News

Introduction

A .fr domain name that reproduces your trademark, company name or trade name is not merely a technical nuisance. It diverts traffic, fuels phishing campaigns, undermines customer trust and can block a product launch. To recover a .fr domain name, rights holders have four complementary levers: identifying the registrant through Afnic, the SYRELI and PARL Expert out-of-court procedures, court action and criminal proceedings.

The right choice depends on the objective (recovering the name, stopping fraud or obtaining compensation) and on the economic stakes of the case, within the framework of domain name law.

For more information on out-of-court procedures, we invite you to consult our previously published article: “Recovering a .fr domain name: the SYRELI and PARL Expert procedures”.

Identifying the registrant and securing evidence before acting

The data disclosure request, the first step in lifting anonymity

The data of individual .fr registrants is not published in the Whois directory. Rights holders may nevertheless submit a free data disclosure request to Afnic where the domain name is an identical or near-identical reproduction of:

• an earlier trademark protected in France,
• an earlier company name, trade name, sign or domain name,
• a title protected by copyright,
• a family name or pseudonym.

Afnic only compares the signs and does not examine website content. It refuses the request where the domain name was registered before the filing of the trademark or the incorporation of the company relied upon.

Ex parte court orders when anonymity persists

If the request is refused, the courts take over. Under Article 145 of the French Code of Civil Procedure, a judge may order, before any proceedings on the merits, the disclosure of the registrant’s identity by Afnic, the registrar or the hosting provider. According to its practical guide for rights holders, Afnic enforces an order lifting anonymity within two days of receipt.

Eligibility and contactability checks, an underused lever

The .fr extension is reserved for persons residing or established in the European Union, Iceland, Liechtenstein, Norway or Switzerland. Any third party may ask Afnic to check the eligibility and contactability of a registrant whose contact details appear fictitious. The domain name is then frozen and blocked and, if no supporting documents are provided, the registrant risks the immediate deletion of its entire domain name portfolio.

Enforceable evidence from day one

Bailiff reports, time-stamped screenshots, phishing emails and resale offers form the basis of the proof of bad faith. To explore this notion further, we invite you to consult our article: “How does the bad faith duplicate between registration and bad faith use?”.

SYRELI and PARL Expert: recovering a .fr in two months

The conditions set by Article L. 45-2 of the CPCE

The alternative dispute resolution procedures administered by Afnic, provided for by Article L. 45-6, are based on Article L. 45-2 of the French Postal and Electronic Communications Code. The claimant must show standing and demonstrate that the domain name:

• infringes public order, morality or rights guaranteed by the Constitution or by law,
• or is likely to infringe intellectual property or personality rights, unless the registrant shows a legitimate interest and acts in good faith,
• or is identical or related to the name of the French Republic, a local authority or a public institution, under the same conditions.

SYRELI or PARL Expert: a trade-off between cost and the robustness of the decision

Both procedures follow the same rules, are conducted in writing and in French and result in the rejection, deletion or transfer of the domain name. They differ on three points:

• the decision-maker: an internal Afnic panel for SYRELI, an independent expert appointed by the WIPO Arbitration and Mediation Center for PARL Expert,
• the cost: 250 euros excluding VAT for SYRELI, 1,500 euros for PARL Expert (single expert) according to the WIPO schedule of fees,
• the reasoning: concise for SYRELI, more detailed for PARL Expert, which strengthens the decision in the event of a challenge.

SYRELI suits clear-cut infringements, PARL Expert seriously contested cases.

A controlled timetable and supervised enforcement

As soon as the case is opened, the domain name is frozen, which prevents its transfer to a third party. The registrant has 21 days to respond and the decision is issued within two months of filing. It is implemented at the end of a 15-day period from notification, during which either party may bring the matter before the courts under Article L. 45-6 of the CPCE, the domain name remaining frozen during that period. Filing requires that no court or out-of-court proceedings be already pending on the same name.

Court action: obtaining damages and rapid measures

Trademark infringement and unfair competition

Afnic’s procedures do not allow damages to be awarded or website content to be addressed. Where the domain name is used to sell competing products, divert customers or disparage, an infringement action based on a trademark, an unfair competition action or a claim based on the right to one’s name can secure the transfer, the cessation of use, compensation for the damage and publication of the decision.

Provisional measures to stop the infringement

Article L. 716-4-6 of the French Intellectual Property Code allows the court, ruling in summary or ex parte proceedings, to order, if necessary subject to a penalty, any measure intended to prevent an imminent infringement of the rights conferred by the trademark or to stop the continuation of allegedly infringing acts. Absent a trademark-based action, the summary judge may also order, under Article 835 of the French Code of Civil Procedure, the measures needed to stop a manifestly unlawful disturbance. In practice, the blocking or provisional transfer of a domain name used for fraud can thus be obtained within a few days.

Criminal proceedings against phishing and identity theft

Where the domain name is used to deceive your customers, a criminal complaint mobilises the State’s investigative resources. Several offences may be combined:

• trademark counterfeiting, punishable by three years’ imprisonment and a fine of 300,000 euros, increased to seven years and 750,000 euros where committed on an online public communication network, under Article L. 716-10 of the French Intellectual Property Code,
• digital identity theft, punishable under Article 226-4-1 of the French Criminal Code,
• fraud, as defined by Article 313-1 of the French Criminal Code.

In parallel, Afnic offers a specific procedure in cases of identity theft in the Whois directory, allows users to report a domain name contrary to public order and refers phishing victims to Cybermalveillance.gouv.fr.

Building a cost-effective recovery strategy

Starting from the objective, not the procedure

Consider a fictional but representative case: on the eve of the sales season, a fashion retailer discovers a domain name reproducing its trademark followed by the word "soldes" (sales), used to collect bank card data. Provisional measures neutralise the fraud within days and a criminal complaint is filed in parallel. The definitive transfer of the name is then obtained at low cost through a SYRELI procedure, provided that no court proceedings are pending on that name.

The decision grid relies on four criteria:

• urgency (active fraud or mere registration),
• the desired outcome (transfer, cessation, compensation),
• the registrant’s profile (competitor, reseller, former partner, anonymous fraudster),
• the budget in light of the value of the name and the reputational risk.

Anticipating rather than reacting

Monitoring of registrations, defensive registration of strategic variants and a well-calibrated pre-litigation phase reduce the overall cost of disputes. A clumsy cease-and-desist letter or a poorly framed buy-back offer may, on the other hand, drive up the price of the name or alert the registrant. For more information, we invite you to consult our article: “Domain name monitoring: protecting your trademark against cybersquatting” and our Complete Guide 2025: Domain Name Disputes.

Conclusion

Recovering a .fr domain name is not just a matter of choosing between SYRELI and PARL Expert. Lifting anonymity, contactability checks, provisional measures and criminal complaints make it possible to handle each situation at the right cost and within the right timeframe.

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

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

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

Q&A

Can a .fr domain name that was not renewed be recovered?

A domain name that has not been renewed is not immediately available. It enters a thirty-day redemption period during which only the former registrant can restore it through its registrar. At the end of this period, it becomes available again and can be registered by the first applicant, which is why it is worth instructing a registrar to capture it as soon as it is released.

Does the UDRP apply to .fr domain names?

No. The UDRP applies to generic extensions such as .com, as well as to the country-code extensions that have adopted it, which is not the case of .fr. Disputes concerning a .fr fall within Afnic’s own procedures and the French courts. A strategy covering several extensions therefore requires distinct procedures to be coordinated.

Do you need to be represented to bring a SYRELI procedure?

Representation is not mandatory. A company may file its request online on its own. However, the choice of rights relied upon, the characterisation of bad faith and the presentation of evidence determine the outcome, and a rejected request cannot be resubmitted without new evidence.

What if a former employee or contractor registered the company’s .fr in their own name?

The dispute is primarily a matter of contract and agency law. Where the name was registered on behalf of the company, the company may demand its transfer and, failing that, bring the matter before the court. To avoid this situation, domain names should be registered in the company’s name, with centralised access and a return clause in employment and service agreements.

Can a trademark filed after the domain name was registered support a claim?

In principle, and in any event for a data disclosure request, the right relied upon must predate the registration of the domain name. A later trademark may nevertheless be useful where the registrant registered the name in anticipation of a project that had become public, for example after a launch announcement or an information leak, which then establishes bad faith.

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

Since July 1, 2026, the representation of EU designs is no longer limited to fixed views. Applicants may now choose between static views, a 3D file and a video. This choice is far from trivial: the representation defines the very subject matter of protection. It must therefore be treated as a strategic decision, taking into account the actual appearance of the product, future evidentiary needs and, above all, any planned extensions outside the European Union.

This development stems from the second phase of the reform introduced by Regulation (EU) 2024/2822, now codified by Regulation (EU) 2026/715 of March 11, 2026, in force since July 1, 2026, supplemented by Implementing Regulation (EU) 2026/138 and by Decision EX-26-03 of the EUIPO Executive Director on electronic communications.

For more information on the reform, we invite you to consult our previously published article: “EU designs: what has changed since July 1st 2026 (Phase 2)?”.

Three types of representation, only one per design

Each design must be represented using a single type of representation. Formats cannot be mixed within one design, but several designs represented differently may be included in the same application.

Static views: up to ten views

The traditional representation remains based on images, exclusively in JPEG format. The number of views rises from seven to ten. This increase is welcome but may still be insufficient for a product with several compartments, opening positions or successive configurations.

Dynamic representation: a 3D file

The product may be filed as a 3D file, in OBJ or STL format. Each attachment is limited to 2 MB for a JPEG file and to 20 MB for an OBJ, STL or MP4 file, and the total size of attachments is capped at 20 MB (equivalent to ten 2 MB static views or a single 20 MB dynamic representation). The application itself is limited to 1 GB and each file name to 25 characters. The object can then be viewed from an unlimited number of angles. This format is particularly suited to jewelry, bottles with changing cross-sections or products with complex reliefs, which ten fixed views could not adequately describe.

Animated representation: a video

A video, in MP4 format and without an audio track, finally makes it possible to protect a movement or a change of appearance. Early filings cover graphical user interfaces, animated logos and icons, but also packaging with a kinematic opening or a lamp whose color changes over the sequence. Static views in several colors could have been read as several distinct objects; the video shows a single transformation.

Practical limits to anticipate before filing

Colors, textures and transparency not rendered in 3D

The EUIPO only accepts the OBJ or STL file itself, without the companion files describing materials. Colors, textures and transparency effects are therefore not rendered. Where these elements contribute to the product’s appearance, a complementary static design remains necessary.

Excluding an element from protection

Dotted lines and boundaries, suited to fixed views, transpose poorly to 3D and video. For a 3D file, the simplest solution is often to model only the part for which protection is sought. For a video, among the techniques accepted by the EUIPO (blurring, colour gradients, frames), blurring appears to be the most workable tool: in a video showing, for example, water revealing a fabric’s pattern, blurring the water allows protection to cover the appearance of the pattern rather than the triggering element.

Key points of attention when filing

• disable the Fast Track option, which is enabled by default and limited to static filings, before starting a 3D or video application,
• check how the 3D file renders in the filing interface, as shine or shadow effects may alter the perception of the product,
• provide the video’s technical requirements (resolution, frame rate, bit rate, codec) to the service provider in advance,
• check the compliance of JPEG files, some of which are rejected on resolution or color definition grounds.

For a full overview of the procedural changes, we invite you to consult our article: “What’s New in Design Law?”.

A filing strategy to build from the outset

Combining formats in a multiple application

A multiple application may include up to fifty designs. It makes it possible to build a complementary portfolio:

• a 3D version for the geometry,
• a static color version,
• variants of the product.

Consider, purely as an illustration, a fragrance house launching a sculpted bottle: a dynamic design will protect the volume, while a static design will secure the colors and serve as a basis for extensions.

Anticipating international extensions

The new formats are not accepted everywhere. If the first EU filing is made only in 3D or video, the applicant may be unable to reproduce that representation in a country accepting only fixed views, and thus lose the benefit of priority. In countries applying an absolute novelty requirement without a grace period, publication of the EU design may then prevent a later independent filing. Combining an EU filing in dynamic format with a static international filing through the Hague System administered by WIPO (which currently accepts only static reproductions) may address this risk by preserving priority in markets that accept only fixed views.

For more on integrating designs into an overall industrial property strategy, we invite you to consult our article: “Design law: how can it be turned into a true strategic asset?”.

What the representation actually protects

A video only protects the sequence actually shown: other possible deformations of the product are not covered, and protection of a technical principle falls, where appropriate, within patent law. A function does not, however, preclude protection, since the exclusion only applies to features of appearance solely dictated by technical function. An animated logo may also be protected both as a design and as a trademark, as the two rights serve distinct functions.

Finally, the reform confirms cumulative protection with copyright and maintains, while extending it to national designs through Directive (EU) 2024/2823, the rule that designs created by employees in the execution of their duties vest in the employer, unless otherwise agreed. This rule does not, however, amount to an assignment of copyright: employment contracts must be reviewed and service agreements must provide for an express assignment, as the rule does not apply to designs commissioned from a contractor. The new formats also complicate monitoring of competitors’ filings, as 3D files can neither be downloaded nor used from the registration certificate.

Conclusion

The 2026 reform finally adapts the representation of EU designs to digital creations, complex objects and motion effects. The question is no longer simply whether to file, but in what form to represent the creation and how to combine static views, 3D files, video and international filings. This analysis must take place before the first filing in order to preserve novelty, priority and portfolio consistency.

To stay informed of intellectual property developments, we invite you to subscribe to our newsletter and to follow us on social media.

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

Can a registered static design be converted into a 3D or animated representation?

The representation cannot be amended after filing, except for the correction of minor details that do not alter the design. A new representation requires a new filing, which must itself meet the requirements of novelty and individual character at its own filing date.

How long does protection for a registered EU design last?

Protection is granted for five years from the filing date and may be renewed for further five-year periods, up to a maximum of twenty-five years.

Is an interface or animation that has not been filed protected?

It may benefit from protection as an unregistered EU design for three years from its first disclosure to the public within the European Union. This protection is narrower: it only allows action against copying, not against an independently created design.

Can a design be filed after the product has been shown to the public?

Yes, to a certain extent. A disclosure by the designer or their successor in title is disregarded for the purposes of assessing novelty and individual character if it occurred within the twelve months preceding the filing or priority date. However, this grace period is not uniformly recognized outside the European Union, which is why filing before any public presentation is advisable.

Is there a symbol to indicate a registered design?

The reform introduced the Ⓓ symbol, which the holder may affix to its products, optionally with the registration number, to inform third parties of its right. Its use is optional.

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

Introduction

A domain name is now an essential asset of a company’s digital identity. Its registration by a third party may create significant risks when it is used to divert Internet users, unlawfully exploit a trademark, organise phishing operations or create a fake online store.

In this context, the Uniform Domain Name Dispute Resolution Policy (UDRP) is one of the main mechanisms enabling trademark owners to recover certain abusively registered domain names.

Its importance remains considerable: in 2025, the WIPO Arbitration and Mediation Center administered 6,282 domain name disputes, the highest annual level since the system was created. More than 80,000 cases have now been handled since its launch.

The procedure nevertheless remains subject to specific conditions. The mere reproduction of a trademark in a domain name is not automatically sufficient to obtain its transfer or the cancellation of the domain name.

Understanding the UDRP procedure and its scope

The UDRP procedure was adopted by ICANN in 1999 in order to provide a specialised out-of-court mechanism against certain abusive domain name registrations.

It applies in particular to the main generic extensions such as .com, .net or .org, as well as to certain ccTLDs that have chosen to adopt it.

Its main purpose is to deal quickly with situations of cybersquatting, namely cases in which a third party abusively registers or uses a domain name corresponding or similar to a trademark belonging to another party.

The procedure does not, however, replace court proceedings. It is a specialised mechanism whose purpose concerns the fate of the disputed domain name.

For country-code extensions, some apply the UDRP directly, while others have established their own dispute resolution procedure or an adaptation of the UDRP. These local mechanisms may differ significantly as regards the criteria to be established, the rights that may be invoked, the way bad faith is assessed, the time limits, costs, or the remedies that may be ordered.

For example, .fr domain names notably fall under the SYRELI and PARL EXPERT procedures administered within the AFNIC framework, while disputes concerning .uk domain names are subject to the Dispute Resolution Service (DRS). .eu domain names also have a specific ADR procedure. It is therefore essential, before taking any action, to verify the policy applicable to the extension concerned rather than automatically transposing the UDRP criteria.

The three conditions to establish in order to obtain the transfer of a domain name

The UDRP requires the complainant to establish three cumulative conditions. They are set out in paragraph 4(a) of the ICANN Policy.

A domain name identical or similar to a trademark

The complainant must first demonstrate that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to that trademark.

The addition of a descriptive, geographical or commercial term is generally insufficient to eliminate similarity where the trademark remains clearly identifiable in the domain name.

Cases of typosquatting, based on a typographical error or a slight spelling variation, may also satisfy this first requirement.

The absence of rights or legitimate interests on the part of the registrant

The complainant must then establish that the registrant has no rights or legitimate interests in the domain name.

The analysis may notably focus on the existence of:

• a genuine commercial activity conducted in good faith;
• a legitimate non-commercial use;
• a name by which the registrant is commonly known;
• or, conversely, use intended to benefit from the reputation of a third party’s sign.

In practice, the complainant must generally submit sufficient evidence to establish prima facie the absence of rights or legitimate interests. It is then for the respondent, if it is able to do so, to provide a contrary justification.

Registration and use in bad faith

Finally, the domain name must have been registered and used in bad faith.

The UDRP Policy gives several examples, including registration primarily for the purpose of selling the domain name to the trademark owner, registration intended to prevent the trademark owner from using its sign in a domain name, or use intended to attract Internet users for commercial gain by creating an association with the trademark.

Other circumstances may also be relevant: a fake online store, phishing, impersonation, redirection to a competitor, an offer to sell the domain name, a pattern of similar registrations, or the use of clearly inaccurate identification information.

The absence of an active website does not necessarily exclude bad faith. Under the doctrine known as passive holding, the inactivity of the domain name may be considered together with all the circumstances, including the distinctiveness of the trademark, the absence of a credible explanation, or the impossibility of envisaging a good-faith use.

Preparing a UDRP complaint effectively

It is recommended to preserve :

• certificates or extracts demonstrating trademark rights;
• available data relating to the registration of the domain name;
• dated screenshots of the website;
• observed redirects;
• emails associated with the domain name, where relevant;
• offers for sale or correspondence with the registrant;
• evidence demonstrating imitation, phishing or data collection;
• the history of the domain name where this provides useful context.

Regular domain name monitoring makes it possible in particular to identify quickly registrations that may justify action.

It is also important not to overinterpret the use of a privacy service. Such use does not, by itself, establish bad faith. However, where it appears to have been used deliberately to conceal the registrant’s identity in an already abusive context, it may constitute an additional factor to be taken into account.

How the UDRP procedure works

The complaint is filed with an approved service provider, such as the WIPO Arbitration and Mediation Center.

Following verification with the registrar, the domain name is placed under lock during the proceedings in order to prevent it from being transferred to a third party. The ICANN UDRP Rules provide that the registrar transmits the registration data to the provider and confirms the lock.

The respondent then has, in principle, 20 days from the formal commencement of the proceedings to submit its response with the possibility of obtaining an automatic four-day extension upon request.

One point must be clearly emphasised: the absence of a response from the respondent does not mean that the complainant automatically wins. The panel must always verify that the three UDRP requirements are established. It may nevertheless draw certain consequences from the absence of an explanation where a particular matter clearly calls for a response.

The case is then examined by a panel composed of one or three experts. Except in exceptional circumstances, the decision is transmitted within 14 days following the appointment of the panel.

For cases administered by WIPO, the standard fee for a complaint concerning one to five domain names and decided by a single-member panel is currently USD 1,500. Since 2026, WIPO has also offered an expedited case processing service aimed at obtaining a decision in approximately one month for certain eligible cases.

Possible decisions and the limits of the procedure

The panel may principally:

• order the transfer of the domain name;
• order its cancellation;
• or reject the complaint.

The UDRP does not allow the complainant to obtain damages or reimbursement of legal fees.

Where a transfer or cancellation is ordered, the registrar normally implements the decision after a period of 10 business days, unless the respondent provides evidence that it has commenced proceedings before a competent court.

This possibility highlights an essential limitation: the UDRPdoes not prevent the matter from being brought before the courts.

. Court proceedings may be preferable where it is necessary to obtain compensation, measures concerning several types of conduct, or a legal assessment going beyond the domain name alone.

Integrating the UDRP into an overall domain name protection strategy

The UDRP should not be viewed as an isolated reaction after the discovery of a disputed domain name.

An effective strategy may combine:

• defensive registrations under priority extensions;
• automated monitoring of new registrations;
• rapid risk assessment;
• systematic preservation of evidence;
• notices to registrars or hosting providers where the circumstances justify it;
• negotiation of an amicable transfer;
• a UDRP proceeding or local mechanism;
• court proceedings in the most sensitive cases.

The choice depends on the use observed, the urgency, the identity of the registrant, the strategic value of the domain name and the outcome sought.

Conclusion

The UDRP procedure is a rapid and specialised tool for combating certain abusive domain name registrations, but its effectiveness depends on a rigorous demonstration of the three criteria imposed by the Policy.

The presence of a trademark in the domain name is therefore only a starting point. It is also necessary to examine any rights or legitimate interests of the registrant, the chronology of the registration and the indicators of bad faith.

Early preservation of evidence and the integration of the UDRP into an overall strategy for monitoring and protecting digital assets make it possible to act more effectively against cybersquatting.

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

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

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

Q&A

Can a UDRP proceeding be initiated where the domain name was registered before the trademark was acquired?The chronology plays a decisive role. Where a domain name predates the trademark rights relied upon, establishing registration in bad faith may become particularly difficult.

Can a domain name used only for email addresses be recovered?The absence of an active website does not necessarily exclude a UDRP proceeding. The existence of email servers, particularly in a context involving phishing or impersonation, may constitute an important factor in the analysis.

What happens if the registrant changes after the initial registration of the domain name?A change of registrant may, in certain circumstances, be treated as a new registration for the purposes of assessing bad faith. The assessment is therefore made as of the date on which the new holder acquired the domain name, rather than the date of its initial registration. Conversely, a mere renewal or an administrative change to the contact details does not, in principle, constitute a new registration.

Is a UDRP proceeding appropriate where the dispute arises from a former commercial relationship between the parties?This type of dispute may go beyond the scope of traditional cybersquatting where it primarily arises from a contract, partnership or former distribution relationship. Proceedings before national courts may then be more appropriate.

Does a trademark owner face any risk if it files an insufficiently substantiated UDRP complaint?A panel may make a finding of Reverse Domain Name Hijacking if it considers that the procedure was used abusively in an attempt to obtain a domain name to which the complainant knew, or ought to have known, it was not entitled.

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 cost of a trademark portfolio does not depend solely on the number of registered rights. It also results from filings, renewals, territorial extensions, monitoring, recordals, oppositions and enforcement actions undertaken over time.

As a company develops new products, enters new markets or acquires other businesses, its portfolio can quickly become complex. Some trademarks remain essential, while others are no longer used, cover territories that have become secondary, or are subject to services that no longer correspond to the actual level of risk.

Optimising the budget therefore does not mean systematically reducing protection. The objective is to concentrate expenditure on assets and territories that have genuine legal and commercial value.

Auditing the portfolio before seeking to reduce costs

The first step is to obtain a reliable overview of the existing portfolio.

An audit of intellectual property assets can notably identify:

• trademarks that are actually being used;
• trademarks that have become secondary or obsolete;
• rights held by several companies within the same group;
• registrations covering goods or services that are no longer exploited;
• countries in which the company is no longer active;
• upcoming renewals;
• any inconsistencies between owners, licensees and operators.

This analysis is important because unnecessary costs are rarely concentrated in a single area. They often result from the gradual accumulation of small expenses: renewing an old trademark, maintaining monitoring in a market that has been abandoned, keeping a defensive filing that is no longer relevant, or retaining a historic portfolio following an acquisition.

The audit should therefore compare the legal position of the portfolio with the company’s economic reality.

An old but relatively low-profile trademark may, for example, retain significant value if it protects the name of a historic business activity or constitutes a central element of a product range. Conversely, a recent registration does not necessarily need to be maintained if it relates to a project that has been permanently abandoned.

Prioritising trademarks according to their strategic value

Not all trademarks within a portfolio justify the same level of expenditure.

It is useful to divide them into several categories.

Strategic trademarks may include the group name, the main commercial trademarks or signs generating a significant share of turnover. They generally require broader territorial protection, enhanced monitoring and the ability to take rapid action.

Operational trademarks concern active products, ranges or services whose economic importance is more limited. Their protection can be tailored to the markets that are genuinely relevant.

Finally, residual or historic trademarks may be reassessed where their use is limited or non-existent.

This classification makes it possible to avoid uniform management of the portfolio.

A company does not, for example, necessarily need to monitor a global corporate trademark with the same intensity as the name of a local product range approaching the end of its life cycle.

Prioritisation may be based on several criteria:

• associated turnover;
• territories of use;
• strategic importance;
• risks of copying or appropriation;
• expected product lifespan;
• marketing investments;
• existence of licences or partnerships.

Rationalising filings, renewals and territorial extensions

Rethinking filings before multiplying rights

One of the main sources of costs lies in filings that are too broad or insufficiently coordinated.

Before filing any new application, it is particularly important to determine:

• which signs genuinely need to be protected;
• which goods and services correspond to the intended activity;
• which territories have a genuine commercial interest;
• whether national, european or international trademark protection is the most appropriate.

Systematically filing several variations of the same sign in a large number of countries can generate significant costs without necessarily improving protection.

The strategy should also take into account the lifespan of the project. A trademark intended for a one-off campaign does not necessarily need to be managed in the same way as a corporate trademark intended to be used for several decades.

Reassessing renewals

Renewal is a particularly appropriate time to reassess the value of a right.

Instead of automatically renewing the entire portfolio, it is preferable to verify:

• whether the trademark is still in use;
• whether the goods or services covered remain relevant;
• whether the territory concerned remains strategic;
• whether the right still has a defensive value;
• whether more recent rights have made the older registration redundant.

This review must nevertheless remain cautious: abandoning a right may permanently reduce the possibilities for taking action against third parties.

Adapting geographical coverage

Territorial coverage is often one of the main budgetary levers.

A company operating in ten countries does not necessarily have an interest in maintaining rights in several dozen territories if no expansion, production or particular exposure to risk is envisaged there.

It may, however, be relevant to maintain protection in certain countries even in the absence of direct sales, particularly where manufacturers, major distributors or markets especially exposed to bad-faith filings are located there.

Optimisation therefore consists less in mechanically reducing the number of territories than in ensuring that each maintained right is justified by an identifiable need.

Adapting monitoring and enforcement to actual risks

Monitoring new trademark applications is another area in which expenditure can be adjusted.

Overly broad monitoring can generate a large volume of irrelevant alerts and, consequently, additional analysis costs.

It is preferable to define parameters that are proportionate to each asset:

• trademarks to be monitored;
• territories;
• classes of goods or services;
• degree of similarity sought;
• competitors or particularly sensitive sectors.

The same logic should apply to enforcement actions.

Not every detection justifies an opposition or litigation. The decision to intervene may notably take into account the similarity between the signs, the goods concerned, the third party’s actual use, the territory and the potential commercial impact.

An internal prioritisation policy therefore makes it possible to distinguish situations requiring immediate action from those that may instead be monitored or addressed through an amicable approach.

Centralising management to avoid unnecessary costs

A significant share of costs may arise not from the portfolio itself, but from the way it is organised.

Where information is dispersed among several subsidiaries, law firms, internal spreadsheets or contacts, the company risks multiplying instructions, searches and administrative operations.

Centralisation can notably make it possible to:

• maintain a single calendar of deadlines;
• avoid duplicate filings;
• quickly identify the rights concerned by a transaction;
• monitor budgets by trademark, country or business unit;
• rationalise changes of ownership or address;
• consolidate certain instructions.

A centralised portfolio management tool, can also make it easier to obtain an overall view of registered and pending rights, monitoring services and administrative information.

A well-documented portfolio also facilitates acquisitions, licences, audits or restructuring operations.

It may be useful to monitor a few simple indicators on a regular basis: number of active rights, annual cost per strategic trademark, cost per territory, number of abandoned renewals, volume of monitoring alerts and budget devoted to enforcement actions.

Conclusion

Optimising the budget for managing a trademark portfolio does not mean protecting less, but protecting in a more targeted way.

Portfolio audits, asset prioritisation, renewal reviews, adaptation of territorial coverage and rationalisation of monitoring make it possible to concentrate resources on rights that have genuine value.

This approach should be repeated regularly, particularly in the context of an acquisition, restructuring, geographical expansion or change in commercial strategy.

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

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

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

Q&A

How can subsidiaries and acquired companies be integrated into an overall trademark management policy?

An effective portfolio policy should take into account rights held by the different entities within the group. It may be useful to harmonise ownership, internal procedures and decision-making rules in order to avoid duplication and inconsistencies.

Should a specific budget be allocated to trademarks at the launch stage?

When a new trademark is being launched, certain costs may be concentrated over a short period: searches, filings, domain names, contracts or preventive actions. Anticipating these expenses makes it easier to distribute the overall portfolio budget.

How can the profitability of a trademark within a portfolio be assessed?

The value of a trademark may be assessed on the basis of several factors: associated turnover, margin, strategic importance, licensing potential, reputation, markets covered or role within a product range. This analysis can help guide future spending decisions.

Should domain names be included in the trademark management budget?

Where they are directly linked to strategic trademarks, domain names often constitute a complementary element of protection. Their registration, renewal, monitoring and enforcement can therefore be integrated into an overall budget strategy.

How can the costs associated with a portfolio reorganisation be anticipated?

A merger, assignment, change of company name or restructuring may involve numerous recordals and formalities before intellectual property offices. Identifying them in advance makes it possible to budget for these operations and avoid fragmented administrative costs.

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

Can a company selling clothing oppose the registration of a similar trademark for jewellery? Conversely, can a jewellery manufacturer prevent the use of a similar sign for ready-to-wear clothing?

These questions are particularly relevant in the fashion industry, where businesses regularly diversify their activities across clothing, jewellery, leather goods and accessories.

Under trademark law, the answer depends, in particular, on the similarity of the goods, a fundamental concept in assessing the likelihood of confusion between two trademarks.

Traditionally, clothing and jewellery have been considered distinct categories of goods. However, evolving commercial practices and recent judicial decisions call for a more nuanced approach.

The judgment delivered by the Paris Court of Appeal on May 29, 2026 (Case No. 25/02196) illustrates this development by recognising, in the circumstances of the case, a similarity between jewellery, clothing and various fashion accessories.

The classification of clothing and jewellery does not determine their similarity

Goods belonging to different classes

When a company files a trademark application, it must specify the goods and services for which it seeks protection.

These goods and services are classified under the International Nice Classification, which includes, in particular:

• Class 14 : jewellery, precious and semi-precious stones, and watches and other timepieces;
• Class 25 : clothing, footwear and headwear.

This distinction serves an administrative purpose. It does not mean that goods belonging to different classes are necessarily dissimilar.

Indeed, goods falling within different classes may be considered legally similar where they share sufficiently close connections.

Conversely, goods belonging to the same class are not automatically considered similar.

The principle of speciality in trademark law

Trademark law is based on the principle of speciality, under which the protection conferred by a trademark is, in principle, limited to the goods and services for which it is registered.

However, such protection may extend to similar goods or services, provided that the legal requirements for establishing a likelihood of confusion are met. Article 8(1)(b) of Regulation (EU) 2017/1001 allows the proprietor of an earlier trademark to oppose the registration of a later trademark where the identity or similarity of the signs, combined with the identity or similarity of the goods or services concerned, is likely to give rise to a likelihood of confusion on the part of the relevant public.

Accordingly, a trademark registered for jewellery may potentially be invoked against a later trademark designating clothing, provided that a sufficient degree of similarity between the goods and a likelihood of confusion can be established.

The legal criteria for assessing the similarity of goods

Criteria established by European case law

In its landmark judgment of September 29, 1998, Canon (C-39/97), the Court of Justice of the European Union established the criteria for assessing the similarity of goods.

This assessment must take account of all relevant factors characterising the relationship between the goods, including:

• their nature and characteristics;
• their intended purpose and method of use;
• whether they are in competition with one another;
• their complementarity;
• their distribution channels and usual commercial origin.

The objective is to determine whether consumers may reasonably believe that the goods originate from the same undertaking or from economically linked undertakings.

Complementarity must be legally relevant

Clothing and jewellery are frequently combined to create an outfit.

However, mere aesthetic complementarity is not necessarily sufficient to establish legal similarity.

The fact that a necklace may be worn with a dress does not automatically mean that these goods have a sufficiently close connection under trademark law.

Conversely, the fact that they are commonly marketed under the same brand, sold through the same stores and targeted at a similar customer base may constitute a relevant factor.

Consumers' perception of the commercial origin of the goods therefore remains decisive.

The evolution of case law in response to practices in the fashion industry

Business diversification is changing consumer habits

The fashion industry has undergone considerable changes.

Many companies now simultaneously market clothing, jewellery, footwear and accessories under the same trademark.

This diversification has been accompanied by a convergence of distribution channels, particularly through multi-brand stores and e-commerce platforms.

Consumers are therefore increasingly accustomed to finding different categories of fashion products marketed under a common commercial identity.

These practices have led to greater importance being placed on the economic realities of the market when assessing the similarity of goods.

The Paris Court of Appeal judgment of May 29, 2026

This development is illustrated by the judgment delivered by the Paris Court of Appeal on May 29, 2026 (Case No. 25/02196).

The dispute involved Amaya Développement Holding, owner of the earlier trademarks AMAYA and L'ATELIER D'AMAYA, and AME, owner of the semi-figurative trademark AMEIA PARIS.

The earlier trademarks notably covered jewellery products, while the contested trademark designated clothing and various accessories.

The Court of Appeal upheld the decision of the French National Institute of Industrial Property (INPI), which had declared the contested trademark partially invalid on the grounds of a likelihood of confusion with the earlier trademarks.

In assessing the similarity of the goods, the Court notably considered:

• their belonging to the fashion industry;
• the diversification of businesses marketing both clothing and jewellery;
• the existence of common distribution channels;
• the average consumer's perception that the goods may originate from the same commercial undertaking;
• their frequent combination in the creation of an outfit.

The Court also found a very high degree of visual and phonetic similarity between the signs AMAYA and AMEIA, which, in view of the similarity of the goods, supported the existence of a likelihood of confusion as to their commercial origin.

This judgment confirms that differences in the nature or intended purpose of goods do not preclude a finding of similarity under trademark law, where market practices and consumer perception suggest that the goods may originate from the same commercial undertaking.

However, it does not mean that all goods falling within Classes 14 and 25 must systematically be considered similar. The assessment remains fact-specific and depends on the circumstances of each case.

Adapting trademark protection strategies

For businesses operating in the fashion and jewellery sectors, this case law highlights the importance of adopting a trademark protection strategy that reflects market practices and potential business diversification.

When filing a trademark application, it is essential to identify the categories of goods actually marketed and any commercial extensions that are seriously envisaged.

Trademark clearance searches should not necessarily be limited to the class corresponding to the company's main activity.

It may also be appropriate to examine trademarks registered for goods that are economically closely related.

In opposition or invalidity proceedings, the similarity of goods may be demonstrated through concrete evidence, such as catalogues, collections, e-commerce websites, distribution channels, or diversification practices within the relevant industry.

An argument based on market realities may therefore prove decisive in establishing, or challenging, the similarity between clothing and jewellery.

Conclusion

Clothing and jewellery are neither systematically similar nor necessarily dissimilar under trademark law.

Although differences in their nature and function have traditionally justified a restrictive approach, evolving commercial practices are leading certain courts to recognise their economic proximity.

The Paris Court of Appeal judgment of May 29, 2026 illustrates this approach, without calling into question the need for an individual assessment of each case.

For businesses, the challenge is therefore to look beyond the categories established by the Nice Classification and anticipate the risks associated with brand diversification.

Dreyfus Law Firm assists clients in protecting and enforcing their trademarks by developing strategies tailored to the specific characteristics of the fashion, luxury and jewellery industries.

Dreyfus Law Firm works in partnership with a worldwide network of lawyers specialising in intellectual property.

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

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

Q&A

Can a trademark registered for jewellery prevent the registration of a similar trademark for clothing?

Such an opposition is possible, even where the goods fall within different classes. However, the proprietor of the earlier trademark must demonstrate a likelihood of confusion, taking into account, in particular, the similarity of the signs, the commercial proximity of the goods, their distribution channels, and consumer perception. The assessment therefore depends on the specific circumstances of each case.

Does use of a trademark for clothing preserve its protection for jewellery?

Under French and European Union law, a trademark may be subject to revocation if it has not been put to genuine use for an uninterrupted period of five years, unless there are proper reasons for non-use. Revocation may be limited to the goods for which genuine use has not been demonstrated. Consequently, using a trademark for clothing will not necessarily be sufficient to maintain its protection for jewellery.

Can the sale of counterfeit jewellery on an online platform give rise to liability for the seller?

Marketing jewellery that infringes a protected trademark may constitute trademark infringement. The trademark owner may notably request the removal of the infringing listings and initiate legal proceedings against the seller. Depending on the circumstances, measures may also be sought from the platform concerned.

Can a company protect the design of a piece of jewellery independently of its trademark?

The appearance of a piece of jewellery may benefit from design protection where the applicable requirements are met, particularly novelty and individual character. It may also benefit from copyright protection, provided that it constitutes an original work reflecting the author's personality through free and creative choices.

What should a company do if it discovers that a competitor is using a trademark similar to its own?

The first step is to assess the likelihood of confusion between the signs, particularly in light of the goods or services concerned, and to determine the scope of the earlier rights. Depending on the circumstances, several courses of action may be considered: opposition proceedings if the trademark application is still pending, invalidity proceedings if the trademark has already been registered, or trademark infringement proceedings where the proprietor's rights have been infringed. An amicable settlement may also be sought. The choice of strategy depends on the legal circumstances and the commercial interests at stake in the dispute.

Introduction

The increasing integration of agentic artificial intelligence into business operations raises new legal questions. Unlike traditional AI systems, which generally produce responses or recommendations, autonomous AI agents can make decisions and carry out actions without systematic human intervention. In particular, they may place orders, interact with business partners, publish content or process confidential data. But who is responsible when an AI agent enters into an unauthorized contract, infringes intellectual property rights or discloses sensitive information? As AI has no legal personality, it cannot itself be held legally liable for its actions. Responsibility must therefore be determined among the various parties involved in its development, deployment and use, taking into account their respective legal obligations, the authority granted to the system and the measures implemented to prevent foreseeable risks.

Why does agentic AI change the legal risk assessment?

From generating an answer to carrying out an action

Unlike a generative AI assistant mainly used to produce content, an AI agent can plan and carry out a sequence of actions to achieve a set objective, using various digital tools and services, without systematic human validation.

Its discretion over how to achieve the objective makes certain outcomes difficult to anticipate. The EU definition of an AI system covers varying levels of autonomy; technical independence, however, does not establish separate legal capacity.

Consider a hypothetical marketing department instructing an agent to launch a campaign. In pursuit of the deadline, it buys stock images, reproduces a protected illustration and distributes advertisements on several platforms. The objective was authorised, but some of the means were not. This example highlights why businesses must monitor intermediate actions, not merely evaluate the final deliverable.

Who is liable for contracts and harm caused by an AI agent?

The business deploying the agent and the authority it appears to hold

If an agent negotiates or pays using corporate credentials, the business is exposed to the legal consequences of the transactions carried out.

However, the agent’s technical autonomy confers on it neither legal personality nor any power of representation of its own. Whether the business is bound must be assessed in light of the conditions under which the agent was deployed, the permissions granted and the circumstances of each transaction.

Under French law, Article 1156 of the Civil Code protects, under certain conditions, a third party who legitimately believed in a representative’s authority. Its application to transactions carried out by an AI agent cannot, however, be presumed, as such an agent cannot be legally equated with an authorised representative.

To limit these risks, businesses should precisely define the authorised transactions, set financial caps and require human approval for the most sensitive commitments.

Providers, integrators and deployers: different sources of liability

Where an AI agent causes harm, the liability of each party must be assessed in light of its respective role in the design, integration, deployment and use of the system. A design defect may implicate the provider; unsafe customisation, the integrator; inadequate monitoring, the deploying business. Under the general fault-based rules of French civil law, fault, damage and causation must be established. Using AI does not automatically make every participant liable, nor does unpredictability automatically release them from responsibility.

The Canadian decision Moffatt v. Air Canada, 2024 BCCRT 149 illustrates the issue: the airline was held liable for incorrect information supplied through its chatbot. This foreign decision concerned a conversational assistant rather than an autonomous agent, and is not binding in the EU. It nevertheless undermines the assumption that a company can escape responsibility by describing its interface as a separate entity.

For further information on AI liability for infringing third-party rights, we invite you to read our article “Can AI be held liable for infringement or plagiarism?”.

How do the EU AI Act and related laws allocate obligations?

The AI Act governs functions, not a universal right to compensation

The EU AI Act distinguishes between providers and deployers. For high-risk systems, it establishes duties concerning documentation, monitoring and human oversight, subject to the applicable implementation timetable. Substantial modifications or changes in intended purpose can also shift certain provider obligations along the supply chain (Article 25 of the AI Act). Importantly, the AI Act does not itself create a comprehensive civil-liability regime: claims must be assessed under private-law and sector-specific rules.

The revised Product Liability Directive (EU) 2024/2853 expressly covers software. Member States must transpose it by 9 December 2026; the revised framework concerns products placed on the market or put into service after 9 December 2026. This does not turn every mistaken AI response into a defective-product claim.

For further information on the AI Act, we invite you to read our article “The EU AI Act and Its Implications for Global Business”.

Personal data and online platforms: context-specific duties

An agent arranging business travel or contacting prospects may process identities, contact details and sensitive information. Under the GDPR, the controller–processor distinction depends on who determines the purposes and means of processing, not automatically on AI Act labels. France’s data protection authority, the CNIL, recommends documenting responsibilities, risks and security controls. Where an agent publishes content through hosting services, the Digital Services Act may provide notice-and-action procedures for reporting illegal material without shifting all responsibility for the agent to the host.

For further information on how AI and the GDPR interact, we invite you to read our article “AI and Data Privacy”.

How can intellectual property infringements by AI agents be prevented?

Control sources, permissions and external publication

Relevant risks include unauthorised copying of copyrighted works, misuse of distinctive signs, misleading visuals and disclosure of trade secrets. An agent connected to stock-image libraries, advertising dashboards or code repositories may repeat these acts within minutes. Companies should verify licences before granting access, restrict available sources and require human review before commercially significant material is released.

For detailed guidance on output checks, we invite you to read our article “How can copyright infringement be avoided when using artificial intelligence?”.

What governance should companies establish before deployment?

Effective control requires an auditable chain of decisions, proportionate to the consequences of the agent’s actions. Contractual safeguards should operate alongside technical restrictions that demonstrably work:

• Define the operating mandate: objectives, permitted applications, accessible data and financial thresholds;
• Gate critical actions: obtain human approval for payments, publications, contractual commitments and sensitive transfers;
• Map suppliers and contracts: allocate duties relating to licences, incidents, assurances, audits and cooperation;
• Preserve evidence: retain instructions, activity logs, content versions, alerts and emergency shutdown procedures.

For relevant high-risk systems, Article 26 of the AI Act specifies deployer obligations relating, among other matters, to monitoring and human oversight. Compliance is not a policy stored on a server: safeguards need testing, actual use and reassessment following significant changes.

For further information on the use of AI within companies, we invite you to read our article “Can artificial intelligence be freely used in the workplace?”.

Conclusion

Autonomous AI liability is not a legal vacuum. It follows the acts performed, the risks that could reasonably be anticipated, the powers enabled and each organisation’s legal obligations. As agents gain freedom to act, enforceable contractual limits, controlled access, intellectual property clearance and reliable evidence of system behaviour become essential.

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

Dreyfus Law Firm works in partnership with a global network of attorneys specialising in intellectual property.

Nathalie Dreyfus, with the support of the entire Dreyfus team

Q&A

Must an autonomous AI agent tell a customer that it is not human?

In the situations covered by Article 50 of the AI Act, individuals must be informed that they are interacting with AI, subject to statutory exceptions. The nature of the interface and the respective roles of the provider and deployer matter.

What clauses should a contract with an AI agent provider include?

The contract should, in particular, set out each party’s obligations, security and confidentiality guarantees, the conditions for data use and intellectual property rights. It is also essential to include clauses on liability, incident management and the arrangements for auditing and monitoring the system.

Does cyber insurance cover losses caused by autonomous AI?

Not necessarily. Coverage depends on the policy wording, including professional negligence, automated acts, third-party IP claims, notification conditions and applicable exclusions, limits and deductibles. An explicit review of AI-related risks is advisable.

What if an AI agent sends personal data to a supplier outside the EU?

The transfer requires an appropriate GDPR mechanism, such as an adequacy decision or standard contractual clauses together with supplementary safeguards where needed. Businesses should identify the locations of infrastructure and subprocessors.

Can an autonomous AI system be named as the inventor on a patent application?

Under the current European framework, the named inventor must be a natural person. AI-assisted inventions may still be patentable, but the human inventive contribution and the usual patentability conditions must be established.

For further information on AI and patent law, we invite you to read our article “Patents and the question of AI as inventor: what are the prospects following recent decisions?”.

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

Checking whether a plant variety is protected involves much more than searching for a name. A reliable analysis identifies the botanical species and official denomination, determines the intended markets, and cross-checks results from INOV, CPVO Variety Finder and UPOV PLUTO against the competent authorities' publications. The aim is to distinguish a pending application from a granted plant breeder's right (PBR), determine whether protection remains in force and avoid treating an entry in a variety catalogue as evidence of an exclusive intellectual property right.

Identify which right and territory must be checked

Separate plant breeders’ rights from variety listing

French national plant variety protection is governed in particular by Article L. 623-4 of the French Intellectual Property Code. At EU level, Council Regulation (EC) No 2100/94 establishes a unitary Community plant variety right (CPVR). Entry on an official national variety list is connected with the marketing of certain seeds and plant material; it does not in itself establish that a PBR has been granted. Conversely, a French right does not extend automatically throughout the European Union. Article 92 of the Regulation prohibits cumulative national and Community protection for the same variety.

For further guidance on applying for EU protection, we invite you to consult our article: “Filing a plant variety right in the European Union: what comprehensive legal and administrative checklist should be followed to secure your rights?”.

Identify the variety unambiguously

The starting data should include the botanical name, registered variety denomination and, where available, the UPOV taxon code. The breeder's, applicant's or holder's name and file number can resolve apparent duplicate entries. Earlier denominations and provisional breeding references should also be recorded: the identifier used when an application was filed may differ from the name appearing on the granted title. The relevant country, intended acts of exploitation and reference date must be fixed before reaching a freedom-to-operate conclusion.

For a closer examination of the relationship between variety denominations and trademarks, we invite you to read our article: “How to secure the choice of a plant variety denomination? CPVO rules, risks of refusal and conflicts with trademarks”.

Search the official sources: INOV, CPVO and UPOV PLUTO

INOV: confirm the status of a French plant variety right

The French National Office for Plant Breeders' Rights (INOV) maintains the relevant national registers. Its Official Gazette, published through GEVES, allows searches by species, denomination and file number. It publishes applications, proposed denominations, grants and refusals, changes of ownership, terminated rights and licenses. A list of certificates in force is a starting point rather than definitive confirmation: later entries must also be considered. The certificate number, owner, grant date and subsequent acts form the core of the French title review.

The electronic database has an important archival limitation: only information entered from 2007 onward is searchable. Official publications from 1971 to 2006 were on paper, and the interface describes the digitized 2007–February 2012 records as unofficial. For historical rights or where formal evidence is required, original gazette publications or confirmation by INOV should be obtained. GEVES describes the French protection system and its publication requirements.

CPVO Variety Finder: select the correct register and examine EU rights

The CPVO Variety Finder combines records from more than 70 countries. To identify protected rights, select the PBR (Plant Breeders' Rights) register type: NLI entries relate to national lists, while COM identifies commercial registers. Identical denominations may generate several hits that do not all reflect rights in force. Each record should be interpreted by reference to the species, filing country, register category, status and date of update, rather than the denomination alone.

Where a CPVR is relevant, its status should be confirmed in the CPVO public applications and titles register and, where appropriate, the Official Gazette. These official records establish the application's progress, the grant decision and any relevant subsequent changes. Variety Finder facilitates a cross-border search but does not replace examination of the actual Community title.

UPOV PLUTO: broaden the search without treating it as conclusive

The UPOV PLUTO database aggregates information supplied by UPOV members and other contributors, including plant breeders' rights (PBR), national lists (NLI) and some other rights categories. It is particularly valuable for identifying possible protection outside the European Union by denomination or UPOV code. Access requires a WIPO Account; standard searching is free but subject to functional limitations. The UPOV Convention does not create a single worldwide plant variety title.

The official PLUTO terms of use clarify that its contents are not the issuing authorities' official publications, and contributors are not required to provide complete information. An unsuccessful search is therefore not evidence that commercial exploitation is unrestricted. National registers must be checked in each target market. The CPVO also provides a video tutorial on Variety Finder illustrating its search interface.

Assess the legal status and document the decision

Verify the right’s scope, term and subsequent changes

A positive match requires five checks: exact variety identity, protected territory, application versus granted title, expiry and later changes, and current rights holder. Under Article L. 623-13 of the French Intellectual Property Code, the ordinary French term is 25 years from grant, extended to 30 years for specified categories of plants. A nominal term is never proof of continued protection: surrender, lapse or a change of ownership may change the outcome. EU rights last 25 years, or 30 years for vines and trees (Article 19 of the Regulation); their continued validity must be checked in the official CPVO file.

Create an auditable record before a launch or transaction

Before licensing, acquiring or marketing plant material, we recommend preserving dated screenshots, filing numbers, gazette extracts, negative results and any official confirmations. For example, a nursery intending to propagate an ornamental variety sold under a supplier code should first reconcile that code with the registered denomination, check the destination countries and identify the person entitled to authorise propagation. Database searches cannot substitute for a license. Cross-border operators may also benefit from advice from a French intellectual property lawyer familiar with plant variety rights.

For further information on the commercial value of protected varieties, we invite you to consult our previously published article: “Plant Varieties: From Protection to Competitiveness – Building an Effective Intellectual Property Strategy”.

Conclusion

Checking whether a plant variety is protected requires a coordinated review of INOV, CPVO Variety Finder and UPOV PLUTO, followed by verification in the legally relevant official publications. The decisive issue is whether an enforceable title covers the specific variety, territory and period in question. We assist breeders, seed companies and investors with rights clearance, plant variety licensing and infringement matters, helping them secure their breeding investments and commercial operations.

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

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

To receive further IP updates, subscribe to our newsletter and follow our social media accounts through the firm’s website.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

Can a variety sold under a commercial brand be searched using that brand alone?

Not reliably. The trade name used in marketing may differ from the registered variety denomination. Product labels, phytosanitary passports or supplier documentation should be obtained to identify the official denomination or breeding reference before performing a register search.

May a breeder use a protected variety to develop another variety?

Article 15(c) of Regulation No 2100/94 allows certain acts for the purpose of breeding or discovering and developing other varieties. Commercial exploitation of the resulting variety requires separate analysis, particularly where the earlier right may still extend to it.

What is an essentially derived variety and why does it matter?

A distinct variety may nevertheless be predominantly derived from a protected initial variety while retaining its essential characteristics. Under Article 13(5) of Regulation No 2100/94, protection may extend to qualifying derived varieties, making scientific assessment of lineage relevant.

Does purchasing seeds lawfully permit subsequent propagation and resale?

Not automatically. Exhaustion following authorized marketing is subject to exceptions, including further propagation, under Article 16 of Regulation No 2100/94. The contractual terms, intended activity and any applicable statutory exceptions must be examined.

How can an incorrect owner name or variety denomination be corrected in a register?

The authority maintaining the original register should receive supporting documentation, such as an assignment, court decision or evidence of a legal name change. Amending an aggregator's display is not a substitute for the official record's correction or publication.

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

Introduction

A wine label is simultaneously a regulated information medium, a graphic creation and a commercial identifier. Its protection therefore generally relies on several rights: copyright, trademark rights and, where appearance warrants it, design rights, without prejudice to labelling rules and the protection of geographical indications.

Each right serves a different function: copyright protects original expression, trademark law commercial origin, and design law appearance. The same feature may fall within several regimes, whose conditions and evidence differ.

For a broader sector overview, see our previously published article: “How to protect your wines and spirits?”.

Why do wine packaging and labelling require cumulative protection?

Before launch, we recommend separating the relevant assets. The winery name, cuvée name, logo or emblem may be protected as trademarks; illustrations, photographs and graphic layouts by copyright; and the shape of the bottle or box, or the appearance of the label, by design rights. PDOs, PGIs and regulated wine terms, for their part, are subject to their own regimes and cannot be privately appropriated by a single operator.

Copyright: protecting graphic creation and securing ownership

Under French law, Article L.111-1 of the French Intellectual Property Code grants copyright from the moment a work is created. A wine label may therefore be protected without registration if it reflects original creative choices, for example in the illustration, photograph, composition or typographic treatment. Article L.112-2 of the same Code refers in particular to graphic, typographic and applied-art works.

Ownership is often decisive. Commissioning a label from an agency or designer does not automatically transfer exploitation rights. The assignment must be formalised in writing and specify the rights assigned and the scope, purpose, territory and duration of exploitation, in accordance with Article L.131-3 of the French Intellectual Property Code. Source files, dated versions and contracts must be preserved.

Recent case law shows what is at stake. In a judgment of 20 November 2025, the Douai Court of Appeal found infringement against a Champagne house that had bought a sculpture from an artist and then reproduced it on its labels, packaging and website (Douai Court of Appeal, 1st Chamber, Section 2, 20 November 2025, RG No. 24/00114). Ownership of the physical object confers no right to exploit the work (Article L.111-3 of the French Intellectual Property Code), and the artist’s tolerance over several years did not amount to an implied assignment. The court also rejected the argument that the reproduction was merely incidental: the work contributed directly to the product’s visual identity and commercial appeal.

Conversely, an estate that exploits a label under its own name benefits, as against infringers, from a presumption of copyright ownership as long as the author does not come forward (Cass. 1re civ., 24 March 1993, No. 91-16.543). This presumption makes it easier to act against an imitator, but it does not protect the estate against the creator: only a written assignment does.

Trademarks: protecting distinctive signs without monopolising origin

Trademark registration protects the signs that identify the commercial origin of a wine: name, logo, emblem, slogan and sometimes the figurative presentation of the label. The sign must be distinctive, available and lawful. Article L.711-2 of the French Intellectual Property Code excludes, among other things, descriptive or misleading signs and signs conflicting with protected designations of origin, geographical indications or traditional wine terms.

Bottle shapes may also be considered for three-dimensional trademark protection, but the distinctiveness threshold is demanding. In Fränkischer Weinbauverband v EUIPO, T-68/18 (24 September 2019; judgment available in French and German only), the General Court upheld the refusal to register a wine bottle shape as a three-dimensional trademark, reiterating that only a shape which departs significantly from the norms or customs of the sector can function as an indication of origin. A shape that is merely attractive or original is not, for that reason alone, distinctive.

The choice of name also calls for particular care. Under French law, the terms “château” and “clos” are reserved for wines with a protected designation of origin made from grapes harvested on the plots of an estate bearing that name and vinified on that estate (Article 7 of Decree No. 2012-655 of 4 May 2012). A trademark built around these terms therefore cannot be used on wines that do not meet those conditions, including under a licence.

Designations of origin are also protected against any evocation. In Champanillo of 9 September 2021 (C-783/19), the Court of Justice of the European Union held that this protection also covers signs designating services and does not require any similarity between the products: it is enough that the sign triggers in the consumer’s mind a sufficiently direct and unequivocal link with the product covered by the designation. A cuvée name, slogan or graphic element recalling a designation to which the wine is not entitled may therefore be challenged, even without literal reproduction.

Design rights: protecting the appearance of wine packaging

Design law complements these protections. Articles L.511-1 and L.511-2 of the French Intellectual Property Code cover the appearance of a product, including lines, contours, colours, shape, texture and ornamentation, and also cover packaging, presentations, graphic symbols and typefaces. Protection requires, in particular, that the design be new and have individual character.

Where packaging is intended to become a durable visual signature, a registered design can define the claimed appearance with precision and make the protected scope easier to evidence.

Since 1 May 2025, the reform of EU design law (Regulation (EU) 2024/2822) has modernised this regime: Community designs have become EU designs, the definition now covers animated and digital features, and the Ⓓ symbol may be used to signal registration.

Two mechanisms are particularly useful for wine. The unregistered EU design protects the appearance of packaging for three years from its first disclosure within the EU, but only against copying. The twelve-month grace period also allows a filing after a first presentation, for instance at a trade fair, without that disclosure destroying novelty.

To explore this further, see our article: “Design law: How can it be turned into a true strategic asset?”.

Regulatory labelling: integrating compliance requirements without weakening protection

Intellectual property must be considered alongside wine labelling requirements. The French consumer protection authority, the DGCCRF, sets out the mandatory information that must appear on wine labels and, for wines subject to the rules applicable since 8 December 2023, the requirement to provide a list of ingredients and a nutrition declaration. Certain information may be provided electronically, in particular through a QR code, subject to specific conditions, while allergens and the energy value must remain displayed on the physical label.

These regulatory requirements should not be confused with elements that may qualify for intellectual property protection. Compliance of a label with applicable labelling rules does not establish either its availability for registration as a trademark or its originality for copyright purposes. Conversely, holding intellectual property rights never exempts an operator from complying with the rules governing the presentation of wine.

Building a protection strategy before launch

The safest approach is to treat the packaging as a portfolio of assets before any commercial disclosure:

• Map the name, logo, illustrations, bottle shape, ornaments and label variants;
• Carry out clearance searches for trademarks, designs, company names and relevant geographical signs;
• Secure written assignments from designers, agencies, photographers and other contractors;
• File strategic trademarks and designs before launch and preserve creation evidence for copyright purposes, notably through an e-Soleau filing with the INPI;
• File a customs application for action so that goods suspected of infringing trademarks, designs, copyright or geographical indications can be detained;
• Implement monitoring of filings, marketplaces, websites and domain names to identify imitations at an early stage.

Where an imitation falls short of infringement, unfair competition and parasitism may take over, but success depends on proving an individualised economic value. On 4 June 2025 (No. 24-11.507), the Commercial Chamber of the French Cour de cassation dismissed a claim brought by a Champagne house against a Crémant producer that had also adopted a metallic bottle sleeve and advertising centred on drinking the wine over ice. The sleeves differed significantly, these codes belonged to a visual universe common in the sparkling wine sector, and the notoriety of the range had not been established at the relevant date. The visual codes of packaging are therefore best protected first by registered IP rights, before being defended through civil liability.

For practical guidance on how to prepare a design filing, see also: “What technical recommendations should be followed when filing a design in order to ensure effective legal protection?”.

Conclusion

Protecting wine packaging and labelling relies on complementary protections. Copyright secures original creative expression, trademark law protects signs indicating commercial origin, and design rights strengthen control over the product’s appearance. That architecture should be built at the design stage, alongside regulatory compliance and the protection of geographical indications.

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

Can a wine label feature the portrait, name or signature of a public figure?

Such use requires consideration of rights extending beyond intellectual property. A person’s name, image or signature may be protected by image rights, personality rights and, depending on the circumstances, trademark rights. An authorisation should generally specify the relevant media, territories, duration of use and any associated promotional exploitation. The situation must also be examined where the individual is deceased, as certain rights or interests may continue to be exercised by their heirs.

Can a well-known work of art be reproduced on a wine bottle?

The fame or age of an artwork is not sufficient in itself to permit its reproduction. It is necessary to determine whether the economic rights remain in force, identify the relevant rights holder and assess the conditions under which the work may be reproduced, adapted or incorporated into commercial packaging. Even where the underlying artwork has entered the public domain, the photograph used to reproduce it may itself be protected by separate rights. In France, the author’s moral rights must also be taken into account.

Can a QR code displayed on a wine label benefit from specific protection?

A QR code, considered merely as a technical means of accessing information, will generally not qualify for copyright protection in itself. However, its graphic treatment, its original integration into the label, or distinctive signs used alongside it may, depending on the circumstances, qualify for copyright, trademark or design protection. The destination of the QR code should also be secured, particularly where it directs consumers to commercial content or to a webpage that may evolve over time.

What rights should be addressed when a wine label is created as part of a collaboration with an artist or a luxury brand?

A collaboration generally involves several separate assets: artwork, the artist’s name or signature, the partners’ trademarks, photographs, promotional materials and digital campaign content. The agreement should determine who may use each asset, on which products, in which territories, for how long and for which purposes. Particular attention should be paid to limited editions, reissues, packaging variations and subsequent use of the creation in the partners’ archives or corporate communications.

Can a foreign distributor register the name or packaging of a wine in its own name?

The mere distribution of a product does not, in itself, confer any right to appropriate its distinctive signs. Nevertheless, in some jurisdictions, a local distributor or commercial partner may attempt to register the brand name, logo or packaging element in its own name. Distribution agreements should therefore expressly regulate intellectual property filings, determine ownership and provide for the transfer or return of relevant rights when the commercial relationship ends. Local monitoring of filings may also help detect an unauthorised initiative at an early stage.

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.