Dreyfus

The impact of Google on our society in the recent years has been a remarkable one. Indeed, the term “googling” someone or something has now carved a niche for itself in common parlance, and as such has been included in the latest edition of the Petit Larousse in France. Nonetheless, “google” is and will always be a trademark in the first place, as recently emphasized by a Court of Justice in the US.[1] Although “google” is commonly used as a verb in the US, the District Court for the State of Arizona drew attention to the fact that its primary purpose is for commercial use.

In March 2012, David Elliot and Chris Gillespie registered nearly 760 domain names, including all the term “google”, such as googledisney.com, googlebarackobama.net and googlemexicocity.com. Google Inc. first initiated private arbitration under the UDRP rules (Uniform Domain-Name Dispute-Resolution Policy) where it was ordered that the domain names be transferred unto Google Inc.  The appellants, David Elliot and Chris Gillespie, argued that the term “google” referred to a verb rather than to services offered by the Californian Company. As a result, they filed suit seeking no less than the annulment of the Google trademark. The latter entered a counter claim alleging trademark dilution, cybersquatting and unjust enrichment.

The Court dismissed the appellants’ contentions and found that the primary meaning of “google” cannot be a verb. The use of “google” as a verb does not remove the rights conferred upon the company of its globally known trademark. Moreover, to justify its stance, the court stated that Google primarily refers to an Internet search engine for most people. In this respect, Google is the first search engine in the United States and France. Accordingly, the District Court held that “google” could not be a generic term.

 

[1] Court for the District of Arizona, Elliot v. Google Inc, 10 September 2014.

The admissibility of Internet content as evidence has been at the heart of a lively debate in the legal landscape. We will discuss here the weight to be attributed to evidence obtained through the archive.org website managed by Internet Archive, a non-profit organization, which claims to have saved 450 billion web pages by means of its wayback machine. Indeed, this system provides snapshots of web page contents in a fairly reliable manner. Even though the contents of an URL address may have changed, the risk of changes may be avoided by the archive.org system, which allows for visiting a web page as it appeared years earlier.

 

At the domestic level, as already recounted on April 28, 2011, judges have displayed a marked reluctance vis-à-vis this type of evidence. Courts in France[1], the United States[2], as well as Germany [3] have rejected such evidence due to the lack of legality of the mechanism issuing archived material or the unreliability of the dates obtained. Conversely, supranational legal bodies (WIPO Arbitration center, European Patent Office) have oft been more flexible on this point.[4]

 

While no evolution has been noted on the domestic front, the case-law of the European Patent Office has accommodated a recent change in this arena. On May 21, the Board of Appeal of the EPO (T 0286/10) delivered a judgment regarding wayback machine archives in an objection to a patent case. In the case at hand, the applicant challenged the decision of the Board in that the latter maintained the patent as granted.

 

The Board of Appeal explicitly demarcated its stance from the T1134/06 judgment which required produce an authentication result issued by the archive issuer. It is henceforth no longer required, “there is no legal basis for a regime different from that governing the disclosure of the prior art in general.” In the judgment of May 21, the Court, in support of its stance, cited judgments T 2339/09 and T 990/09 which also depart from the T1134/06 decision.

 

The Board of Appeal deemed that the dates provided by the Internet Archive need not be considered inaccurate, leaving it to the defendant to prove “new evidence to shift the burden and provide evidence to the contrary to rebut the presumption.”

 

The Board further specified that,although incomplete, the archive library, by virtue of its popularity and reputation, “provides enough safeguards to benefit from a presumption of [being a] reliable and trusted source of information”. The burden of proving any contrary evidence is thus shifted unto the opponent.

 

This judgment takes a leap further as far as accepting evidence from an archive system and the legitimacy accorded to the website archive.org.is concerned. Nevertheless, the views of domestic courts will take a (much) longer time to change, particularly in France, given that they still view the snapshot issuer as broadly illegitimate.

 

[1]  CA Paris, 2^ème Ch., 2 July 2010, « Saval, Établissements Laval c/ Home Shopping Service (HSS) »

[2] « Novak v. Tucows », No. 04-CV-1909, 2007 U.S. Dist. Lexis 21269 (E.D.N.Y. March 26, 2007) ;  « Telewizja Polska USA, Inc. v. Echostar Satellite », Memorandum Opinion and Order, Case No. 02C3293 (N.D. III. Oct. 14,2004)

[3]  BPatG 17W (pat) 1/02

[4]  http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1768.html and judgment of EPO T 1134/06

Under the previous IP regime in Burundi, registered trademarks were indefinitely protected without the need for any possible renewal.

With the new IP law which came into force on July 28, 2009, trademarks registered in Burundi must now be renewed once every 10 years.

The question then arose as to whether the novel requirement to renew was applicable to trademarks registered prior to July 28, 2009, when the current law was enacted.

According to the transitional provisions in the law, trademarks registered prior to the new law were not subject to mandatory renewal and remained valid indefinitely, except in instances of cancellation or expiry of the trademark.

The entry into force of the new law has clarified matters: all trademarks, including those registered under the former law shall need to be renewed for 10-year period before July 28, 2019.

It is yet to be determined as of which date it will be allowed to file application for the renewal of these old trademarks.

To be followed…

Under the prevalent Canadian law, a trademark can only be registered if it is currently used or if the applicant plans to use it. Applications based on the use of a trademark in Canada have to mention the date of first use in respect of the designated goods and services. The holder of a trademark registered and used abroad can also file an application in Canada without ever having used that mark there.

Once the new law, presently under discussions, becomes effective, the requirement for a declaration of use in Canada prior to the issuance of the certificate of registration will be removed. It will not be necessary to specify whether the claim is based on an existing or intended local use of the trademark.

The new law is expected to enter into force by end of 2015 or early 2016. Removal of the declaration of use requirement will prove beneficial to all pending registrations. However, anyone who applies for registration of a trademark in Canada must still intend to use it for all designated goods and services.

On the one hand, this change is a good thing because all issues surrounding dates of use will disappear at the application stage. In addition, the applicant will no longer have to require lengthy time extensions to start using the trademark for all the goods and services listed in the application.

On the other hand, since the registry will no longer provide information concerning the use of trademarks, it will be more difficult to determine whether a new trademark is available. This is an important consideration as it will still be feasible to claim acquired rights through use. In the event of a dispute between two applicants, an investigation will be required to determine who is genuinely the first user of the trademark and in respect of which goods and services.

The prospective amendment to Trademark Law relaxes the registration procedures of trademarks. The concept of use of the trademark is not ruled out yet. Instead, it remains critical as far as trademark rights are concerned. The principle remains unchanged: the first user, not necessarily the first applicant, retains rights over the trademark. It is actually the filing strategy which requires revamping: it is imperative to file a registration application for all potential goods and services at the soonest available opportunity.

To be continued…

The real world and the Internet have long been segregated. Today however, these two worlds tend to overlap and as paradoxical as this may sound, registering your trademark can prove to be quite a useful protection on the Internet.

The reasons for the importance of trademark registration are increasing with the rise of cybersquatting. This has led to registered trademark owners enjoying new benefits in relation to the protection of their rights over the Internet.

Firstly, it has become increasingly important to protect trademarks on social networking sites. Since 2009, Facebook allows its members to create user names which are easily accessible and which can include trademarks. Before 2009, Facebook allowed a short period of time for registered trademark owners to identify their trademarks and to prevent their use by other members.

Most social media platforms secure usernames on a “first come, first served” basis. As far as rights enforcement is concerned, it is easier to be the owner of a registered trademark to be able to notify a breach of trademarks rights in accordance with the platforms’ terms of use.

Secondly, all trademarks on the Internet must be protected on search engines and particularly in sponsored links. Through its AdWords system, Google allows advertisers to select keywords so that their advertisements become visible to web surfers when they enter these words in the search engine. Conflicts arise when advertisers buy keywords containing trademarks whilst having no rights to them.

Holding trademark rights thus becomes an important factor in countering unfair competition practices.

Thirdly, trademark owners must also pay attention to the increasing number of new domain name extensions gTLDs. To date, more than 300 new gTLDs have been delegated, and hundreds more are soon to follow. In view of the potential conflicts with protected trademarks, a new mechanism has been made available to trademark owners: the Trademark Clearinghouse. It is a centralized database for all registered trademarks. Once the trademark is registered there, trademark owners can participate in the Sunrise Periods for newly-launched gTLDs and are informed when third parties register domain names that are identical or similar to their trademark. The person filing for the domain name in question is also informed that he may be infringing on the rights of a trademark owner.

Finally, if a domain name identical to or containing a trademark is registered, specific administrative procedures such as the Uniform Rapid Suspension (URS) and the Uniform Domain Resolution Policy (UDRP) can assist trademark owners in taking action against cybersquatters. These specific procedures are only accessible to trademark owners.

 

Thus, being a trademark owner is now almost a requirement to protect and defend your rights on the Internet, even if your company does not have a strong Internet presence.

Dreyfus is specialized in the protection of rights over the Internet. Please do not hesitate to contact us for any information.

On March 21, 2014, the Crimea was annexed by Russia. Formerly a part of Ukraine, this region now has a dual legal status, particularly as concerns intellectual property rights.

On 22 July 2014, the Ukrainian government met to discuss intellectual property protection in the Crimea. This region was then conferred the legal status of an occupied territory and will remain subject to the Ukrainian regime in intellectual property matters.

On the same date, Russian President Vladimir Putin signed a new law to regulate IP protection in the Crimea. The new law provides for the protection of inventions, utility models, industrial designs, service marks and appellations of origin originally registered in Ukraine by persons who are permanent residents of the Crimea, provided that these rights are revalidated in Russia prior to January 1, 2015. Trademarks rights which are already protected in Russia will be automatically protected in the Crimea. There will be no requirement to register anew.

To ensure a blanket protection of trademarks in the Crimea, it is henceforth imperative to hold a registered trademark in both Ukraine and the Russian Federation.

While the free reproduction of works in the public domain is allowed, e.g. Auguste Rodin’s notable sculpture, The Thinker, it is imperative that any such reproduction respects the moral rights of the author. The latter is indeed “perpetual, inalienable and imprescriptible” in accordance with Article L. 121-1 of the French Code de la Propriété Intellectuelle.

One of the most seminal counterfeit lawsuits witnessed in the French legal landscape in the recent years is being tried in the Criminal court – Tribunal correctionnel de Paris. The action is based on counterfeiting and false advertising in relation to the sale of several copies of Rodin sculptures which have since lapsed into the public domain. The judgment has been reserved for November 20. This decision is particularly awaited in the art world as concerns moral rights. Moral rights may be transferred upon death to the heirs of the author or to a third party under the provisions of a will. August Rodin bequeathed all his works to the French government, more precisely to the Musée Rodin which is now holds the moral rights in these works by a  by decree of February 2, 1993. It is in this capacity that the Musée has exercised its rights and filed suit.

Gary Snell, an American businessman, bought plasters of Rodin’s sculptures from merchants, including the Thinker and The Age of Bronze in various dimensions. He then mass-produced a series of copies. According to a court-appointed expert, more than 1,700 copies were sold, thus warranting the qualification of “quasi-industrial” production by the Prosecutor.

In addition, the right to the author’s name was violated as some reproductions flaunted a Rodin signature and sometimes even the mark of the foundry used by Rodin, the Rudier foundry, in lieu of the mark of the Italian foundry which actually manufactured these copies. Yet, according to Article 8 of the Decree of March 3, 1981 on fraud prevention in art and collectibles, “any facsimile, molding, copy or other reproduction of a work of art or a collectible must be designated as such.” Therefore, while reproduction of Rodin’s works is not prohibited under French law, it is imperative that they are clearly identified as such, for the purchaser to take cognizance of the low value of the work – something that was lacking in the present case. Similarly, some of the reproductions were so poor that they were a violation of Rodin’s moral right in respect of his works, which all the more betrayed the artist’s vision. As a result, the Prosecutor argued that these reproductions should be treated as counterfeits under French law.

The argument put forward by the accused party, namely that French law does not apply because the reproductions, according to the latter’s Counsel “were never offered or sold in France,” is inadmissible since the it was established that the copies were advertised on an site that could be accessed from France at the time.

The Prosecutor requested the Court to levy a fine of 150,000 euros on Gruppo Mondiale, a company incorporated in Liechtenstein headed by Gary Snell, and accused of having displayed or sold, the counterfeit works of Rodin which it manufactured on a “quasi industrial” scale, by presenting them as originals. Moreover, the Prosecutor also prayed the Court for a suspended sentence of eight months and a 30,000 euro fine against the businessman. Stay tuned!

Advertising agencies arguably care more about their image than any other business, particularly in terms of their logo. In its judgment of 30 September 2014, the Court of appeal of Paris ruled on the likelihood of confusion between two trademarks belonging respectively to Graphèmes and Graphéine, two companies operating in the field of graphic design.

The trademarks were inclusive of a logo namely:

Earlier trademark: 

Contested trademark

As graphics professionals tend to focus on the presentation of trademarks, the Court of appeal held that the two disputed trademarks were indeed distinct. Indeed, while the Graphème company argued that the mark “Graphéine” was an imitation of its earlier mark, the Court held that “the logos used by Graphéine are visually very different from that adopted by Graphèmes” and that “the mere reproduction of the colour does not generate the likelihood of confusion in the case.” Likewise, when taken as a whole, and given the distinctive visual and phonetic elements, the likelihood of confusion could not be proven with regard to the logo of “Graphéine.”

In their assessment of the likelihood of confusion, the judges took into account the technical details and various references to the graphic design industry. The services were intended for an informed public, namely design professionals. Usually judges must make a general assessment by examining the evidence as a whole and determine the “overall impression” made upon average consumers. This method of assessment is derived from several judgments of the Court of Justice of the European Union[1].

Yet in this case, the Court of appeal focused primarily on design professionals, which could perhaps be challenged. In their address to graphics professionals concerned with the visual rendering of their logos​, the judges exhaustively analyzed the particulars of both trademarks including fonts and differences of pronunciation. For example, the court phonetically scrutinized the two terms to reveal their differences, so that, ultimately, “strong differences in pronunciation” are not necessarily discernible by a layman, as the court itself noted.  Indeed, if any individual was to see the logos at issue from afar, he could easily be confused (same size, same length, same prefix and a similar suffix). Furthermore, with regard to colors, tonal differences are not as evocative they appear to be. One wonders in this respect whether the decision would not have been different had the court focused on consumers, to whom the two terms may look similar.

Nevertheless, the assessment of the likelihood of confusion while keeping in view the professionalism of the stakeholders involved in the trial is not a trivial one since both advertising agencies cater mainly to other professionals or clients. Therefore, in light of the case law, this decision, although it is questionable in espousing a strict assessment of the likelihood of confusion in the design sphere, makes a lot of sense.

 

[1] Sabel/Puma CJCE, 11 November 1997, aff. C-251/95, Canon CJCE, 29 September 1998, aff. C-39/97, Llyod CJCE, 22 June 1999, aff. C-342/97.

In this dynamic business world, trademark registration is an imperative. And yet, it is not enough merely to own a trademark. Trademarks need to be used to avoid any loss of rights for non-use. The issue of genuine use of the trademark in the business sphere arose before the English Court and the Court of Justice of the European Union (CJEU) in a long running dispute between Specsavers and Asda for the past five years. Specsavers registered the two logos shown below, but developed its marketing strategy by using the Shaded logo.

In October 2009, Asda launched an advertising campaign for optical products and targeted the Specsavers group by using similar logos to those of the latter. Specsavers filed an action against Asda for infringement of both the word trademark and figurative trademarks before the High Court of Justice of England and Wales. The High Court of Justice rejected the infringement argument, but held that the trademark associated with the wordless logo had lapsed due to lack of use. Specsavers appealed, upon which the Court of Appeal asked the CJUE for a preliminary ruling on the following question (Case C- 252/12): “Is the condition of genuine use of a Community word trademark satisfied when a graphic device Community trademark is used only in conjunction with a Community word trademark which is superimposed over it?” The ECJ said that the requirement of “genuine use” can be satisfied even if the Community figurative trademark is used in conjunction with a Community word trademark which is superimposed over it. However, the distinctive character of the said trademark as registered should not be altered. The matter was referred back to the English Court of Appeal. Applying the guidance provided by the CJEU, the Court considered whether the wordless trademark used without the logo being a composite part of the shaded trademark is perceived by average consumers as indicating the origin of products and services. First of all, the court was not convinced that the use of the shaded trademark with the term “Specsavers” affixed to it is a strong argument showing the genuine use of the wordless trademark. However, the assessment must be undertaken in relation to all uses made of the shaded logo and the perception of average consumers. The Appeal judge noted that the shaded trademark had been used extensively and that none of the logos used by competitors resembled the Specsavers’ logos. It was clear from the evidence adduced that Asda knew of the association made by the average consumer between the superimposed ovals and Specsavers. Moreover, it was shown that, from a distance, consumers identified the two ovals as belonging to Specsavers. This satisfied the Court that the wordless logo was genuinely used, which was registered without any colourlimitation. As a result, Specsavers kept its valid figurative trademark. It is to be noted however that the English Court sought to curtail the potential ramifications of this decision and pointed out that each case would be decided on its own facts. This precedent is not devoid of risks, since it opens the floodgates to applications for the registration of standard shapes similar to registered trademarks. To be followed.

The Governmental Advisory Committee (GAC), which represents states at ICANN, primarily advises on public health issues and the interplay between ICANN policies and national or international law standards. At the draw of each ICANN meet, GAC issues a Communiqué summarizing the latest developments and requests. The GAC Communiqué of October 16, 2014 mainly addresses issues related to the transition of the US Stewardship in overseeing the functions of the Internet Assigned Numbers Authority (IANA) and recommendations concerning safeguards applicable to new gTLDs.

The first recommendation submitted to ICANN concerns Internet governance and considers how the IANA stewardship transition should be structured. The GAC is also committed to work on ICANN’s governance and accountability. Thus, this process should be guided by consensus based decisions taking into account the public interest. The goal is to cater for a more general interest rather than that of the communities or groups immediately affected by Internet governance. This process should include all stakeholders in order to be legitimate for all everyone.

The second part of the recommendations reflects the concerns of GAC in relation to the manner in which the New gTLD Program Committee (NGPC) managed the previous recommendations made in the Beijing, Singapore and London Communiqués as regards consumer protection, sensitive strings and non-discriminatory registration policies. These recommendations are set out extensively in the Beijing Communiqué where the safeguards are classified into two categories.

Category 1 sensitive strings raises concerns as regards consumer protection and regulated markets. The GAC advises that registries should include, in their terms of use, the obligation on registrants to comply with all applicable laws and to assure that sensitive data is stored securely. It also establishes a non-exhaustive list of extensions to which these safeguards should be applied, such as .kids, .university, .care.

Category 2 comprises generic extensions which are for restricted use. With reference to registration policies, GAC recommends that registration limits be proportionate to the types of risks associated with TLD extensions. These include extensions such as .tires or .hotel.

GAC insists that ICANN should focus on implementing WHOIS related safeguards and transparency measures and on complementing the existing assessment on this issue.

The GAC also recommends that an interim mechanism be put in place to respond to security issues. The PICDRP (Public Interest Commitment Dispute Resolution Process) should be amended to address urgent cases more expeditiously. The GAC deems that the NGPC should verify the credentials of registrants in an effort to supplement the safeguards for Category 1 Strings.

For extensions falling under Category 2 safeguards, the GAC recommendation emphasizes the need to ensure that nondiscriminatory registration policies are enforced for new gTLDs.

 

To be followed…