Dreyfus

Events with significant media coverage, whatever their nature, often provide self-seekers with a golden opportunity to exploit the situation for commercial ends. Thus, unscrupulously some have sought to take advantage of the tragic attacks which occurred in Paris. Barely a few hours after the attack against the editorial team of the satirical newspaper, Charlie Hebdo in the morning of January 7, 2015, the INPI, the National Institute of Industrial Property, received about fifty filing applications for the “Je suis Charlie” trademark and derivatives thereof.

The broadcast of this slogan, created by Joachim Roncin, artistic director of Stylist magazine, half an hour after the attack, was beyond measure. The whole world, with social networks in the front line, took over and almost instantly popularized the visual. Faced with such magnitude, the creator of the visual formally opposed any commercial use of the message and the image. The INPI responded on the same day by issuing a press release announcing the dismissal of such filing applications on the grounds that “this slogan cannot be picked up by an economic actor due to its wide use by the community.” Thus, a few hours sufficed to render “Je suis Charlie” world famous and inalienable. Beyond the ethical aspect, would the widespread use of this visual have therefore rendered it devoid of any distinctive character?

This rejection is not so obvious and may be legally questionable. In accordance with Article L711-2 of the Code of Intellectual Property, “are devoid of any distinctive character: signs or names which in everyday or technical language simply constitute the necessary, generic or usual product or service; signs or names which may serve to designate a characteristic of the product or service (…); signs which consist exclusively of the shape imposed by the nature or function of the product.” However, at the time of filing, the slogan had not yet become part of common parlance or professional language to describe a product or service, nor any of its characteristics and could not necessarily be considered as being a sign constituting a product. Consequently, the slogan could have been treated as distinctive. The argument of the INPI for rejecting the distinctive character is therefore questionable. The INPI should have instead chosen a contention based on public policy to oppose trademark applications to the extent that a monopoly on the slogan could restrict freedom of expression.

Nevertheless, the intention of the INPI is commendable. An extreme state of affairs begets an extreme remedy and the informed position adopted by the INPI can only be saluted. Indeed, the INPI’s role is to examine trademark applications and it may reject them if they do not meet the substantive requirements for registration as required by law. Once the trademark is filed, the INPI publishes the registration of the trademark within a period of six weeks. After this period, the examiner scrutinizes the merits of the application and may raise objections. Third parties also have the opportunity to submit comments or to object to the registration of the trademark, when it published. In this case, the INPI issued a provisional refusal objection to these registrations. The applicants concerned can respond to this objection. Indeed, they can react and respond to this objection within two months, should they so wish to do so. However in view of the exceptional situation, their responses will have little chance of success.

Thus, the shady affair surrounding Charlie should not take place, at least legally in France. It is rather different in practice and the INPI could not, over the last few days, hinder the surge of multiple products bearing the image of the famous visual on eBay, such as stickers or T-shirts. Moreover, due to the international media buzz around the attacks, other foreign offices, such as the Benelux Office or the United States, have received similar requests. As concerns Benelux, the process is ongoing and the decision should be taken within two months. In the United States, Steven Stanwyck and Kelly Ashton also filed the trademark with the USPTO (the US Patent and Trademark Office) for communication and advertising services falling within class 35. In addition, during the registration [procedure], they specified that they wished to use this brand for non-profitable purposes. The USPTO (United States Patent and Trademark Office) has not responded yet.

More recently, the Community Trademark Office (OHIM) received a community trademark application for the same mark, that is, to be protected throughout the entire territory of the 28 countries across the European Union. The application for registration will, in all probability, be rejected because it is likely to prejudice the public interest. In fact, this trademark should be considered contrary to public order and morality. The INPI has no power to contest such registrations outside French territory and therefore cannot prevent foreign companies from disseminating the “Je suis Charlie” mark in the future.

Furthermore, in parallel to these filing applications, domain names such as “charliehebdomassacre.com” or “je-suischarlie.com” were put on sale. The latter, for instance, is on sale display for 349 euros on the domain name sales platform Sedo, the market leader. When confronted with such dishonest business, registrars do little, if anything at all and hide behind the first-come, first-served principle and allege that they must remain neutral and passive. However, in case of a dispute over the registration or use of a domain name, it is nonetheless feasible to initiate actions, particularly in cases of fraud like the UDRP procedure.

Given the current context, it is advisable that registrars, at least the French ones, align themselves with the stance adopted by the INPI in refusing to register such domain names for reasons of public order.

Just like Donuts, a company that introduced the “Domains Protected Marks List” (DPML), private registries increasingly try to offer rights holders similar protection tools in addition to the Trademark Clearinghouse (TMCH).

As a reminder, DPML is a rights protection mechanism for all TLDs operated by several registries, including Donuts, in order to block the registration of domain names containing trademarks previously validated by the TMCH. Thus, all trademarks registered and maintained in the TMCH are eligible, provided they comprise at least three letters. Once this condition is met, blocking a trademark can be achieved either for identical or contained terms therein. Thus, when a term is protected in DPML, without even registering corresponding domain names, it will not be available for purchase, in relation to hundreds of extensions. Furthermore, blocking is active only if the trademark remains registered with the TMCH.

But whilst DPML can be an effective tool against cybersquatting, rights holders wishing to register domain names will nevertheless have to conduct an unblocking for each registered domain name. Also, rights holders will have to renew the registration of the related trademark in the TMCH to preserve the blocking in DPML. Thus registering a trademark in DPML requires a preliminary study to identify risks and develop a protection strategy.

The MPML “Mind + Machines’ Protected Marks List”, set up by the registry Minds + Machines, operates in a way similar to DPML. As with DPML, only trademarks which comprise at least three letters, registered and maintained in the TMCH may be blocked if identical or contained terms therein. Moreover, as with DPML, some domain names were excluded from the mechanism, including names blocked by ICANN. However, the TLDs operated by Minds + Machines are logically different and relate e.g. to .fashion or .law. Similarly, the blocking period may vary depending on the registry.

Finally, the various blocking mechanisms offered by private registries are not really different because they have the same goal to fight against cybersquatting, except that each of them operates different TLDs. It is not impossible that in the future, these mechanisms grow and extend to other private registries.

It is therefore necessary to examine on a case by case basis whether to use such mechanisms which may be useful to protect a trademark on the Internet. Dreyfus has expertise on these issues and can advise you on the best strategy.

We are pleased to inform you that the book “L’élu(e) face au numérique” by Pascale Luciani-Boyer (publisher: Berger Levrault) is now available. The book aims at defining the roles of elected representatives dealing with issues in relation to digital technology as well as suggesting relevant organisational models.

Nathalie Dreyfus contributed to the book and thus analysed the difficult issue of the protection of names of local authorities as trademarks. The book is available as from January 2015.

Luciani-Boyer, Pascale,  L’élu(e) face au numérique, De la puissance publique à la puissance citoyenne, un défi majeur des territoires, Paris, Berger Levrault ed., 2015, 200 pages
http://boutique.berger-levrault.fr/ouvrages/collectivites-locales/missions-et-pouvoirs-de-l-elu-local/l-elu-face-au-numerique.html

Labels and packaging recently became some of the most counterfeited items. In 2013, they accounted for more than one million of counterfeit goods seized by French customs authorities.

With customs services on the frontline in ensuring observance of intellectual property rights, it now seems vital for trademark holders to protect their rights at customs.

Customs will only act if the right holder previously filed a request for intervention with a view to withholding the suspected counterfeit goods at customs.

It is incumbent upon the person alleging that there has been infringement to show evidence to the customs authorities of the existence of an intellectual property right protected under French law.

As concerns trademarks, the registration certificate must be provided. The list of products for which the trademark is protected must also be specified.

Where counterfeiting of labels or packaging is concerned, the request for intervention to the customs authorities is be admissible only if the infringing mark is covered by Class 16 (stationery; adhesives; adhesive materials, plastic materials for packaging; printing blocks).

It is thus useful to protect trademarks under Class 16 in order to be able to initiate action against counterfeit labels and packaging at customs.

The French Hamon Act of March 17, 2014 on consumer law aims at increasing consumer protection by compelling businesses to provide information on every purchase through a “sustainable medium”. In one of our previous articles, we outlined that that law also aims at extending the withdrawal period from 7 to 14 days and at establishing a number of obligations in relation to the pre-contractual information provided on an e-commerce website.

A decree dated 17 September 2014 on pre-contractual and contractual information to consumers and to the right of withdrawal, implementing the Hamon Law, details the nature of the pre-contractual information that businesses shall provide before the parties enter into the agreement. The purpose of these pre-contractual and contractual information is to protect consumers on the Internet. The trader’s name and contact details, methods of payment, delivery, performance and claim settlement, legal and commercial guarantees and finally the features and interoperability of digital content should be stated. With respect to the withdrawal form, the decree requires its compulsory integration in the agreement including explanations on how to exercise the withdrawal right.

The decree was enforceable immediately and thus came into force September 20, 2014. The Direction Générale de la Concurrence, de la Consommation et de la Répression des Fraudes (French Competition, Consumer and Fraud Control Authority) may start implementing controls immediately to ensure compliance with the new rules.

In order to comply, businesses are strongly advised to update their contractual information to include the withdrawal form and the procedures to exercise the withdrawal right amongst others.

It was already possible to register a trademark for the “retailing of goods” in the European Union. However, in relation to the retailing of services, the Court of Justice of the European Union (CJEU) was recently able to rule on the validity of the service in class 35.

In September 2011, the company Netto Marken-Discount applied for the registration in Germany of its logo represented above in classes 18, 25, 35 and 36. With respect to the class 35, the company emphasised the following services:

“Class 35: Services in the retail and wholesale trade, particularly the bringing together, for the benefit of others, of a variety of services enabling customers conveniently to purchase those services, particularly services provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example websites or television shopping programmes, in relation to the following services: in Class 35: Advertising; business management; business administration; office functions; in Class 36: Issue of vouchers or tokens of value; in Class 39: Travel arrangement; in Class 41: Entertainment; in Class 45: Personal and social services intended to meet the needs of individuals.”

In September 2012, the German Patent and Trade Mark Office (Deutsches Patent und Markenamt) rejected this trademark application on the ground that the listed services could not “be clearly distinguished from other services in either their substance or scope.” Netto appealed this decision to the Federal Patent Court of Germany (Bundespatentgericht). Noting that the CJEU never ruled on whether retail trade in services was a valid service, the Federal Court referred a question to the CJEU for a preliminary ruling.

The CJEU considered that the retailing of services may qualify as a service, provided the application for registration was “formulated with sufficient clarity and precision so as to allow the competent authorities and other economic operators to know which services the applicant intends to bring together.”[1] In fact, according to Article 2 of the Directive n° 2008/95/EC to approximate the laws of Member States relating to trade marks, the CJEU allows to encompass retail trade in services within class 35. Following this decision, it is now possible to obtain protection for the retailing of services in the European Union.

[1] CJEU, 3rd Ch., Netto Marken-Discount AG & Co. KG v. Deutsches Patent und Markenamt, July 10, 2014, Case C-420/13.

For the first time in Europe, a judge ordered Internet Service Providers (ISPs) to block several sites infringing trademark rights[1]. In the European Union, it was previously only feasible to block sites under copyright provisions, or for disruption of public order in other fields such as child pornography. Henceforth, following the initiative of the English judge, it appears that trademark law allows for the possibility to seek an order from a Court to block trademark infringing websites.

The dispute arose between several companies in the luxury sector, including Cartier, Montblanc and Richemont, and five major Internet service providers. These companies filed suit further to trademark infringing acts in order to block access to six sites where counterfeit goods were offered and sold. The Court found that infringement did occur and as a result, the major English ISPs namely BSkyB, BT, TalkTalk and Virgin EE were forced to block access to those sites that illegally reproduced the trademarks of these companies in the luxury industry.

This order of October 17, 2014 was made pursuant to section 97A of the Copyright Act, but the High Court of Justice pointed out that there is no legal equivalent in terms of trademarks. The Judge relied on many recent injunctions cases on copyright law in respect of streaming or downloading sites. This Article, when applied to trademark law, imposes three conditions to allow blocking: Firstly, the ISPs must be technical intermediaries; secondly the trademark infringement should be characterised and thirdly, the intermediaries must be informed of the infringement. In addition, the Order has been rendered in interpreting Article 11 of the Directive on the enforcement of intellectual property rights which is not limited solely to copyright infringements but to all intellectual property rights. Accordingly, the Judge held that the English High Court of Justice had jurisdiction to order an ISP to block one or more sites infringing trademark law.

The Court also expressed its reservations concerning the implementation of site blocking measures by the ISPs to prevent abuse. The latter may ask the judge to annul the order in the event of a change in circumstances. The Court referred in particular to the effectiveness of blocking measures and the costs they might entail. Moreover, blocking measures should not last any longer than necessary, which remains somewhat vague. However, the Court also incorporated a “sunset clause” in this type of order so as to prevent trademark owners from targeting too many sites incessantly. According to this clause, the order shall cease at the end of a defined period, unless ISPs agree to the order being continued or the Court orders that the measures should be continued. This Order marks an inaugural step for trademark law in Europe, will it pave the way for others to follow suit?

[1] High Court of Justice of London, Cartier, Montblanc, Richemont c/ BSkyB, BT, TalkTalk, EE and Virgin,  October 17, 2014.

An important consultation on digital technology was launched on October 4 by the French Prime Minister, Manuel Valls. It is headed by the French Digital Council (CNNum) and is accessible to all on contribuez.cnnumerique.fr until January, 2015.

CNNum invites all French people to submit their opinions and expertise to identify the key issues of digital technology. Therefore, companies, associations and citizens can address questions relating to the impact of digital technologies on the economy and society.  The public can also comment on the practicability of the proposed solutions.

The consultation has been open since October 4 and covers topics such as “Growth, innovation, disruption” or “Loyalty in the digital environment.” As from November 3, two other themes are available: “The digital transformation of public action” and “society faced with digital transformation.” Yet, the schedule is tight, with only a few weeks to gather the proposals of the French public on matters of great significance. Axelle Lamaire, State Secretary for digital economy, cites urgency as a justification for the short timeframe, since “some would wish to acquire the Internet space to make it an object of power.”

For each topic, brainstorming sessions will be organized throughout France. Through this consultation, everyone can evaluate the proposals of CNNum, take a stance for or against them and make new proposals. A summary will be prepared based on a quantitative and qualitative analysis of the contributions made. On this basis, the CNNum members shall craft a global vision for each theme. This appraisal will allow the CNN-um to propose several topics to the government for a draft law.

The program is a comprehensive one … But, according to Manuel Valls and Benoît Thieulin, President of CNNum, the consultation should help to “define the kind of society we want to live in tomorrow.” Achieving these goals will depend on the success of this consultation and on the government subsequently.

To be followed.

Acme Billing, the US-based online retailer, faces a burgeoning phenomenon, namely, the theft of domain names. Last August, the company found out that 35 of its domain names had been stolen by an anonymous person located in China, who transferred the domain names to acquire them.

On October 21, the company filed suit in the US District court of the Eastern District of Virginia against an anonymous hacker based in China for “knowingly and intentionally access Acme Billing’s domain name management (…) without authorization.”  Acme also accused the hacker of having acted in “bad faith.” To date, Acme Billing has successfully retrieved only 21 of the 35 domain names. For the other 14 domain names, it seems that the hacker has put them for sale.

Domain name theft can be particularly harmful to business, especially for an online sales company, such as Acme Billing. Clearly, by stealing domain names from an online platform, the company is deprived of the principal asset required to conduct its business. The theft of domain names can thus have grievous financial consequences for the turnover of the company, which will be directly and severely impacted. In light of this, Acme Billing’s CEO, Greg Stranahan, stated that “the theft of domain names is a growing form of intellectual property rights violation, with potentially devastating consequences for American businesses.” The decision is highly anticipated.

While the French Supreme Court (Court of Cassation) has still not ruled on the issue in France, the demands of the town of Laguiole seem to have arrived to the Court of the European Union. The town wishes to regain the use of its name. In a recent judgment[1], the European Court of Justice annulled the trademark “Laguiole” registered for cutlery by the entrepreneur Gilbert Szajner in favour of the company Forge de Laguiole.

In 2001, Szajner successfully sought registration of the Community Trademark at the Office for Harmonization in the Internal Market (OHIM).  Forge de Laguiole, which markets the famous knife, subsequently obtained cancellation of the trademark by an OHIM decision on the 1^st June 2011. Szajner, a businessman from Val-de-Marne without any connection to the village, brought an action against this decision before the European Court of Justice. This latter recognized “the anteriority of Forge de Laguiole which relaunched this product in 1987 and its specificity” and partially annulled the Laguiole brand.

However, the decision of the OHIM was overruled regarding the nullity of the Laguiole brand for products other than “tools and instruments hand operated”, comprising cutlery. The Court noted that even if “Forge de Laguiole was solely engaged in the cutlery industry,” he stated that Szajner could also continue to use the trademark “for products and services in other sectors.” Consequently, except for the “tools and instruments hand operated“, the entrepreneur is entitled to sell other products under the Laguiole brand.

However, for the EU the brand was partially annulled, the same cannot be said for France as the town [still] awaits the judgment of the French Supreme Court. The town of Laguiole, which alleges despoilment of its name, has waged a fierce battle against the entrepreneur for several years. The town alleged in front of the Court of Appeal of Paris that there were a deceptive commercial practice and a violation of its name, image and reputation. It was unsuccessful as the Court dismissed the case in a judgment delivered on 4^th April, 2014. The town appealed. The recent decision from the European Court should rekindle the hope of the Mayor of Laguiole, Vincent Alazard.

While the Laguiole knives won their name back, the Aveyron village, renowned worldwide for cutlery, waits impatiently. The mayor seeks to recognize commercial deception, since he believes that the businessman is using the name of his town for products manufactured in Asia. Under the current law, local authorities do not have an exclusive right for the sign and can only preventively protect their names by filing a trademark registration with the National Institute of Industrial Property (INPI). Deauville, which protected its name in 1998, is a prime example.

Nonetheless, with the advent of the Hamon consumer protection law on 17^th March 2014, local authorities can now request INPI to inform them in the event of a third party’s trademark application containing their name. They can also contest it within two months with the Director of the INPI. A town can thus exercise this application under Article L711-4-d and -h of the Code de la Propriété Intellectuelle, in respect of an infringement of its name, image or reputation or in respect of a breach of a geographical indication including its name. But the decree setting out the essentials for implementation of this law is still in the works.

However, the protection offered by the novel law appears to be limited to the goals of regional communities carrying out public service as the TGI of Paris had previously held that a town “cannot, through its interest in its name, forbid companies to operate their business on its territory by using its name, unless it is shown that such use causes a likelihood of confusion with its own competences or is likely to cause prejudice to it or to its citizens.” It only remains to be seen whether the Cour de Cassation will steer towards this direction or make its decision in light of the recent European case law. This judgment is expected to defend the names of local authorities.

[1] Court of the European Union, 21 October 2014, Gilbert Szajner c/ OHMI, aff. T-453/11.