News

Introduction

Product liability for defective software is entering a new phase in the European Union. Directive (EU) 2024/2853 removes a major source of uncertainty by expressly treating software as a “product”, whether embedded in a connected device, supplied separately, accessed through the cloud or provided under a SaaS model. Artificial intelligence systems also fall within this framework.

Member States must transpose the Directive by 9 December 2026. Following the corrigendum published on 7 May 2026, the new regime applies to products placed on the market or put into service from 9 December 2026.

Why is software now a product for EU product liability purposes?

Under the current French Civil Code, Article 1245-2 defines a product as any movable property (« tout bien meuble »), electricity included, without expressly referring to software. Article 1245-3, meanwhile, assesses defectiveness by reference to the safety which a person is entitled to expect.

Directive (EU) 2024/2853 updates this framework. Article 4 expressly includes software in the definition of a product. Recital 13 confirms that this encompasses operating systems, firmware, applications and AI systems, irrespective of the method by which the software is supplied. Software developers or producers, including providers of AI systems where relevant, may therefore qualify as manufacturers.

A strict liability regime originally designed around tangible industrial goods now accommodates products that may continue to evolve long after the first commercial release.

Does every software bug make a product defective?

The Directive does not turn every programming error, performance issue or functional anomaly into a product defect triggering manufacturer liability. Defectiveness continues to depend on whether the product provides the safety that the public is entitled to expect.

For software, the analysis may take into account its intended function, reasonably foreseeable use, interactions with other products, its ability to continue learning and relevant cybersecurity requirements. Article 7 of the Directive lists those circumstances and expressly refers to the effect on the product of any ability to continue to learn after it is placed on the market. A cosmetic display bug is therefore fundamentally different from an erroneous calculation in medical-device software, a vulnerability that allows remote control of a connected product, or a malfunction causing an automated system to behave dangerously.

Software updates and AI: liability may continue after market release

A major feature of the new Directive is the concept of manufacturer control after a product has been placed on the market.

Digital products are rarely frozen on their release date. They receive patches, new functions and security upgrades, while certain AI systems may continue to change through learning mechanisms.

Article 11 of the Directive therefore removes the defence that the defect appeared after the product was first marketed where the defect results from an element remaining within the manufacturer’s control. This can include:

• a defective software update or upgrade;
• failure to provide an update necessary to maintain safety;
• a related digital service under the manufacturer’s control;
• a substantial modification of the product; or
• the evolution of a machine-learning algorithm where the manufacturer retains control.

The Directive does not, by itself, create a general obligation to provide every possible update. It also recognises situations that are genuinely beyond the manufacturer’s control, such as where a user fails to install a safety update that has been properly made available.

Third-party software components: outsourcing development does not mean outsourcing risk

Modern software is rarely written entirely in-house. Open-source libraries, APIs, SDKs, proprietary modules, pretrained models and outsourced development form a complex software supply chain.

The fact that a component originates from a third party does not, in itself, insulate the manufacturer of the final product.

Where a component has been integrated or interconnected under the manufacturer’s control, the manufacturer of the final product and, depending on the circumstances, the manufacturer of the defective component may both face liability. The Directive also provides that an economic operator’s liability is not reduced or excluded simply because the act or omission of a third party contributed to the damage.

It would nevertheless be inaccurate to conclude that every component genuinely outside a manufacturer’s control automatically creates liability for that manufacturer. Control will itself become a central litigation issue: who selected the component? Who authorised its integration? Who could update or disable it? Who approved its use in production?

Why is code traceability becoming legal evidence?

This may be one of the Directive’s most consequential developments for legal and engineering teams.

Article 9, headed “Disclosure of evidence”, allows relevant evidence held by the opposing party to be disclosed, subject to defined conditions. Article 10, on the burden of proof, introduces evidentiary presumptions going both to defectiveness and to causation. Defectiveness may, for example, be presumed where a defendant fails to disclose relevant evidence when required to do so. Further presumptions can apply where technical or scientific complexity makes proving defectiveness or causation excessively difficult. Recital 48 specifically discusses the difficulty a claimant may encounter in explaining the internal operation of an AI system.

Poor development records can therefore become a litigation weakness.

Conversely, a manufacturer that can reconstruct software versions, testing, security decisions, human approvals and component provenance will be better positioned to identify the source of an incident and rebut allegations or presumptions.

AI-generated code: generation, review and approval should be distinguishable

The issue becomes especially important with coding assistants such as ChatGPT, GitHub Copilot and other generative models.

The Directive does not require businesses to identify the legal “author” of each line of code for copyright purposes. Indeed, recital 13 distinguishes the mere source code, as information, from the software product itself. Nevertheless, the history of that source code can be highly relevant when determining who controlled the design, integration, testing and release of the product.

Consider a fictitious example. An engineer uses a generative AI system to propose a modification to software controlling a connected device. Six months later, that function causes dangerous behaviour. Saying that “the AI wrote the code” is not a defence. The company should instead be able to establish:

• which tool and, where relevant, which version was used;
• what generated code was actually incorporated;
• who reviewed that code;
• which functional and security tests were performed;
• who approved the merge and production release; and
• what subsequent changes were made.

The issue therefore intersects directly with the intellectual property treatment of AI-assisted development: our analysis, “AI-generated software: Is your code really protected by copyright?”.

Conclusion

Product liability for defective software can no longer be addressed only after an incident occurs. Directive (EU) 2024/2853 brings product liability into closer contact with cybersecurity, AI governance, vendor management and intellectual property.

Businesses should therefore build an evidentiary chain alongside their development chain. Code provenance, human decisions, reviews, testing, third-party components and updates should be reconstructable. Such records cannot guarantee that liability will be avoided, but they can establish the factual conditions in which the product was designed, controlled and maintained when litigation occurs.

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

Does the Directive compensate a business for pure economic loss caused by software downtime?

Not generally. Article 5 of the Directive confers the right to compensation on natural persons only, and the Directive defines specific categories of compensable damage; it is not a general mechanism for recovering every form of B2B economic loss. Depending on the circumstances, business interruption and other purely financial losses may instead be addressed through contractual liability or other national causes of action.

Can a court require disclosure of a software application’s source code?

Potentially, where source code constitutes relevant evidence. Article 9 allows courts to order disclosure of relevant evidence subject to necessity and proportionality. The Directive also requires courts to consider confidential information and trade secrets, meaning that disclosure does not equate to unrestricted public access to proprietary source code.

Can a manufacturer contractually exclude its liability towards an injured person?

The liability provided for by the Directive cannot simply be excluded or limited against the injured person by contractual terms where the statutory conditions for liability are met. Contracts between manufacturers, suppliers and integrators nevertheless remain essential for allocating warranties, obligations and rights of recourse between businesses.

What happens to software placed on the market before 9 December 2026?

Products placed on the market or put into service before that date remain, in principle, subject to the rules deriving from Directive 85/374/EEC. A later substantial modification, however, may create a new product-liability analysis and may result in the person carrying out that modification being treated as a manufacturer under the conditions laid down by the new Directive.

Does the new Directive cover the destruction of professional data?

The Directive covers destruction or corruption of data that is not used for professional purposes. Loss involving business data must therefore be considered under any other applicable legal basis, including contractual remedies where appropriate.

Does using open-source software automatically protect the final manufacturer from product liability?

No. The Directive excludes certain free and open-source software developed or supplied outside the course of a commercial activity. That exclusion does not automatically shield a commercial manufacturer that integrates such software into its own defective product.

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

Ownership of the original patent does not automatically confer ownership of improvements developed later. A patent owner may contractually the treatment of future improvements, but it cannot simply appropriate innovations created by another party. Ownership depends on

Who legally owns an improvement to a patented invention?

Ownership of the original patent does not extend automatically to subsequent innovation

Under Article L. 611-6 of the French Intellectual Property Code, entitlement to a patent belongs to the inventor or the inventor’s successor in title. Consequently, ownership of an earlier patent does not in itself confer ownership of a subsequent invention merely because that invention improves the patented technology.

An “improvement” may moreover take several legal forms: a separate patentable invention, technical know-how, a new application, software, documentation or a combination of different intellectual property assets.

The decisive question is therefore not merely who owns the original patent, but who created the new development and on what legal basis ownership has been transferred, if at all.

Where several parties jointly contribute to the inventive concept, joint ownership may arise. French patent law provides default rules for co-owned patents, although the parties may organise their relationship contractually.

Ownership and freedom to exploit are separate issues

An entity may own an improvement without being free to commercialise it.

For example, a licensee may develop and patent an improvement that nevertheless falls within the scope of an earlier patent belonging to the licensor. French law expressly addresses dependent patents: the holder of the later patent cannot exploit it in infringement of the earlier patent without authorisation, while the holder of the earlier patent cannot exploit the later patented improvement without the latter patent owner’s consent.

This creates a potentially powerful negotiating dynamic. Each party may own its technology while neither can fully exploit the combined solution independently.

Who owns improvements developed by employees, contractors or developers?

Employee inventions are governed by mandatory statutory rules

Where an improvement is created by an employee, the parties cannot determine ownership solely by reference to the original patent or licence agreement.

Article L611-7 of the French IPC distinguishes three categories.

A mission invention, created in the performance of inventive duties or specifically entrusted research, belongs to the employer. The employee inventor is nevertheless entitled to additional remuneration.

An attributable non-mission invention initially belongs to the employee. Where the statutory conditions are satisfied, the employer may obtain ownership or enjoyment of the patent rights but must pay the employee a fair price.

A non-attributable non-mission invention remains the employee’s property.

This distinction means that financial consideration is sometimes a statutory entitlement, rather than merely a matter of commercial negotiation.

Software improvements require an additional ownership analysis

Software law provides a particularly useful example because different rights may overlap.

Under Article L. 113-9 of the French Intellectual Property Code, the economic rights in software and related documentation created by employees in the performance of their duties or following their employer’s instructions are, unless otherwise provided, vested in the employer.

The position of an independent contractor is different. Entering into a services agreement does not by itself transfer the author’s rights, and a properly drafted written assignment will generally be required.

If the same software development also contains a patentable technical invention, copyright ownership and patent entitlement must be analysed separately. The same technological product may therefore involve several layers of rights owned by different persons.

Can a licence agreement allocate all improvements to the original patent owner?

Contractual allocation is possible, but precision is essential

Patent rights may be assigned in whole or in part and may be licensed on an exclusive or non-exclusive basis. French law requires assignments and patent licences to be recorded in writing.

A sophisticated improvements clause should therefore determine:

• what constitutes an improvement, derivative version, new application or replacement technology;
• whether each party retains ownership of developments it creates;
• which developments are subject to assignment and which merely trigger licence rights;
• who controls filing, prosecution, maintenance and enforcement of subsequent patents;
• how jointly developed inventions will be handled;
• whether sublicensing is permitted and how sublicensing income is shared;
• what happens following termination, a change of control or cessation of activity.

Particular attention should be paid to technologies that evolve through successive versions. The contractual definition must prevent commercially valuable developments from being shifted outside the agreed perimeter simply because they are characterised as a new version or replacement product.

For additional background, see the Dreyfus resources on patent assignments and patent licence agreements.

How should consideration for improvements be structured?

A transfer or licence of improvements may be remunerated through an upfront payment, milestone payments, royalties on products incorporating the improvement, a share of sublicensing income or a valuation mechanism triggered by a subsequent sale.

However, payment does not automatically remove competition-law concerns. This is particularly important under the European technology-transfer regime applicable since 2026.

How does EU competition law restrict clauses relating to improvements?

The new Commission Regulation (EU) 2026/877, applicable since 1 May 2026, significantly affects the drafting of technology-transfer agreements.

Conclusion

The owner of the original patent has substantial contractual freedom, but no general proprietary right over future innovations.

A robust technology-transfer strategy should determine from the outset who is expected to create improvements, who will own them, who may patent them, who may exploit them, what consideration is payable and which rights survive termination of the relationship.

Employee inventions, contractor-created developments, software rights, dependent patents and the 2026 EU rules on grant-backs must all be integrated into that analysis.

For a broader approach to portfolio management, see our article on patent auditing and patent portfolio value.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

What happens if the agreement does not address future improvements?

The absence of a specific clause may create a significant area of legal uncertainty. Each improvement will then have to be assessed according to the rules applicable to its creator and to the nature of the intellectual property right concerned. The owner of the original patent cannot assume that improvements developed by its contractual partner automatically belong to it.

How should an “improvement” be precisely defined in a patent licence agreement?

A definition that is too narrow may allow one party to argue that a new version or replacement technology falls outside the scope of the agreement. Conversely, an excessively broad definition may create disproportionate obligations or raise competition law concerns.

Who owns an improvement jointly developed by the licensor and the licensee?

Where an improvement results from inventive contributions made by both parties, a situation of joint ownership may arise. In collaborative R&D projects, a contractual joint ownership arrangement generally helps avoid the difficulties associated with relying solely on statutory default rules.

What happens to rights in improvements when the licence agreement terminates?

Termination of the agreement does not automatically determine the fate of improvements developed during the contractual relationship. The agreement should specify whether licences relating to such improvements terminate immediately or continue to apply to products already placed on the market.

How can it subsequently be proven who created an improvement?

Evidence becomes crucial where an improvement results from a project involving several employees, contractors or partners. It is advisable to retain documentation that makes it possible to trace the dates and stages of development, the individuals involved in the work, and other relevant elements.

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

A breeder uses CRISPR (a technical tool enabling genome editing) to introduce a disease-resistance gene into a wheat variety. Three months later, a third party writes to inform the breeder that the modification is covered by its patent. Who owns what? This is the question that the European Regulation on New Genomic Techniques (NGTs) was intended to clarify.

These techniques, first and foremost genome editing, make it possible to modify a plant in a targeted manner without inserting a gene from a species with which it cannot be crossed. Long treated as GMOs, these plants now have their own European regulatory framework: Regulation (EU) 2026/1388. Part of the seed sector had expected the Regulation to introduce an outright ban on patents covering such plants. The European Parliament had voted in favour of such a prohibition on 7 February 2024. This prohibition was ultimately not retained.

The Regulation therefore does not choose between patents and Plant Variety Rights (PVRs): it keeps both titles and makes a different bet, that of transparency, by requiring anyone seeking recognition of an NGT plant to disclose the patents it is aware of, and by setting up a code of conduct on licensing. Hence the counter-intuitive but decisive point: a plant recognised as equivalent to a conventionally bred plant as a matter of regulation is not thereby free of intellectual property rights. Clearing the regulatory hurdle says nothing about freedom to operate.

This article examines what the Regulation actually changes: how patents and plant variety rights interact for one and the same plant, what the new transparency obligations legally amount to, and what strategy to adopt before the text becomes applicable.

Key references: Regulation (EU) 2026/1388 of June 17, 2026, published in the Official Journal of the European Union on June 26, 2026, in force since July 16, 2026 and applicable from July 17, 2028. Its Articles 29 to 31, on EFSA guidance, the patent code of conduct and the expert group on the effects of NGT patenting, have applied since July 16, 2026 (Article 38).

What the NGT Regulation Changes

Before this Regulation, a plant whose genome had been modified in a laboratory fell under the GMO regime, regardless of the nature of the modification: prior authorisation, risk assessment, traceability and labelling. In practice, almost no crops of this type were authorised in the Union.

The European Regulation now distinguishes between two categories of NGT plants. Category 1 plants, which meet the equivalence criteria defined by the text, benefit from a substantially lighter regime than under traditional GMO law. In practical terms, these are plants whose modification could have been obtained through conventional breeding.

Category 2 plants remain subject to a more restrictive regulatory framework, inspired by the rules applicable to GMOs. This regulatory simplification must not, however, be confused with freedom to operate from an intellectual property perspective. The right to place the plant on the market and the right to exploit it without infringing a third party’s patent are two separate questions.

For a more detailed overview of this regulatory development and the distinction between the different categories of NGT plants, we invite you to consult our previous article: “The evolution of the regulatory framework applicable to plants obtained through new genomic techniques”.

The general ban on patents advocated in 2024 was not retained

In February 2024, the European Parliament adopted a particularly ambitious position: it sought to exclude NGT plants, plant material, genetic information and certain associated traits from patentability.

That prohibition does not appear in the Regulation ultimately adopted in 2026.

Patentability therefore remains governed by the existing legal framework, in particular Directive 98/44/EC on the legal protection of biotechnological inventions, the European Patent Convention and national legislation. In France, Article L. 611-19 of the French Intellectual Property Code excludes plant varieties and products exclusively obtained through essentially biological processes from patentability, while allowing patent protection for inventions concerning plants where their technical feasibility is not confined to a particular plant variety.

A genomic modification obtained by means of a technical intervention such as targeted genome editing may therefore, if the usual patentability requirements are met, remain covered by a patent.

Classification as NGT 1 is therefore neither a certificate of non-patentability nor a guarantee of freedom to operate.

NGT Status, PVR and Patent: Three Questions That Should Not Be Confused

The same plant may fall under all three regimes at the same time, and this is the primary source of confusion. These three regimes do not address the same question, are not administered by the same authorities and do not produce the same legal effects.

None of these three layers determines the others. Classification as Category 1 does not make the plant free of third-party rights, nor does it determine whether the relevant trait is patentable. Conversely, holding a PVR does not remove the need to obtain a licence from the patent holder.

The only bridge established by the Regulation between these two areas is declaratory: an applicant seeking recognition of Category 1 NGT status must disclose the patents of which it is aware, and this information is entered into a public database (Article 6(5), Article 7(4) and Article 9 of the Regulation). This is information, not a right: it does not validate anything, invalidate any patent or replace a freedom-to-operate analysis.

Example : A wheat variety may be recognised as a Category 1 NGT plant, be protected by the PVR held by the breeder who developed it, and contain a gene covered by a third party’s patent. Three legal regimes, potentially three different right holders, and three separate checks before any commercialisation.

How will patents and Plant Variety Rights interact for NGT plants?

The Regulation does not replace PVRs with patents. The two forms of protection continue to coexist, and the same NGT plant may be covered by both at the same time.

A PVR protects an identified variety, provided that it is distinct, uniform and stable. A patent protects a technical invention: a process, a technical application, biological material or a trait, provided that the requirements of patent law are met (Art. L. 611-10 of the French Intellectual Property Code). It cannot, however, monopolise a plant variety as such.

In practical terms, on the same bag of seed, the PVR protects “this wheat variety” while the patent protects “the resistance gene it contains”. Two possible right holders, two authorisations to obtain.

These rules are not new: they existed before the Regulation. What the new genomic techniques change is how often they arise in practice. There are three reasons for this.

A trait obtained by conventional crossing is not patentable in Europe. A trait obtained through genome editing may be, because it involves a technical intervention. There will therefore be more patents capable of covering what a variety contains.

Next, the Regulation removes most of the administrative constraints for Category 1 plants. Once that door is open, the only hurdle remaining before the plant is placed on the market is the patent.

Finally, genome editing changes only a few letters of the DNA and leaves the rest intact. The new variety therefore closely resembles the variety from which it derives, making it more likely to remain dependent on it.

Hence the two questions examined below. Before breeding: do I have the right to use someone else’s variety? After breeding: is the variety I have obtained really mine?

For further insight into the interaction between these two forms of protection, we invite you to consult our article on the “Simultaneous filing of a Plant Variety Right and a patent”, as well as our previous article on protection strategies applicable to Plant Variety Rights: “Complete Guide to Plant Variety Rights”.

Before breeding: the breeder’s exemption does not have the same scope under patent law and PVR law

Consider the following case. Wheat variety A is protected by a PVR. It contains a disease-resistance gene which is itself covered by a patent held by a third-party company. A breeder wants to create its own variety from A.

Under PVR law, the path is open from start to finish. The plant variety rights system was designed to allow genetics to circulate between breeders: a protected variety may, under certain conditions, be used to create new varieties. If the resulting variety is genuinely new and distinct, it may be commercialised.

Under patent law, that freedom stops sooner. In France, Article L. 613-5-3 of the French Intellectual Property Code provides that a patent relating to biological material does not prevent acts carried out for the purpose of creating, discovering and developing other varieties. Cross-breeding, sowing, selecting and evaluating are therefore permitted.

But that freedom stops at the trial field. If the resulting variety still contains the patented gene, selling it amounts to exploiting the third party’s invention and therefore requires a licence. This is where the two rights diverge: the PVR permits both research and sale; the patent permits only research.

What happens if the patent holder refuses? There is a safety valve, the compulsory licence for dependency, but it is narrow. Article 12 of Directive 98/44/EC requires proof that an attempt to obtain a contractual licence has failed and that there is significant technical progress of considerable economic interest. It is a remedy against blocking situations, not a right of access to another party’s inventions. In practice, the parties negotiate.

What changes with NGTs is therefore not the rule, but the context in which it applies. When the trait to be modified is precisely the one that has been patented, as will increasingly be the case, the breeder is free to work but blocked at the point of sale.

After breeding: genome editing brings the issue of essentially derived varieties back to the forefront

NGTs also make the concept of the essentially derived variety (EDV) particularly important. Regulation (EC) No 2100/94 allows the rights in an initial protected variety to extend, under specified conditions, to essentially derived varieties, that is, varieties predominantly derived from it while retaining the expression of the essential characteristics of the initial variety (Article 13(5) of the Regulation).

A company using CRISPR to introduce a targeted modification into a protected variety must therefore not think only in terms of patents. Depending on its characteristics and degree of derivation, the new variety could remain legally dependent on the initial variety. In other words, a variety obtained by making only marginal changes to a protected variety may remain legally tied to it, and its exploitation may be subject to the consent of the holder of the initial variety.

UPOV also notes, in its revised Explanatory Notes on Essentially Derived Varieties (UPOV/EXN/EDV/3, adopted on 27 October 2023), that varieties derived from a single parent resulting, for example, from mutations, genetic modification or genome editing are by their nature predominantly derived from their initial variety, the list of methods in Article 14(5)(c) of the Convention being non-exhaustive. Classification as an essentially derived variety nevertheless remains a case-by-case assessment.

NGT patent transparency: meaningful progress, but not freedom to operate

It is on this issue that Regulation 2026/1388 introduces its most direct innovation. In practical terms, the public online database provided for in Article 9 of the Regulation, which will list decisions recognising Category 1 NGT status, will show who declares what; it will not show who has the right to do what.

For applications seeking recognition of NGT 1 status, the applicant will have to disclose, to the best of its knowledge, patents and published patent applications containing claims covering the biological material of the relevant plant, or declare that there are no such patents or published applications (Articles 6(5) and 7(4) of the Regulation). This information will be included in that public database. Where the applicant is itself the holder of the relevant patent, it will also have to indicate, in particular, whether it is willing to grant licences on fair and reasonable terms.

The legal effect of this mechanism should not, however, be overstated. Patent information and licensing declarations are not subject to verification and have declaratory value only (Articles 6(7) and 7(6) of the Regulation).

This database will therefore not replace a freedom-to-operate analysis. On its own, it will not determine:

• whether the claims of a patent actually cover the contemplated variety;
• whether the patent is valid and in force in each of the territories concerned;
• whether other patents belonging to third parties must be taken into account;
• whether an application that has not yet been published could subsequently create an obstacle;
• or whether the economic terms of a licence actually make exploitation of the product possible.

An omission from the declaration likewise does not make the omitted patent unenforceable: the Regulation does not provide for the extinction of the patent or any immunity from infringement proceedings merely because the relevant right was not included in the database. The omission is not, however, without procedural consequences: where the required patent information is missing, or where the applicant is itself the holder of an identified patent and does not provide the corresponding licensing declaration, the verification request is declared inadmissible within thirty working days (Articles 6(9) and 7(8) of the Regulation).

The patent code of conduct remains a soft-law mechanism

The European Commission confirms that, pursuant to Article 30 of Regulation (EU) 2026/1388, a Union-level code of conduct is to be developed to improve the transparency of patent information, facilitate breeders’ access to patented plant biological material and strengthen legal certainty, notably by encouraging the granting of licences on fair and reasonable terms and the amicable settlement of certain patent disputes involving SME breeders and farmers.

Participation in drawing up the code is voluntary, however, and the mechanism does not currently create a general compulsory licensing system. In other words, it is a voluntary commitment with no sanction for non-compliance. The Commission will monitor participation and effectiveness and may ultimately propose legislation where the system fails to secure appropriate access to patented NGT biological material. The Regulation sets a firm timetable: the code of conduct must be ready by January 17, 2028, and the Commission is to publish an evaluation report on its operation by July 17, 2033 and every five years thereafter, accompanied where appropriate by legislative proposals to safeguard access by primary users, including farmers, to patented biological material (Article 30(6) to (8) of the Regulation).

Article 31 of the Regulation confirms this progressive approach: an expert group comprising up to two experts per Member State, together with one expert designated, where appropriate, by the EPO and the CPVO, assists the Commission, which regularly assesses the effects of patenting NGT plants on innovation, breeders’ access to biological material, seed prices and access, litigation risks and market concentration.

What IP strategy should NGT businesses adopt before 2028?

For seed companies, breeders and biotechnology companies, the future framework requires regulatory and intellectual property issues no longer to be treated separately.

Consider a breeder using CRISPR to introduce a resistance trait into a variety already protected by a PVR. The plant may meet the regulatory criteria for NGT 1 status; the trait or technique may be covered by a patent; the resulting variety may itself be eligible for protection by a new PVR; and its exploitation may remain dependent on the right attached to the initial variety if it constitutes an EDV.

One innovation may therefore require four separate assessments: NGT regulatory status, patentability, freedom to operate and varietal dependency.

The challenge posed by Regulation 2026/1388 is therefore not the disappearance of patents but the emergence of a system in which stakeholders will have to identify the rights at stake earlier, document their portfolios and contractually organise the necessary access.

Conclusion

The EU Regulation on NGTs does not establish a ban on patents and does not make PVRs the exclusive form of protection for plant innovation. The compromise adopted preserves the existing system of coexistence between patents and plant variety rights while adding mechanisms for transparency, sector dialogue and assessment.

The real change therefore lies less in an immediate redefinition of patentability than in a redefinition of the practical balance between exclusivity, access to genetic material and legal certainty. From 2028, increased transparency will make it easier to map the relevant rights, but it will eliminate neither dependencies between rights nor the need for freedom-to-operate analyses and licensing strategies.

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

Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

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

FAQ

Can a Category 1 NGT plant reproducing a naturally occurring trait still be covered by a patent?

NGT 1 classification and patentability are governed by different criteria. A plant may be regarded as equivalent to a conventionally bred plant for regulatory purposes without every technical invention used to obtain it necessarily being excluded from patent protection. A distinction must, however, be drawn between protection for a patentable technical intervention and an attempt to extend claims to a natural trait or to material exclusively obtained through an essentially biological process. The exact scope of the claims and the applicable exclusions therefore remain decisive.

What happens if a relevant patent does not appear in the future Category 1 NGT database?

The absence of a patent from the database should not be interpreted as a guarantee that no third-party rights exist. The information is provided to the best of the applicant’s knowledge and is not verified by the Commission. The Regulation does not provide that omission of a patent results in its invalidity or unenforceability. However, failure to provide the patent information required by the Regulation renders the verification request inadmissible. An independent freedom-to-operate search will therefore remain necessary before any placing on the market.

Does the breeder’s exemption allow a breeder to sell an NGT variety developed from patented material?

Not necessarily. Under patent law, the exemption allows, in particular, biological material to be used to create, discover and develop a new variety. It does not automatically constitute authorisation to commercialise that variety where it still incorporates the patented invention. The research phase and the commercial exploitation phase must therefore be distinguished legally.

Can a CRISPR-edited variety based on a protected variety qualify as an essentially derived variety?

Yes, potentially, but the classification is not automatic. In particular, it is necessary to examine derivation from the initial variety, the distinctness of the new variety and the retention of the expression of its essential characteristics. A highly targeted genomic modification may make this analysis particularly important, because a limited genetic difference can coexist with a high degree of overall similarity to the initial variety.

May farmers freely save and replant NGT seeds protected by both a PVR and a patent?

There is no general right to save and replant every NGT seed. The exceptions for farm-saved seed depend, in particular, on the species, the intellectual property right concerned, the conditions laid down by the plant variety rights regime and the scope of the applicable patent. Where several rights coexist, each must be examined: the existence of an exception under PVR law does not automatically neutralise all the effects of the patent.

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

Plant variety protection in France operates through a two-tier system: a French national plant variety right, or certificat d’obtention végétale, commonly referred to in English as a plant variety right (PVR), and the unitary Community Plant Variety Right (CPVR) covering the European Union.

In 2024 the CPVO received 3,268 applications for Community protection, around 11% of worldwide filings, making it the second largest office in the world, and 31,317 titles were in force as at 31 December 2024 (WIPO, World Intellectual Property Indicators 2025).

French protection is principally governed by Articles L. 623-1 et seq. of the French Intellectual Property Code, while the EU system derives from Council Regulation (EC) No 2100/94. Both systems reflect the principles of the 1991 UPOV Convention, which provides the international framework for breeders’ rights.

1. French PVR or EU plant variety right: which protection should be selected?

1.1 The French plant variety certificate (certificat d’obtention végétale)

A French PVR is a specific industrial property right designed for new plant varieties. National applications are handled through the Instance nationale des obtentions végétales (INOV), with technical expertise provided within the French plant variety testing framework, notably through GEVES.

The holder can control activities including production or reproduction, conditioning for propagation, offering for sale, marketing, importing, exporting and stocking protected material. Subject to statutory conditions, protection can also reach harvested material and essentially derived varieties.

Protection normally lasts 25 years from grant. French law provides a 30-year term for specified categories, including forest, fruit and ornamental trees, vines, certain perennial forage plants, potatoes and certain inbred lines used to produce hybrids.

A French filing may therefore be appropriate where the commercial market is genuinely concentrated in France. Where expansion into several EU countries is foreseeable, however, the European route should be evaluated before the initial filing strategy is fixed.

1.2 The Community Plant Variety Right: one title across the EU

The Community Plant Variety Right, administered by the Community Plant Variety Office (CPVO), has uniform effect throughout the European Union. A single application can therefore result in a right covering all 27 Member States.

The relationship between national and EU rights is particularly important. Article 92 of Regulation No 2100/94 permits Member States to maintain national systems but prohibits cumulative protection: a national plant variety right, or a patent, covering a variety protected by a Community right is ineffective and, where it predates the Community right, is suspended for the latter’s duration. Portfolio planning should consequently be approached as a territorial and chronological strategy, rather than the automatic stacking of equivalent rights.

The EU term is calculated differently from the French one: a Community right runs until the end of the twenty-fifth calendar year following the year of grant, rather than for twenty-five years from grant. That term is extended to thirty years for vines and trees (Article 19 of the Regulation), for potatoes (Regulation (EC) No 2470/96) and, since 15 November 2021, for asparagus, certain flower bulbs, woody small fruits and woody ornamentals (Regulation (EU) 2021/1873).

2. What are the legal requirements for plant variety protection?

2.1 Novelty, distinctness, uniformity and stability

The French system requires a distinct, uniform, and stable variety. In addition to these technical criteria, there is the requirement of commercial novelty: novelty is destroyed only by the sale or other disposal of the variety to others for purposes of exploitation, by the breeder or with the breeder’s consent, once the applicable grace periods have expired: one year within the territory concerned, four years abroad and six years for trees and vines. A scientific publication or a presentation does not, in principle, destroy novelty.

This requirement necessitates strict contractual discipline prior to filing. Agronomic trials, demonstrations, sample distributions, and trials conducted by distributors or foreign partners must be documented and properly supervised. A distribution classified as commercial exploitation can become a decisive factor in nullity proceedings.

2.2 Variety denominations and trademarks must remain separate

Every protected variety requires an approved variety denomination identifying the variety. This designation performs a different legal function from the trademark under which plants, seeds or harvested products may be marketed.

That distinction should be incorporated into the branding strategy at an early stage. French trademark law excludes, in relevant circumstances, marks consisting of an earlier registered plant variety denomination for the same or a closely related species. Under the EU plant variety system, a trademark may be used alongside the approved denomination, but the denomination must remain readily recognizable.

Availability searches for the variety denomination and commercial trademark should therefore be conducted as coordinated but separate exercises. For further analysis, see How to secure the choice of a plant variety denomination: CPVO rules, refusal risks and trademark conflicts.

2.3 Priority must be secured before any commercialization

International filing sequences also require careful control of priority. Under the applicable French and UPOV framework, a breeder may claim a twelve-month priority period following the first qualifying application (Article L. 623-6 of the French Intellectual Property Code, Article 11 of the 1991 UPOV Convention and Article 52 of Regulation (EC) No 2100/94). That period is the one applicable to plant varieties and patents, not the six-month period applicable to trademarks and designs.

3. How broad are breeders’ rights and what exceptions apply?

3.1 Protection can extend beyond literal reproduction

Plant variety protection is not limited to the reproduction of material strictly identical to the protected variety. French law and the UPOV framework also address essentially derived varieties, varieties not clearly distinguishable from the protected variety and varieties whose production requires repeated use of the protected variety.

This is strategically important in modern breeding programmes: a limited modification of a commercially successful variety does not necessarily place the resulting material outside the scope of the initial breeder’s rights.

3.2 Breeder’s exemption and farm-saved seed

Plant variety rights deliberately differ from patents in certain respects. Article L. 623-4-1, I, of the French Intellectual Property Code excludes from the exclusive right private non-commercial acts, experimental acts and, in principle, the use of a protected variety for the purpose of breeding other varieties. The breeder’s exemption preserves access to genetic material for further innovation, subject in particular to the rules governing essentially derived varieties.

Farm-saved seed is governed by a separate statutory mechanism. For eligible species and subject to the applicable conditions, farmers may use on their own holdings harvested material obtained from protected varieties for further propagation. This is a limited exception, not a general right to reproduce and resell protected seed.

3.3 Combining plant variety rights, patents and trademarks

Plant-related innovation may involve several intellectual property rights, provided that their respective subject matter and scope of protection are clearly distinguished:

• A plant variety right (PVR) protects the plant variety itself, provided that it satisfies the applicable legal requirements, in particular novelty, distinctness, uniformity and stability.
• A patent cannot protect a plant variety as such. That exclusion is not specific to French law: it appears in identical terms in Article L. 611-19 of the French Intellectual Property Code and Article 53(b) of the European Patent Convention, and extends to essentially biological processes for the production of plants based exclusively on natural phenomena such as crossing or selection, as well as to products obtained exclusively by such processes.
• A technical invention applied to plants may nevertheless be patentable where its technical feasibility is not limited to a particular plant variety. Microbiological processes and, more broadly, certain biotechnological innovations may therefore fall within the scope of patent protection provided that they satisfy the general requirements for patentability.
• Trademarks operate in a different sphere: commercial identification. A trademark may protect the name, logo or other distinctive sign used to market products derived from the variety, without replacing the official variety denomination.
• These forms of protection are therefore complementary rather than interchangeable. A coherent IP strategy may combine a PVR for the variety, a patent for a separate technical invention and a trademark for its commercial positioning.

Effective IP structuring therefore requires a distinction between the plant variety, potentially patentable technical inventions, trademarks, know-how and contractual rights. These mechanisms can be complementary, but they protect different legal objects. To explore this connection further, see: Simultaneous filing of a plant variety right and a patent: which strategy should be adopted?

Conclusion

Plant variety protection in France should not be limited to filing a plant variety application. For an international operator, it requires a coordinated strategy across France, the European Union, and foreign territories; ensuring novelty prior to commercialization; rigorous management of trials and material transfers; and proactive coordination among plant variety applications, patents, trademarks, license agreements, and variety denominations.

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

Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

FAQ

Is plant material required at the time of filing?

Yes, plant material may be requested to enable the technical examination of the variety. Its absence or non-compliance may jeopardize the procedure.

Can a PVR be assigned or licensed?

Yes. The rights attached to a plant variety right may, in particular, be assigned or licensed for exploitation, subject to the applicable formalities.

Are fees required to maintain a plant variety right in force?

Yes. Maintaining protection requires, in particular, the payment of the required annual fees. Failure to pay these fees may result in the forfeiture of the right.

Can the validity of a plant variety right be challenged?

Yes. A plant variety right or a Community plant variety right may, under the circumstances provided for by law, be subject to nullity proceedings (Article 20 of Regulation No 2100/94) or cancellation proceedings (Article 21). “Cancellation”, not “revocation”, is the term used by the Regulation.

Can a third party oppose an application for European protection?

Yes. The CPVO system allows third parties to file an objection to an application for a Community plant variety right when they have a basis provided for by the regulations.

Is an application for a French plant variety right made public?

Yes. Applications and the main stages related to plant variety rights are subject to official publication, which allows third parties, in particular, to become aware of them.

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.

[Note de relecture] Asymétries FR/EN restantes, à arbitrer éditorialement : la version anglaise comporte, après la sous-partie sur la dénomination variétale, un paragraphe sur les recherches d’antériorité (« Availability searches… ») sans équivalent français ; elle ajoute également, en conclusion de la partie 3.3, la phrase « These mechanisms can be complementary, but they protect different legal objects. ».

Introduction

Fashion law in France is built on a combination of legal rules governing a product from its creation through to its commercialisation. For fashion and luxury businesses, protection therefore extends far beyond trademark or design registration: relationships with designers and manufacturers must be secured, distribution networks controlled, and effective anti-counterfeiting measures implemented.

This approach is particularly important in a fashion industry characterised byby rapidly renewed creations, substantial brand value and international distribution. French intellectual property code expressly refers to creations produced by seasonal clothing and fashion industries among works capable of benefiting from copyright protection.

How can fashion manufacturing and supply chains be legally secured?

Contracts throughout the creative process

Fashion manufacturing is primarily governed by general contract law (articles 1101 et seq. of the civil code). Agreements between fashion houses, designers, manufacturers, subcontractors and suppliers should clearly define production requirements, quality standards, deadlines, liability and confidentiality obligations.

Intellectual property ownership should also be addressed from the outset. Where drawings, patterns, prototypes or visual material are created by an external designer or agency, the agreement should clearly determine who owns the relevant rights and how they may be exploited.

The main agreements to consider are:

• Manufacturing or assembly agreements: define production arrangements, quality standards, deadlines and responsibilities.
• Subcontracting agreements: set out the subcontractor’s obligations, particularly regarding confidentiality and respect for intellectual property rights.
• Purchase or supply agreements: provide for commitments relating to volume, quality and compliance.

Confidentiality is particularly important before the launch of a collection, when premature disclosure may significantly affect its commercial value.

“Made in France” and Haute Couture

The “Made in France” indication does not necessarily mean that every production step occurred in France. A product must in principle have been wholly made in France or undergone its last substantial transformation there, subject to the applicable rules of origin and customs classification. The DGCCRF and French customs authorities monitor the use of these origin indications.

Haute Couture is subject to a separate framework. The designation is legally controlled and may only be used by fashion houses..

How can fashion and luxury distribution networks be structured?

Fashion companies may operate selective, exclusive or non-exclusive distribution systems. Selective distribution is particularly important in the luxury industry because it enables suppliers to choose authorised distributors according to quality criteria, in order to ensure that products are marketed in a manner consistent with the brand’s positioning.

Exclusive distribution, meanwhile, allows a distributor to be selected for a specific geographical area and granted exclusive sales rights within that territory.

These arrangements must nevertheless comply with competition law. Regulation (EU) 2022/720 regulates selective and exclusive distribution systems and sets limits on certain restrictions affecting active and passive sales.

E-commerce has added another layer of complexity. Distribution agreements increasingly need to regulate sales through marketplaces, online stores and social media, together with the use of trademarks, photographs, promotional campaigns and other brand assets.

Fashion brands operating their own e-commerce websites must also comply with general data protection regulation governing customer and prospect information, online marketing, cookies and tracking technologies.

How can fashion designs be protected through intellectual property rights?

Trade marks, designs and copyright

Effective protection generally requires several complementary intellectual property rights.

• Trademarks protect names, logos and other distinctive signs identifying the commercial origin of fashion products. A prior rights search is essential.
• Design rights protect the appearance of a product or part of a product, including features such as lines, contours, colours, shape, texture or materials.
• Copyright may protect original fashion creations without registration. French law expressly refers to fashion, couture, footwear, leather goods and other seasonal clothing industries (article L112-2 of the French intellectual property code).

These rights may overlap when their respective requirements are satisfied. A fashion house may, for example, protect the name of a collection through trade mark law while relying on design rights and potentially copyright to protect the appearance of a handbag or shoe.

EU design law has also recently undergone significant modernisation, with another phase of the new implementing framework applying since July 1st 2026.

To learn more, we invite you to read our article on the subject: What changes have applied to designs since July 1st 2026 (Phase 2)?

How can fashion brands fight counterfeiting and online infringements?

Legal protection must be supported by active monitoring. Counterfeiting now occurs across physical distribution networks, marketplaces, social media platforms, fraudulent e-commerce websites and domain names.

Depending on the nature of the infringement and the urgency of the situation, the owner of rights may involve cease-and-desist letters, platform takedown requests, action against online intermediaries, infringement seizures or evidentiary measures. Customs protection can provide an additional preventive tool: rights holders may file an application for action to help customs authorities identify and intercept suspected counterfeit goods.

Conclusion

Fashion law in France should therefore be approached as a comprehensive business strategy combining contractual protection, distribution control, intellectual property rights, regulatory compliance and enforcement against both physical and digital infringements.

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

Dreyfus Law Firm 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 a fashion house automatically own designs created by a freelance designer?

No. Paying for a designer’s services does not, by itself, transfer copyright in the resulting creations. Where an assignment is required, it should be expressly documented and define the rights transferred as well as their scope, purpose, territory and duration.

2. Can a competitor copy a fashion design that is no longer protected by an intellectual property right?

In principle, a product that is not protected by an exclusive intellectual property right may be reproduced. However, the circumstances surrounding the imitation may amount to unfair competition or parasitic conduct, particularly where they create a likelihood of confusion or involve the unjustified appropriation of another business’s investments or economic value.

3. Can a luxury brand oppose the upcycling or resale of modified genuine products?

The resale of genuine products first placed on the market in the EU or EEA by the trade mark owner, or with its consent, is generally covered by the exhaustion of trade mark rights. However, the owner may oppose further commercialisation where legitimate reasons exist, in particular where the condition of the goods has subsequently been changed or impaired. Upcycled luxury goods therefore require a case-by-case assessment, especially where the original trade mark remains visible on the transformed product.

4. Can a fashion house continue using a model’s photographs after the original campaign has ended?

Not without checking the scope of the rights originally obtained. The exploitation of a model’s image should be contractually defined, including the relevant media, geographical territories and duration of use. A photograph authorised for a specific campaign should therefore not automatically be treated as available for unlimited reuse in subsequent campaigns or on additional media.

5. Can a fashion design created with generative AI be protected by copyright?

It depends on the extent of the human creator’s contribution. A July 2026 CSPLA report rejected the creation of a specific copyright or sui generis right for purely synthetic AI-generated outputs. Where AI is instead used as a creative tool and a human creator makes sufficiently identifiable free and creative choices, copyright protection must be assessed under the traditional requirements, including originality.

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

Between the prestige of the “Made in France” label, the protected status of haute couture, and the complexity of selective distribution networks, luxury houses operate within a dense legal environment. Manufacturers, distributors, and commercial agents are not subject to the same rules, and confusing these statuses can prove costly when a contract ends. As online sales reshape traditional networks and due diligence obligations multiply, what are the key rules for securing the manufacture and distribution of luxury goods in France?

Haute couture, a legally protected designation

The term ‘haute couture’ is not a marketing claim: it is a legally controlled designation in France. Only houses approved under the official procedure may use it. The ‘Haute Couture’ designation is granted by ministerial decision, following the opinion of a control and classification commission established within the Fédération de la Haute Couture et de la Mode.

To qualify, a house must in particular:

• design made-to-order garments for private clients;
• own at least two workshops, one of which must be in Paris;
• employ at least twenty employees;
• present two runway shows per year in Paris, traditionally in January and July, comprising at least 25 looks combining day and evening wear.

These criteria may nonetheless be applied with some flexibility, particularly for smaller houses.

Example: a young brand promoting itself as ‘haute couture’ without meeting these criteria risks being found liable for a misleading commercial practice and unfair competition, regardless of its style or price point.

The ‘Made in France’ label: a regulated but non-trivial guarantee

Consumers are increasingly attached to the ‘Made in France’ label, which is also viewed internationally as a mark of quality. This label indicates that a product was mainly manufactured and assembled in France. No prior authorisation is required to use it, but manufacturers must comply with non-preferential origin rules, and indicating a false origin is unlawful.

Two levels of control apply:

• the DGCCRF, which investigates the proper use of the label within France;
• French Customs, which controls compliance with origin rules and may, at the request of businesses, issue a Made in France Information ruling (IMF) determining whether a product may bear a French-origin marking.

Consumers can also report misleading practices relating to product origin through the Signal Conso platform.

Manufacturing contracts and sensitive materials

Contracts entered into with manufacturers, subcontractors, and suppliers are a key issue for luxury houses. They should notably govern confidentiality, ownership of creations and know-how, subcontracting conditions, quality requirements, material traceability, and the respective liabilities of the parties.

Particular vigilance is required where products incorporate materials subject to specific regulations, notably certain furs, leather from protected species, and diamonds.

Distributor or commercial agent: two statuses, two very different legal regimes

Under French law, it is essential to avoid confusing a distribution agreement with a commercial agency agreement: the consequences of termination differ radically depending on the qualification applied.

Selective distribution, the preferred model for luxury goods

Selective distribution is the most commonly used distribution structure for luxury goods in France. It may fall outside the prohibition on anticompetitive agreements where resellers are chosen on the basis of objective, qualitative criteria, applied uniformly and without discrimination, where the characteristics of the product require such a network to preserve its quality, and where the criteria do not go beyond what is necessary (the so-called ‘Metro’ criteria, from the October 25, 1977 decision of the European Court of Justice in case 26/76).

Even where an agreement does not strictly meet these conditions, it may benefit from the exemption under the Vertical Block Exemption Regulation (VBER), subject in particular to the condition that the supplier’s and buyer’s market shares do not exceed 30% and that the agreement does not contain hardcore restrictions. Under this framework, the supplier may set qualitative or quantitative criteria for appointing distributors. The supplier may, under conditions, prevent its authorised distributors from selling to unauthorised resellers in the relevant territory, but may not restrict sales to end customers.

Online sales and selective distribution: what a contract can (and cannot) provide

A selective distribution agreement cannot prevent distributors from making effective use of the internet as a sales channel. This principle was established by the Court of Justice of the European Union in the Pierre Fabre case of October 13, 2011 (No. C-439/09). Indeed, the objectives of preventing counterfeiting and preserving a brand’s prestigious image do not, on their own, justify preventing distributors from making effective use of the internet.

A selective distribution agreement may, however, impose certain conditions on how products are sold online. A supplier may, for example, impose requirements relating to a distributor’s website or restrict the use of online marketplaces, as the Court of Justice accepted in the Coty case of December 6, 2017 (No. C-230/16). The French Commercial Practices Review Commission also confirmed, in opinion No. 24-5 of April 9, 2024, that marketplace bans are not, in themselves, contrary to competition law for luxury goods, and do not require the distributor to operate a physical store.

Import, export, and due diligence: key control points

No specific customs rules apply to fashion and luxury goods: they follow the standard regime applicable to goods imported from non-EU countries, with import duties ranging, depending on the product, from 0% to around 17% of value.

Certain materials and financial flows are, however, subject to heightened scrutiny:

• exotic leather is governed by CITES (the Convention on International Trade in Endangered Species of Wild Fauna and Flora), which requires a licensing system for import, export, and re-export;
• diamonds fall under the Kimberley Process, aimed at ending the financing of armed conflict through the trade in ‘blood diamonds’;
• since 2021, a cooperation protocol between the DGCCRF and TRACFIN has strengthened anti-money-laundering and counter-terrorism-financing oversight in the luxury sector, notably jewellery and watchmaking;
• as an EU member state, France enforces trade sanctions against Russia and Belarus, which include an export ban on certain luxury goods.

Finally, Law No. 2017-399 of March 27, 2017 on the corporate duty of vigilance requires parent companies employing at least 5,000 employees in France (or 10,000 worldwide) to establish, implement, and publish a vigilance plan covering their entire value chain, including subcontractors and suppliers.

Practical checklist before signing a manufacturing or distribution contract

• Clearly qualify the relationship (distributor, commercial agent, business introducer) to anticipate the consequences of termination;
• check that reseller-selection clauses are consistent with the Metro criteria and the VBER;
• regulate, without banning, online resale (website charter, marketplace restrictions);
• provide for a notice period proportionate to the length of the relationship;
• include compliance clauses for sensitive materials (fur, exotic leather, diamonds);
• anticipate the group’s applicable vigilance and non-financial reporting obligations;
• verify the lawful use of ‘haute couture’ and ‘Made in France’ claims in commercial communications.

Conclusion

Manufacturing and distributing luxury goods in France sits within a demanding legal framework that combines protected designations, competition law, and compliance obligations. The line between distributor and commercial agent, the balance between selective distribution and online sales, and the traceability of sensitive materials are the priority areas of vigilance for securing these commercial relationships over the long term.

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

Dreyfus Law Firm 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

Must a distribution agreement be in writing to be valid?

No: a verbal or implied agreement can be enough to establish an ‘established commercial relationship’ protected against sudden termination. A written contract is nonetheless strongly recommended to secure each party’s rights and obligations.

What happens if a distributor breaches a marketplace-restriction clause?

It exposes the distributor to a contractual claim from the supplier (formal notice, termination for cause, damages), separate from any competition-law sanction, since the clause itself is lawful.

Can a supplier unilaterally switch existing distributors to a selective distribution model?

No: such a substantial change to the contract cannot be imposed unilaterally. It requires either the distributor’s agreement or compliance with the termination notice period applicable to the ongoing relationship.

Must a selective distribution agreement be notified to a competition authority before implementation?

No: the Vertical Block Exemption Regulation operates on a self-assessment basis. Companies assess for themselves whether their agreement meets the Metro criteria and the Regulation, with no prior authorisation procedure.

Is misuse of the ‘Made in France’ label subject to criminal sanctions?

It can be characterised as a misleading commercial practice under the French Consumer Code, exposing the offender to criminal and administrative sanctions distinct from the DGCCRF’s and Customs’ controls.

Does the duty of vigilance cover subcontractors located outside France?

Yes: the law covers the group’s entire value chain, including subsidiaries, subcontractors, and suppliers established abroad, provided they fall within its vigilance scope.

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 launch of a perfume often involves significant investment across a range of elements, namely the perfume name, bottle and packaging, advertising campaign, digital visibility and distribution strategy. However, an inadequate prior art search could jeopardize all of these investments just as the product is ready to be brought to market.

The “ Les sables roses contre Sable rouge  ” case

The LES SABLES ROSES / SABLE ROUGE decision, issued by the INPI on December 5, 2025 (OP 24-4429) illustrates why a prior-rights search should not be limited to goods falling within Class 3.

Facts

The proprietor of the earlier trademark LES SABLES ROSES, protected in particular for perfumes in Class 3, opposed the registration of the sign SABLE ROUGE. The contested application covered not only perfumery products, but also certain hygiene and beauty-care services in Class 44.

Decision

The INPI upheld the opposition in relation to the relevant Class 3 goods, but also with respect to certain Class 44 services. It considered that skincare services and beauty salon services could be sufficiently close to perfumes, taking into account, in particular, their complementarity, their relevant public and their commercial environment. The fact that the goods and services fell within different Nice classes was therefore not, in itself, sufficient to exclude a finding of similarity.

Significance

The decision confirms that the Nice Classification does not create rigid legal boundaries when assessing the similarity of goods and services. A prior-rights search for a perfume name should therefore extend beyond Class 3 and include services capable of maintaining a sufficiently close connection with perfumery. Class 44 deserves particular attention where the project also falls within the broader fields of skincare, beauty or wellness. From a practical perspective, the decision shows that the relevance of an earlier right must be assessed in light of the actual economic relationship between the goods and services concerned, rather than solely by reference to their class numbers.

Define the scope of the perfume prior art search before committing to the name

Clearance should take place before packaging is printed, campaigns are irrevocably booked and, in any event, before the proposed name becomes public. The correct search perimeter should reflect the actual commercial project rather than merely the Nice class selected in the application.

Search every commercially relevant territory

For a French launch, the review should encompass French trademarks, EU trademarks and international registrations effective in France. These are expressly recognised as potentially earlier trade mark rights under Article L. 711-3 of the French Intellectual Property Code.

For a European or international strategy, the search should in particular cross-reference data from the INPI , EUIPO, and, where necessary, the national registers of the relevant markets.

Search for similar marks, not merely identical names

Checking only for an exact match is insufficient. The INPI recommends expanding the search beyond exact matches to include orthographic, phonetic, and conceptual similarities.

For a perfume name, we specifically test:

• singular and plural forms;
• articles, prepositions, and variations in word order;
• similar spellings or sounds;
• translations and equivalents understandable to the relevant public;
• association of the same dominant term with a color, a place, a material, or an olfactory evocation;
• figurative variations when the launch includes a logo or highly distinctive typography.

A legally useful prior art search is not a list of database hits. It should anticipate the comparisons that an earlier-rights owner could make when preparing an opposition or infringement claim.

Assess the strength of each conflict rather than the number of results

Dozens of remote registrations may present little difficulty, whereas a single strategically positioned earlier mark can jeopardise a launch.

We assess in particular visual, phonetic and conceptual proximity, the distinctive character of shared elements, similarity between the relevant goods and services, territory, seniority, legal status and, where relevant, the reputation of the earlier mark. French trade mark law protects against the use of identical or similar signs for identical or similar goods or services where a likelihood of confusion exists.

To further develop your strategy, we invite you to visit our pages on prior art searches and the monitoring of trademarks and domain names.

Conclusion

Securing prior-rights searches before launching a perfume requires considerably more than checking Class 3 or typing the proposed name into Google. The review should combine territorial coverage, similarity searching, commercially goods and services, other earlier rights and a substantive legal assessment of confusion risk.

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

Dreyfus Law Firm 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

Does the INPI check whether a perfume name is available when a trade mark application is filed?No. The INPI examines the trade mark application but does not verify, on behalf of the applicant, whether the sign infringes earlier rights. Availability should therefore be checked before filing.

Can a perfume name be refused even if no earlier trade mark is identified?Yes. The absence of earlier rights does not, by itself, make a sign registrable. The name must also satisfy the conditions for trade mark validity: in particular, it must be distinctive and must not be descriptive, misleading or contrary to public policy.

Should a trademark application that has not yet been registered be taken into account in the search?Yes. The filing date is decisive when assessing priority, and certain pending trade mark applications may constitute earlier rights, subject to their subsequent registration. A search should therefore not be limited to trade marks that have already been registered.

Does an older trademark that is no longer in use still constitute an obstacle?Not necessarily. Where an earlier trade mark has been registered for at least five years, its proprietor may, in certain proceedings, be required to demonstrate genuine use. In opposition proceedings before the INPI, failure to prove such use may result in the opposition being rejected in respect of the relevant goods or services.

Should a trade mark be filed abroad quickly after an initial filing in France?This can be strategically important. A French filing generally opens a six-month priority period during which protection may be sought in countries covered by the Paris Convention while, subject to the applicable conditions, retaining the filing date of the first application.

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 use of an algorithm does not, by itself, make an online platform liable for user-generated content. But for trademark owners, the CJEU’s judgment of 16 June 2026 changes the picture: platforms can no longer rely on automation alone to keep liability at arm’s length. The decisive question is the degree of control that the algorithm enables the platform to exercise over that content. Where automated processing remains technical and merely facilitates access to information, the hosting liability exemption may continue to apply. Where the algorithm determines, in the interests of the provider or its service, which information is disseminated, under what conditions and in what order of priority, the provider may instead be regarded as exercising control over that information.

This is the major contribution of the judgment delivered by the Court of Justice of the European Union on 16 June 2026 in joined cases C-188/24 WebGroup Czech Republic and NKL Associates and C-190/24 Coyote System.

Key points for businesses

A platform whose algorithm decides which content is published, promoted or demoted exercises control over that content and may lose the protective status of a hosting provider.

Losing that status does not automatically establish liability, but it removes the obstacle that has so far blocked many trademark enforcement actions.

Businesses should now document how the algorithm works — ranking, promotion, sponsored placement — as carefully as the infringing content itself.

Platform liability and algorithms under the Digital Services Act

Hosting protection is a conditional safe harbour, not blanket immunity

Article 6 of the Digital Services Act (DSA) provides a conditional exemption for hosting services. In broad terms, providers are protected in respect of information stored at a user's request where they lack actual knowledge of illegal activity or illegal content and, once they obtain the relevant knowledge or awareness, act expeditiously to remove or disable access to it.

A crucial distinction must nevertheless be drawn between losing an exemption and actually being liable. Recital 17 of the DSA states that the liability exemptions determine when an intermediary cannot be held liable; they do not create a positive legal basis for liability. Whether liability exists must still be determined under the relevant provisions of EU or national law, including rules on intellectual property infringement, unfair competition or civil liability.

In other words, losing the safe harbour does not automatically mean losing the case.

Using an algorithm does not automatically remove hosting protection

The DSA expressly contemplates automated processing. Recital 22 specifies that automatic indexing, search functions or recommendations based on users' profiles or preferences are not, by themselves, sufficient to establish specific knowledge of illegal activity or content.

Article 7 also protects diligent “Good Samaritan” initiatives: intermediary service providers do not lose the liability exemptions solely because they voluntarily investigate, detect or remove illegal content in good faith.

CJEU judgment of June 16, 2026: when does algorithmic control cause the loss of hosting status?

Coyote System places the algorithm at the heart of the legal classification

Case C-190/24 concerned Coyote's geolocation-based driving assistance service. Users could report road events and certain information was processed and redistributed through an algorithm. Article L. 130-11 of the French Highway Code (Code de la route) permits the authorities, in specific public-order and public-security circumstances, to prohibit temporarily the rebroadcasting of user-generated information concerning certain roadside checks. The French Conseil d'État referred questions concerning the compatibility of that mechanism with EU law to the CJEU.

Among other issues, the Court therefore had to consider whether the operator could rely on the legal regime applicable to hosting providers and on the prohibition against imposing a general monitoring obligation.

Knowledge and control are autonomous alternatives

An operator can therefore control stored information without any employee actually seeing that information. The fact that the intervention occurs automatically is not decisive when the provider itself has predetermined, through its algorithm, how the content will be disseminated.

According to the Court, where an algorithm determines, in the interests of the operator or its service, whether particular information is disseminated, the conditions governing dissemination, how the information is presented, and its order of priority, the operator exercises control over that information. Under the e-Commerce Directive framework examined in the judgment, such an operator can no longer be classified as a hosting provider, it being for the referring court to carry out the necessary verifications.

From technical indexing to editorial control: where is the boundary?

Not every automated classification becomes an editorial intervention. The analysis accompanying the judgment distinguishes simple categorisation and indexing intended to improve accessibility from processing that materially affects the information itself, by modifying some of it and deleting other parts. When a system decides that some information should be promoted, confirmed, hidden, modified or eliminated according to criteria programmed by the operator, the legal analysis changes.

Accordingly, labels such as “recommendation engine”, “personalisation”, “smart ranking” or “automated moderation” are not decisive. The actual function and effects of the system matter more than its commercial description.

This approach closely reflects recital 18 of the DSA, according to which the liability exemptions should not apply where, instead of providing the service neutrally through merely technical and automatic processing, the intermediary plays an active role giving it knowledge of or control over the information.

The June 2026 judgment formally interprets the earlier e-Commerce Directive rather than Article 6 of the DSA itself. Its reasoning should therefore not be presented as a direct interpretation of the DSA. It nevertheless provides a particularly significant framework for assessing algorithmic control under the current EU regime.

What are the consequences for marketplaces, social networks and IP rights holders?

Marketplaces and social networks: algorithm design becomes a direct liability issue

For a marketplace dealing with counterfeit products or a social network disseminating content that infringes trademarks, copyright, or designs, the analysis should no longer be limited to notice-and-takedown procedures.

Relevant issues may include:

• the criteria determining the visibility of a listing or item of content;
• promotion and demotion mechanisms;
• whether commissions, conversion rates or advertising revenues influence rankings;
• automated suppression or concealment rules;
• the settings that allow the platform to favour certain content; and
• documentation explaining the purpose and operation of the system.

No general monitoring obligation does not mean no targeted monitoring

Article 8 of the DSA continues to prohibit the imposition of a general monitoring obligation on intermediary service providers. That principle does not, however, prevent appropriately targeted injunctions.

The June 2026 judgment confirms that measures relating to sufficiently circumscribed information may be implemented through automated tools without requiring the provider to carry out an autonomous assessment of all stored content.

For IP rights holders, this distinction may be strategically significant. The more objectively and precisely the infringing content or conduct can be defined, the stronger the basis may be for considering an appropriately targeted technological measure.

Trademark owners: how to enforce more effectively against an online platform

The practical significance of the judgment is substantial for businesses: it becomes considerably harder for a platform to claim neutrality where its algorithm amplifies listings or content infringing trademark rights. Trademark owners gain an argument they can deploy immediately, in negotiation as much as in litigation. Their strategy need no longer be limited to showing that a sufficiently precise notice was submitted: where the facts support it, they may also document how the platform selects, ranks, recommends, promotes or maintains the visibility of the disputed content. Such evidence may be used to challenge the purely neutral character of the service and, where appropriate, the availability of the hosting exemption, without automatically establishing the platform’s liability.

In practice, trademark owners should preserve dated evidence capable of showing that intervention: screenshots, ranking positions, sponsored labels, associated recommendations, repeated display of the same listing, or changes in visibility following a defined search. This material can supplement takedown notices by identifying not only the unlawful content itself but also the observed mechanisms that increase its exposure, and may support a suitably circumscribed request for measures or an injunction where the relevant legal conditions are met.

In litigation, available information concerning recommender systems and applicable evidential mechanisms may also help establish the platform’s actual role. The judgment of 16 June 2026 therefore does not create a new autonomous basis of liability for trademark owners, but it meaningfully broadens the evidential and legal arguments that may be used to organise the enforcement of their rights.

Conclusion

The CJEU judgment of 16 June 2026 marks an important development. Automation does not necessarily mean neutrality. A provider may exercise control precisely because it designed the algorithm that determines whether, how and in what order user-generated information reaches the public, even where no human operator sees the individual content concerned. For trademark owners, this is a concrete step forward: documenting a platform’s active role becomes an effective way to strengthen targeted takedown or injunction requests and, where the facts support it, to defeat the hosting liability exemption. Building that analysis into the evidence file from the outset is now a brand-strategy question as much as a litigation one.

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

Who must show that an algorithm gives the platform control over user content?

The classification depends on the evidence before the court. In practice, a party challenging the availability of the hosting exemption will need to substantiate how the system operates or what effects it produces, for instance by reference to evidence relating to ranking, visibility or the conditions of dissemination.

Can a platform rely on trade secret protection to refuse all information about its algorithm?

No. Trade secret protection may keep certain technical information out of the public domain, but it does not necessarily prevent scrutiny of the system in litigation. Courts can reconcile evidential needs with confidentiality through proportionate protective measures.

Does outsourcing an algorithm to a third-party provider shield the platform from legal risk?

Not necessarily. The analysis focuses on the role actually performed by the platform within the service, not simply on who developed the tool. Outsourcing therefore does not remove potential control where the platform sets the objectives, chooses key parameters or benefits from the resulting selection.

Can the same platform qualify as a hosting provider for some features but not for others?

Yes. The classification should be assessed by reference to the particular service and the role performed for the feature at issue. A platform may merely store some user content while playing a more active role in a separate promotion, advertising or selection service. A functional analysis should therefore be preferred to the automatic attribution of a single status to the platform as a whole.

What evidence should a rights holder preserve before challenging algorithmic treatment?

Dated evidence should be retained so that the observed experience can be reconstructed: screenshots, URLs, search terms, ranking positions, sponsored labels, recommendations, relevant account settings, notices and platform responses. Repeated comparative tests may help distinguish an isolated result from a recurring mechanism.

Can a platform's terms of service transfer all responsibility for content to its users?

No. Terms of service can impose obligations on users and allocate certain contractual risks, but they cannot disapply mandatory rules governing the platform itself. Legal classification depends on the platform's actual role and the operation of the service.

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

A UDRP decision ordering the transfer of a domain name does not, by itself, bind a French court subsequently asked to rule on a dispute concerning that domain name or its use. The Paris Court of Appeal decision of February 20, 2026 (Paris Court of Appeal, February 20, 2026, Case No. 24/17961) provides a clear illustration: a WIPO administrative panel had ordered the transfer of <banque-delubac.com>, while the French courts later assessed the disputed uses independently under French trademark law.

This autonomy follows from the nature of the UDRP itself. It is an extrajudicial mechanism embedded in the contractual domain-name registration system, not a court judgment with res judicata effect. Paragraph 4(k) of the UDRP expressly preserves the parties’ ability to submit the dispute to a competent court for independent resolution. The Delubac decision therefore illustrates why domain-name recovery strategy can coordinate extrajudicial and judicial remedies without treating their legal tests as interchangeable.

For more information on UDRP procedures, we invite you to consult our previously published article: " What is the UDRP? A Comprehensive Guide to Protecting Your Domain Names ".

Facts: domain names used as platforms for criticism

Banque Delubac, the owner of trademarks incorporating the DELUBAC sign and long-standing domain names, was confronted with the registration, by a former employee, of several domain names reproducing or evoking its name, including <banque-delubac.com>, <affaires-delubac.com> and <harcelement-ambiance.com>. The related websites published testimonials, critical material or links to press articles concerning the bank.

The bank considered that this use infringed its trademark rights and damaged its reputation. The bank sought the removal of certain websites, the transfer of the domain names and damages. Under paragraph 4(i) of the UDRP, however, the remedies available in UDRP proceedings are limited to the cancellation or transfer of the domain name. The disputed pages, by contrast, presented themselves as informational or criticism websites and stated that they were not official bank websites and did not sell goods or services.

Proceedings and claims: UDRP and court litigation

The WIPO UDRP proceeding

The bank filed a UDRP complaint concerning <banque-delubac.com> and <affaires-delubac.com>. In its decision of January 1, 2024 (Decision of the Administrative Panel Banque Delubac Et Cie v. Samir Laroussi, Case No. D2023-4523), the WIPO Administrative Panel distinguished between the two names. It ordered the transfer of <banque-delubac.com>, finding in particular that combining “banque” with DELUBAC did not clearly signal a criticism website and could reinforce the appearance of an association with the bank. By contrast, transfer of <affaires-delubac.com> was denied, as the wording and non-commercial context supported a different assessment. In this case, the Panel considered that the addition of the term “affaires” suggested that the website had a critical purpose and, given its genuinely non-commercial nature, the Respondent could rely on a legitimate interest based on the exercise of the right to criticism and freedom of expression.

The claims before the French courts

In parallel, the bank had brought proceedings before the Paris Judicial Court. After its main claims were dismissed, it appealed, arguing in particular that the domain names and website content interfered with its trademark rights, including the reputation claimed for its trademark, and harmed its image. It also relied on the WIPO decision as part of its argument on the likelihood of confusion and sought compensation for the damage it claimed to have suffered.

An important procedural point should be clarified: before the Court of Appeal, no new request for the cancellation or transfer of <banque-delubac.com> was made. The Court was therefore not called upon to rule on the merits of the transfer ordered by WIPO, and its judgment does not formally “reverse” the UDRP decision.

Decision: an independent assessment under French law

The Paris Court of Appeal upheld the judgment and dismissed the bank’s claims. As regards the alleged infringement of the well-known trademark, it recalled that the legal regime relied upon requires the use of an identical or similar sign in the course of trade in relation to identical or similar goods or services (article L.713-5 of the French Intellectual Property Code). The disputed websites were not being used to identify or market competing goods or services; they mainly published testimonials or press material.

The Court also noted that the websites expressly stated that they were unofficial and sold no goods or services. In those circumstances, the operation of <banque-delubac.com> and <affaires-delubac.com> could not establish the alleged trademark infringement. <harcelement-ambiance.com>, which did not reproduce the DELUBAC sign and was likewise not used in the course of trade, could not support that claim either.

The key point is therefore not a direct conflict between WIPO and the Court, but the fact that they were answering different legal questions:

• The WIPO Administrative Panel was required to assess, under the specific criteria of the UDRP, whether the conditions for ordering the transfer of the domain names were met.
• The Court of Appeal, for its part, had to determine whether the disputed use infringed the rights asserted by the bank under French trademark law.

For further insight into the relationship between UDRP proceedings and actions before national courts, we invite you to consult our previously published article: “A judgment of the Paris Court of Appeal of 8 November 2016 confirms the independence of national courts from WIPO decisions.”

Significance of the decision: judicial independence from domain name procedures

UDRP panels and national courts apply different legal tests

The UDRP requires the complainant to establish three cumulative elements:

• The domain name is identical or confusingly similar to a trademark in which the complainant has rights,
• The domain name holder has no rights or legitimate interests in respect of the domain name,
• The domain name has been registered and is being used in bad faith.

The French courts are not required to mechanically reassess these three criteria. They rule on the legal grounds submitted to them, in light of the specific requirements of French law.

The fact that different conclusions may be reached does not therefore necessarily mean that one of the decision-makers was wrong. Rather, it reflects the fact that the legal characterization of a given conduct depends on the applicable legal framework, the precise nature of the claims brought, and the evidence submitted. The two bodies may therefore reach different assessments in relation to the same domain name without their decisions being legally contradictory: they do not rule on the same legal basis, apply the same criteria, or exercise the same powers.

A UDRP decision may inform the judicial analysis, but it does not automatically determine the outcome of court proceedings.

For further information regarding the requirement of registration and use in bad faith, please see our article on: " How does the bad faith duplicate between registration and bad faith use? "

The decision highlights the need to coordinate UDRP and litigation strategies

For trademark owners, a domain-name procedure should not be selected in isolation from potential litigation. Before filing a complaint, the desired outcome should first be identified – rapid transfer, cessation of use, damages or action against unlawful content – together with the legal bases that might later be relied upon in court. For a broader overview of the available mechanisms, see our Complete Guide 2026: Domain Name Disputes – UDRP, SYRELI and International Alternatives.

SYRELI and PARL Expert operate differently but remain subject to judicial review

For .fr domain names, SYRELI and PARL Expert are administered within the Afnic framework and do not follow the UDRP regime. However, Article L. 45-6 of the French Postal and Electronic Communications Code expressly provides that decisions taken by the registry may be challenged before the judicial courts. An extrajudicial or administrative decision therefore does not remove the possibility of judicial review.

Conclusion

The Paris Court of Appeal decision of February 20, 2026 confirms a central point in domain-name litigation: a UDRP decision does not, by itself, determine the outcome of proceedings before the French courts. The UDRP and national litigation may concern the same factual situation while applying different legal tests, causes of action and remedies.

For trademark owners, this autonomy calls for a coordinated approach: identify the precise use made of the domain name, distinguish cybersquatting from criticism, confusion and commercial activity, select the procedure that matches the desired result, and anticipate from the outset the possibility of court proceedings.

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

Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

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

Q&A

What evidentiary weight can a UDRP decision have before a French court?

It may be submitted as part of the evidential record and may document the chronology, the parties’ positions or the analysis conducted under the Policy. The court remains free to assess its weight and must decide the claims before it under the applicable law. The UDRP decision does not acquire the authority of a French judicial decision merely because it has been issued.

What happens when a domain-name registrant brings court proceedings after a UDRP transfer decision?

Paragraph 4(k) contains a mechanism under which implementation of the transfer may be deferred where the registrant provides, within the period specified by the Policy, evidence that qualifying court proceedings have been commenced. Timing is therefore critical: proceedings initiated too late may not prevent the registrar from technically implementing the panel decision.

Which other legal grounds may be relevant when a non-commercial criticism site falls outside trademark infringement?

The answer depends on the content and context. Depending on the facts, relevant issues may include defamation and press-law rules, unfair competition or denigration where an economic activity is involved, confidentiality, trade secrets, privacy, or rules governing manifestly unlawful content. Each cause of action has its own requirements, limitation periods and evidential rules.

How should a rights holder choose between UDRP, SYRELI/PARL Expert and court proceedings when several routes appear available?

The starting point is the remedy sought, the domain-name extension and the nature of the alleged abuse. An extrajudicial procedure may be appropriate for a rapid transfer or cancellation, while court proceedings may be necessary for damages, broader injunctions or disputes concerning website content. Evidence and the risk of parallel proceedings should also be assessed before the first filing.

Does a “not an official website” disclaimer remove all legal risk associated with a disputed domain name?

Such a statement is one contextual factor, but its weight depends on the overall impression created for internet users. The domain name itself, website presentation, content, redirections, commercial activity and the registrant’s conduct remain relevant. A disclaimer of affiliation therefore cannot be assessed in isolation.

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

As of September 1, 2026, domain names ending in .ru, .рф and .su will be subject to enhanced identification requirements through ESIA, Russia’s public identification and authentication system. ESIA operates through “Gosuslugi”, the official Russian government services portal. In practice, the domain name holder will need to have a Gosuslugi account, either personal or corporate depending on the holder’s status, containing identity information that has already been verified. This information will allow the registrar to confirm that the individual or company requesting the registration, renewal or certain changes to the domain name is indeed the declared holder. Federal Law No. 569-FZ of December 29, 2025 introduced this principle into Article 14.2 of Russian Federal Law No. 149-FZ.

What changes for Russian domain names on September 1, 2026?

ESIA becomes a gateway for essential domain operations

Guidance published by the Coordination Center for TLD .RU/.РФ states that registration and renewal will require ESIA identification from September 1, 2026. Current operational guidance also covers actions such as registrant or registrar changes, delegation and certain data updates.

Existing domains may continue to work, but not indefinitely

The Coordination Center explains that a domain already registered may remain in use until the end of its current registration term. If the administrator cannot complete the required identification, however, renewal becomes impossible. After expiry and the applicable priority renewal period, the registration may be cancelled and the name may become available again. For a domain name incorporating the name of a brand owner, that creates a direct risk of third-party acquisition and cybersquatting.

Why are foreign registrants particularly exposed?

The main obstacle is practical access to Gosuslugi

The reform does not amount to a general ban on foreign ownership. The difficulty is obtaining an ESIA identity that can be used by the registrar. A foreign company with an accredited Russian branch or representative office may, subject to local requirements, create an organisation account. A foreign company with no accredited presence does not have the same route. Economic ownership of the domain may therefore remain clear while the registrant lacks the regulatory ability to perform the operation needed to keep it.

What should companies do before September 1, 2026?

1. Audit the portfolio and registered holders

It should be verified for each domain:

• the registrar,
• registrant,
• expiration date,
• DNS settings,
• email configuration,
• redirects,
• connection with the group’s trademarks.

The objective is to quickly identify domain names whose holders may face difficulties in complying with the new identification requirements, particularly where they are registered in the name of a foreign company without effective access to ESIA, a former employee, or a service provider.

To learn more about domain name audits, we invite you to consult our previously published article: ” Domain name audit: securing and maximizing your digital portfolio “.

2. Secure an appropriate continuity solution

If the group has a Russian entity eligible for ESIA, a restructuring of the domain name ownership may be considered before the new framework applies. Where no such presence exists, a local trustee arrangement may be considered where available and lawful, but the agreement should address:

• DNS control,
• renewal duties,
• transfer restrictions,
• re-transfer,
• provider failure.

For secondary domains, a controlled migration to an international extension may be more proportionate.

How should the reform fit into an IP strategy?

Domain continuity should be assessed together with trademark strategy. Losing control of a .ru name may affect the website, email, campaigns and user trust. We therefore recommend coordinating legal, trademark and IT teams and strengthening domain name monitoring against cybersquatting.

For a broader approach to protecting your brand in relation to domain names, we invite you to consult our previously published article: “Domain names: registration, monitoring and disputes – how to protect your brand in the digital space”.

Conclusion

Russia’s September 1, 2026 reform requires holders of .ru, .рф and .su domain names to verify without delay whether they can satisfy ESIA identification. For foreign businesses, the priority is to preserve continuity before renewal or another operation is blocked. A targeted audit, secure registrant structure and, where necessary, a transfer or migration plan can reduce the risk of losing the name to a third party.

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

Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

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

Q&A

Does failure to complete identification result in the immediate deletion of the domain name?

No. Failure to complete the required identification will, in particular, prevent renewal of the domain name. Deletion will occur at a later stage, after the domain has expired and the priority renewal period has elapsed.

Can a trademark owner act if a third party registers a released .ru domain?

Loss of the domain does not extinguish earlier trademark rights. Enforcement may remain possible depending on applicable law, the third party’s use and the circumstances of acquisition. Recovering a released domain is nevertheless more uncertain than preventing the loss before expiry.

Should Cyrillic variants of a Latin-character trademark be monitored?

Such monitoring is particularly relevant where Russia remains an important market for the company. Transliteration, phonetic equivalents and visually similar variants may create confusion, particularly under .рф. Effective monitoring should therefore go beyond exact matches and include plausible linguistic variants.

Does a foreign company with no presence in Russia necessarily need to use a trustee to retain its .ru, .рф and .su domain names?

Using a trustee is one possible solution where a company does not have a Russian entity eligible for ESIA, but it is not the only option. Depending on the importance and use of the domain name, migration to an international extension may also be considered. The appropriate solution should therefore be assessed on a case-by-case basis, taking into account the need to retain the domain name and the practical constraints associated with its management.

How should a company choose between transferring a domain name to a Russian entity, using a local trustee, and migrating to another extension?

The choice will mainly depend on the group’s structure and the strategic importance of the domain name. Where an ESIA-eligible Russian entity exists, a restructuring of the registrant arrangement may be considered. Otherwise, a local trustee may provide a continuity solution, subject to appropriate contractual safeguards. For secondary domain names, a gradual migration to an international extension may be more proportionate.

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.