the economy and our daily lives. Naturally the law needs to evolve alongside these changes in order to ensure a certain degree of regulation in a world which we often see as free of any rules.

Even if on a relatively small scale, this is what our firm’s work contributes to.

 

We work in order to protect companies as well as business founders and innovators. France’s current difficult economic situation highlights a key importance of our work: to contribute to the country’s economic development.

 

The financial success of some companies is often displayed on the internet. But we also know that the success of these companies derives from hard work, details of which are kept discreet and behind the scenes. One might say, ‘in the kitchen’.

 

Our firm is in fact one of those kitchens.

 

We help to protect influential entrepreneurs and businesses, those who make up France’s identity and contribute to its diversity. In particular the catering industry!

 

You all already know how important this is to me: you need to eat well and appreciate what goes on in the kitchen. That is why I am very happy to welcome you here this evening to the Ducasse cooking school.

 

However before we eat lets toast to a wonderful New Year ahead. I wish all of you and your loved ones happy holidays and a joyous new year.

 

Nathalie Dreyfus

You may follow the video taping here : youtube

Since January 1, 2015, companies conducting local business can file their trademark applications in Sint Maarten via the online filing system.

On March 20, 2014, the Benelux Office for Intellectual Property (BOIP) and Sint Maarten (the Dutch portion of the Saint Martin island) agreed on their respective roles as regards the implementation of the trademark laws of Sint Maarten.

This agreement provides that the Intellectual Property office of Sint Maarten (BPI SXM) is responsible for executing legal obligations arising from trademark law while the BOIP performs the back-office tasks for the BPI SXM. The BOIP is also responsible for administering the online filing process and creating an electronic trademark registry.

This agreement allows the BOIP to further expand its cooperative network globally.

The Eiffel Tower is the most visited (paying) monument in the world and attracts many tourists every year. In the digital era, it is becoming easier for every tourist to immortalize the Eiffel Tower and publish photos on their Facebook or Instagram account. The question which springs to mind and which has been amidst much polemic is whether photos of the Eiffel Tower can be freely published or whether there is copyright infringement.

The Tower, as a work of architecture, has been in the public domain since 1990. Thus, in theory, anyone is free to use a picture of the Eiffel Tower for personal or commercial purposes. The issue became more complicated when the tower was illuminated at night.

The Société d’Exploitation de la Tour Eiffel (SETE) announces, on its website, that the various illuminations are subject to copyright. Thus, [usage of] any nighttime image of the Eiffel Tower is subject to a prior request from the SETE.

The originality of the illuminations is no longer challenged for a long time. This was confirmed by the Cour d’Appel of Paris in a judgment dated June 11, 1990. The Court held that the composition of the lighting effects intending to reveal and highlight the lines and shapes of the monument was an original “visual creation”.

Yet, during the transposition of the Directive of the European Parliament and of the Council, known as Infosoc, France has had the opportunity to craft an exception to copyright in architectural works located in public places. The Directive provides for this exception, but it is optional, which allows Member States of the European Union to elect whether or not to transpose the clause in their domestic law.  Alongside with Belgium and Italy, France has chosen not to allow the use of images of architectural works for private purposes.

Thus, the photographs of the Eiffel Tower taken during daytime are free of any prior intellectual property rights, while those taken at night require the authorization of the SETE.

The World Intellectual Property Organization (WIPO) may modify the international trademark registration system in the near future so as to allow the registration of trademarks comprising Chinese or Japanese characters.

Japan and China are both members of the Madrid Protocol which allows for the submission of requests for international protection covering those two jurisdictions. However the current system only enables submission of figurative, semi figurative or verbal trademarks consisting of Roman characters. It was impossible to register international trademark consisting mainly of Chinese or Japanese characters with WIPO until now.

The director general of WIPO, Francis Garry, stated that the institution will work on these reforms over the next five years. The first changes pertaining to Chinese characters should be approved as early as next autumn.

These changes are supported, in particular, by Asian and Middle East countries and reflect the growing importance of Asian economies globally. A Chinese or Japanese company wishing to undertake an international registration will no longer have to give up its original trademark and register a mere translation of its trademark. According to Zhao Hu, a lawyer who specializes in intellectual property law, this reform will also reduce the number of free riding cases.

Terrorism remains a constant and ever increasing threat. Following the terrorist attacks that took place in Paris earlier this year and on the November 13^th, the French government wishes to increase its cooperation with the Internet’s key players; this, in order to fight terrorism on the Web and prevent the dissemination of Jihadist propaganda. It was in light of this initiative that Manuel Valls, the French Prime Minister met with representatives of Facebook, Twitter, Google, Apple and Microsoft. No concrete measures have been put into place at present but Valls aims to set up a counter-speech strategy against the Islamic State within the next two months.

Bernard Cazeneuve therefore launched a series of initiatives in order to raise awareness among Internet players about these challenges, by meeting with leading Internet companies to discuss the implementation of concrete solutions.

However, the French government does not intend to amend its legal arsenal in the near future. Currently, the “Cazeneuve” bill dated of November 13, 2014 already provides for a number of mechanisms to strengthen the fight against terrorism through Internet surveillance and to promote cooperation between authorities and Internet users in the identification of and fight against content related to terrorism.

The law provides that hosting providers have the obligation to implement simple and accessible mechanisms allowing users to report content which encourages people to commit acts of terrorism or their glorification. Nevertheless, the real innovation of this bill lies in the possibility for administrative authorities to order hosting providers to withdraw such content, failing which they may even block those websites by compelling Internet providers to ban the access to them. These authorities may also request search engines to dereference these websites.

In some cases, the administrative authority may even block the website directly without prior request to editors or hosting providers. The judicial control will be minimal since it will intervene only when the matter will be referred to the relevant administrative court by a “qualified person” appointed by the French data protection authority, la Commission nationale informatique et libertés (CNIL) to monitor these cases of website blockings.

France thus has a particularly tough legal arsenal to fight against terrorism on the Internet and on social networks since the November 2014 bill. The recent statements and efforts made by the Prime Minister and the Minister of the State Affairs are proof that the government is determined to implement these measures.

Following January’s attacks, several measures were put into place in order to fight Internet extremism. A website by the name of “Stop-djihadisme” was launched, allowing families and close relatives to signal cases of extremism and consequently battle extremist propaganda.

Presently, the French authorities consider that the Internet, prisons and prayer centres are all locations from which extremism can originate from.

On 26 June 2008, the ICANN (Internet Corporation for Assigned Names and Numbers) confirmed its decision to provide the public with the opportunity of creating new top level domains. Several hundred generic top level domains have been created since 2012.

What is the purpose of these new top level domains? – As the range of available top level domains became increasingly limited, the creation of top level domains unlocked the opportunity of choosing preferential domain names and to increase the size of the market.

What’s in it for business? – The creation of new generic top level domains raises considerable stakes for businesses. Henceforth, each entity can benefit from a top level domain in its name. These top level domains allow a better exposure on the Internet, bringing real added value to businesses, as a clear and definite top level domain allows Internet users quickly to identify the owner of the website. As the name of the domain is the gateway to e-commerce, an informed choice of the top level domain should be carried out to guarantee cyber traders all chances of success. The acquisition of a new generic top level domain is in effect an advertising investment.

What are the risks? – The first issue raised is that of the identity or similarity between a new top level domain and an earlier right. But the ICANN has introduced a legal system of protection to prevent giving rise to unmanageable legal uncertainty. The next issue is the  registration of generic terms as top level domains. The domain name does not have to be distinctive. A generic, necessary or usual term may be registered as a top level domain if the applicant has a justified interest to proceed with such a registration. Yet monopolising such a top level domain provides for a competitive advantage which is difficult to defend.

Furthermore, the increase in potential domain names may give room for increased cybersquatting activities, which consists in purchasing a domain name to subsequently resell it at an inflated price to companies that need it. Yet a report called The Name Sentry Abuse by Architelos chambers, which specialize in the management of domain names, in order to evaluate the amount of abusive registrations, shows that the number of registrations of new generic top level domains is inferior to that of abusive registrations of domain names comprising of a pre-existent generic top level domain. This outcome should be qualified nevertheless since the number of abusive registrations comprising a new generic top level domain has increased substantially.

Besides these legal problems, there is the issue of the reaction of Internet users towards the creation of these new top level domains. A survey carried out on a thousand of American consumers by Interbrand during October and December 2014 shows that these new top level domains have a lesser influence than .com on Internet users. Firstly, it is shown that people remember the name of domains with .com more easily than the name of domains in a new top level domain. The rate of “clicks” also shows that users are more likely to steer towards an address with .com than towards a new top level domain even if the name of the domain with .com appears lower in search results. It would thus seem that  e-commerce websites run the risk of losing visitors and hence, potential customers. Nonetheless, the outcome of such a survey have to be put into context. The emergence of these new top level domain is still relatively recent. Internet users should be given time to adapt before the attractiveness of these new top level domains can be assessed.

In a ruling delivered on 20 January 2015[1], the commercial division of the Cour de Cassation drew attention to the application of the limited liability regime of technical service providers in relation to their hosting services and on the absence of any infringement of third party trademarks if used as keywords on the Internet.

SNCF found that eight of its trademarks were used as keywords on the Internet in order to draw the attention of clients towards the websites of competing companies. The Paris Court of Appeal grants the pleas of SNCF which first claimed that the company leasing the servers on which the competing websites are hosted, should be held liable as it was not merely passively involved in the hosting of data. SNCF then claimed that its well-known trademarks were infringed as they were used as keywords leading Internet users to competing websites. Finally, it claimed that this qualified as misleading commercial practice as it suggested that there was a business relationship between SNCF and the defendants to the dispute.

However, the Cour de Cassation disagreed and rejected the three grounds admitted by the Paris Court of Appeal.

Entitlement to the limited liability regime

Article 6, I, 2 of the Law on Confidence in the Digital Economy (LCEN) states, as a matter of principle, that technical service providers are not liable for their data storage activities on the Internet. In fact, the assumption that these technical service providers could monitor all the contents placed online by web surfers would be deceptive. However, there is a risk that they consistently raise their capacity as hosts, even for their publishing or business activities, in order to benefit from the limited liability regime. This would grant them a protection which would go beyond that intended by French law. Therefore, courts must assess each service in order to determine whether the limited liability regime applies.

In our matter, the Court of Appeal held the technical service provider liable by characterizing its services as publishing activities. According to the Court of Appeal, the service provider did not only store the data, but was also actively involved in inserting and removing the keywords. The Cour de Cassation disagreed and held that the technical service provider acted as a host. The inserting and removing of keywords are not enough to account for an active involvement.

The use of trademarks as keywords on the Internet

On this matter, the Cour de Cassation refers to the leading case law of the Court of Justice of the European Union of 23 March 2010 (Aff. Google France; C-236/08). It is now settled that the trademark holder is entitled to forbid the use of the trademark when such use infringes the trademark’s functions.

Dismissal of any misleading commercial practice

The Cour de Cassation dismissed the last ground based on a misleading commercial practice considering that the clients were not misled by the fact of knowing that they were on a business relationship with SNCF.

Parasitism?

Unfortunately, SNCF failed to claim any parasitic action, which may have existed as the use of trademarks as keywords on the Internet could provide a benefit from their recognition and their attractiveness.

Finally, this judgement is in line with earlier decisions and the case law on this matter may be deemed to be as settled.

[1] Cass. Com., 20 janvier 2015, n°11-28567

A corporation cannot have authorship of software, according to the judgment of the Cour de Cassation rendered on January 15, 2015 (Cass. Civ. 1, January 15, 2015, No. 13-23566). In this case, a computer engineer and a professor of medicine together founded a company editing cephalometric analysis software. Differences emerged regarding the ownership of the rights arising from the creation of the software and from its later developments.

The Professor of Medicine became the majority manager of the aforesaid company which filed suit against two companies managed by the engineer, petitioning the Court to declare that the two software programs were collective works. The Professor also wished it to be recognized that the authorship rights belonged solely to the company.

 The Cour d’Appel of Rennes held that the company which was originally incorporated by the two protagonists is the sole author, since the development of the software was the result of the work of its partners (CA Rennes, May 28, 2013, No. 11/05770).

Yet, the Cour de Cassation opined that a corporation cannot hold authorship rights. Indeed, Article L113-1 of the French Intellectual Property Code provides that “authorship belongs, unless proven otherwise, to the person or persons under whose name the work has been disclosed.” Accordingly, the Cour de Cassation held that it can only cover one or several individual(s) and quashed the decision of the Cour d’Appel of Rennes. The reasoning behind this judgment is crucial from a legal point of view: the corporation cannot be the author of the software, but it is vested with [its] copyright rights.

The French Parliament passed a Law on February 20, 2015 (n°2015-195) transposing three different European directives in the fields of copyright and related rights and the return of cultural goods.

These transpositions reflect a significant improvement in respect of protection of certain related rights and of orphan works and a strengthening of the European cooperation for the restitution of national treasures.

Three European directives have been transposed by the Law n°2015-195:

• Directive 2006/116/CE of September 27, 2011 extending the term of protection for phonogram performers and producers
• Directive 2012/28/UE of October 25, 2012 on the new regime of orphan works
• Directive 2014/60/UE of May 14, 2014 on the interstate cooperation for the restitution of cultural goods.

1. Directive 2006/116/CE: increased protection of phonogram performers and producers.

The Law of February 20, 2015 amended Article L.211-4 of the French Intellectual Property Code (FIPC), extending, for the performers and producers of phonograms, the term of protection of 50 years to 70 years after the 1^st of January of the calendar year following the moment when the work was made available or communicated to the public.  However, the protection for performers and producers of videos would remain at 50 years.

The Law also inserts new articles in the FIPC (L.212-3-1 to L.212-3-4) which grants performers the right to terminate the agreement whereby the performer assigned his/her rights to a phonogram producer, if the latter does not sufficiently exploit the work.  Hence, the revised law brings a more favorable environment for performers of phonograms. The 20-year extension term   is accompanied with the introduction of an additional yearly compensation for those performers remunerated on a lump-sum basis by producers of phonograms in exchange for the assignment of their rights. .The second amendment will enable them to find a way out in case of a detrimental contractual relationship with a producer.

These new guarantees will probably lead to an increase of the number of new performers and producers in France.

2. Directive 2012/28/UE: new regime of orphan works.

The Law introduces a new Chapter in the FIPC, enabling the public libraries, museums, archives, depositary institutions of cinematographic and audio heritage and educational institutions to make works considered as orphan available to the public, i.e where their owner cannot be reasonably identified and located after extended researches.

This amendment represents a major legislative progress considering the difficulties that legislation about orphan works had caused in the past.

3. Directive 2014/60/UE: restitution of cultural goods.

Finally, the revised Law embeds new provisions in the French Heritage Code to guarantee the return of cultural goods which are considered national treasures and which present a major interest for the national heritage in matter of History, Art and Archeology, and that have been unlawfully removed from their national territory after December 31, 1992. This new process facilitates the restitution of the goods and contributes to the enhanced cultural cooperation at the European level.