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The International Trademark and the New Members of the Madrid Protocol

Written by sacha.tuillier@dreyfus.fr20/11/2024

The Madrid System, administered by the World Intellectual Property Organization (WIPO), offers businesses a simplified way to protect their trademarks internationally. With the regular addition of new member countries, such as Qatar, in May 2024, the system continues to expand, providing companies with new business opportunities in strategic territories. But how do these new memberships affect the landscape of international trademarks?

The International Trademark and Its Benefits

The Madrid System is based on two international treaties: the Madrid Agreement of 1891 and the Madrid Protocol of 1989. These two instruments allow businesses to file a single international trademark application, designating the countries where they wish to protect their mark.

However, before a company can file such an application, it must first register its mark at the national level in the country where it is established. Following the registration of the international trademark, a dependency link is created with the national mark for a period of five years. Consequently, the loss of rights on the national mark automatically results in the same loss for the international mark in all designated countries.

Through the Madrid System, businesses can benefit from uniform protection of their mark in multiple countries while reducing costs and administrative steps. A single application also simplifies the management of trademark renewals, which are valid for a period of ten years and can be renewed indefinitely.

Qatar’s Accession and Its Implications for International Companies

Qatar became the 115th member of the Madrid Protocol on May 3, 2024, marking a new phase for the Gulf region. It is the fourth country out of six Gulf Cooperation Council (GCC) members to join. This accession allows Qatari companies to register their trademarks internationally through a single procedure while facilitating access to foreign markets. Conversely, foreign businesses can now more easily protect their trademarks in Qatar by designating the country directly in their international trademark application.

For international businesses, the accession of new countries like Qatar to the Madrid Protocol opens up unprecedented commercial opportunities in markets that were previously less accessible. It enables the extension of trademark protection in strategic geographical areas, particularly given the rapid economic growth in the Middle East.

Challenges to Anticipate with New Members

Although the Madrid Protocol offers a centralized filing process, each member country retains its own national trademark laws. This means that even if a trademark is accepted at the international level, it may face challenges in some newly acceded countries. National offices may, for example, reject a trademark based on their specific criteria or extend the processing times, especially in cases of opposition.

Furthermore, companies must be prepared to face opposition in the designated countries. These oppositions may be based on pre-existing rights, leading to prolonged disputes or partial refusals of protection in certain countries. Opposition procedures may vary across jurisdictions, and the timelines can differ significantly.

Conclusion

The ongoing expansion of the Madrid System, with new accessions such as Qatar’s, strengthens the system’s global reach, facilitating access to new business markets. However, these advantages come with legal and administrative challenges, particularly linked to the national specificities of member countries. A proactive risk management approach, particularly regarding oppositions and variations in protection criteria, is essential for companies seeking to optimize their international trademark strategy.

Dreyfus Law Firm provides expert support at every international trademark registration and management stage. Our deep understanding of legal subtleties and our experience in global markets ensure optimal protection tailored to your specific needs.

Dreyfus Law Firm works in close collaboration with a global network of specialized intellectual property lawyers.

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Entry into Force on May 1, 2025 of the “Designs Package”: Modernizing the EU Framework

Written by Dreyfus19/11/2024

The recent publication of Regulation (EU) 2024/2822 and Directive (EU) 2024/2823 marks a key milestone in the modernization of the European legal framework for designs. Taking effect on May 1, 2025, these reforms aim to harmonize, simplify, and adapt the system to the digital age.

Harmonization and modernization 

The term “Community design” has been updated to “European Union design” (EUD). This symbolic change modernizes the terminology while aligning it with that of European trademarks. To enhance identification, a visual symbol Ⓓ has been introduced, providing greater coherence within the system.

The reform expands definitions to incorporate technological advances. Animations, graphical interfaces, and digital twins are now included in the scope of protection, reflecting their essential role in modern industries. The concept of “product” has also been extended to non-physical forms, covering items used in video games or virtual environments such as the metaverse.

Filing procedures are now more flexible and better suited to creators’ needs. Applications can group up to 50 designs without classification constraints, and various digital formats are now accepted for design representations. Additionally, creators can defer publication for up to 30 months, offering strategic discretion to protect their designs while planning their market launch.

To promote accessibility, particularly for small and medium-sized enterprises (SMEs) and independent designers, some fees have been reduced or eliminated. Filing fees, for example, have been lowered, and the costs associated with the transfer of rights have been completely removed. However, a notable increase in renewal fees is expected. Previously, renewal fees for a 25-year period ranged from €90 to €180. Under the new framework, fees will start at €150 and rise to €700 by the fourth renewal cycle. This adjustment may disproportionately affect industries with longer product life cycles, such as automotive and industrial design, compared to industries like fashion, which are less impacted by the fee increase.

Enhanced protection of rights 

The EU reform clarifies key aspects of design visibility. From now on, visibility is no longer a general requirement for protection, except for components of complex products. This revision eliminates past ambiguities and extends protection to a wider range of contemporary and diverse designs.

A major innovation is the introduction of the repair clause. This provision removes legal protection for spare parts necessary to restore the appearance of a complex product, limiting exclusive rights in this domain. The measure strikes a balance between design protection and competition in the spare parts market. However, it requires manufacturers to inform consumers about the origin of the products used for repairs, enhancing transparency and enabling informed choices.

In the realm of 3D printing, the reform introduces an exclusive right allowing rights holders to prohibit the creation, dissemination, and use of digital files capable of reproducing a protected design via 3D printing. Although this technology remains relatively uncommon in households, the provisions anticipate its potential growth, safeguarding creators’ rights in this emerging field.

Lastly, the reform extends rights holders’ protections to goods in transit within the European Union, even if their final destination is outside EU territory. This change strengthens the enforcement of intellectual property rights in a globalized context, addressing the challenges posed by counterfeit goods in international trade.

Alternative dispute resolution and legal certainty 

The reform encourages EU Member States to establish administrative mechanisms for contesting the validity of national designs. Inspired by the EUIPO model for the European trademark (oppositions and cancelation actions), this approach offers a less expensive and faster alternative to traditional judicial procedures.

Additionally, the requirement for first disclosure within the EU has been abolished. Now, the initial disclosure of a design outside the EU can confer protection as an unregistered design. This change eliminates ambiguities from previous regulations, an important aspect in the post-Brexit context, where many designers chose the UK for their first presentations. This clarification further harmonizes the legal framework and reduces uncertainties for creators operating across multiple markets.

Key challenges to monitor 

While the reform has integrated significant advances for the digital age, uncertainties remain regarding the protection of AI-generated designs. This rapidly growing area raises fundamental questions about the adequacy of current legal frameworks, making it essential to ensure effective protection tailored to these new forms of creation.

Additionally, the growing divergences between EU and UK regimes, exacerbated by Brexit, require close attention. Creators and businesses must exercise caution to harmonize their design protection strategies in these two now-distinct territories, minimizing legal and commercial risks associated with this fragmentation.

Timeline and future prospects 

The new provisions will take effect in May 2025 for the regulation, while Member States have until December 2027 to transpose the directive into their national laws. This phased approach aims to ensure a harmonized application of the new rules across the European Union, offering creators an adjustment period.

The EU design reform represents a significant step forward in modernizing the legal framework and addressing 21st-century challenges. By clarifying key concepts, simplifying processes, and anticipating technological developments, the European Union offers a robust and inclusive system. For businesses and creators operating in Europe, adapting swiftly to these changes is essential to maximize the protection and competitiveness of their designs.

For assistance with managing and protecting your designs, our intellectual property experts are at your service. Dreyfus Law Firm with an international network of lawyers specializing in Intellectual Property.

 

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Case Study on Trademark Fraud Allegations in France: Hot Couture’s Pierre Cadault from Netflix Hit Series “Emily in Paris”

Written by Dreyfus18/11/2024

Breaking Down INPI’s Landmark Decision: A Tale of Two Industries

 The French National Institute of Industrial Property (INPI) recently addressed an intriguing trademark dispute that caught the entertainment industry’s attention. The case, involving a character name from the popular Netflix series “Emily in Paris,” has illuminated crucial aspects of bad faith trademark registration claims in the entertainment sector. The dispute centered on a trademark registration filed for cosmetics under Class 3, strategically positioned two months after the series premiere. The contested trademark is related to a fictional character portrayed as an extravagant couturier in the series, creating an unexpected intersection between beauty, fashion, and trademark law.

 

The INPI’s investigation delved deep into the chronology of events. Their analysis revealed “insufficient evidence” to establish the trademark holder’s awareness of prior use at the filing date. Despite the character “Pierre Cadault” prominently featured in the series as a renowned fashion designer, the evidence failed to demonstrate that the name “Cadault” alone had achieved meaningful recognition in France during the crucial initial months following the show’s release.

 

The art of proving bad faith: Beyond surface-level analysis

 A pivotal element in the INPI’s decision rested on the distinction between industries. While acknowledging the subtle connection between high fashion and cosmetics, the INPI determined that cosmetics operate in a separate commercial sphere from haute couture. This industry differentiation substantially weakened any presumed connection between the character’s name and the registered trademark category.

 

The INPI emphasized a fundamental principle: “mere awareness” of prior use does not constitute fraudulent intent. The burden of proving bad faith registration demands concrete evidence that the filing was specifically calculated to prevent a third party from utilizing a necessary business identifier. The timing of the registration, occurring two and a half months post-series launch, combined with the absence of communication between parties, significantly influenced the final determination.

 

The INPI’s reasoning revealed a subtle understanding of practical trademark enforcement. The notable absence of any legal action by the trademark holder to prevent the character’s name use in the series substantially undermined claims of malicious intent. This passive approach contrasted sharply with typical bad-faith scenarios, where trademark holders actively pursue cease-and-desist measures or legal proceedings.

 

A framework precision for evaluating bad faith

 The decision carried significant implications for the intersection of entertainment properties and trademark rights. The INPI acknowledged that while obtaining an injunction to prevent character name use would be legally challenging, potential conflicts could arise if Viacom pursued character-based cosmetic products. This nuanced observation highlights the complex relationship between entertainment content and commercial trademark rights.

 

This decision clarifies the framework for assessing bad faith in entertainment-related trademark registrations. The ruling emphasizes the critical importance of substantial evidence, industry context, and practical commercial implications. Future disputes will likely reference this decision’s “balanced approach” to evaluating trademark validity in the entertainment sector.

 

Conclusion

 The INPI’s thorough analysis offers valuable guidance for navigating the complex landscape of entertainment property rights and trademark protection. The decision underscores the necessity of considering both immediate and potential future commercial applications when evaluating trademark registration intent. This forward-looking perspective ensures that trademark protection serves its intended purpose without unduly restricting creative expression in the entertainment industry.

 

The ruling’s subtle approach to analyzing bad faith claims provides a robust framework that balances the legitimate interests of trademark applicants with those of entertainment property rights holders. As the entertainment industry continues to evolve, this decision will serve as a crucial reference point for resolving similar disputes, ensuring fair and practical outcomes in the dynamic intersection of entertainment and trademark law.

 

 At Dreyfus Law Firm, we recognize that the entertainment and media landscape present unique challenges for trademark protection, as evidenced by the recent “Emily in Paris” case. Our expertise lies in navigating these complex intersections between creative content and trademark rights. We guide entrepreneurs and companies through the intricate process of establishing and defending their trademark rights, particularly when industries overlap, as we saw with the fashion and cosmetics sectors in this case. “Bad faith claims” require sophisticated analysis and compelling evidence, but they are insufficient to demonstrate prior use or knowledge. Dreyfus Law Firm excels at building comprehensive strategies that consider both immediate concerns and future commercial implications. Our team prides itself on helping clients understand the practical aspects of trademark enforcement while ensuring their intellectual property assets are properly protected across multiple industries and jurisdictions.

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Securing Creations: The Blueprint to French Intellectual Property Dispute Resolution

Written by Dreyfus05/11/2024

French intellectual property (IP) law, deeply rooted in civil law tradition, is designed to ensure robust protection and enforcement of IP rights. The French legal framework for intellectual property disputes encompasses civil and criminal remedies, specialized courts, and a highly structured procedural system. This article delves into the intricacies of IP dispute resolution in France, focusing on trademark enforcement, litigation procedures, available remedies, and alternative dispute resolution (ADR) mechanisms while highlighting the essential balance between civil and criminal liabilities in IP infringement cases.

Trademark Enforcement in French Law

Trademark protection in France is governed by the Intellectual Property Code, which outlines the legal avenues available to trademark owners in cases of infringement. The law offers a dual approach whereby acts of infringement can be classified as both criminal and civil offenses. In most cases, trademark disputes are handled by civil courts. However, certain violations may lead to criminal prosecution.

 

For criminal liability, the stakes are high. Trademark infringement can result in substantial penalties, with fines reaching up to 400,000 euros and imprisonment for up to four years for individuals. Legal entities may face fines of up to 2 million euros. While these penalties underline the seriousness with which France views IP violations, the majority of trademark disputes remain within the civil court system, with ten designated courts spread across France, including key jurisdictions like Paris, Marseille, and Lyon.

 

Procedural Pathways in IP Disputes

A trademark infringement lawsuit in France typically begins with a writ of summons, a procedural document laying out the nature of the dispute, legal arguments, and remedies sought. The summons must also contain evidence of the claimant’s attempt to resolve the issue amicably before resorting to litigation. Once filed, both parties are required to be represented by legal counsel throughout the proceedings.

 

The civil litigation process is notably distinct in France due to the absence of a discovery phase. Instead, a claimant can request a search and seizure procedure commonly referred to as “saisie-contrefaçon.” This powerful mechanism enables the claimant, with the assistance of a bailiff, to collect evidence of infringement, including seizing goods and related documents. To initiate this procedure, the claimant must first obtain court authorization, which is granted upon showing a reasonable suspicion of IP infringement. Once the “saisie-contrefaçon” is completed, the claimant has a strict timeline, typically 20 business days or 31 calendar days, to file the main proceedings, failing which the evidence seized may become inadmissible.

 

French courts also adhere to a stringent timeline for rendering decisions in first-instance proceedings, with judgments typically issued within 24 months. This relatively predictable timeframe particularly appeals to right holders seeking timely enforcement of their rights.

 

Burden of Proof and Remedies

As in most civil legal systems, the burden of proof in French IP law lies with the claimant. This responsibility extends to establishing both the occurrence of the infringing act and the likelihood of continued or imminent infringement. In some cases, particularly when seeking provisional relief, such as a preliminary injunction, the claimant must demonstrate that the trademark violation appears likely or is about to occur.

 

French courts offer both provisional and permanent remedies. Provisional remedies can be awarded during injunctive proceedings and may include an order prohibiting further infringement, the seizure of suspect goods, or a requirement for the infringer to provide financial guarantees. Permanent remedies are granted once the court rules on the merits of the case, which may involve the destruction or recall of infringing goods, as well as orders to cease all infringing activities. Additionally, monetary remedies are calculated based on the economic harm caused to the trademark owner, the profits made by the infringer, and any moral damages. However, French law does not provide for punitive damages, and courts retain discretion when determining the final award.

 

Alternative Dispute Resolution: A Growing Trend

While litigation remains the primary method for resolving IP disputes in France, alternative dispute resolution (ADR) techniques, such as mediation and conciliation, are slowly gaining traction. The French government and courts are actively encouraging the use of ADR as a cost-effective, confidential, and flexible means of resolving IP conflicts. One of the key advantages of ADR lies in its ability to preserve business relationships while offering swift resolution, as parties can enter into ADR before or after litigation has commenced.

 

That said, ADR, in the context of intellectual property disputes, carries certain limitations. For instance, rights holders seeking immediate relief, such as a preliminary injunction or seizure order, must rely on the courts, as ADR mechanisms do not provide such enforceable interim measures. Despite these limitations, the growth of ADR signals a shift toward more collaborative methods of resolving trademark and other IP disputes in France.

 

Conclusion

French intellectual property dispute resolution offers a comprehensive, well-structured system that balances civil and criminal liabilities, provides robust enforcement mechanisms, and promotes alternative means of conflict resolution. Trademark owners benefit from clearly defined procedural rules, access to specialized courts, and a range of both provisional and permanent remedies. As the role of ADR continues to grow, the flexibility of the French system ensures that right holders can tailor their enforcement strategies to the unique demands of each case. Through a combination of litigation, administrative enforcement, and ADR, France remains a key jurisdiction for the protection of intellectual property rights.

 

With our team’s mastery of French Intellectual Property Law Dispute Resolution, trademark enforcement, civil and criminal litigation, procedural efficiency, and the nuanced application of search and seizure procedures “saisie-contrefaçon”, Dreyfus Law Firm provides clients with a decisive edge in safeguarding their intellectual property rights. The firm’s intimate understanding of the French legal landscape and its strategic use of provisional and permanent remedies ensure swift and effective resolution of IP disputes. Companies seeking to protect their valuable assets can trust Dreyfus Law Firm to deliver robust defense strategies, minimize litigation costs, and, where appropriate, navigate alternative dispute resolution methods to achieve favorable outcomes. Their expertise in this complex area of law makes them the optimal choice for businesses aiming to secure their intellectual property in the competitive French market.

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Blockchain Technology: A Revolution in Legal Evidence?

Written by Dreyfus30/10/2024

In the field of intellectual property law, the matter of evidence is crucial. Traditionally, electronic timestamping offered a solution. However, these methods remain limited by national frameworks. Conversely, blockchain is a global, reliable, accessible alternative that could become a prominent international standard.

 

How Blockchain Evidence Works

Blockchain is a decentralized technology characterized by transparency and security. Unlike centralized systems, it operates without a single control authority. Each transaction is recorded in a shared ledger, creating a chain of tamper-proof information. Public blockchains are accessible to all, similar to an indestructible public ledger, while private blockchains restrict access. This structure ensures data remains immutable and unalterable.

The system’s security is maintained by miners, who validate transactions by solving complex calculations in exchange for rewards, ensuring the integrity of the information.

 

How to Use Blockchain for Proof

  1. Create a Hash: The document is converted into a unique string of numbers and letters (a hash).
  2. Record on the Blockchain: The hash is registered in the blockchain through a minor financial transaction, making it permanent.
  3. Verification: To prove authenticity, simply compare the current document’s hash with the one on the blockchain. A match confirms its authenticity.

 

Traditional Solutions vs. Blockchain

Traditional evidence solutions, although effective, are often limited to national jurisdictions, posing obstacles internationally. Procedures like notary records or the Soleau envelope do not offer universal protection. Blockchain, however, being open source, offers universal timestamping based on mathematical rules, lowering entry barriers and providing an immutable and traceable proof system.

 

Various Use Cases

  • Creation Protection:
    • Ongoing Protection: Blockchain timestamps each version of a creation (e.g., fashion, jewelry), providing continuous coverage, even for unfinished works.
    • Pre-Patent Protection: During R&D phases, blockchain proves the existence of unpatented inventions, avoiding the need for immediate patent filing.
    • Contributor Traceability: In collaborative projects, blockchain identifies each contribution, reducing authorship disputes.
  • Electronic Signatures: Introduced in France in 2000 and standardized in the EU by the eIDAS Regulation, electronic signatures now include three types: simple, advanced, and qualified. Blockchain is increasingly used in this area to ensure integrity and authenticity, meeting the criteria for simple and advanced signatures. With the implementation of eIDAS 2 in 2024, blockchain could be integrated into qualified electronic signature systems.

 

Current Limitations and Future Prospects

In France, the legal recognition of blockchain evidence is mainly limited to the financial sector. For example, Ordinance No. 2016-520 authorized blockchains to record and transfer unlisted financial assets, like minibonds. Ordinance No. 2017-1674 and Decree No. 2018-1226 further extended their use of shared electronic financial security records. The PACTE Law of 2019 strengthened this by authorizing the recording and circulation of financial assets on the blockchain, including stocks and bonds.

At the European level, Regulation 910/2014/EU, effective since July 1, 2016, validates electronic signatures and timestamps, implicitly including blockchain, as admissible evidence in court, granting them similar legal value to handwritten signatures.

French law relies on a mixed system of evidence: the principle of freedom of evidence with exceptions for legal proof, mainly applied to legal acts. Perfect proof includes written documents (authentic or private), judicial admissions, decisive oaths, and reliable copies. Imperfect proofs, such as blockchain, are subject to the judge’s discretion and do not have predefined probative value by law.

Therefore, it is advisable to use a bailiff’s report. While verifying a digital fingerprint in the blockchain is technically simple and achievable via open-source tools, the judge cannot perform this manipulation. A bailiff, acting as a judicial officer, provides this report, offering technical proof to the judge and facilitating the use of blockchain evidence in legal proceedings.

 

Conclusion

Although blockchain is still considered imperfect proof under French law, its recognition is growing. It could soon become a global standard, surpassing traditional methods. Blockchain is redefining the framework of evidence in intellectual property, offering a solution adapted to the challenges of an international market.

Dreyfus Law Firm offers expert guidance at every stage of creation protection. Our mastery of legal subtleties and global market experience ensures optimal, tailored protection for your specific needs.

 

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Co-branding: Strategy, Opportunities, and Challenges

Written by Dreyfus28/10/2024

By Dreyfuslawfirm

 

Co-branding has emerged as an indispensable strategy for companies aiming to extend their influence, enhance brand equity, and foster product innovation. However, this form of multi-brand collaboration necessitates meticulous planning and rigorous scrutiny due to its inherent risks. This article delves into the essential elements of co-branding, both from marketing and legal perspectives, while also identifying the opportunities and challenges associated with these strategic alliances.

 

Strategic Alignment and Value Convergence

The success of co-branding hinges on the precise strategic alignment between partner brands. These entities must share fundamental values and pursue compatible strategic goals, a condition necessary to establish a seamless collaboration and leverage potential synergies. Furthermore, each brand must target similar or complementary audiences to ensure a positive market impact and maximize the partnership’s overall outcome.

Mutual Benefits and Complementary Competencies

The core of successful co-branding lies in the creation of shared value. Co-branding thrives when each partner leverages its unique strengths: one brand may possess cutting-edge technological expertise, while another has established market recognition. By merging these distinct competencies, brands can offer high-value products or services unattainable independently, generating synergistic outcomes that exceed the sum of individual contributions.

Reputation and Risk Management

The reputation of partners is a critical factor in co-branding initiatives. Associating with a brand that has a questionable or undeveloped reputation can impair the overall image of the initiating company. Thus, thorough due diligence is paramount to evaluate the prospective partner’s stability and ensure their alignment with the project’s dynamics. Risks, including those related to consumer perception, must be identified and thoroughly assessed.

Legal Considerations: Intellectual Property and Contractual Agreements

Legal considerations are fundamental in ensuring the stability and viability of a co-branding partnership. Intellectual property (IP) rights concerning trademarks, logos, and co-created content must be clearly defined from the outset. Comprehensive contractual agreements are necessary to delineate each party’s roles and responsibilities, including revenue-sharing clauses and financial obligations. These agreements should incorporate predetermined dispute resolution mechanisms aimed at preventing and managing potential conflicts throughout the collaboration.

 

Quality Control and Consumer Perception

Quality control is another major aspect of co-branding. The perceived quality of co-branded products or services must be maintained to avoid damaging the brand image, which could negatively impact both entities. Quality standards must be established early and adhered to strictly to ensure consistency and protect the reputation of each partner.

 

Recent Statistics: Growth and Evolution of Co-branding

Recent data underscores the growing prevalence of co-branding: approximately 65% of marketing executives view these partnerships as essential for brand growth. Moreover, 71% of consumers report being more inclined to purchase a product co-branded with a trusted brand. These statistics highlight the importance of selecting strategic partners to maximize growth and reinforce consumer trust.

 

Expanding Industries and Digital Integration

Several sectors are distinguished by their effective use of co-branding:

– Technology: Partnerships between technology firms and health applications.

– Food and Beverages: Creation of unique products through collaborations between snack and confectionery brands.

– Fashion: Limited-edition collections that are often highly publicized and impactful.

– Automotive: Integration of advanced technologies through collaborations with high-tech companies.

 

These industries leverage co-branding to innovate, reach new market segments, and create unique value propositions, often utilizing digital strategies such as video marketing on social media platforms.

Challenges and Risks of Co-branding

Despite its numerous benefits, co-branding also presents challenges. Among the most significant are brand dilution, differences in corporate culture, and quality control issues. A major difficulty is ensuring equitable benefit distribution between partners to avoid tensions or resentment. Proactive management, through clear contracts and regular communication, is crucial to prevent these issues and guarantee the partnership’s success.

Conclusion: Optimizing Co-branded Collaborations

Co-branding offers a unique opportunity to expand each brand’s reach and enhance overall credibility, provided that the inherent challenges are fully understood. Rigorous strategic planning, structured risk management, and a clear delineation of roles and responsibilities are essential for maximizing success. With a methodical approach and anticipation of obstacles, companies can effectively leverage the unique advantages of co-branding while mitigating potential pitfalls.

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France’s IP Legislation: Mastering Trademarks in a Global Playground

Written by Dreyfus21/10/2024

The French Intellectual Property Legal Framework: A Comprehensive Overview

The foundation of intellectual property (IP) law in France is a testament to its historical influence on legal traditions and reflects its progressive adaptation to new technological developments and globalization. The French IP system, particularly in the realm of trademarks, is robust, detailed, and harmonized with international conventions. It is structured to protect the creativity and innovations of individuals and companies alike.

 

The Core of French Trademark Law

 France’s trademark law is primarily governed by Law No. 91-7 of January 4, 1991, which was amended by Ordinance No. 2019-1169 of November 13, 2019. These laws are codified in the French Intellectual Property Code (FIPC), which forms the backbone of domestic regulations. The amendments have largely been driven by the need to align French law with broader European Union directives and international standards.

 

Trademarks in France serve as legal instruments that safeguard distinct business identifiers, names, logos, designs, and even sounds by ensuring exclusive rights to their use. The legal system also extends protection to non-traditional trademarks, including motion marks, holograms, and multimedia representations. The core requirements for trademark protection in France are quite clear: a trademark must be capable of distinguishing goods or services from those of others and be capable of being represented clearly in the official registry. The National Institute of Industrial Property (INPI) is the official body responsible for regulating trademarks in France.

 

A Global Player in Intellectual Property

France is not isolated in its legal approach to intellectual property. It actively participates in several key international agreements that shape global IP law. Among these, the Paris Convention for the Protection of Industrial Property (1883) and the Madrid Agreement (1892) have been foundational. Additionally, France’s signature on the TRIPS Agreement (1994) aligns it with international trade obligations, while agreements such as the Nice Agreement (1957) ensure a harmonized classification of goods and services worldwide. These treaties facilitate the international registration of trademarks and create a cohesive framework that allows French businesses to compete globally while protecting their intellectual property.

 

International agreements simplify the process of cross-border trademark registrations and provide mechanisms for French entities to enforce their rights in other jurisdictions. For instance, the Madrid Protocol (1997) and the Vienna Agreement (1973) offer frameworks for international classification and protection of figurative marks.

 

Establishing and Enforcing Rights: The Role of Registration

While registration is not mandatory to establish trademark ownership in many jurisdictions, in France, unregistered trademarks are not afforded legal protection. The concept of “common law” trademarks does not exist in French law. However, owners of well-known marks, defined under Article 6-bis of the Paris Convention, can use provisions under French tort law to prevent the misuse of similar signs. In practical terms, registration with the INPI ensures a more straightforward path to enforcement, including access to specialized courts and legal remedies in infringement cases.

 

Once registered, a French trademark is valid for a period of 10 years, and the registration can be renewed indefinitely. The registration also provides a presumption of validity, simplifying legal disputes related to ownership and use. Notably, the non-use of a trademark over a five-year period opens the door for third-party cancellation actions.

 

Challenging a Trademark: Opposition and Cancellation Proceedings

The French trademark system allows third parties to challenge applications and existing registrations. Once a trademark application is filed, it is published in the Trademark Gazette, opening a two-month window for opposition. Oppositions can be based on prior rights, including existing trademarks, copyright, company names, or geographical indications.

 

Cancellation proceedings are equally vital in maintaining the integrity of the trademark register. Such actions may be based on grounds including the lack of distinctiveness, bad faith, or non-use. The process typically involves multiple exchanges of evidence and legal arguments between the parties. Moreover, if a trademark is found to be misleading, deceptive, or descriptive, it can be invalidated.

 Online and Digital Dimensions of Trademark Protection

As the world becomes increasingly digitized, the protection of trademarks in online environments has gained prominence. Under the Electronic Post and Telecommunications Code, French law provides mechanisms to cancel or transfer infringing domain names. Domain names, which hold significant commercial value, can form part of opposition proceedings if they have established sufficient recognition among the public.

 

Infringement in the online space is treated similarly to traditional forms of infringement, with courts recognizing the unique challenges posed by digital platforms. Trademarks can also be enforced under the French unfair competition law, which extends protection against unfair commercial practices, particularly in cases where foreign well-known trademarks are involved.

 

Licensing and Assignment: Managing Trademark Rights

Trademarks, as valuable business assets, can be licensed or assigned, partially or wholly, for specific goods and services. Licensing agreements, when recorded with the INPI, allow for easier enforcement of trademark rights and enable the licensee to pursue infringement claims if authorized. The assignment of trademarks, which can be for tax purposes or business restructuring, must be executed in writing and signed by both parties.

 

Recording such transactions is not mandatory for validity, but it is crucial for enforceability against third parties. The INPI manages the recorded licenses and assignments with processes designed to be efficient and cost-effective.

 

Conclusion: The Future of French Intellectual Property Law

France’s intellectual property legal framework is a dynamic system that balances tradition with modern innovation. Its alignment with international standards and robust domestic regulations ensures that businesses operating within its jurisdiction can effectively protect and enforce their intellectual property. As new technologies emerge, the French legal system will likely continue to adapt, ensuring that its IP laws remain relevant and responsive to the needs of creators and businesses alike.

 

At Dreyfus Law Firm, our team is well-versed in the intricacies of the French IP legal framework, ensuring that our clients confidently navigate the complexities of trademark registration, enforcement, and international agreements. We understand the unique challenges that arise in today’s digital landscape and are committed to providing tailored solutions that protect your creative assets.

 

By partnering with Dreyfus Law Firm, companies can effectively manage their intellectual property portfolios and safeguard their innovations. Our comprehensive approach facilitates smooth registration processes and equips clients with strategies to tackle potential infringements and disputes. With our guidance, businesses can focus on what they do best, innovating, while we handle the legal intricacies of IP management. Choose Dreyfus Law Firm to ensure your intellectual property is in expert hands!

 

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Likelihood of confusion and trademark distinctiveness : Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO

Written by Dreyfus09/09/2024

Two recent trademark dispute decisions, Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO, provide valuable insights into how the European Union Intellectual Property Office (EUIPO) and the European General Court (EGC) assess similarity, distinctiveness, and the likelihood of confusion between trademarks. These cases highlight the complexities involved in trademark disputes and illustrate the fine lines that can determine the outcome of such cases.

Bar Paris v Paris Bar (T-117/23)

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Background

On June 28, 2019, Superstudio 21 GmbH filed an application for the European Union trademark registration of the sign for foodstuffs and restaurant services. Kantstraße Paris Bar GmbH opposed the registraton based on its earlier German trademark, which covered similar services. Initially, the EUIPO’s Opposition Division upheld the opposition, but this decision was later annulled by the EUIPO’s Board of Appeal (BoA), leading to the General Court’s final decision.

Court Findings

The General Court focused on the descriptive nature of the word elements ‘Paris Bar’ and ‘Bar Paris’, given their association with Parisian culture and gastronomy. Despite their arrangement, these elements were considered lowly distinctive. The inclusion of a Gallic rooster as a figurative element in the contested trademark was deemed as distinctive and dominant as the word elements. However, the court ruled that there was only a low degree of visual similarity on account of the inversed order of the words, a high degree of phonetic similarity, and a limited conceptual impact due to the generic nature of the words.

The Court confirmed the Board of Appeal’s finding that the inherent distinctiveness of the earlier mark is very low. The opponent’s claim of increased distinctiveness due to intensive use was rejected because of insufficient evidence relating to one single bar in Berlin.

Ultimately, the General Court ruled out the likelihood of confusion based on the visual perception of the trademarks, which it considered predominant in the context of buying foodstuffs and visiting restaurant. This decision emphasizes the importance of visual differences in distinguishing trademarks, especially when the word elements are considered generic or descriptive.

 

ZERO MEAT v MEAT ZERO (R 2052/2023-2)

 v

Background

On september 29, 2021, CPF Food and Beverage Co., Ltd. applied for registration of the ‘ZERO MEAT’ trademark for meat substitutes, which was opposed by Norma based on their earlier ‘MEAT ZERO’ trademark. The opposition was initially upheld due to a likelihood of confusion, but the decision was overturned by the Board of Appeal.

Board of Appeal’s decision

The BoA found that the words ‘zero’ and ‘meat’ are basic English terms understood across the European Union, thus possessing low distinctiveness. The arrangement of these words and the inclusion of a numeral and color differences in the trademarks contributed to their overall impression, which the BoA found distinct enough to avoid confusion. Indeed, the different layout and color shades were significant enough to differentiate the trademarks in the market.

Finally, both trademarks referred to meat-free products and an environmentally friendly ethos, yet this was not enough to confuse the average consumer due to the non-distinctive nature of the descriptive words used.

Conclusion

The decisions in both Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO underline the importance of the distinctiveness of the elements that compose a trademark in determining the likelihood of confusion. These cases demonstrate that non-distinctive or descriptive elements afford a limited scope of protection, which is a crucial consideration for businesses when developing brand identifiers.

Finally, these decisions which do not appear to be in line with the case of the Court of Justice of the European Union might encourage a reevaluation of the CJEU’s approach regarding the weight given to the distinctiveness of earlier trademarks.

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Understanding the Declaration of Use in Argentine Trademark Law: A Comprehensive Guide

Written by Dreyfus27/08/2024

Image generated by DALL E 3 Microsoft version

In Argentina, the robust protection of intellectual property rights, particularly trademarks, hinges significantly on procedural compliance. One such critical procedural requirement is the filing of a Declaration of Use, which plays a pivotal role in the lifecycle of a trademark.

 

This guide delves into the nuances of this requirement, its implications for trademark holders, and the associated legal and administrative processes.

The Legal Imperative of the Declaration of Use

Under Argentine trademark law, every trademark holder is obliged to file a mid-term affidavit of use, known as the Declaration of Use, between the fifth and sixth anniversaries of the trademark’s registration. This declaration serves as a key checkpoint to ensure that trademarks registered in the country are actively utilized in commerce.

 

The failure to comply with this requirement has significant repercussions. Primarily, the Trademark Office (TMO) will not approve any renewal applications for the trademark until the Declaration of Use has been appropriately filed for the registration period in question. This mechanism ensures that only those trademarks that are actively used continue to enjoy the legal protections afforded by registration.

 

Contents and Submission of the Declaration

The Declaration of Use involves submitting a written statement that lists the goods and/or services for which the trademark has been actively used over the past five years. This list should encompass all products or services that fall within the trademark’s scope of protection, potentially extending to related goods or services even in different classes or those used as a commercial designation.

 

It is crucial to note that at the time of this filing, the Patent and Trademark Office (PTO) does not require evidence of actual use. The primary goal is to receive a formal declaration from the trademark holder. However, should the declaration not be submitted timely, it triggers a rebuttable presumption of non-use. This does not automatically lead to the expungement of the registration but makes the trademark vulnerable to cancellation actions. Such actions can be initiated by third parties demonstrating a legitimate interest or by the PTO itself.

Concurrency with Renewal and Potential Penalties

The Declaration can also be filed concurrently with the trademark’s renewal application. In such cases, it must be submitted immediately before the renewal application and through a specific process tailored for each class involved. If the declaration accompanies a renewal, additional annual official fees are imposed.

 

Be aware that submitting a false declaration, whether due to error or fraud, can precipitate cancellation proceedings. These proceedings can be initiated by any third party with a legitimate interest and are adjudicated through a judicial process, underscoring the importance of accuracy and honesty in the filing.

Fees and Administrative Details

The cost of filing the Declaration of Use is relatively modest. There is a fee per trademark, per class and a late filing during the grace period.

Documentation Requirements

To file the Declaration of Use, certain documents are essential:

 

  • Power of Attorney (PoA): A notarized and legalized PoA, signed by an authorized representative, must be submitted. This can be legalized via an Apostille or directly at the Argentine Consulate. Although a scanned copy of the PoA suffices for initial deadlines, the original should be available upon request by the TMO.
  • List of Goods/Services: A detailed list of the goods and/or services associated with the trademark usage over the last five years must be provided. This documentation should comprehensively cover the trademark’s scope of protection and related commercial uses.

 

Conclusion

The Declaration of Use is a fundamental element of trademark law in Argentina, ensuring that trademarks are not merely registered but actively employed in commerce. By adhering to these requirements, trademark holders can safeguard their rights and maintain the integrity of their brands in the Argentine market.

At Dreyfus Law Firm, we understand the complexities of trademark law in Argentina. Our experienced team provides comprehensive legal support to ensure that your Declaration of Use is filed accurately and on time, protecting your valuable trademark rights. Trust us to navigate the intricacies of Argentine trademark law, ensuring your intellectual property remains secure and enforced.

 

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Rising Tensions in E-Commerce: The Escalation of Domain Name Disputes

Written by Dreyfus13/08/2024

Image generated by DALL E 3 Microsoft version

In the digital age, where e-commerce has become the backbone of global commerce, domain names have evolved beyond mere digital addresses—they are now integral to a company’s brand and identity. As businesses rush to establish their online presence, the demand for distinctive domain names has surged, leading to an increasing number of disputes over these valuable digital assets. This escalation is a direct consequence of the competitive digital marketplace and the critical role domain names play in brand recognition and consumer trust.

 

The Nexus Between Trademarks and Domain Names

 

A trademark, typically a symbol, word, or phrase, serves to identify and distinguish the source of goods or services of one entity from those of others. Similarly, a domain name functions as a unique online identifier, guiding consumers to a company’s digital storefront. The intersection of trademarks and domain names is particularly pronounced in e-commerce, where a domain name not only represents a business’s online location but also reinforces its brand identity.

 

However, this intersection can also be a flashpoint for conflict, particularly through the practice known as “cybersquatting.” This involves registering domain names that are identical or confusingly similar to well-known trademarks with the intent to sell them back to the trademark owner at a profit, or to misuse the brand’s reputation. Such practices have necessitated robust mechanisms for dispute resolution, leading to a rise in complaints under policies like the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

 

Understanding the UDRP Framework

 

The UDRP is a policy used by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve domain name disputes. It is predicated on the principle that domain names should not unjustly infringe upon trademark rights. For a complaint to be successful under the UDRP, the trademark owner must prove three elements:

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

 

Meeting these criteria can lead to the transfer of the domain name from the registrant to the complainant, thus acting as a critical mechanism for protecting trademark rights in the digital realm.

The Process of Filing a UDRP Complaint

 

Filing a UDRP complaint involves several steps:

 

Choosing a Provider: There are several ICANN-approved UDRP providers, such as the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), and others, each with specific procedures.

 

Reviewing the UDRP Policy: Complainants must familiarize themselves with the UDRP policy to ensure that their case complies with the necessary criteria for domain dispute resolution.

 

Preparing and Submitting the Complaint: The complaint must detail the domain name in question, the identity of the respondent (current domain owner), and the basis of the claim. Evidence supporting the claim is crucial.

 

Paying the Filing Fee: Fees vary by provider and must be paid at the time of filing.

 

Submitting the Complaint: Complaints are submitted according to the specific rules of the chosen provider. Recent updates to the UDRP include a new online form for submissions, enhancing the efficiency and reliability of the process.

 

Recent Developments in the UDRP System

 

Recent updates to the UDRP process aim to enhance its accessibility and efficiency. These include a new template for complaints and responses that offers detailed guidance on crafting a compelling case, and an updated online submission form that ensures a smoother, more secure filing process. Additionally, the updated WIPO Guide to the UDRP provides comprehensive advice on preparing for a UDRP case, including navigating post-GDPR challenges related to registrant information and considering the impact of a domain’s renewal date on the complaint.

 

Conclusion

 

As the internet continues to be a battleground for brand identity, the UDRP stands as a critical tool for businesses to protect their trademarks in the digital marketplace. By understanding and utilizing this dispute resolution policy effectively, businesses can safeguard their online presence against the growing threats of cybersquatting and other malicious practices, ensuring that their digital and physical branding strategies align seamlessly for maximum impact and consumer trust.

 

 

To effectively navigate these complex conflicts and protect your online rights, it is essential to surround yourself with experts. Dreyfus, recognized for its expertise in the field of domain names and related disputes, can provide invaluable assistance in securing and effectively defending your digital assets under the UDRP policy and beyond.

 

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