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Unfair Competition and Parasitism: Developments in Case Law

Written by Dreyfus21/01/2025

Unfair competition and parasitism remain dynamic areas of intellectual property law, continuously shaped by evolving case law. Recent decisions in French courts underscore the nuanced legal landscape, offering valuable insights for businesses navigating these challenges. This article explores recent relevant cases, focusing on distinctions from infringement, damage assessments, statutes of limitations, and the presumption of harm, while addressing economic consequences such as workforce poaching.

 

The commercialization of products, a distinct approach from infringement: Likelihood of confusion and the “Product Range Effect” – Cour de cassation, Chambre civile 1, 25 May 2023, n°22-14.651

In a recent case, the French Court affirmed that marketing an entire range of products designed to imitate a competitor’s can constitute acts of both unfair competition and parasitism. These acts are distinct from infringement, particularly when deliberate efforts create a likelihood of confusion for consumers. This decision highlights the courts’ focus on the “effect of range”, where the imitation of an entire line magnifies the competitive harm.

Victims of such practices now have dual recourse—an action for infringement alongside unfair competition claims—provided they can establish distinct facts supporting each claim. This dual strategy strengthens the enforcement of intellectual property rights.

Assessing damages in unfair competition cases: A proportional and tailored approach – Cour de cassation, Chambre commerciale, 5 June 2024, n°23-22.122

 

This decision clarified the framework for calculating damages in unfair competition cases. The court emphasized that damages should reflect the undue advantage gained by the infringer, adjusted to account for the respective market volumes of the parties involved. This ensures a proportional remedy aligned with the victim’s actual harm, avoiding excessive awards.

Additionally, the court rejected a constitutional challenge to Article 1240 of the Civil Code, affirming its compatibility with constitutional rights and freedoms.

This decision reinforces the importance of meticulously quantifying the infringer’s financial gains while balancing equitable restitution for the victim.

Statutes of limitations in unfair competition actions: clarity on timeframes – Cour de cassation, Chambre commerciale, n°18-19.153

 

In this case, the court addressed the statute of limitations for unfair competition claims. While such actions often involve ongoing misconduct, the five-year limitation begins when the victim becomes aware or should reasonably have become aware of the acts in question. This approach balances the need for legal certainty with the realities of discovering illicit practices.

Companies should diligently monitor their markets to identify potential infringements promptly, ensuring timely legal action.

Presumption of harm in unfair competition and denigration cases: easing the burden of proof – Paris Court of Appeal, October 4th 2023, n°21/22383

 

The Paris Court of Appeal’s ruling reiterated that acts of unfair competition or denigration inherently presume harm to the victim. Whether the damage is economic or moral, the mere establishment of unfair practices suffices to presume injury, obviating the need for exhaustive proof.

This presumption facilitates swift remedies for victims, enabling them to focus on mitigating business impacts without extensive evidentiary requirements.

Economic consequences, workforce poaching and business disruption : the Case of mass recruitment – Cour de cassation, Chambre commerciale, April 13th 2023, n°22-12.808

 

A striking example of the economic fallout from unfair competition is the poaching of a competitor’s workforce. In a significant case, the court deemed the large-scale recruitment of key personnel—constituting a substantial portion of managerial staff—to be a deliberate tactic causing operational disarray. Such actions were classified as unfair competition due to their disruptive intent and effects.

Businesses affected by mass recruitment strategies can seek legal redress, particularly when such actions undermine their operational stability.

Conclusion

The evolving jurisprudence surrounding unfair competition and parasitism underscores the judiciary’s commitment to protecting fair business practices. Key developments highlight the courts’ nuanced approach to addressing product mimicry, tailored damage assessments, clear limitation periods, presumptions of harm, and economic impacts like workforce poaching. By staying informed and adopting proactive strategies, businesses can effectively safeguard their intellectual property and market position.

At Dreyfus, we provide you with a team of recognized experts to:

  • Identify acts of unfair competition and parasitism.
  • Develop tailored legal strategies to protect your interests.
  • Represent you effectively before the competent courts.

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Do not let unfair competition harm your business. Reach out to Dreyfus for personalized advice and protect your rights with an effective strategy.

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How to win a cancellation action against a European trademark ?

Written by Antony21/01/2025

How to win a cancellation action before the EUIPO ?

Protecting trademarks effectively within the European Union requires a deep understanding of the legal mechanisms available to challenge the validity or use of a registered trademark. The invalidity and revocation procedures, collectively referred to as “cancellation proceedings,” before the European Union Intellectual Property Office (EUIPO) provide rights holders and third parties with tools to maintain the integrity of the trademark register.

In 2024, approximately 2,000 cases have been consistently initiated each year since 2021, showing a stable trend with a slight decrease. Meanwhile, revocation proceedings have remained stable at approximately 500 per year since 2021, with a slight upward trend observed.

Table of Contents

  1. Introduction to invalidity and revocation procedures
  2. Invalidity procedure
    • Absolute grounds for invalidity
    • Relative grounds for invalidity
  3. Revocation procedure
    • Non-use of the trademark
    • Becoming a generic term
    • Misleading character of the trademark
  4. Procedure Before the EUIPO
    • Application filing by your representative
    • Adversarial phase
    • Decision and effects
  5. Recent trends and emerging practices
  6. Practical tips for success in cancellation actions
  7. Strategic approaches to cancellation actions
  8. Case studies: Lessons from recent decisions
  9. Emerging trends in trademark cancellation
  10. Practical Insights: Preparing evidence for success
  11. Strengthening the legal framework: Recommendations for businesses
  12. FAQ

  1. Introduction to invalidity and revocation procedures

The invalidity and revocation procedures aim to challenge the validity or continued use of a registered European Union trademark (EUTM). Invalidity disputes the trademark’s validity at the time of registration, while revocation addresses the loss of the trademark owner’s rights due to post-registration circumstances.

  1. Invalidity procedure

A trademark can be declared invalid based on absolute or relative grounds.

Absolute grounds for invalidity

A trademark may be invalidated if, at the time of registration, it:

  • Lacked distinctiveness.
  • Was descriptive of the goods or services in question.
  • Contravened public order or morality.
  • Was liable to mislead the public regarding the nature, quality, or geographical origin of the goods or services.

Relative grounds for invalidity

A trademark may also be invalidated if it infringes upon prior rights, such as:

  • An earlier identical or similar trademark for identical or similar goods or services, creating a likelihood of confusion.
  • Copyright, design, trade name, or company name rights.

  1. Revocation procedure

Revocation addresses the improper use or non-use of a trademark following its registration.

Non-use of the trademark

The owner may lose their rights if the trademark has not been put to genuine use in the European Union for an uninterrupted period of five years without valid reasons.

Becoming a generic term

If, due to the owner’s actions or inaction, the trademark has become a generic term in the trade for the goods or services it covers, it may be revoked.

Misleading character of the trademark

A trademark may also be revoked if its use by the owner or with their consent has become misleading regarding the nature, quality, or geographical origin of the goods or services.

  1. Procedure before the EUIPO

Application filing by Your representative

To ensure a smooth and effective application process before the EUIPO, it is essential to engage a qualified counsel who can provide strategic advice and represent your interests effectively. While it is not mandatory to appoint a representative to file a cancellation action, parties without a domicile, principal place of business, or an effective and genuine industrial or commercial establishment within the European Economic Area (EEA) must be represented by an authorized representative in EUIPO proceedings. Even for those with a presence in the EEA, appointing a representative ensures the process is handled with the expertise required to maximize efficiency and effectiveness.

Adversarial phase

Once the application is received, the EUIPO verifies its admissibility. If deemed admissible, an adversarial phase begins, allowing the parties to present arguments and evidence. The EUIPO may also request additional information or clarification from the parties.

Decision and effects

Following the review of arguments and evidence, the EUIPO issues a decision. If the application is successful, the trademark is either invalidated retroactively or revoked from the date of the decision. These decisions can significantly impact the trademark landscape within the EU.

Appeal process

Decisions by the EUIPO can be challenged through a well-defined appeal process:

  1. Appeal to an EUIPO Board of Appeal: This must be filed within two months from the date of notification of the decision. A written statement detailing the grounds of appeal is required.
  2. Appeal to the General Court of the European Union: If dissatisfied with the Board of Appeal’s decision, an appeal can be lodged within two months from the notification of that decision. This process examines the legality of the decision but does not re-assess the facts.
  3. Referral to the Court of Justice of the European Union (CJEU): A further appeal on points of law can be made within two months of the General Court’s decision. The CJEU reviews legal errors but does not revisit the case’s substance.

  1. Recent trends and emerging practices

Use of artificial intelligence in trademark searches

With the increasing reliance on AI tools, many businesses now utilize AI-driven platforms for pre-registration trademark searches. These tools enhance precision and speed in identifying potential conflicts, reducing the likelihood of disputes.

Impact of blockchain on trademark authenticity

Blockchain technology offers a secure and transparent method for proving trademark use. By maintaining immutable records, it ensures authenticity and provides robust evidence in revocation proceedings.

  1. Practical tips for success in cancellation actions

  1. Conduct comprehensive pre-filing research: Ensure thorough investigation of potential conflicts or grounds for cancellation using tools like TMview.
  2. Maintain robust documentation: Keep detailed records of trademark usage to counter non-use allegations.
  3. Engage expert counsel early: Involve experienced legal professionals to navigate the complexities of EUIPO procedures.
  4. Leverage evidence effectively: Present compelling evidence, such as market surveys or sales data, to support your claims or defense.

  1. Strategic approaches to cancellation actions

Proactive risk assessment

Before initiating a cancellation action, it is critical to conduct a comprehensive risk assessment. This involves analyzing the targeted trademark’s weaknesses, such as lack of distinctiveness or non-use, and identifying supporting evidence to strengthen your case. Using tools like TMclass and DesignView can streamline this process and ensure a strategic approach.

Collaborating with regional experts

Trademark laws and practices can vary subtly between EU member states. Collaborating with local IP experts who understand jurisdictional nuances ensures your cancellation strategy aligns with both EUIPO standards and local regulations.

Tailoring arguments for absolute and relative grounds

When challenging a trademark based on absolute grounds, highlight legal principles such as descriptiveness or violation of public order. For relative grounds, focus on substantiating prior rights through market research, survey evidence, and sales data.

  1. Case studies: Lessons from recent decisions

Case study 1: Revocation for non-use

In 2023, a tech company successfully revoked a competitor’s trademark on the grounds of non-use. The claimant demonstrated that the trademark owner had not used the mark in commerce for over five years. This case underscores the importance of maintaining detailed records of trademark use.

Case study 2: Genericization of a trademark

A recent case involved a prominent food brand losing its trademark due to genericization. The opposing party presented consumer surveys and industry reports showing that the mark had become synonymous with the product category, no longer serving as a source identifier.

  1. Emerging trends in trademark cancellation

AI-driven case analysis

Artificial intelligence tools are being adopted by law firms and businesses to analyze previous EUIPO decisions. These tools can predict potential outcomes and identify the most persuasive arguments, streamlining the preparation process for cancellation proceedings.

Globalization of trademark disputes

With the rise of global commerce, trademark disputes increasingly involve cross-border issues. EUIPO decisions are often referenced in cases involving parallel trademarks filed in other jurisdictions, emphasizing the need for a unified global strategy.

Sustainability as a grounds for contestation

As sustainability becomes a consumer priority, trademarks misleadingly suggesting eco-friendliness are increasingly being challenged. Leveraging environmental claims can form a compelling basis for cancellation under absolute grounds.

  1. Practical insights: Preparing evidence for success

1 – Collect robust documentation

Evidence is crucial in trademark cancellation cases. Compile a comprehensive portfolio that includes:

  • Historical usage records (e.g., invoices, advertising campaigns).
  • Market surveys demonstrating consumer confusion or genericization.
  • Third-party testimonials or affidavits supporting your claims.

2 – Engage technical experts

For cases involving complex goods or services, expert opinions can provide critical insights. For example, a technical expert can validate claims about the functionality of a product, supporting arguments for invalidity based on lack of distinctiveness.

3 – Monitor competitors proactively

Use trademark monitoring tools to track potential infringements or misuse by competitors. This allows you to initiate cancellation proceedings promptly, protecting your brand equity.

  1. Strengthening the legal framework: Recommendations for businesses

Policy alignment with sustainability goals

Aligning trademark strategies with broader corporate sustainability goals can strengthen the defensibility of trademarks. For example, ensuring that trademarks promoting eco-friendly products are substantiated with solid evidence mitigates the risk of misleading claims.

Adapting to regulatory changes

With the EU’s continuous evolution of IP laws, businesses must stay updated on new directives and regulations. Engaging with IP attorneys who monitor these changes can ensure that strategies remain compliant and forward-looking.

FAQ entries

How do I prove non-use of a trademark?
To prove non-use, collect evidence such as market analyses, online presence checks, and absence of sales records during the relevant period.

Can I initiate cancellation proceedings outside the EU?
Yes, parallel actions can be initiated in jurisdictions where the trademark is also registered, provided local laws allow for cancellation based on similar grounds.

What is the success rate for cancellation proceedings at the EUIPO?
Recent EUIPO data suggests that approximately 40% of invalidity and revocation applications are successful, emphasizing the importance of presenting strong evidence.

Protect your trademarks and business reputation with expert legal guidance. Contact Dreyfus Law Firm today for tailored advice on cancellation actions before the EUIPO. Let us help safeguard your intellectual property rights!

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Contestation procedures for designs: Understanding the legal framework

Written by Dreyfus20/01/2025

Table of contents

  1. Key differences between besigns and trademarks
  2. Legal framework in France
    • Judicial nature of contestation
    • Grounds for contestation
  3. Legal framework in the european union
    • Administrative options at EUIPO
    • Grounds for contestation in the EU
  4. Procedural differences
  5. The impact of the EU design package
  6. Practical tips for protecting and contesting designs
  7. Recent case studies and emerging trends
  8. Industry-specific considerations in design contestation
  9. Economic impact of design protection
  10. The future of design law: Trends and innovations
  11. Integrating sustainability into design protection
  12. Collaboration between legal and creative teams
  13. Cultural and geographic influences in design protection

In the field of intellectual property, contesting designs is a highly specialized area requiring legal precision and strategic insight. Unlike trademarks, designs lack specific administrative procedures, such as opposition or invalidity actions, making judicial procedures the primary route for contestation. In this article, we explore the legal framework, grounds, and procedures involved in contesting designs, providing actionable insights for businesses and legal professionals alike.

  1. Key differences between designs and trademarks

Designs, protected under the French Intellectual Property Code (CPI), serve to safeguard the appearance of a product. Unlike trademarks, which benefit from administrative opposition processes, designs can only be contested through judicial actions.

Key distinctions include:

  • No opposition mechanism: Designs do not benefit from an EUIPO-like opposition procedure.
  • Broader protection scope: While trademarks protect distinctive signs, designs focus on the aesthetic and functional aspects of a product.

Example: A French company attempted to register a design for furniture that closely resembled an existing trademark-protected logo. The court ruled in favor of the trademark holder, demonstrating the broader implications of aesthetic overlaps.

  1. Legal framework in France

Judicial nature of contestation

In France, designs are governed by the French Intellectual Property Code (CPI). Unlike trademarks, there are no administrative opposition procedures for designs. Contestation is only possible via judicial routes, such as:

  • Actions for nullity before national courts.
  • Defensive exceptions in infringement litigation.

Grounds for contestation in France

Two primary categories of grounds apply:

  1. Relative grounds: Conflicts with prior rights (e.g., earlier designs, copyrights, trademarks).
  2. Absolute grounds: Lack of compliance with statutory criteria such as novelty or individual character.

A notable feature: French law includes no statute of limitations for nullity actions (PACTE Law, L 521-362 CPI), ensuring long-term contestability. This makes France particularly favorable for rights holders.

Case Study: A French fashion house successfully contested a competitor’s design by demonstrating lack of novelty, leveraging the flexibility of the French judicial system.

  1. Legal framework in the European Union

Administrative options at EUIPO

In the EU, Registered European Union Designs (REUDs) are governed by Council Regulation (EC) No 6/2002. Unlike France, the EU offers a dual-track system for contesting designs:

  1. Administrative invalidity proceedings: Handled by the EUIPO, offering a streamlined and cost-effective option.
  2. Judicial actions: Available before national courts, typically for Unregistered European Union Designs (UEUDs).

Grounds for contestation in the EU

The EUIPO allows invalidation requests based on:

  • Lack of novelty: The design must be entirely new.
  • Individual character: The design must produce a distinct overall impression on informed users.
  • Functional necessity: Designs dictated solely by technical function are excluded from protection.

Administrative invalidity proceedings at the EUIPO are subject to specific procedural timelines, ensuring swift resolution compared to French judicial processes.

Statistical Insight: EUIPO reports indicate that approximately 40% of invalidity requests are upheld, emphasizing the need for comprehensive pre-registration checks.

  1. Procedural differences

Filing mechanisms

  • France: Nullity actions must be filed directly before a national court.
  • EU: Administrative invalidity requests can be submitted to the EUIPO, bypassing courts initially.

Cost and time efficiency

  • France: Judicial proceedings can be time-consuming and costly due to the need for legal representation and court fees.
  • EU: Administrative procedures at the EUIPO are faster and less expensive, making them more accessible for businesses.

Appeal processes

  • France: Appeals follow the hierarchical court system, culminating in the French Supreme Court.
  • EU: EUIPO decisions can be appealed to the Board of Appeal, then to the General Court, and finally to the CJEU.

  1. The impact of the EU design package

The new EU design regulation significantly enhances the framework for protecting and enforcing designs by introducing alternative procedures, such as opposition and cancellation mechanisms. These changes promote harmonization between national and European systems, aligning national procedures with the EUIPO’s approach for trademarks. This ensures consistency and accessibility across the EU.

Key benefits of the EU design package:

  • Administrative invalidity mechanisms: Faster and less expensive alternatives to judicial proceedings.
  • Harmonized opposition procedures: Allow third parties to raise objections at an earlier stage, during the registration process.
  • Increased accessibility: By 2027, all Member States must adopt these procedures, ensuring uniformity across jurisdictions.

Example: A German technology firm utilized the EUIPO’s administrative invalidity procedure to challenge a competitor’s design, saving significant legal fees compared to a traditional court case.

  1. Practical tips for protecting and contesting designs

  1. Conduct comprehensive searches: Before filing a design, ensure its originality through thorough market and database research.
  2. Maintain detailed documentation: Keep records of creation processes to establish proof of novelty.
  3. Collaborate with legal experts: Engage with intellectual property specialists to navigate the complex legal requirements effectively.
  4. Leverage cross-jurisdictional strategies: Coordinate with international partners to challenge designs that infringe upon global rights.

Additional Tip: Utilize tools like the EUIPO’s DesignView database to assess potential conflicts prior to registration.

  1. Recent case studies and emerging trends

Case study: A major fashion brand vs. Fast fashion retailer

In 2022, a well-known luxury brand contested the design of a fast fashion retailer’s handbag. The court found that the retailer’s design lacked individual character, ruling in favor of the luxury brand. This case underscores the importance of robust design documentation.

Emerging trend: Blockchain for design authentication

Blockchain technology is increasingly being used to authenticate design originality and protect against counterfeiting. By creating immutable digital records, businesses can enhance the traceability and security of their designs.

  1. International perspectives on design contestation

Design contestation varies significantly across jurisdictions, reflecting differences in legal traditions, economic priorities, and enforcement mechanisms. For example:

  • United States: Designs are primarily protected under design patents, with the United States Patent and Trademark Office (USPTO) managing applications. Contestation often revolves around patent validity and infringement disputes in federal courts. The U.S. system places a higher emphasis on technical functionality compared to aesthetic originality.
  • China: As the world’s largest manufacturer, China has faced challenges with design piracy. However, recent reforms to its intellectual property laws have introduced stricter protections and improved enforcement mechanisms, including specialized IP courts.
  • Japan: The Japanese design system emphasizes harmony and functionality, and the country has streamlined its administrative opposition mechanisms. This ensures a faster resolution compared to judicial processes in Europe or the U.S.

These international variations underline the importance of tailoring strategies for contestation and registration to the target jurisdiction.

  1. The role of technology in protecting designs

The advent of new technologies has transformed how designs are created, registered, and contested:

  • Blockchain for design authentication: Blockchain provides immutable records of design creation, ensuring proof of originality. This technology is particularly effective in combatting counterfeiting and unauthorized duplication.
  • AI-assisted design analysis: Artificial intelligence tools can assess similarities between designs, helping to identify potential conflicts or infringements during the registration phase.
  • Digital marketplaces and IP enforcement: Platforms like Amazon and Alibaba have implemented IP protection programs, allowing rights holders to file complaints against counterfeit designs. These platforms also use machine learning to detect and remove infringing products automatically.

By leveraging these tools, businesses can enhance the security and enforcement of their design rights while streamlining dispute resolution processes.

  1. Ethical considerations in design protection and contestation

Ethics play a crucial role in the field of intellectual property. Key considerations include:

  • Fair use vs. infringement: Striking a balance between protecting designs and allowing creative inspiration is vital. Overly aggressive enforcement can stifle innovation, particularly in fields like fashion and technology where trends evolve rapidly.
  • Access to justice: Small businesses and independent designers often face barriers to contesting designs due to the high costs of litigation. Policymakers must ensure that administrative mechanisms remain accessible and equitable.
  • Cultural appropriation: Protecting designs inspired by indigenous or cultural heritage raises complex questions about ownership and exploitation. International treaties, such as the Nagoya Protocol, are beginning to address these issues, but gaps remain.

  1. Integrating sustainability into design protection

Sustainability is becoming a critical factor in design protection. As businesses adopt eco-friendly practices, there is a growing need to protect innovative designs that align with sustainability goals.

  • Eco-friendly packaging: Protecting designs for reusable or biodegradable packaging.
  • Green technology: Ensuring that designs for energy-efficient products are safeguarded.

Tip for Businesses: Highlight the sustainable aspects of your design during registration to align with emerging consumer and regulatory priorities.

  1. Collaboration between legal and creative teams

A successful design protection strategy often involves close collaboration between legal experts and creative professionals. This ensures that the design not only meets aesthetic goals but is also defensible from a legal perspective.

  • Workshops and training: Educating design teams on the basics of intellectual property.
  • Early involvement: Engaging legal teams during the design ideation phase to avoid potential conflicts.

  1. Cultural and geographic influences in design protection

Cultural heritage and geographic factors can play a significant role in design protection. The influence of local aesthetics often leads to unique designs, but it also requires careful navigation of regional laws.

  • Traditional craftsmanship: Protecting designs inspired by cultural heritage.
  • Global strategies: Adapting to the specific requirements of different jurisdictions.

Example: The protection of traditional motifs used in luxury goods to prevent unauthorized commercialization.

Safeguard your intellectual property with expert legal guidance. Contact Dreyfus Law Firm for personalized strategies to protect and contest your designs. Contact Us today to schedule a consultation!

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The French SREN Law: Safeguarding the Digital Space and Enhancing Cybersecurity

Written by Dreyfus20/01/2025

The digital landscape has undergone significant transformations, necessitating robust regulatory frameworks to ensure user safety and fair competition. In response, France enacted the SREN Law on May 21, 2024, aiming to secure and regulate the digital space. This legislation introduces measures to protect citizens, particularly minors, combat online fraud, and enhance digital sovereignty.

Protection of Minors

A primary focus of the SREN Law is safeguarding minors from harmful online content. It mandates stringent age verification mechanisms for platforms hosting adult content, ensuring that minors are effectively restricted from access. The law also empowers regulatory bodies to enforce compliance, with non-adherent platforms facing potential sanctions.

Combating Online Fraud

To address the surge in digital scams, the SREN Law introduces a cybersecurity “anti-scam” filter designed to protect users from fraudulent communications, such as phishing emails and deceptive SMS messages. This proactive measure aims to bolster user confidence in digital interactions by mitigating the risks associated with online fraud.

Enhancing Digital Sovereignty

The legislation seeks to reduce dependency on major cloud service providers by promoting interoperability and fair competition within the digital market. By prohibiting restrictive practices that hinder software interoperability, the SREN Law encourages a more competitive environment, fostering innovation and providing businesses with greater flexibility in their digital operations.

Implications for businesses and digital platforms

The enactment of the SREN Law imposes new compliance requirements on digital platforms and businesses operating within France. Entities must implement robust age verification systems, enhance cybersecurity measures to detect and prevent fraud, and ensure their services adhere to interoperability standards. Non-compliance may result in significant penalties, including fines and operational restrictions.

Conclusion

The SREN Law represents a pivotal advancement in France’s approach to digital regulation, emphasizing user protection, particularly for vulnerable populations, and promoting a secure and competitive digital ecosystem. Businesses and digital platforms are advised to thoroughly assess the law’s provisions and undertake necessary measures to ensure compliance, thereby contributing to a safer and more equitable digital environment.

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Tesla and the EUIPO Halt Trade Mark “Trolling”

Written by Dreyfus06/01/2025

In a recent decision, the EUIPO Cancellation Division declared the European trade mark “TESLA,” held since 2022 by Capella Eood, invalid on the grounds of bad faith. This ruling marks a significant victory for car manufacturer Tesla in its fight against abusive trade mark practices, often referred to as “trade mark trolling.” Here, we examine the key aspects of this landmark case.

Background and Stakes of the Case

In 2022, Tesla filed for the cancellation of the trade mark “TESLA” registered with the EUIPO by Capella Eood, a company linked to an individual notorious for “trade mark trolling” practices. The cancellation request was based on Article 59(1)(b) of the EU Trade Mark Regulation (EUTMR), which allows invalidation of a trade mark filed in bad faith.

Tesla argued that Capella Eood engaged in speculative strategies to register trade marks with the aim of blocking other businesses’ operations and extorting financial settlements. Evidence presented included examples of shell companies, delays in opposition proceedings, and strategic transfers of trade mark rights.

For its part, the trade mark holder denied the accusations of bad faith, calling Tesla’s claims defamatory and asserting that the mark was inspired by independent and unrelated sources.

Criteria Analyzed by the EUIPO to Establish Bad Faith

Under Article 59(1)(b) EUTMR, bad faith is assessed based on the applicant’s intent at the time of filing, considering honest commercial practices. The EUIPO examined this intent using several key criteria, informed by cases such as Sky and Others (C-371/18) and Koton (C-104/18 P).

  1. Motives and Context of the Filing

The contested trade mark was filed shortly after Tesla achieved international recognition, particularly following the success of the Tesla Roadster. This timing indicated that the trade mark holder was aware of Tesla’s growing reputation. Claims that the mark was inspired by a newspaper article or a CD were deemed implausible, especially since the targeted products—vehicles and accessories—matched Tesla’s offerings.

  1. History of Speculative Practices

Evidence revealed that the trade mark holder had a history of systematic filings through shell companies across different jurisdictions. These trade marks were often abandoned or withdrawn, reflecting a deliberate strategy to exploit the EU trade mark system for financial gain by creating blocking positions.

  1. Dilatory Tactics and Lack of Genuine Use

The EUIPO identified procedural delays, such as inconsistent modifications to descriptions of goods and services, aimed at stalling opposition proceedings for nearly 15 years. The holder failed to provide any evidence of genuine commercial activity linked to the mark, reinforcing the perception of a purely obstructive strategy.

  1. Awareness of Tesla’s Operations

Tesla’s products were already widely covered by the media in Austria and beyond before the filing of the contested mark. This media coverage, combined with other evidence, demonstrated that the trade mark holder was aware of Tesla’s operations and sought to capitalize on its anticipated success in the European market.

  1. Violation of Fair Practices

The EUIPO concluded that the trade mark was filed without any genuine intent to use it and with the purpose of obstructing legitimate filings. This conduct was deemed contrary to principles of good faith and fair commercial practices.

Implications of the Decision

This decision aligns with a growing body of case law aimed at curbing trade mark trolling and safeguarding fair competition. It also reinforces principles established by the Sky and Others and Koton rulings, which define bad faith as intent contrary to honest practices at the time of filing.

For businesses, this case highlights the importance of monitoring trade mark filings that could impede their operations and acting swiftly to contest abusive registrations. It also underscores the critical role of evidence—such as filing histories and dilatory tactics—in proving bad faith.

Conclusion

The EUIPO’s decision in the TESLA case is a significant step in combating systemic abuse in the trade mark domain. It underscores that commercial practices must remain fair and honest, and that the trade mark system should not be exploited for speculative purposes. For companies like Tesla, such rulings help protect their investments and reputation in the European market. Trade mark law professionals, such as Dreyfus Law Firm, remain committed to assisting clients in addressing such challenges effectively.

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2024 Retrospective: Intellectual Property and Innovation at Dreyfus

Written by Dreyfus31/12/2024

The year 2024 was marked by significant legislative developments, strategic innovations, and impactful initiatives for Dreyfus, a firm specializing in intellectual property. This retrospective highlights the key milestones, in-depth analyses, and tools developed to support businesses in a constantly evolving legal environment.

Key Articles and Legislative Developments

The firm analyzed several major developments in 2024, including:

  1. New European Measures for Sustainable Packaging: Adopted by the European Parliament, these measures aim to reduce packaging waste and promote eco-friendly alternatives. Practical recommendations were shared to help businesses comply with these new requirements.
  2. Modernization of the Designs and Models Regime: The “Designs and Models Package”, effective May 1, 2025, introduces significant adjustments to enhance the protection of creative works within the European Union. The firm’s articles explained these changes and their impact on creative businesses.
  3. Monitoring Brands on Social Media: A critical topic in the digital age. The firm explored advanced strategies to counter online intellectual property infringements and introduced new services for monitoring domain names and company branding.

Modernized Services and Tools

To address clients’ growing needs, the firm expanded its services in:

  1. Monitoring of Brands, Domain Names, Social Media, and Designs & Models: Enhanced vigilance to protect your intangible assets in an increasingly complex environment.
  2. Tailored Support: The firm developed customized solutions for startups and emerging businesses, offering tools suited to their limited resources.

Events and Internationalization

The firm actively participated in international conferences and organized webinars on various topics, consolidating its leadership role in intellectual property.

Looking Ahead to 2025

For 2025, the firm plans to continue exploring new technologies, introduce training tailored to clients’ specific needs, and strengthen its international collaborations.

We wish all our clients, partners, and collaborators an excellent year 2025, filled with success and serenity. May this new year be marked by positive achievements and lasting peace worldwide.

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The European Parliament Adopts New Measures for More Sustainable Packaging

Written by Dreyfus18/12/2024

In a context where each European generates nearly 190 kilograms of packaging waste annually, the EU has seen a steady increase in this waste, from 66 million tonnes in 2009 to 84 million tonnes in 2021. Packaging generated a turnover of 355 billion euros in 2018, highlighting both its economic importance and environmental impact.

On November 22, 2023, the European Parliament and the Council made a significant step in combating packaging waste by reaching a provisional agreement on a set of measures aimed at redefining the European packaging market.

On April 24, 2024, the Parliament adopted these new measures with 476 votes in favor, 129 against, and 24 abstentions. The deputies resisted intense lobbying to promote a more circular and sustainable economy.

This regulation is part of the European Green Deal, launched in 2019, which aims to make Europe the first carbon-neutral continent by 2050 and to reduce greenhouse gas emissions by 55% compared to 1990 levels by 2030, in line with the European climate law of June 2021 and the directive on single-use plastics.

Objectives of the New Regulation

With these measures covering the entire lifecycle of packaging, the Parliament’s objectives are clear: to meet citizens’ expectations to build a circular economy, avoid waste, phase out unsustainable packaging, and combat the use of single-use plastic packaging.

Among the key objectives, the EU commits to reducing the amount of packaging by 5% by 2030, 10% by 2035, and 15% by 2040, focusing on reducing plastic packaging. To achieve this, from 2030, the circulation of single-use packaging such as packaging for unprocessed fruits and vegetables will be banned, often criticized by the association Greenpeace under the hashtag #RidiculousPackaging.

In addition to the ban on unnecessary packaging, the new measures impose restrictions on the void ratio in packaging, prohibiting packaging that contains more than 50% empty space.

Furthermore, to protect consumer health, strict limits will be set regarding the use of perfluorinated and polyfluorinated alkyl substances (PFAS) in food packaging.

Promoting Recycling

From January 1, 2030, most packaging sold in the European Union must be recyclable and will be classified based on its recyclability level. It is planned that packaging must be made up of at least 10% recycled products. Additionally, a label will inform consumers about the contents of these packages.

To enhance the recycling of packaging, containers of plastic or metal beverages less than 3 liters must be collected separately with a deposit system. However, there is a significant exception for wine, spirits, milk, and dairy products.

Conclusion

Frédérique Ries, the rapporteur of the proposal, emphasized that for the first time, the EU sets packaging reduction targets regardless of the material used. The new rules encourage innovation and include exemptions for micro-enterprises while banning single-use chemicals in food packaging. This regulation is seen as a victory for the health of European consumers and calls for collaboration among all industrial sectors, EU member states, and consumers to combat excessive packaging.

The Council still needs to formally approve this agreement before it comes into effect. However, this legislation marks a further step towards achieving the EU’s environmental goals, incorporating citizens’ concerns for more sustainable resource management and reducing the environmental impacts of packaging. Dreyfus is committed to the environment to reduce our waste and optimize our energy consumption.

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The Importance of Monitoring Brands on Social Media and Advanced Strategies to Counter Infringements

Written by Dreyfus17/12/2024

Online presence plays a crucial role in shaping a brand’s image, but this visibility also exposes it to significant risks such as counterfeiting, defamation, and rights violations. Social media, as both a catalyst for opportunities and a breeding ground for threats, demands increased vigilance. Companies must integrate monitoring as a fundamental element of their intangible asset management strategy. Dreyfus, an expert in intellectual property, positions itself as a key player in this field by providing tailored technical and legal solutions.

The Imperative of Proactive Monitoring on Social Media

Contrary to a commonly held assumption, content hosts (Facebook, Instagram, TikTok, etc.) are not legally obligated to actively monitor what is posted. According to the European Directive 2000/31/EC on electronic commerce, these technical intermediaries can only be held liable once notified of the existence of illegal content. This legal gap forces companies to assume active monitoring themselves to protect their brand.

The risks faced by companies that neglect monitoring are diverse and severe:

  • Counterfeiting: The dissemination of counterfeit products via social media affects revenues and weakens brand image.
  • Defamation and Smear Campaigns: A viral negative publication can irreparably damage a company’s reputation.
  • Identity Theft: Fake accounts exploiting the name of a brand or its executives undermine stakeholder trust.
  • Intellectual Property Rights Violations: Unauthorized use of logos or trade names can erode the legal protection of these assets.

Takedown Mechanisms: Pillars of a Reactive Response

Platforms such as Amazon, Alibaba, and Facebook have implemented “notice and takedown” procedures that allow illegal content to be reported and removed. These mechanisms directly address the proliferation of infringements within their ecosystems.

Typical Steps in a Takedown Procedure

  1. Identifying Infringing Content: This involves automated tools or manual analysis to pinpoint problematic posts.
  2. Notifying the Host: A formal request, including evidence of the violation, is submitted to the relevant platform.
  3. Review by the Host: Moderation teams assess the compliance of the request with internal policies and the legal framework.
  4. Content Removal: If the complaint is valid, the illegal content is swiftly deleted or blocked.
  5. Follow-up and Escalation: In cases of rejection or recurrence, legal actions may be considered.

A notable example is Amazon’s “Brand Registry” program, which provides brand owners with tools to monitor listings and report violations. Alibaba offers similar functionalities tailored to the Asian e-commerce context.

Why Rely on a Specialist Like Dreyfus?

Turning to experts maximizes the chances of success and minimizes delays in takedown procedures. Dreyfus offers:

  • Deep Legal Expertise: Each case is evaluated based on the applicable legal framework and relevant jurisprudence.
  • Advanced Technological Tools: Automated monitoring ensures rapid and accurate detection of infringements.
  • Comprehensive Support: From initial monitoring to potential legal proceedings, Dreyfus handles the entire process.

Social Media: Opportunities and Vulnerabilities

The open and participatory nature of social media, while a source of marketing opportunities, also serves as a gateway for various infringements.

  • Fraudulent Advertisements: These exploit a brand’s image to redirect users to counterfeit sites.
  • Shocking or Controversial Content: Associating a brand with controversial themes harms its public perception.
  • Orchestrated Smear Campaigns: Fabricated negative reviews, hostile hashtags, or defamatory posts erode reputation.

Three Strategic Axes for Enhanced Protection

Brands must adopt a multi-level approach: proactive, preventive, and reactive.

  1. Proactive: Maintain a Visible and Active Presence

Regular communication on social media helps monitor and control discussions about the brand.

  1. Preventive: Implement Structured Monitoring

Surveillance tools—such as automated crawlers or configurable alerts—detect potential infringements before they escalate.

  1. Reactive: Leverage Legal and Technical Remedies

Takedown procedures and legal actions remain essential steps to counter confirmed infringements.

A Changing Future: Challenges and Perspectives

The rapid evolution of technologies and online practices presents new challenges:

  • The Emergence of Deepfakes: These falsified contents complicate issues of defamation and counterfeiting.
  • Increased Regulation: The legal framework governing platforms could evolve, affecting host responsibilities.
  • Dual Use of Artificial Intelligence: While useful for monitoring, AI can also be exploited for malicious purposes.

Conclusion

Monitoring brands on social media is an indispensable strategic issue. Given the absence of proactive oversight by platforms, it is essential for companies to adopt comprehensive defense strategies. With the support of experts like Dreyfus, they can anticipate and counter threats while ensuring the sustainability and credibility of their brand in an ever-evolving digital environment.

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Legal challenges of product similarity in the fashion industry

Written by Dreyfus09/12/2024

The fashion industry, known for its dynamism and innovation, is also a sector where protecting trademarks and designs is essential. One of the major challenges brands face in this field is product similarity. The definition and interpretation of this similarity have a direct impact on the scope of legal protections, particularly for trademarks, patents, and designs. This article examines various aspects of product similarity in the fashion industry, based on recent jurisprudence and developments in the field.

CONTENTS

  • What is product similarity?
  • The INPI vs. the Paris Court of Appeal: A jurisprudential divergence
  • The importance of similarity for fashion industry players
  • The rise of “dupes”: A threat to intellectual property
  • The need for jurisprudential clarification to ensure legal certainty

What is product similarity?

Product similarity refers to the evaluation of the degree of resemblance between two products or services, particularly in the context of trademark registration. This assessment is crucial as it determines whether a product or brand already exists on the market and whether another product could cause confusion among consumers.

In the fashion industry, this involves comparing not only the products themselves (clothing, accessories, perfumes) but also their uses, target audiences, and consumer perceptions. Competent authorities, such as the INPI (French Intellectual Property Office) or the Paris Court of Appeal, are responsible for resolving such disputes when a trademark is contested.

The criteria for similarity include:

  • Physical characteristics of the product: shape, color, material, etc.
  • Visual impression: how a consumer might perceive the products when observing them.
  • Purpose and use: products serving similar purposes may be deemed similar.
  • Target audience: for example, a luxury brand and an average ready-to-wear brand, while visually similar, may target different market segments and not cause confusion.

The INPI vs. the Paris Court of Appeal: A jurisprudential divergence

Differences in the interpretation of product similarity in the fashion industry have led to contradictory decisions. In some cases, the INPI considers perfumery, jewelry, and watchmaking products to be marginally similar to clothing. According to the INPI, similarity lies in the potential association between these products in the consumer’s mind, which could cause confusion regarding their origin.

However, the Paris Court of Appeal adopts a stricter stance, often relying on jurisprudence from the European Union’s General Court. The Court views the similarity between products as different as clothing and fashion accessories, such as jewelry or watches, as more limited due to clear differences in their use, design, and presentation.

These divergences create legal uncertainty for fashion industry players. Brands may face difficulties determining whether their protections cover all related products or if their trademarks might be challenged over similar but non-identical products. This raises broader questions about intellectual property protection, particularly regarding the scope and validity of registered trademarks.

The importance of similarity for fashion industry players

For fashion brands, legal protection depends on creating a strong and distinct identity. Industry players must be vigilant to avoid their products being perceived as copies of existing designs. This requires a differentiation strategy based on:

  • Innovative and unique designs
  • A clear brand image
  • Effective communication campaigns

Legal decisions on product similarity directly influence this strategy, as they determine how far a brand can go in launching new products while respecting the intellectual property rights of others.

The rise of “dupes”: A threat to intellectual property

The proliferation of “dupes,” imitations of high-end products offered at affordable prices, disrupts traditional notions of intellectual property protection. These products, widely popularized on social media, blur the line between legitimate inspiration and counterfeiting. While they do not claim to impersonate a brand, their visual or functional similarity can confuse consumers and diminish the perceived value of original products.

Legal challenges posed by dupes include exploiting grey areas in existing protections. Although designs effectively protect certain distinctive features, they often fail to counter such imitations. Shape trademarks and copyright laws, while helpful, involve complex and often lengthy legal proceedings.

The rise of dupe culture reflects admiration for luxury products and a desire to democratize style. However, it also poses an economic risk to established brands. By flooding the market with low-cost products, dupes undermine the exclusivity and innovation that define luxury brands.

In a context where consumers increasingly gravitate toward these alternatives, brands must double down on differentiation efforts through both designs and communication. Explicit recognition of intellectual property rights, combined with a proactive strategy against dupes, is crucial for maintaining their market position.

The need for jurisprudential clarification to ensure legal certainty

Disputes over product similarity are common in the fashion industry, as many brands seek to protect distinctive elements such as patterns, cuts, or logos. These disputes can result in significant costs, not only for the parties directly involved but also for the entire market due to the length and complexity of legal proceedings.

The evolution of judicial decisions demonstrates that product similarity in the fashion industry is a constantly evolving concept. The divergences in interpretation between the INPI and the Paris Court of Appeal highlight the need for legal clarification. More consistent jurisprudence would better frame trademark protections and mitigate current legal uncertainty.

Clarifying the criteria for product similarity would enhance legal certainty for fashion industry players. In the meantime, brands must remain particularly vigilant and adopt robust differentiation strategies to protect against litigation and consumer confusion.

The fashion industry, with its specificities, requires in-depth analysis of products, their uses, and consumer perceptions to ensure effective intellectual property protection. The challenge lies in brands’ ability to navigate this complexity while remaining innovative and distinctive.

Our experts are at your disposal to advise you on intellectual property strategy and online brand protection. Dreyfus Law Firm works in partnership with a global network of intellectual property lawyers.

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The NIS 2 Directive: Towards stronger, harmonized European cybersecurity

Written by Dreyfus02/12/2024

A new directive at the heart of European challenges

The NIS 2 Directive, published on December 27, 2022 in the Official Journal of the European Union, represents an ambitious response to the intensification of cyber threats. With a deadline for transposition into national law set for October 17, 2024, this regulation strengthens and expands the framework established by the first NIS Directive, adopted in 2016. It imposes harmonized requirements, designed to strengthen the security of networks and critical information systems in all member states.

Unlike its predecessor, NIS 2 applies to a considerably larger number of entities and business sectors, reflecting a growing recognition of the risks posed by cyber-attacks. Its ambition is to ensure greater resilience for critical infrastructures, while boosting competitiveness and stakeholder confidence.

The main objectives of the NIS 2 Directive

The directive aims to protect strategic sectors essential to the smooth running of society and the economy. It targets areas such as energy, healthcare, transport and digital infrastructures. By introducing more stringent requirements, NIS 2 seeks to minimize the potential disruption caused by cyber-attacks.

One of the fundamental aims of the directive is to standardize practices between member states, thereby reducing regulatory disparities and facilitating compliance for entities operating in several countries. This harmonization creates a clear and coherent legal framework, strengthening cross-border cooperation in the face of cyber threats.

The obligations imposed by NIS 2

The directive distinguishes between two broad categories of entities, depending on their strategic importance: essential entities (EE) and important entities (EI). This differentiation is based on criteria such as size, turnover and the critical role played by the entity in its sector. Critical entities, because of their potential impact, are subject to more stringent obligations.

Under NIS 2, the entities concerned must put in place legal, technical and organizational measures to protect their information systems. This includes regular risk analysis, the implementation of appropriate solutions and the deployment of rapid response mechanisms in the event of an incident. Incidents with a significant impact will have to be reported to the ANSSI, which may initiate checks to verify compliance.

Failure to comply with these obligations could result in financial penalties of up to 2% of worldwide sales for EAs and 1.4% for EIs. These fines, proportionate to the seriousness of the breaches, are designed to ensure strict implementation of the measures set out in the directive.

Sectors covered by NIS 2

The directive covers a wide range of sectors, from digital infrastructure and healthcare to food production and postal services. By broadening its scope, NIS 2 recognizes the systemic nature of cyber-risks and the need for a comprehensive approach to protect essential services. This new framework also applies to public administrations, reflecting their central role in national resilience.

French transposition of the NIS 2 Directive

The transposition of the NIS 2 Directive in France is part of the bill on the resilience of critical infrastructures and the strengthening of cybersecurity, presented to the Council of Ministers on October 15, 2024. This text, which also incorporates the REC and DORA regulations, aims to strengthen the security of networks and information systems essential to critical and highly critical sectors. The Commission Supérieure du Numérique et des Postes (CSNP) has played an active role, issuing successive recommendations, notably on the clarification of the sectors concerned, the compliance deadline set at December 31, 2027, and the integration of adaptability clauses for technological advances, such as artificial intelligence. Once adopted by Parliament, the draft will be supplemented by some twenty implementing decrees, detailing the obligations of the entities concerned and finalizing security requirements, notably around the notion of Regulated Information System (RIS). This process illustrates France’s ambition to align itself with European standards, while taking account of national specificities.

ANSSI’s central role in implementation

As the national cybersecurity authority, ANSSI occupies a strategic position in the implementation of the NIS 2 directive. Charged with supporting entities subject to the directive, the agency has favored a collaborative approach, involving key industry players such as professional federations (UFE), cybersecurity associations (CLUSIF, CESIN) and qualified service providers (PASSI, PRIS, PDIS). This participative methodology led to in-depth consultations in 2023, covering the scope of the entities concerned, interactions with ANSSI and cybersecurity requirements.

Why prepare now?

The NIS 2 directive is more than just a legal obligation. It represents a strategic opportunity for companies and public authorities. By strengthening their cybersecurity practices, organizations can not only protect themselves against growing threats, but also enhance their competitiveness and strengthen the trust of their partners and customers. A proactive approach is essential to turn these constraints into a sustainable advantage.

The NIS 2 directive sets a new standard for cybersecurity in Europe. By tightening requirements and broadening the scope of entities concerned, it seeks to protect critical infrastructures in the face of growing cyber threats. French companies and public authorities need to prepare for these changes now, to ensure their resilience and competitiveness in an increasingly connected and interconnected environment.

Our experts are at your disposal to guide you through this transition and guarantee you optimum cybersecurity. Dreyfus Lawfirm works in partnership with a worldwide network of lawyers specialized in Intellectual Property.

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