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Introduction

Trademarks and patents are intangible assets of value for a company. Thus, both their maximization and their protection are essential to preserve innovation, differentiation, and competitiveness in the market. However, effectively managing these rights requires much more than their simple registration: a thorough audit allows to analyze and evaluate all the industrial property rights held by a company to ensure that they are well protected, operated and in accordance with legal and contractual requirements. An audit of trademarks and patents is therefore a crucial lever to avoid risks and optimize innovation and growth strategies.

The need for an audit of trademarks and patents

There are multiple situations in which a trademark or patent audit is required. Among these, three major reasons justify, in themselves, making this approach an essential strategic reflex for the company..

The protection of intellectual property assets

Trademarks and patents are essential tools for securing a company’s activity. Indeed, the audit allows verifying that all intellectual property rights are properly registered and protected. Many intellectual property assets can be neglected, such as unpaid annuities or a title not renewed on time or not used. The audit also makes it possible to verify that the rights are properly used and that the company does not face risks of infringement, revocation or nullity. By identifying rights at risk or geographical areas that are insufficiently covered, the audit makes it possible to adopt a proactive strategy to strengthen legal protection.

The optimization of business strategies and transactions

An audit of trademarks and patents is particularly important in the context of commercial transactions such as mergers, acquisitions or fundraising. During these events, an investor or a purchaser will conduct a due diligence review, including the audit of intellectual property rights. This ensures the legal soundness of the company and avoids setbacks during the transaction. In addition, the audit allows to identify patents or trademarks that can be , transferred or assigned, which optimizes the commercial potential of the company.

The reduction of legal risks

An audit helps limit the legal risks and helps to identify industrial property rights that could be contentious or invalid and to anticipate possible conflicts. By verifying the compliance of contracts, licenses and transfers of rights, the audit helps to avoid potential violations of third-party rights. In addition, it allows for the assessment of the scope of existing patents and trademarks, as well as their potential to be exploited in new markets or areas.

The essential steps of trademark and patent audit

An audit of trademarks and patents is not limited to a simple inventory of rights. It includes several fundamental steps to assess the situation of intellectual property assets and propose appropriate recommendations.

The inventory of intellectual property assets

The first step of the audit is to draw up a complete inventory of the company’s intangible assets. This includes intellectual property titles stricto sensu, such as trademarks, patentsdesigns, as well as copyright-protected works, but the trade secret.

Each asset must be listed with its essential information:

• Registration dates
• Renewal dates
• Geographical scope
• Etc…

This step also allows identifying unused or abandoned rights that can be removed from the portfolio.

Assessment of the validity and strength of rights

The next step is to assess the validity and scope of the rights held. This includes verification of their legal status (for example patents reaching an expiry date or trademarks that will need to be renewed). The audit also assesses the strength of rights in the face of potential challenges. We also study the strength of the right in case of infringements by third parties such as counterfeiting.

Management of contracts and licenses

The audit also includes the analysis of contracts related to intellectual property rights: license, assignment, co-ownership agreements, as well as agreements with employees and business partners. These contracts must be reviewed to ensure that they are up-to-date and comply with current legislation. The audit verifies that the company meets all its contractual obligations and identifies areas for improvement for better management of intellectual property.

Anticipating an action against a trademark or a patent: auditing as a tool for litigation preparation

In the context of an opposition, a cancellation action, revocation for non-use or infringement, the ability to quickly produce legally relevant proof of use is decisive. In practice, many cases fail not on the substance of the law, but due to insufficient, inadequate or non-aligned evidentiary elements with procedural requirements.

A trademark audit allows for the upstream identification of the portfolio’s evidentiary strengths and weaknesses, by verifying the existence of usable proof of use in relation to the labels, territories and periods concerned. It also highlights securities exposed to a risk of lapse or challenge, thus avoiding the company from placing itself in a situation of procedural vulnerability vis-à-vis a prepared opponent.

In patent matters, auditing is an essential tool for litigation preparation. It enables the legal and technical soundness of the titles invoked, the consistency between the claims and the invention actually exploited, as well as their ability to withstand a nullity action, to be assessed.

This anticipation reduces reaction times, secures the contentious strategy and refocuses the debate on the substance of the law, rather than on avoidable evidentiary weaknesses, while offering a realistic vision of the chances of success and the associated financial stakes.

Conclusion

The audit of trades and patents is an essential step for a proactive management of intellectual property tools. It allows a company to maximize the value of its assets while protecting against legal risks. To ensure the sustainability of rights and effectively exploit assets, a regular audit is essential.

Dreyfus & Associates helps its clients identify, secure, and monetize their rights, both in France and internationally.

Dreyfus & Associates is partnered with a global network of intellectual property law firms.

Nathalie Dreyfus with the help of the entire team at Dreyfus & Associates

FAQ

1. Does the industrial property rights audit include the analysis of third party?
Yes, the audit of patents includes the analysis of freedom to operate, that is to say the study of third-party patents likely to prevent the exploitation of the invention. This allows the company to identify potential patent conflicts before launching a product on the market.

2. How often should a trademark and patent audit be conducted?
It is advisable to carry out an annual or biannual audit, or on the occasion of strategic events such as an acquisition or a change in strategy.

3. What is the difference between an internal industrial property audit and an audit carried out by an external firm?
An internal audit can be conducted by the company’s legal team, but it often lacks the necessary hindsight and objectivity to identify all gaps. An external audit, conducted by lawyers specialized in intellectual property, provides a more complete, impartial and expert view of industrial property rights and the strategies to adopt.

4. What are the advantages of an industrial property audit as part of fundraising?
An industrial property audit can reassure investors that the company has properly protected its industrial property assets and is in compliance with regulations. This increases the company’s perceived value and improves its position in negotiations, proving that its assets are well managed.

5. What are the costs associated with a trademark and patent audit?
Costs vary depending on the size and complexity of a company’s industrial property portfolio. A comprehensive audit may include additional research, legal advice, and analysis of contracts and documents related to the industrial property. It is important to consider these costs as an investment in the security and valuation of company assets.

6. Is the audit of trademarks and patents mandatory?
Auditing trademarks and patents is not a legal requirement, but it is highly recommended to optimize industrial property asset management, avoid legal risks, and maximize business value. Some companies choose to carry out one in strategic periods (before a transaction, a change of strategy, etc.).

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

Wines and spirits, emblematic products of French and European heritage, are highly exposed to counterfeiting and misappropriation of reputation, particularly due to their strong territorial identity and the rise of online commerce. How can producers protect goods whose value depends as much on origin as on visual identity and reputation? An integrated approach combining wine and spirits regulations, intellectual property rights and digital enforcement is essential.

Legal framework applicable to wines and spirits

A sector governed by strict and specific regulations

The protection of wines and spirits relies on a combination of French laws (Rural Code, Consumer Code, Évin Law) and European regulations (EU Regulation 2024/1143 on geographical indications, Regulation 2019/787 on spirit drinks). These texts impose:

• Strict labelling requirements,
• Restrictive rules on advertising,
• Transparency obligations to prevent consumers from being misled.

While these obligations protect the public, they also limit the freedom of communication for operators. As a result, robust intellectual property protection becomes the only way to secure a product’s name, packaging and reputation over time.

Protecting origin: PDO, PGI and geographical indications

SIQO (official signs of identification of origine and quality): the cornerstone of territorial protection

Geographical indications (PDO and PGI) are the most powerful mechanisms, amongst SIQO, for safeguarding the link between a product and its territory. They rely on a detailed and enforceable specification document, binding on all producers.

PDO: the highest level of protection

Under Article L.721-1 of the French Intellectual Property Code :

“A protected designation of origin is the name of a country, region or locality used to designate a product originating therein, the quality or characteristics of which are due to the geographical environment, including natural and human factors.”

Obtaining a PDO is subject to strict requirements:

– Precisely identifying the natural and human factors that characterise the terroir,
– Demonstrating that the proposed area shows genuine geographical and qualitative coherence,
– Establishing long-standing, stable and recognised use reflecting historical continuity,
– Showing that the product enjoys sufficient reputation, which influences the scope of protection.

The geographical delimitation often proves to be the most sensitive element, particularly near borders where certain producers may be excluded from the designated perimeter.

PGI: a more flexible but solid link

A PGI identifies a product originating in a specific place whose quality, reputation or other characteristics are essentially attributable to its geographical origin. For a protected geographical indication (PGI), only one stage of production must occur within the geographical area, but the European legislator is clear: no misleading use of a territorial name should deceive consumers.
Wines benefit from enhanced requirements: both the grapes and vinification must originate from the designated area.

Protecting commercial identity: trademarks, designs and copyright

The essential complement to geographical protection

Even if reputation is tied to terroir, the economic value of wines and spirits is embodied by their trademarks, packaging and visual identity.

Trademarks: a central but regulated tool

A trademark may include a geographical name, but only if:
• It does not describe the actual origin of the goods,
• It is not misleading,
• It does not monopolise a place name required by other producers.

A viticultural village name cannot be appropriated by a single producer unless distinctiveness through use can be demonstrated.

Figurative and semi-figurative trademarks (crests, château silhouettes, stylised labels) often provide stronger protection.

Designs: protecting shape and appearance

Iconic bottles, capsules, gift boxes or label designs may be protected through design rights.

Filing with the INPI, EUIPO or with the WIPO (through the Hague System) prevents others from reproducing or imitating a distinctive appearance.

Unregistered Community Designs (UCD), valid for three years, are valuable for seasonal packaging or limited editions.

Copyright: protecting originality

Subject to originality, the following can be protected by copyright:
• Graphic labels,
• Illustrations,
• Photographs,
• Original visual creations.

By contrast, flavours, aromas and recipes cannot be protected due to the absence of objective identification criteria.

Securing the digital presence and combating fraud

Cybersurveillance: now indispensable

Wine and spirits counterfeiting is no longer limited to falsified labels. It now expands through:

• Fake online shops,
• Marketplaces offering counterfeit goods,
• Typographic or phonetic domain name squatting,
• Impersonation on social networks,
• Deepfakes used in fraudulent promotions.

Tools such as DNS monitoring, marketplace surveillance and DSA-based notifications to major platforms ensure rapid response.

Building a comprehensive protection strategy

A coherent, proactive and evolving approach

An effective strategy requires a global and structured methodology. It begins with a precise mapping of the company’s intangible assets (domain names, cuvées, labels, packaging, graphic signatures and digital positioning) to identify what must be protected.

This is followed by the implementation of a multi-layered legal protection system combining a coherent portfolio of trademarks, designs and copyright, appropriate distribution agreements, licensing frameworks defining usage of distinctive signs and strict governance of know-how.

This architecture must be reinforced by continuous monitoring of geographical indications, competitor filings, e-commerce platforms, social networks and domain names, enabling rapid detection of infringements.

Responses should then be graduated from cease-and-desist letters and online takedown notices to customs seizures, and, if necessary, civil or criminal proceedings.

Finally, rigorous internal organization is a must: documented procedures, systematic archiving, staff training and coordinated communication between legal, marketing and commercial teams all help preserve the long-term value of intangible assets.

This integrated strategy becomes a true competitive advantage: it protects, enhances and sustains a producer’s identity.

Conclusion

Protecting wines and spirits requires the articulation of geographical indication law, intellectual property tools and modern digital surveillance mechanisms. A comprehensive approach enables producers to defend origin, identity and reputation effectively, while anticipating the risks of an increasingly globalised and digital marketplace.

Operators who structure their protection strategy around these pillars gain a decisive and lasting advantage in this highly competitive sector.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Can a designation of origin be registered as a trademark?
No. PDOs and PGIs are collective, regulated rights and cannot be privatised.
2. Can a municipality oppose a trademark that reproduces its name?
Yes. Article L.712-3 IPC allows public authorities to challenge trademarks that harm their reputation or image.
3. Do small producers have the means to protect themselves effectively?
Yes. Affordable legal tools exist (PGIs, figurative trademarks, design registrations, targeted monitoring), and collective structures such as unions and inter-professional bodies play a key role in shared protection.
4. What should a global protection strategy include in this sector?
A solid strategy combines an inventory of intangible assets, a structured IP portfolio, appropriate contracts, digital and legal monitoring systems, tiered enforcement mechanisms and internal workflows capable of responding quickly.
5. Can a producer’s know-how be legally protected?
Yes. Although it cannot be registered as a trademark or design, know-how may be protected as a trade secret if it is identified, documented, not publicly known and preserved through reasonable confidentiality measures. Techniques such as vinification protocols, blending methods and selection processes may therefore be safeguarded.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific situations or to constitute legal advice.

2026 is off to a brilliant start for the Dreyfus law firm. We are proud to announce that our firm has been recognized as the “Trademark Law Firm Of The Year In France” by the prestigious Global 100 awards. This international recognition highlights our team’s expertise and our clients’ continued trust.

Recognizing excellence on a global scale

The Global 100 program is dedicated to identifying and honoring firms and companies that demonstrate outstanding performance, innovation, and strategic leadership worldwide.

Receiving this distinction confirms Dreyfus’ position as a key player in Intellectual Property (IP), both in France and on the international stage.

Why Dreyfus? A Winning strategy

This award reflects the dedication of our team of over 20 experts. Based in Paris but operating with a global mindset, we assist clients daily with the full spectrum of their intangible assets: trademarks, designs, copyrights, and digital brand issues.

Under the leadership of Nathalie Dreyfus, renowned for her strategic vision, the firm has established itself through a pragmatic and results-oriented approach.

“This award highlights not only our technical expertise but also our concrete efficiency, reflected by a success rate of over 90% in our IP cases.”

Thank you to our clients and partners

Above all, this victory belongs to you. It testifies to the trust you place in us to protect, enhance, and defend your innovations in an increasingly complex legal environment.

In 2026, we will continue to innovate to provide you with optimal legal security in the face of new digital challenges and globalization.

View the full list of winners on the official website: Global 100 – 2026 Winners

Introduction

In a world where artificial intelligence is reshaping the digital commercial landscape, ChatGPT is opening up new opportunities by becoming a genuine player in e-commerce, no longer limited to the role of a conversational assistant. The issue of trademark protection within ChatGPT therefore becomes a central concern for companies seeking to safeguard their intangible assets.

Contrary to a sometimes-widespread belief, the digital environment does not constitute a lawless space. A structured legal framework has gradually emerged, particularly at the European level, foremost among which is Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000, known as the “e-Commerce Directive”.

Trademark law in the face of AI technologies

Trademark law is based on the right of the trademark owner to prohibit the use, in the course of trade, of a sign that is identical or similar to its trademark for identical or similar goods or services, where such use is likely to create a likelihood of confusion in the mind of the public, including the likelihood of association.

Applied to ChatGPT, this principle requires a contextual analysis. AI, as a technology, does not itself hold rights or obligations. However, the uses made of the content it generates, particularly in a commercial context, may fall squarely within the scope of trademark law.

Instant Checkout and conversational commerce: a new area of vulnerability for trademarks

The Instant Checkout service, launched in 2025 by OpenAI, allows users to purchase products directly from ChatGPT. This technology, currently available in the United States, could be rapidly deployed in Europe.

The immediate visibility offered by this platform represents a powerful commercial lever, as it enables trademarks to reach a wide audience through purchase offers. At the same time, it also facilitates infringements of intellectual property rights, particularly trademarks.

The AI system aggregates product feeds from various platforms, enabling counterfeiters to offer infringing products using images and registered trademarks without authorization. This process is particularly risky, as ChatGPT does not automatically certify that the seller is official, preventing consumers from knowing whether they are purchasing from an authorized reseller.

It is therefore imperative for trademark owners to take measures to secure their products and prevent the abusive use of their distinctive signs.

Best practices for protecting trademarks on commerce platforms

Trademark protection on commerce platforms incorporating generative AI engines now relies on the proactive structuring of information, aimed at guiding algorithmic interpretation toward authentic products and legitimate sources.

Generative Engine Optimization (GEO) is a key lever in this respect. GEO follows in the footsteps of SEO and encompasses all techniques designed to improve the visibility of certain information in outputs generated by generative AI systems such as ChatGPT. When applied to trademark protection, GEO enables rights holders to enhance the clarity, credibility, and visibility of legitimate product listings for AI systems.

Clear identification of authorized sellers, product origin, and rights holders, combined with technical measures such as the integration of metadata and distinctive elements in visuals, helps limit fraudulent uses.

Finally, securing trademarks within the ChatGPT ecosystem requires an active and ongoing approach. This includes continuous monitoring of generated results to quickly identify suspicious offers, systematic enrichment of product catalogs, and the use of verification badges designed to reassure consumers.

Trademark enforcement and legal actions

Where counterfeit products are identified, trademark owners must follow a rigorous enforcement process to protect their rights:

• Securing evidence: retaining screenshots and metadata in order to build a robust evidentiary file.
• Taking action with sales platforms: directly contacting platforms to obtain the removal of counterfeit product listings and the deactivation of the sellers’ accounts involved.
• De-indexing : obtaining the removal of counterfeit product listings from ChatGPT’s results.
• Implementing targeted monitoring: in order to rapidly identify new high-risk occurrences and intervene at an early stage.

In this complex technological environment, recourse to an intellectual property specialist remains decisive to define an appropriate and legally secure enforcement strategy.

Conclusion

In this new era of digital commerce, the integration of tools such as ChatGPT and Instant Checkout creates significant opportunities for trademarks, while also introducing risks of counterfeiting and identity misappropriation. By adopting protection strategies such as GEO, the use of metadata, and authenticity labels, trademarks can secure their position in this dynamic environment and effectively protect their intellectual property rights.

Dreyfus & Associés law firm assists its clients in managing complex intellectual property matters, providing tailored advice and comprehensive operational support for the full protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of specialized intellectual property lawyers.

Nathalie Dreyfus, with the support of the entire Dreyfus team.

FAQ

1. What are the main threats to trademarks in the ChatGPT ecosystem?
The risk of association with inaccurate content, unauthorized sellers, or counterfeit products, as well as the dilution of the official source in favor of third-party content.

2. Why is GEO (Generative Engine Optimization) important for trademarks?
It aims to optimize the understanding and accurate citation of a trademark by generative AI systems, in order to prevent confusion and uncontrolled uses. Conversational engines no longer merely reference existing content; they synthesize, rephrase, and prioritize information, becoming powerful intermediaries between trademarks and the public. In this context, a lack of GEO control exposes trademarks to heightened risks of confusion, approximation, and potential infringement of their rights.

3. What legal and operational levers can trademarks activate to regain control over their image in responses generated by ChatGPT?
Trademarks can combine several complementary levers, including monitoring the use of their trademarks in conversational environments, as well as notification, takedown, or legal actions in the event of misleading or unlawful associations. This hybrid approach, both preventive and reactive, helps reduce the risk of confusion, protect trademark reputation, and strengthen the consistency of information relayed by generative AI systems.

4. Is ChatGPT liable for the counterfeit products it displays?
Legal liability depends on the contractual arrangements between ChatGPT and the sales platforms and remains unclear at this stage.

5. How can metadata be used to protect a trademark in ChatGPT?
By integrating explicit, standardized, and consistent metadata enabling the identification of the trademark, its legitimate rights holder, and its official channels. Such metadata may include the exact trademark name as registered, registration references (INPI, EUIPO, WIPO), protected territories, and links to official websites and verified social media accounts.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

The protection of a design relies less on creative intuition than on the rigorous mastery of the technical requirements applicable to filing. In practice, many rights that are nevertheless strategic prove to be fragile, or even unenforceable, due to errors made at the stage of graphical formalisation. In a context of increased competition and frequent litigation, the technical quality of the filing directly determines the scope and effectiveness of legal protection.

We set out below the essential technical recommendations to be followed in order to secure a design filing, both under French and European law, adopting a pragmatic approach focused on evidence and enforceability of rights.

Understanding the central role of graphical representation in the protection of designs

Graphical representation as the sole scope of protection

In design law, only what is represented is protected. Neither creative intent, nor function, nor textual description can compensate for a deficient representation. Design offices, whether the INPI or the EUIPO, assess novelty and individual character exclusively on the basis of the filed visuals.

An imprecise, overloaded or ambiguous representation mechanically results in a reduction of the scope of protection, or even increased vulnerability in the event of cancellation action.

Fundamental technical requirements to be respected

The visuals must comply with strict standards, both in substance and in form. In particular, we recommend:

• Clear images, without parasitic shading or reflections;
• A neutral, uniform or white background, without any decorative elements;
• A complete absence of textual elements, logos or measurements;
• Perfect consistency between the different views.

In addition, where the design comprises several elements, each element must be represented separately, while also being shown as part of the overall product, in order to allow a clear understanding of the global appearance as well as of each component taken individually.

Structuring views and variants to control the scope of protection

Multiplying views without diluting protection

An effective filing is based on a balance between exhaustiveness and readability. The views must make it possible to fully understand the appearance of the product, without introducing contradictions. In practice, the following views are generally recommended:

• Front and rear views;
• Right profile and left profile views,
• Top and bottom views;
• A perspective view.

Any inconsistency between these views may be exploited by a third party to challenge the scope of the right, particularly in infringement proceedings.

Managing variants and options strategically

Where the product includes variants (alternative shapes, interchangeable patterns, removable elements), several strategies may be considered.

Either the variants may be included in a coherent multiple filing, or separate design filings may be made. Poor management of variants exposes the right holder to a double risk: overly narrow protection, or conversely, partial cancellation for lack of novelty.

Anticipating office technical requirements and litigation risks

Neutralising non-claimed elements

In order to precisely delimit the scope of protection and exclude visible but non-claimed elements, offices allow the use of several graphical neutralisation techniques, provided they are applied clearly, consistently and without ambiguity.

• Broken lines: the reference technique for explicitly excluding visible but non-claimed elements, in particular functional or standardised parts.
• Dotted lines: an accepted alternative for clearly indicating excluded elements, provided they are applied uniformly across all views.
• Distinct colour treatment: a technique used to visually differentiate claimed elements from neutral elements, provided that the protected scope remains immediately identifiable.
• Voluntary blurring effect: a method enabling the neutralisation of secondary elements without removing them entirely from the representation.
• With boundaries: a technique aimed at precisely delineating the claimed parts by contrast with the surrounding visual environment.

The use of these techniques must form part of a homogeneous and anticipated graphical strategy, as imprecise or inconsistent neutralisation may weaken the validity of the design and its effectiveness in litigation.

Avoiding any confusion with technical function

A design must never give the impression of protecting a technical solution. Shapes dictated exclusively by function are excluded from protection. An inappropriate representation may lead the office or the court to consider that the appearance is dictated by technical constraints, resulting in invalidity.

We therefore recommend a prior cross-analysis between design law, patent law and competition law, in order to properly guide the filing strategy.

Conclusion

A legally effective design filing is based on a technical, strategic and anticipatory approach. The quality of the representations determines the strength of the right, its economic value and its ability to withstand litigation.

Mastering the technical recommendations applicable to design filings makes it possible to transform an aesthetic creation into a robust and enforceable legal asset. Such rigour is now essential to secure innovation, enhance portfolio value and prevent disputes.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. How many views are recommended when filing a design?
As many as necessary to understand the complete appearance, without unnecessary redundancy, within a limit of ten views per filing. In this respect, seven views are taken into account for protection, while up to three additional views may be included without extending the scope of protection.

2. What is the purpose of filing ten views if only seven are taken into account for protection?
Additional views facilitate a global understanding of the design by illustrating certain angles, details or specific configurations that cannot be fully perceived through the protected views alone. These supplementary views play a pedagogical and interpretative role, assisting the office or the judge in assessing the overall appearance.

3. Must colours be filed?
Only where they contribute to the claimed overall impression.

4. Can a poor representation invalidate a design?
Yes, in particular where there is ambiguity or contradiction between the views.

5. Should the filing be adapted depending on the country?
Yes, certain formal and practical requirements vary between offices.

6. Is a technical drawing sufficient?
No, it must reflect appearance, not function.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific situations or to constitute legal advice.

Introduction

Determining the ownership of a design and model is one of the most sensitive issues in industrial creation law. In practice, disputes rarely focus on the validity of the design or model itself but rather on the identity of the person authorized to exploit, oppose, or transfer the rights. Employment, subcontracting, collective creation, lack of a contract, or poorly anticipated registration are all sources of risk. In this article, we analyze how the ownership of a design and model is obtained and proven, under both French and European law.

Principle and criteria of ownership in design and model

Criteria for ownership of designs and models

A design and model protect the appearance of a product or a part of a product, independently of its technical function. Ownership must be distinguished from material creation. The creator must be a natural person, while the holder may be a legal entity.

Under both French and European law, the logic is pragmatic: ownership is attributed to the person legally entitled to exploit the design, taking into account the context of its creation. The law sets out a principle, with presumptions and corrective mechanisms.

Principle of ownership: the central role of the creator

As a general rule, the design and model belong to its creator. This rule applies whether or not the design is registered. Creation confers an original right, provided that the design is new and has an individualized form.

In the event of a dispute, the courts examine the concrete elements proving the creative contribution: sketches, prototypes, digital files, email exchanges, annotated specifications. A mere idea or aesthetic directive is insufficient. Ownership is based on a personal creative contribution identifiable in the final form of the product.

Ownership disputes

1. Designs and models created by employees

The creation of a design by an employee in the performance of his duties is not regulated by law. In fact, the case law uses a slightly different reasoning than that used in copyright. Indeed, if copyright is inextricably personalist, the right of designs and models responds to a more economic logic. Thus, when the design is created by an employee in the performance of his duties or according to his employer’s instructions, the law provides a presumption of ownership in favour of the employer when the latter is at the origin of the application for registration. This rule aims to secure the economic exploitation of creations made in an organized and remunerated framework.

However, this presumption is not irrebuttable and assumes that the creation is indeed part of the tasks entrusted to the employee. If the design was designed outside the functions, without any link with the company’s activity, the ownership thus remains attached to the employee.

In fact, the absence of a precise contractual clause constitutes a major source of litigation. It is recommended that employment contracts should systematically include explicit clauses relating to the creation of designs and models, covering both ownership and operating terms.

2. Designs and models created by independent contractors or partners

The situation is radically different when dealing with an independent contractor, freelance designer, or industrial partner. Unlike employment, no legal presumption favors the client.

In the absence of a contract specifying the assignment or transfer of ownership, the contractor retains ownership of the rights, even if the creation was fully financed by the client. This situation is common in industries such as luxury, product design, or fashion, and constitutes a major legal risk.

The transfer of ownership must be explicit, written, and clearly defined, especially regarding territorial scope, duration, and modes of exploitation. A simple invoice or mention of “custom work” is legally insufficient.

Ownership presumptions and the value of registration

The registration of a design and model, whether national or European, creates a simple presumption of ownership in favor of the registrant. This presumption facilitates actions for infringement and defense of rights, but it can be overturned by contrary evidence.
Thus, a registrant may lose their ownership status if it is demonstrated that the registration was made without rights, particularly by a former employee, contractor, or partner acting in bad faith. European courts are particularly attentive to the circumstances of creation and prior contractual relationships.

The registration should, therefore, be viewed as a tool for securing rights, not as an absolute guarantee.

Securing ownership: best practices and legal strategies

To avoid future disputes, several levers should be combined:

• First, systematically contractually secure ownership at the outset of creative projects.
• Then, maintain dated evidence of creation and the design process.
• Finally, align the registration strategy with the legal reality of creation.

For example, an industrial company that registers a model created by an external studio without a written transfer may lose its rights during a nullity action. In contrast, a prior contractual audit would have secured the chain of rights at a lower cost.

Conclusion

Knowing how to determine the ownership of a design and model is essential for effectively protecting a strategic asset. Ownership is not presumed solely from funding or registration. It relies on a thorough analysis of the creation context, contractual relationships, and available evidence. Rigorous legal foresight remains the best safeguard against disputes.

Dreyfus & Associates assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1) What is the difference between creator and holder?
The creator is the material author of the design; the owner is the one who legally holds the exploitation rights. In some cases, the creator and the owner may be the same person, particularly when the creator retains all rights over his work.

2) Can ownership of a design or model be transferred without a written contract?
In principle, no. The transfer of ownership must be explicit, written, and recorded. The law requires that any transfer of rights (including ownership) be clearly documented to avoid disputes. In practice, this means that a simple invoice or verbal agreement is insufficient. A detailed contract defining the scope of the transferred rights (territory, duration, exclusivity, etc.) is always preferable.

3) What is the procedure to recover a design or model if a contractor refuses to transfer the rights?
In this case, it is recommended to act quickly by asserting ownership of the design or model based on contractual elements. If no transfer contract was signed, jurisprudence may, however, consider tacit agreement or contextual elements showing the intention to transfer ownership, which can be crucial.
4) What evidence can be used to challenge the ownership of a registered design in Europe?
In order to challenge the ownership of a registered design, relevant evidence may be :
• Communications
• Original sketches
• Testimony about prior discussions
• Proof of prior authorship
• A preliminary version of the design
• Exchanges between the creator and the company
• Proof of funding, may also be essential to contest a design registration.
Additionally, the question of bad faith during registration may be decisive.

5) Does a creation carried out during a notice period or a period of suspension of the employment contract belong to the employer?
Not necessarily. The period of notice or suspension (leave without pay, sick leave, layoff) does not automatically eliminate the contractual relationship, nor does it imply an automatic devolution of rights.
The analysis will focus on the concrete circumstances of creation, the use of the company’s resources, the link with previous missions and the possible existence of a transfer clause. In practice, these situations are particularly conducive to subsequent disputes.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

In the field of intellectual property, sound trademarks have become a powerful differentiating tool for businesses. Protecting a sound as a trademark offers many unique opportunities for businesses seeking to secure their identity. This article explores the strategic advantages, legal considerations, and best practices related to the protection of sound trademarks.

What is a sound trademark?

Since December 15, 2019, it’s possible to register an MP3 file as a trademark with the INPI. A sound trademark is a trademark consisting of a sound or a combination of sounds. To be registered, the sound trademark must comply with the existing validity requirements in trademark law. IP Offices often emphasize the importance of distinctiveness when registering a sound trademark.

According to the European Union Intellectual Property Office (EUIPO), in order for a sound to be protected as a trademark, it must be distinctive and capable of distinguishing the products or services of one company from those of others

This criterion implies that the sound must be unique, non-functional, and directly associated with the brand’s identity. For example, a jingle or a specific sound effect used in advertisements can be registered as a trademark.

The benefits of protecting a sound trademark

Sound trademarks help create a distinct identity for a company, thereby differentiating it from its competitors.

Examples of registered sound trademarks:

• Six notes on a piano No. 17672932
  • MGM’s lion roar No.005170113.

These sounds are closely associated with the undertaking from which they originate, representing a powerful lever for fostering brand loyalty and public recognition.

By registering a sound trademark, companies can license it for use in various media, advertisements, and products, generating new revenue streams while protecting their intellectual property from unauthorized use (legal action for infringement could then be pursued). Therefore, the sound trademark represents a significant and valuable asset for a company.

The legal framework for sound trademarks

Several landmark cases have established the legal precedent for sound trademarks. A notable example is the EUIPO’s refusal to register the jingle of Netflix after several attempts

As the sound is too short and too simple, it would not be sufficiently distinctive in the mind of the relevant public. In other words, consumers would not automatically perceive this sound as a distinctive sign linked to Netflix. However, the company succeeded in registering its jingle as a multimedia trademark, combining both its logo and jingle, as well as the term “TUDUM” as a word trademark.

However, a decision handed down by the General Court of Justice of the European Union on September 10, 2025, appears to point towards a more favourable assessment of the registrability of sound marks.

In this case, a Berlin public transport company sought the registration, as a European Union sound trademark, of a two-second jingle composed of four notes.

The application was rejected by the EUIPO, and then by its Board of Appeal, on the grounds that the sign was too short and too simple to be perceived as a trademark by the relevant public.

In its ruling, the Court annulled the decision of the Board of Appeal and held that the disputed jingle was eligible for registration as a European Union trademark.

He first considers that the requirement for a sign to “differ from the norms and practices of the sector,” often applied to figurative marks, does not apply to sound marks, which constitutes a favorable decision.

The Court further highlighted that only a minimal degree of distinctiveness is required. In this case, several factors favored the registrability of the jingle: its brevity, which aids in memorization, its structure composed of successively distinct sounds, its originality, and, most importantly, the fact that it does not reproduce a sound directly related to the execution of the transport service.

It also appears that the fact a sound serves a practical function, such as attracting the attention of passengers, does not prevent it from simultaneously functioning as a trademark. The Court thus recognizes that a sound sign can be both functional and distinctive, as long as it is perceived by the public as an indicator of commercial origin.

This ruling represents a notable relaxation in the assessment of the distinctiveness of sound marks. Unless overturned in the future, it serves as a favorable signal for trademark holders wishing to protect sound identities within the European Union.

Best practices for protecting your sound trademark

When choosing a sound to protect as a trademark, it is essential to select a sound that is memorable, distinctive, and consistent with the brand’s image. It is advisable to consult intellectual property experts to ensure that the sound is both effective and protectable.
The registration process involves selecting the appropriate intellectual property office (INPI, EUIPO, USPTO) depending on the desired scope of protection, submitting the sound file, and verifying that it meets all the necessary legal criteria for registration. Seeking advice from experts throughout this process can significantly enhance the likelihood of a successful registration.

Conclusion

In conclusion, protecting a sound as a trademark offers numerous strategic advantages in today’s competitive market. By securing the legal protection of a distinctive sound, businesses can enhance the visibility, recognition, and profitability of their brand.

Dreyfus & Associés works in partnership with a global network of specialized intellectual property lawyers.

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. What types of sounds can be registered as a trademark?
Any type of sound can be registered as a trademark if it is distinctive and non-functional.

2. How long does it take to register a sound trademark?
The registration process for a sound trademark can take several months, depending on the IP office and whether objections are raised.

3. Can I use a sound trademark in different countries?
Yes, it is possible to protect a sound trademark internationally through systems like the Madrid Protocol, which allows for global trademark protection.

4. What are the costs of registering a sound trademark?
Costs vary depending on the jurisdiction, and may be substantially higher if you opt for additional services such as legal consultation.

5. How can the evidence of unauthorized use of a sound trademark be proven?
To prove the unauthorized use of a sound trademark, it is necessary to gather concrete elements showing that the sound is being used without authorization: audio recordings, screenshots of advertisements, websites, or products using the sound trademark. It is also possible to use media monitoring tools or online platforms to detect unauthorized use.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

ICANN’s Board decision of 30 October 2025 keeps the Registration Data Request Service (RDRS) running until December 2027, while the community debates whether RDRS should evolve into a long-term, standardised access model (such as SSAD or a successor). The practical consequence is immediate: for the next two years, stakeholders must operate in a “hybrid” environment where disclosure requests are increasingly standardised in format, but still uneven in coverage, timelines, and authentication.

RDRS: what it is (and what it is not)

The Registration Data Request Service (RDRS) is a pilot service launched on 28 November 2023 to standardise the submission format of requests to obtain non-public gTLD registration data from ICANN-accredited registrars. It is intentionally not a final policy framework: it is a “real-world instrument” to measure demand, collect operational metrics, and identify policy gaps, so the community can decide what a durable system (e.g., SSAD) should look like.
What this means concretely: RDRS standardises the front door, not the outcome. Each registrar still applies its own legal assessment and decision-making, within applicable law and ICANN policy.

What ICANN’s 30 October 2025 resolution changes in practice?

ICANN’s Board confirmed that RDRS will continue operating for up to two years beyond the pilot, i.e., until December 2027, while the community works through next steps and policy alignment.
From an operational perspective, three points matter most:
• Continuity: rights-holders and investigators can keep using RDRS as a live channel rather than losing it at the end of the pilot.
• Pressure to expand uptake: the Board explicitly encouraged comprehensive usage by requestors and registrars, without (yet) converting it into a mandatory regime.
• Policy alignment is now the battlefield: ICANN opened a public comment process on the “RDRS Policy Alignment Analysis”, positioning it as the roadmap for addressing gaps (privacy/proxy underlying data, urgent timelines, authentication, etc.).

What ICANN84 in Dublin revealed: the real friction points

ICANN84 (Dublin, 25–30 October 2025) made one reality unavoidable: RDRS is useful, but incomplete, and its weakest points sit exactly where brand protection and law enforcement most need predictability.

Voluntary participation creates structural blind spots

A recurring concern is that participation is not universal. The Governmental Advisory Committee (GAC) highlighted that optional registrar participation translated into about 60% of gTLD domains under management being reachable via RDRS, which inevitably depresses requestor adoption and undermines “single-channel” expectations.

Authentication (especially for law enforcement) is a gating item

Community discussions repeatedly return to one practical question: who is the requestor, and can the registrar rely on that identity fast enough for urgent cases? ICANN’s own communications refer to ongoing work on an authentication protocol for law enforcement users during the extension period.

Integration and workflow efficiency are decisive

Registrars with mature disclosure processes are reluctant to “duplicate” work. The direction of travel is therefore technical: API-based integration that lets registrars map RDRS inputs into their internal tooling, reduce manual handling, and improve turnaround consistency, without forcing a single UI on everyone.

RDRS vs SSAD: why the distinction matters for strategy and compliance

SSAD (System for Standardised Access/Disclosure) is not a synonym for RDRS. SSAD is a policy construct developed through the EPDP Phase 2 process, with 18 interdependent recommendations covering accreditation, request criteria, response requirements, logging, auditing, and service levels.
ICANN’s Operational Design Assessment work illustrates why SSAD has remained complex and resource-intensive to implement, and why the community is now testing what can be improved incrementally via RDRS while policy deliberations continue.
Practical takeaway: RDRS is the operational “bridge” through 2027; SSAD (or a successor) is the potential “highway.” Planning must therefore assume evolution, not stability.

European data protection: how GDPR logic shapes disclosure decisions

For European stakeholders, the disclosure decision is rarely “policy-only.” It is a legal risk assessment structured around GDPR principles: lawful basis, necessity, proportionality, transparency, minimisation, retention, and accountability.

Lawful basis and the “legitimate interest” test

In most rights-holder scenarios, disclosure requests are framed around legitimate interest (Article 6(1)(f) GDPR logic), which requires (i) a legitimate interest, (ii) necessity, and (iii) balancing against the data subject’s rights and reasonable expectations. The CNIL and French legal materials frequently reflect this three-step logic.

Cross-border reality: one DNS, many legal regimes

A single domain name can involve a registrar in one jurisdiction, a registrant in another, and harm occurring across markets. RDRS helps standardise inputs, but it does not harmonise legal thresholds. As a result, outcomes will continue to vary unless and until enforceable service standards and authentication mechanisms mature.

A useful comparison point for France: AFNIC’s disclosure logic

While RDRS targets gTLDs, French operators and rights-holders are already familiar with structured disclosure models at the ccTLD level. AFNIC, for example, provides a formal route to request disclosure (lift of anonymisation) for .fr-type namespaces, illustrating that “structured request + evidence + legitimate interest” is operationally feasible, yet still fact-dependent.

Operational implications by stakeholder type

Registrars and registries: prepare for “standardisation pressure”

• If you are not participating, you risk being operationally and reputationally out of step with ICANN’s “comprehensive usage” direction, even before any mandatory shift occurs.
• If you are participating, the competitive differentiator becomes process maturity: intake quality, documented decision criteria, escalation paths for urgent cases, and technical integration capacity.
For further reading, we invite you to consult our analysis of ICANN registration data policy measures and their impacts.

Rights-holders and investigators: treat RDRS as one channel in a layered toolkit

RDRS remains a valuable path, but not a complete one. We recommend positioning it as:
• a first-line standardised intake for gTLD non-public data; and
• a case-building instrument that strengthens follow-on actions (takedown, registrar escalation, UDRP/URS, court measures) when disclosure is denied or delayed.
For further reading, we invite you to consult our complete guide to UDRP, Syreli, and international alternatives.

Privacy/proxy services: expect policy alignment to narrow discretion

One of the most sensitive gaps concerns access to underlying data behind privacy/proxy services, and how such requests should be handled in a standardised architecture. The policy alignment track explicitly connects RDRS evolution with privacy/proxy workstreams.

Corporate stakeholders: anticipate governance questions, not only “legal” questions

Large organisations operating globally should expect internal questions such as:
• Who is authorised to submit RDRS requests?
• What evidence threshold is required (fraud indicators, brand rights, consumer harm, phishing signals)?
• How do we log, retain, and audit outgoing requests and incoming data to meet internal compliance expectations?

Conclusion

The Registration Data Request Service (RDRS) is no longer a short experiment: with operations maintained through December 2027, it becomes the reference bridge for non-public gTLD registration-data requests, while the community debates whether to harden it into mandatory, authenticated, SLA-driven infrastructure. For European organisations, success will depend on combining high-quality evidence, disciplined disclosure theories, and well-sequenced enforcement paths that remain robust even when disclosure is refused.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1) Does RDRS replace WHOIS/RDDS?

No. WHOIS/RDDS remains the system for accessing registration data (often partially redacted), while RDRS is a separate channel for submitting disclosure requests.

2) Does RDRS provide automatic access to non-public WHOIS data?

No. There is no automatic disclosure: each request is assessed by the registrar on a case-by-case basis, based on the applicable legal framework and the supporting evidence provided.

3) What is SSAD and how is it different from RDRS?

SSAD is the policy framework proposed by the EPDP Phase 2 process, including recommendations on accreditation, request criteria, response requirements, auditing, and SLAs. RDRS is a pilot operational service collecting data and experience while those policy questions remain unresolved.

4) Why is “law enforcement authentication” such a central issue?

Because urgent, cross-border cases require reliable requestor identity verification. ICANN has identified authentication work as a priority improvement track during the extension period.

5) How should EU rights-holders frame RDRS requests under GDPR constraints?

Requests should be tightly scoped, evidence-driven, and aligned with lawful-basis logic (often legitimate interest), necessity, proportionality, and documented balancing, consistent with CNILstyle reasoning around Article 6(1)(f).

6) If RDRS fails, what are the fastest alternatives to stop abuse?

Depending on the facts: registrar/hosting takedown routes, platform abuse channels, and, when transfer or suspension is needed, UDRP/URS or ccTLD-specific procedures.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.