News

Introduction

This issue is central for companies facing alleged infringements of their trademarks, patents, designs and models, or copyrights. In a context of intensified competition and rapid circulation of information, the temptation to act quickly, sometimes too quickly, is strong. Recent case law, however, firmly reiterates that the enforcement of intellectual property rights is subject to strict limits, particularly when exercised outside judicial proceedings and when it involves third parties.

Enforcing intellectual property rights without a court decision: an accepted but regulated principle

Extrajudicial action as a legitimate tool for rights protection

French law does not systematically require a prior court decision to enforce intellectual property rights.
In practice, numerous mechanisms allow for a swift response to an alleged infringement, including the sending of a cease-and-desist letter, notice-and-takedown requests addressed to online platforms, removal procedures involving technical intermediaries, or customs actions.

These measures pursue a clear economic objective: to promptly bring an allegedly unlawful practice to an end, limit damage to the value of the right, and preserve the right holder’s competitive position.

Freedom of action subject to loyalty and caution

This freedom, however, is neither absolute nor discretionary.

Case law requires that any extrajudicial action be based on a solid factual foundation, conducted with restraint, and comply with the principle of fair dealing in commercial relations. Failing this, the enforcement of rights may amount to a civil fault engaging the author’s liability.

Legal limits to the extrajudicial enforcement of intellectual property rights

The principle: prohibition of discrediting a competitor

On the basis of Article 1240 of the French Civil Code, disparagement is established whenever a company disseminates information to third parties that is likely to discredit a competitor’s products, services, or activities.

Case law is consistent: the tone used or the absence of malicious intent is irrelevant where the information disseminated has not been judicially established.

The boundary between legitimate information and abusive action

Directly informing the alleged infringer of the existence of prior rights and requesting the cessation of the disputed acts is generally accepted.

By contrast, alerting third parties—such as distributors, customers, or commercial partners—to an alleged infringement places the action in a zone of significant legal risk.

Allegations of infringement and abusive actions: key lessons from recent case law

Clear confirmation by the Court of Cassation

In a decision dated October 15, 2025 (No. 24-11.150), the Court of Cassation firmly reiterated that notifying third parties of an alleged infringement, in the absence of a court decision, constitutes an act of disparagement.

In this case, a company holding copyright in wooden wind chimes had been authorised to carry out a copyright seizure (“saisie-contrefaçon”) against a competing company and its subcontractor. Following this seizure, it sent cease-and-desist letters to several distributors of the targeted competitors, requesting that they cease marketing the allegedly infringing products.

The competing companies, considering that they had been unfairly implicated while no infringement had yet been legally established, brought an action for disparagement against the copyright holder.

At first instance, the lower courts considered that the wording of the letters sent to the resellers was measured and did not, as such, constitute disparagement. However, the Court of Cassation overturned the appellate decision, holding that “in the absence of a court decision recognising the existence of copyright infringement, the mere fact of informing third parties of a possible infringement of such rights constitutes disparagement of the products alleged to be infringing.”

Principles derived from case law

The Court thus reaffirmed three key principles governing any extrajudicial intellectual property enforcement strategy:

• The defence of rights does not justify everything: invoking an intellectual property right does not confer any entitlement to publicly disseminate unproven accusations.
• Pre-litigation communications must remain targeted: they must be strictly limited to the person suspected of infringement and must not extend to economic third parties.
• Good faith is irrelevant: even if measured, cautious and devoid of animosity, the dissemination of an unadjudicated allegation of infringement constitutes a civil fault.

Best practices for protecting rights without incurring liability

Structuring a legally secure extrajudicial action

An effective strategy is based on a graduated sequence of actions that complies with judicial requirements:

• Objectively assess the risk: evaluate the strength of the asserted rights and the reality of the alleged infringement.
• Limit exchanges to the alleged infringer: any cease-and-desist letter must be addressed exclusively to the presumed author of the acts.
• Adopt factual and proportionate wording: avoid definitive characterisations of “infringement” until recognised by a court.
• Preserve evidence: bailiff reports, seizures, and technical or comparative analyses should precede any communication.

When turning to the courts becomes essential

Where the economic risk is high or the infringement spreads through a distribution network, promptly seising a court often becomes the only secure course of action.

A judicial decision offers a dual benefit: it legitimises subsequent communications and protects the right holder against any allegation of disparagement.

Conclusion

Can intellectual property rights be enforced without a court decision? Yes, but only subject to strict limits. Case law reiterates that the defence of rights cannot justify communications liable to harm a competitor’s reputation in the absence of prior judicial recognition.

In this context, a controlled, legally framed and proportionate strategy remains essential. Anticipation and support from specialists help secure rights enforcement while preserving fair competition.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Is legal risk limited to litigation exposure?
No. It also includes reputational, commercial and sometimes structural risks for the company.

2. Is extrajudicial action always less risky than court proceedings?
No. If poorly handled, it may expose its author to civil liability that can be more costly than initially contemplated litigation.

3. Does good faith protect against an action for disparagement?
No. Case law considers good faith to be irrelevant.

4. Is a seizure for infringement sufficient to communicate with third parties?
No. It is an evidentiary tool, not a judicial recognition of infringement.

5. Can freedom of expression be relied upon?
It is limited by the principles of loyalty and protection against disparagement.

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.

On November 4, 2025, the case Getty Images (US) Inc. v. Stability AI Limited gave rise to a highly anticipated decision of the High Court of Justice in London, stating that the use of trademarks in the context of artificial intelligence is not, in itself, unlawful. This judgment is of considerable importance for defining the scope of liability in the field of generative AI and intellectual property law.

Introduction

On November 4, 2025, the High Court of Justice in London delivered a long-awaited decision in Getty Images (US) Inc. v. Stability AI Limited, providing key clarifications on the interaction between generative artificial intelligence and intellectual property rights.

In particular, the Court held that the use of trademarks in the context of AI is not unlawful per se, while emphasizing that specific infringements may nevertheless be established in concrete circumstances. This ruling constitutes a significant reference point in defining the liability of generative AI stakeholders.

Background and facts of the case

Getty Images, a leading provider of licensed images, brought legal proceedings against Stability AI, alleging that the latter had used its images to “train” its generative AI system, Stable Diffusion, a deep learning model capable of generating images from textual descriptions.

Getty Images claimed that Stability AI had used, without authorization, images from its databases to train its model and had generated synthetic images reproducing its “Getty Images” or “iStock” watermarks.

These allegations were based on three main legal grounds:

• infringement of copyright and database rights;
• infringement of the “Getty” and “iStock” trademarks, on the basis that certain generated images appeared to reproduce or evoke watermarks associated with those marks;
• acts of passing off, namely the misleading appropriation of Getty Images’ commercial reputation.

Arguments raised by the parties

Getty Images argued that Stability AI had reproduced copyright-protected works without authorization. In its view, the training process should be regarded both as an indirect reproduction of those works and as an unlawful extraction from its databases.

From a trademark law perspective, Getty Images primarily alleged infringement of its trademarks, asserting that the reproduction of its distinctive signs in AI-generated images constituted unauthorized use, likely to give rise to unfair competition, in particular by creating confusion in the public’s mind as to the existence of a license or a partnership.

Stability AI,  contended under copyright law that the Stable Diffusion model neither stores nor reproduces source images, but relies on statistical learning that cannot be equated with copying protected works. It further argued that the training operations had been carried out outside the United Kingdom, thereby excluding the application of UK copyright law.

Stability AI also denied any liability, asserting that any potential infringement resulted from prompts provided by end users rather than from its own conduct.

The Court’s legal analysis

An approach based on the reality of the infringement

The Court recalled that trademark law does not sanction abstract risks, but rather actual and perceptible uses. Accordingly, the analysis focused on the images generated and disseminated, rather than on the technical training process alone.

Some images had been generated from content identifiable as originating from Getty Images, while others stemmed from broader and non-identifiable datasets. This distinction played a decisive role in the Court’s assessment.

Rejection of the copyright counterfeiting claims

With regard to copyright, the Court carried out a precise legal characterization of the disputed subject matter. It clearly distinguished between:

• the model training process, which falls within the scope of statistical learning; and
• the reproduction of protected works, which alone is capable of constituting infringement.

The Court found that Stable Diffusion does not store or contain source images in a recognizable form. The model could therefore not be treated as a medium incorporating copies of protected works within the meaning of the Copyright, Designs and Patents Act 1988.

This conclusion was reinforced by a strict territorial analysis: as the training had been carried out outside the United Kingdom, UK copyright law was in any event inapplicable.

The Court thus drew a clear line between algorithmic learning and legally relevant reproduction, rejecting any principle-based liability of the AI provider on this ground.

Recognition of a limited trademark counterfeiting

For trademark matters, the Court adopted a more nuanced approach. It acknowledged the existence of counterfeiting, but characterized its scope as “extremely limited”.

The trademarks at issue were found to be identical or quasi-identical, and the services concerned fell within the same economic field as those covered by Getty Images’ registrations.

The judge specified that the lack of extensive evidence of actual confusion was not decisive, insofar as the likelihood of confusion could be inferred from the overall context.

Use of trademarks at the stage of generated content: consumer perception

It is at the stage of content generation and dissemination that legal risk crystallizes. The Court therefore examined the perception of the average consumer, a central concept in trademark law.

In the Getty case, several user profiles were considered:

• members of the general public using cloud-based services;
• developer users;
• users of downloadable models.

The Court held that a significant number of these users could believe that a partnership or license existed, a factor which weighed heavily in the recognition of trademark infringement.

Conclusion

The Getty Images v. Stability AI decision confirms that the use of trademarks in the AI creation process is not unlawful by nature, but may constitute an infringement of intellectual property rights where the traditional conditions of infringement are met and concretely demonstrated.

It represents an important milestone for both rights holders and AI developers, by clarifying the analytical criteria and evidentiary requirements applicable, while rejecting any blanket condemnation of generative AI.

In a context of rapidly expanding AI uses, specialized legal expertise remains essential to secure projects and anticipate litigation risks.

Dreyfus & Associés assists its clients in anticipating and managing these emerging risks related to generative AI, integrating trademark law, data protection and emerging technologies.

Dreyfus & Associés  is in partnership with a global network of intellectual property law specialists.

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

FAQ

1. Can an AI system infringe a trademark without intent?
Yes. Intent is not a necessary condition in trademark law where there is use in the course of trade.

2. Is the appearance of a trademark in an AI-generated output always unlawful?
No, but it becomes problematic in cases of likelihood of confusion, damage to reputation, or parasitism.

3. Are AI developers responsible for generated images?
Case law trends towards increased accountability where outputs are commercially exploited.

4. How can trademark use by AI systems be monitored?
Through a combination of technological monitoring, legal analysis, and audits of generative platforms.

5. Can the removal of a trademark from AI outputs be requested?
Yes, through appropriate amicable or judicial proceedings, depending on the context and jurisdiction.

This publication is intended to provide general guidance and to highlight certain issues. It is not intended to address specific situations nor to constitute legal advice.

Introduction

Understanding DNS abuse has become a strategic priority for companies operating online, well beyond the technical community. The Domain Name System (DNS) underpins global digital commerce, trademark visibility, and trust. Yet, it is also one of the most exploited layers of the Internet infrastructure, routinely leveraged for phishing, malware distribution, botnet coordination, and large-scale fraud.

Over the past two years, and particularly since April 2024, the regulatory and contractual landscape governing DNS abuse has undergone a structural transformation. Through reinforced contractual obligations imposed by ICANN, enhanced compliance oversight, and the launch of new policy initiatives within the GNSO, DNS abuse mitigation has shifted from best-effort cooperation to binding, enforceable responsibility.

What is DNS abuse under ICANN rules?

At the highest level, DNS abuse refers to a limited and deliberately narrow category of online harms that rely on the DNS itself to function. This scope is essential: ICANN does not regulate online content, but rather the technical coordination of the DNS.

A precise and enforceable definition

For contractual and compliance purposes, DNS abuse exists when a domain name is used to enable or materially support:

• Malware, meaning malicious software designed to compromise systems or data
• Botnets, consisting of remotely controlled networks of infected devices
• Phishing, involving deception to obtain credentials or sensitive information
• Pharming, redirecting users to fraudulent destinations through DNS manipulation
• Spam, but only when it serves as a delivery mechanism for one of the above threats

This definition draws a strict line between DNS-level abuse and content-based illegality (such as trademark infringement), which falls outside ICANN’s mandate.

DNS abuse beyond technical enforcement

Historically, DNS abuse mitigation relied heavily on voluntary cooperation and informal best practices. That model has proven insufficient against industrialized cybercrime, where abusive domains are registered in volume, activated within minutes, and rotated rapidly.

From a legal and business perspective, DNS abuse now represents:

• A direct risk to trademark integrity and consumer trust
• A source of contractual exposure for registrars and registries
• A compliance risk with measurable enforcement consequences
• A governance issue, requiring documented decision-making and accountability

In practice, DNS abuse has become a cross-disciplinary risk, sitting at the intersection of cybersecurity, contract law, regulatory compliance, and digital governance.

How did the 2024 contractual amendments change registrar and registry obligations?

ICANN’s contractual amendments, effective 5 April 2024, mark a clear shift in DNS abuse mitigation. What had long been framed as cooperative best practice is now established as a binding contractual obligation, subject to compliance review and enforcement.

Registrars: clearer duties and an obligation to act

Under the revised Registrar Accreditation Agreement, registrars must maintain accessible abuse reporting mechanisms and ensure that reports are effectively processed. Beyond accessibility, the core change lies in the explicit duty to act when presented with actionable evidence of DNS abuse involving a domain name they sponsor.

This standard does not require absolute certainty. It requires a reasonable assessment based on available information. Once met, registrars must take timely and appropriate measures to disrupt the abuse.

Registries: complementary responsibilities at the TLD level

Registry operators are subject to parallel obligations under the Base gTLD Registry Agreement. They must publish abuse contact points and, upon receiving actionable evidence of DNS abuse, either escalate the matter to the sponsoring registrar or take direct mitigation measures where appropriate.

How is DNS abuse enforced today?

Since April 2024, enforcement activity has intensified significantly. ICANN relies on:

• Third-party complaints, filed by rights holders, security researchers, or affected users
• Proactive audits and monitoring, initiated internally
• Public compliance reporting, increasing transparency and reputational pressure

Failure to comply can lead to formal breach notices and escalating contractual consequences.

Strategic implications for professional stakeholders

For legal advisers, compliance officers, and technical teams, several priorities emerge.

• Structured governance and audit-ready procedure: clear internal procedures for intake, assessment, escalation, and response are now essential. Documentation is no longer optional.
• Operational capability and staff readiness: teams handling abuse reports must understand both technical indicators of DNS abuse and the contractual standards governing mitigation.
• Proportionality and exposure to legal liability: over-reaction can be as damaging as inaction. Unjustified suspensions may expose operators to contractual disputes or liability toward registrants.
• Integrated cross-functional coordination: effective DNS abuse mitigation increasingly depends on coordination between legal, technical and compliance teams.

Conclusion

DNS abuse remains one of the most persistent threats to Internet stability and user trust. Through its 2024 contractual amendments and strengthened compliance framework, ICANN has fundamentally reshaped the expectations placed on registrars and registry operators.

For professional stakeholders, DNS abuse mitigation is now a legal and contractual obligation with tangible enforcement consequences. Mastery of this framework is essential to managing risk, ensuring compliance, and protecting digital assets in an increasingly hostile online environment.

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

What is the difference between DNS abuse and online content infringement?

DNS abuse concerns technical misuse of the DNS itself, whereas content infringement relates to what is published on a website and falls outside ICANN’s mandate.

Is spam always considered DNS abuse?

No. Spam qualifies only when it is used to deliver malware, phishing, or similar DNS-enabled threats.

Are registrars required to suspend domains automatically?

No. They must take proportionate and appropriate measures, which may vary depending on context.

Can registry operators act directly against abusive domains?

Yes, where appropriate, or they may escalate the matter to the sponsoring registrar.

Does DNS abuse mitigation create legal risk for registrars?

Yes. Both failure to act and disproportionate action can carry contractual and legal consequences.

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 sharp increase in demand for out-of-court dispute resolution services in the field of domain names constitutes one of the most significant indicators of recent developments in digital law. According to official data published by WIPO, more than 6,200 UDRP complaints were filed in 2025, representing the highest volume ever recorded, and a slight increase compared to 2024 (6,168 cases).

This growth is not a short-term or cyclical phenomenon. It reflects a structural transformation in the way intellectual property disputes are resolved, driven directly by the digitalization of intangible assets.

An analysis of the 2025 statistics provides key legal, economic, and strategic insights for businesses, particularly regarding the now central role of WIPO procedures in the protection of intangible assets.

Statistical analysis of domain name disputes

UDRP: a new all-time record

In 2025, more than 6,200 UDRP complaints were filed, a level never reached since the creation of the UDRP mechanism.

These figures confirm a continued intensification of cybersquatting, phishing, and identity theft practices, involving domain names that imitate well-known trademarks or distinctive corporate signs. Such practices are frequently accompanied by:

• deceptive websites,
• mail server (MX) configurations,
• targeted fraud campaigns aimed at employees, partners, or customers.

At the same time, these infringements have become increasingly professionalized, involving mass registrations, multiple extensions, and fraudulent uses combining websites and email services.

An industrialized form of litigation

Cumulative data show that WIPO has now administered more than 80,000 domain name disputes since the inception of its dispute resolution mechanisms.

From a statistical perspective, this critical mass produces two major effects:

• a highly structured and predictable case-law,
• a growing deterrent effect on the most visible fraudulent operators.

Geographical distribution and sectors of activity

Complaints originate from rights holders established in numerous countries, with a strong concentration of filings from the United States, France, and the United Kingdom.

The disputes span a wide range of economic sectors, including retail and distribution, digital technologies, healthcare, finance, and consumer goods.

WIPO mechanisms: scope and operational effectiveness

UDRP and related procedures: an international standard

The procedures administered by WIPO, foremost among them the UDRP, make it possible to obtain the transfer or cancellation of a domain name when three cumulative conditions are met:

• identity or confusing similarity with a prior right,
• absence of rights or legitimate interests on the part of the respondent,
• registration and use in bad faith.

A pragmatic and predictable procedural framework

The average duration of a procedure remains limited, generally a matter of weeks, with reasoned decisions that are widely published, thereby contributing to legal certainty and jurisprudential consistency.

Strategic impacts for companies and legal departments

Integrating WIPO procedures into a global protection strategy

The statistics invite companies to rethink their internal organization, including:

• anticipation of infringements,
• structured international monitoring,
• the ability to initiate WIPO proceedings rapidly.

A complementary lever to judicial litigation

Recourse to WIPO does not systematically replace court actions, but rather forms part of a complementary approach.

It allows companies to reserve judicial proceedings for matters with high strategic value, while effectively addressing large-scale or repetitive infringements. In practice, WIPO procedures often make it possible to:

• Act quickly,
• Reduce costs,
• Secure digital assets upstream of more complex litigation.

Conclusion

WIPO’s record 2025 statistics reflect a clear reality: out-of-court resolution of intellectual property disputes has become a central pillar of digital law.

For businesses, these mechanisms now constitute an essential strategic tool, provided they are integrated into a comprehensive and forward-looking approach to the protection of intangible assets.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. How can a WIPO procedure be prepared effectively?
By gathering solid technical evidence, conducting a precise legal analysis, and clearly demonstrating bad faith.

2. Are WIPO decisions binding?
They are enforceable at the registrar level, subject to the absence of judicial proceedings initiated within the prescribed deadlines.

3. Are WIPO procedures truly effective?
The growing volume of cases and their recurrence demonstrate an effectiveness recognized by companies of all sizes.

4. Does a WIPO procedure prevent subsequent judicial action?
No. It does not preclude complementary actions before the competent courts.

5. Why is there such a sharp increase in WIPO procedures?
The statistics reflect the multiplication of digital infringements and the search for rapid, international, and specialized solutions.

6. Will domain name disputes continue to increase?
Current statistical trends indicate a likely continuation of growth, driven by fraudulent practices and the expansion of domain name extensions.

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

Introduction

In the contemporary sports economy, performance alone is no longer enough to create sustainable value. Media visibility, presence on social networks, the ability to unite a community and attract business partners are now essential levers. In this context, the possession of trademarks by athletes is an essential legal and strategic tool. It allows to transform a notoriety, by nature volatile, into a structured intangible asset, secure and exploitable, in the service of a long-term patrimonial and entrepreneurial strategy.

The trademark, a key asset for athletes

The trademark confers on its owner an exclusive right of use over a distinctive sign for specific goods and services. For an athlete, this right presents a major interest: it allows to legally appropriate its commercial value, regardless of its sporty performances.

In a highly competitive and globalized environment, the trademark plays a structuring role. It provides a clear legal framework, enforceable against third parties, and facilitates the defense actions against unauthorized uses such as counterfeiting or parasitism. In the absence of a deposit, an athlete exposes himself to significant risks, particularly in systems based on the principle of “first to file”, where third parties can legally appropriate a name, a pseudonym or a sign that has become famous. This is notably the case of Neymar, whose name was registered as a trademark by a third party (TEU, 14 May 2019; T 795/17). The athlete had the possibility to contest the validity of the trademark, subject to the assessment of the INPI or the judges, in particular by invoking the bad faith of the registrant who exploits the name of a third party for his personal benefit. On the other hand, this means having to initiate trademark cancellation proceedings, which in turn has a financial and temporal cost.

The variety of signs eligible for trademark protection

Contrary to a generally accepted idea, the trademark of an athlete is not limited to their patronymic name. Depending on the case, can be protected:

• The civil noun, when it has distinctive character;
• A sports pseudonym or nickname recognized by the public;
• A logo or stylized signature;
• A slogan, motto or phrase associated with the athlete;

The deposit must however be carefully prepared. Not all signs are automatically protectable, and a prior legal analysis is essential to assess the distinctiveness, the possible presence of earlier trademarks and consistency with the commercial objectives of the athlete.

The trademark as a monetization and negotiation lever

The holding of trademarks considerably strengthens the position of the athlete in his contractual relations. In sponsorship, equipment or partnership agreements, the question of ownership of the used signs is central. An athlete who masters its trademarks retains increased bargaining power and avoids permanent transfers or excessive dependencies towards economic partners.

Trademarks are also the foundation of diversified monetisation strategies. They allow for the development of licensing, merchandising, co-branding, or even the creation of product and service ranges. In a structured framework, the trademark becomes an asset that generates recurring revenues, regardless of the duration of the sports career.

In terms of heritage, trademarks can be valued, brought to a company, licensed or transmitted. They are thus fully integrated into a logic of management and optimization of intangible assets.

Trademarks, image and legal risk management

Athletes are among the prime targets of Internet rights violations: counterfeits, fake products, fraudulent accounts on social networks, misleading sites or parasitic uses. In this context, the trademark is a particularly effective protection tool.

It allows to act quickly with platforms, registrars, hosts or customs authorities, often without having to demonstrate a complex fault. It also provides a sound legal basis to combat reputational damage and risks of confusion in the public mind.

Moreover, the trademark facilitates articulation with other rights, such as image rights or copyright. It provides additional legal certainty, particularly in a digital environment where the boundaries between business operations and personal communication are increasingly blurred.

Anticipate the post-career thanks to trademarks

The sports career is, in essence, limited in time. Injuries, performance drop or personal choices can end it abruptly. The trademark, on the other hand, is long-term, offering stable valuation support, likely to fit into a long-term heritage logic. It allows the athlete to perpetuate their notoriety beyond the competition.

Many reconversion projects today rely on pre-existing trademarks: academies, consulting activities, media, product lines, foundations or philanthropic commitments. By anticipating these developments, the trademark strategy becomes a tool for securing the professional and financial future of the athlete.
It also participates in the construction of a heritage, by permanently associating a name or a sign with values, an expertise or a specific universe.

Conclusion

The opportunity to own trademarks for athletes relies on a proactive and structured approach to intellectual property. By transforming sports awareness into a legal asset, the trademark becomes a real tool for economic and strategic management. Experience shows that athletes who have anticipated these challenges have a real freedom of action, much greater than those who would have neglected them.
Dreyfus & Associates assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

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

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

Q&A

1.Can a trademark be filed personally or must it be through a company?
Both options are possible. The deposit can be made on a personal basis, which may offer more flexibility in operation, or through a company, which may have tax or patrimonial advantages. The choice depends on the overall strategy for managing the athlete’s rights.

2.Do trademarks protect against fake accounts on social networks?
Yes, they are an effective legal basis for requesting the removal of fraudulent accounts.

3.When should an athlete consider a branding strategy?
Ideally as soon as possible, before any significant media exposure or signing of commercial contracts.

4.What happens if a third party files a trademark with the name of an athlete?
If a third party files a trademark with the name of an athlete without his consent, the latter may initiate opposition or cancellation proceedings, especially if the trademark was filed in bad faith or if it creates confusion in the mind of the public. It is also possible to request the cancellation of the trademark if the filing infringes the image rights of the athlete.

5.Can an athlete file a trademark in several countries?
Yes, an athlete can register their trademark in several countries depending on their commercial ambitions. He can choose to file his trademark at the national level or use systems like the Madrid system (WIPO) for a simplified international registration, covering several countries in a single application

6.How can an athlete use their trademark to enter sectors other than sports?
An athlete can use their trademark to diversify into sectors such as fashion, wellness products, technologies, or media. By using his name or image, he can create partnerships with trademarks in these sectors, relying on his reputation and network to expand his activities beyond the sports field.

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

Introduction

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

The need for an audit of trademarks and patents

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

The protection of intellectual property assets

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

The optimization of business strategies and transactions

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

The reduction of legal risks

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

The essential steps of trademark and patent audit

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

The inventory of intellectual property assets

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

Each asset must be listed with its essential information:

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

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

Assessment of the validity and strength of rights

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

Management of contracts and licenses

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

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

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

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

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

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

Conclusion

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

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

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

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

FAQ

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

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

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

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

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

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

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

Introduction

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

Legal framework applicable to wines and spirits

A sector governed by strict and specific regulations

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

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

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

Protecting origin: PDO, PGI and geographical indications

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

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

PDO: the highest level of protection

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

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

Obtaining a PDO is subject to strict requirements:

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

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

PGI: a more flexible but solid link

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

Protecting commercial identity: trademarks, designs and copyright

The essential complement to geographical protection

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

Trademarks: a central but regulated tool

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

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

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

Designs: protecting shape and appearance

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

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

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

Copyright: protecting originality

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

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

Securing the digital presence and combating fraud

Cybersurveillance: now indispensable

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

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

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

Building a comprehensive protection strategy

A coherent, proactive and evolving approach

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

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

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

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

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

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

Conclusion

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

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

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

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

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

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

Recognizing excellence on a global scale

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

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

Why Dreyfus? A Winning strategy

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

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

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

Thank you to our clients and partners

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

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

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

Introduction

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

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

Trademark law in the face of AI technologies

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

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

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

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

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

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

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

Best practices for protecting trademarks on commerce platforms

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

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

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

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

Trademark enforcement and legal actions

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

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

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

Conclusion

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

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

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

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

FAQ

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

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

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

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

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

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

Introduction

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

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

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

Graphical representation as the sole scope of protection

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

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

Fundamental technical requirements to be respected

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

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

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

Structuring views and variants to control the scope of protection

Multiplying views without diluting protection

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

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

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

Managing variants and options strategically

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

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

Anticipating office technical requirements and litigation risks

Neutralising non-claimed elements

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

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

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

Avoiding any confusion with technical function

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

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

Conclusion

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

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

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

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

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

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

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

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

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

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