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In the current competitive environment, businesses must continuously safeguard the longevity of their trademark rights. As a result, non-use revocation proceedings have become increasingly prevalent before the European Union courts.

Two judgments delivered on 7 May 2025 by the General Court of the European Union (T-1088/23 and T-1089/23) provide critical clarification on two pivotal issues: the absence of a standing requirement for filing revocation actions, and the procedural rules surrounding the admissibility of late evidence. These rulings highlight the increased standards imposed on trademark owners and the procedural diligence expected from the European Union Intellectual Property Office (EUIPO). We analyse here the key principles these decisions establish regarding evidentiary standards, procedural fairness, and the balance of rights before the EUIPO.

Legal and procedural framework for revocation actions

Pursuant to Article 58 of Regulation (EU) 2017/1001, any third party may seek the revocation of an EU trademark if it has not been used in a genuine manner for a continuous period of five years. These proceedings aim to ensure the accuracy of the trademark register and maintain the economic effectiveness of trademark rights. However, where such actions are initiated for strategic or retaliatory reasons particularly in the absence of a legitimate interest, they may raise concerns of procedural abuse.

In the judgments of 7 May 2025 (T-1088/23 and T-1089/23), the General Court was called upon to adjudicate on appeals filed by RTL Group Markenverwaltungs GmbH, challenging EUIPO decisions that had partially revoked its trademarks following applications by a third party. Two central legal questions arose: whether the applications were inadmissible due to abuse of rights, and whether the Board of Appeal had erred in refusing to consider late-filed evidence.

Two parallel cases leading to a key clarification

The cases T-1088/23 and T-1089/23 oppose RTL Group Markenverwaltungs GmbH to the EUIPO and concern the partial revocation of two figurative “RTL” European Union trademarks registered for more than twenty classes of goods and services.

In 2016, RTL Group Markenverwaltungs GmbH obtained registration of two European Union figurative trademarks incorporating the verbal element “RTL”, covering a broad range of goods and services across 22 classes. In 2021, a third party filed two applications for revocation on the grounds of non-use, pursuant to Article 58(1)(a) of Regulation (EU) 2017/1001 on the European Union trademark.

To contest these applications, RTL submitted various items of evidence intended to demonstrate genuine use of the contested marks, including website screenshots, advertising materials, extracts from broadcast programmes, and audience data. However, the EUIPO found that this evidence was sufficient only in respect of certain goods and services, and ordered the partial revocation of the marks for the remainder.

RTL appealed to the EUIPO Board of Appeal, seeking annulment of the partial revocation decision and requesting that additional evidence be taken into account for the first time on appeal. This additional evidence included financial documents, certificates of digital broadcasting, and further material substantiating commercial communication efforts. The Board of Appeal rejected the newly submitted documents on the grounds that they were filed belatedly and without sufficient justification, and upheld the partial revocation decision.

RTL’s appeals relied on two main grounds: that the revocation actions were inadmissible due to abuse of rights, and that the Board had wrongfully refused to examine late-filed evidence. The General Court ruled on both issues. It rejected the argument of abuse of rights and found fault with the way in which the EUIPO handled the late evidence.

Rejection of an abuse of rights claim: a matter of principle

RTL argued that the revocation request was part of a broader strategy of procedural intimidation. They cited the ‘Sandra Pabst’ decision, which was made by the Grand Board of Appeal of the EUIPO on 1 February 2020 (R 2445/2017-G). In a 2020 decision, the Grand Board of Appeal acknowledged a manifest abuse of process, based on a body of consistent and converging evidence. The applicant a company specifically established for the purpose of filing revocation actions had initiated over 800 such proceedings in less than two years, including 37 targeting the same trademark owner. Several of these actions were clearly unfounded and used strategically as leverage, particularly with the aim of pressuring trademark holders into transferring their rights. This systemic conduct, coupled with the absence of any genuine economic activity and the repetitive nature of the filings, revealed a deliberate and improper use of the revocation procedure for purposes unrelated to those envisaged by the Regulation. RTL relied on this precedent as a benchmark to demonstrate the abusive nature of the revocation actions brought against its marks.However, the General Court confirmed that under Article 63(1)(a) of Regulation 2017/1001, any natural or legal person may initiate a revocation action without having to demonstrate standing or a legitimate interest. The underlying rationale is the protection of public interest in maintaining a truthful and functional trademark register. The objective is, in particular, to unclog the trademark registers by removing signs that are no longer in use, in a context where the availability of distinctive signs is increasingly limited, thereby ensuring better access to the registers for active market participants. The ground for revocation non-use is objective and unrelated to the applicant’s motivations.

The Court further noted that none of the exceptional circumstances present in the Sandra Pabst case were applicable here: there was no shell company, only a limited number of proceedings, and no indication of an unlawful strategic purpose. Accordingly, the abuse of rights claim was dismissed.

Late evidence of use: a reminder of EUIPO’s procedural obligations

The second issue focused on the Board of Appeal’s refusal to consider evidence submitted by RTL on 15 September 2023 after the expiry of the procedural deadlines. Relying on Articles 95(2) of Regulation 2017/1001 and 27(4) of Delegated Regulation 2018/625, the EUIPO excluded this evidence without applying any substantive analysis.

The General Court strongly censured this approach. It reiterated that EUIPO enjoys broad discretion to admit late evidence, provided it is prima facie relevant and accompanied by valid justifications for the delay. A general refusal grounded solely on the late submission of evidence, without assessing these two conditions, constitutes a procedural error.

In this case, the EUIPO had failed to properly exercise its discretion in a reasoned manner, thereby breaching its procedural obligations. The Court therefore partially annulled the EUIPO’s decision.

Conclusion

Ultimately, the judgments delivered on 7 May 2025 clarify two fundamental principles of EU trademark law. First, they confirm that revocation actions may be initiated without the need to demonstrate any legitimate interest, even in the absence of a competitive relationship or personal use of the mark by the applicant. They further establish that the EUIPO must provide a detailed and reasoned justification when refusing to consider evidence submitted after the prescribed deadlines.

The Court underscores that revocation proceedings serve a broader public interest: maintaining the integrity and functionality of the trademark register by eliminating marks that are no longer in genuine use. This ensures that space remains available in an increasingly saturated register, where the availability of distinctive signs is a growing concern for economic operators.

These rulings also highlight the imperative for trademark owners to adopt a proactive and disciplined approach to portfolio management. Preserving enforceable rights requires the continuous collection and maintenance of clear, credible, and contemporaneous evidence of use, capable of withstanding scrutiny in the event of a revocation challenge.

The law firm 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 is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

The purchase report, a key piece of evidence in intellectual property disputes, has long been undermined by the strict requirement for absolute independence of the third-party buyer. In its ruling on May 12, 2025 (n° 22-20.739), the French Court of Cassation made a significant shift, introducing a more pragmatic approach focused on transparency and procedural fairness. From now on, the mere lack of independence will no longer be enough to invalidate a purchase report.

Legal framework for the purchase report

1.1 A crucial evidence tool

The purchase report is an essential tool in intellectual property litigation. It allows rights holders to demonstrate the illicit sale of a product, typically online, by hiring a bailiff to make a purchase and draft an official report of the transaction.

1.2 A rigorous past jurisprudence

Since a decision on January 25, 2017 (Civ. 1st, n° 15-25.210), the Court of Cassation held that the mere involvement of a third party linked to the plaintiff’s law firm (such as an intern or associate) was enough to invalidate the report, citing the right to a fair trial under Article 6 of the European Convention on Human Rights. This position generated significant criticism among specialists, as it unnecessarily complicated the process of proving intellectual property violations.

Facts of the case and procedural history

2.1 A disputed purchase report

In 2016, Rimowa GmbH, the holder of the “Limbo” trademark, identified counterfeit products being sold online under the “Bill Tornade” brand. To gather evidence, Rimowa commissioned a bailiff to carry out a purchase report. The operation took place on May 4, 2016, under the supervision of the bailiff, with the purchase made by an intern from Rimowa’s law firm, whose role was explicitly mentioned in the report.

The Paris Commercial Court ruled the report invalid, arguing that the involvement of the third-party buyer undermined the neutrality of the evidence. However, the Paris Court of Appeal overturned this decision, holding that the third-party buyer’s imperfect independence was not sufficient to invalidate the report, given that it was performed transparently and under the bailiff’s control. Consequently, the report was deemed valid, and the companies HP Design and Intersod were found guilty of counterfeiting.

2.2 A Cassation appeal by the defendants

The condemned companies appealed to the Court of Cassation, arguing a violation of the principle of fairness of evidence, the right to a fair trial, and the requirement for the third-party buyer’s independence.

The contribution of the Court of cassation’s ruling of May 12, 2025

3.1 Lack of independence is no longer sufficient

In a landmark ruling, the mixed chamber of the Court of Cassation reversed the previous approach. The Court ruled that the mere fact that the third-party buyer was an intern from the plaintiff’s law firm was not enough to invalidate the report. The Court rejected a blanket invalidation based solely on the relationship between the buyer and the plaintiff. Instead, the Court now emphasizes an in concreto examination of the circumstances surrounding the report.

3.2 Three criteria for validating the purchase report

The Court established a framework for assessing the validity of the purchase report based on three key criteria:

• Transparency: The relationship between the buyer and the party is clearly disclosed in the report.
• Effective control by the bailiff: The operation is conducted under proper supervision, ensuring no manipulation.
• Absence of any deception or bad faith: There are no elements of concealment or dishonesty.

3.3 A clear distinction from seizure of counterfeit goods

The purchase report is neither intrusive nor coercive. It does not face the same stringent requirements as the seizure of counterfeit goods, which involves direct intervention at the defendant’s premises. The Court reiterated that Directive 2004/48/EC requires proportional, effective, and adversarially respectful methods of evidence collection, without excessive rigidity.

Benefits for rights holders

This ruling brings several advantages for rights holders:

• It restores flexibility in procedural matters.
• It reduces the risk of automatic invalidation, which was often raised in defense arguments.
• It strengthens the probative value of online purchase reports, particularly in cases involving counterfeiting and unfair competition.

Conclusion: towards a more practical and fair evaluation

The Court of Cassation’s ruling represents a paradigm shift. The lack of independence of the third-party buyer is no longer an automatic cause for invalidating a purchase report. This decision strikes a balance between fairness in evidence and the effectiveness of proof, in line with Directive 2004/48/EC.
In summary, this jurisprudential change restores a more pragmatic interpretation of evidence law in intellectual property cases.

Dreyfus & Associés is ready to assist its clients in managing these complexities by providing tailored advice and comprehensive operational support for the full protection of intellectual property.

Dreyfus & Associés is partnered with a global network of intellectual property lawyers.

Nathalie Dreyfus and the entire team at Dreyfus & Associés.

FAQ

On March 6, 2025, the Montpellier Court of Appeal issued a significant ruling (No. 23/01999) confirming that sales conducted via social media platforms, such as Instagram, are subject to the same consumer protection rules as traditional distance sales. This decision reaffirms the legal obligation for sellers to inform consumers of their right of withdrawal, a fundamental consumer right under European Union law.

Background of the case

The Montpellier Court of Appeal ruled in a case involving a dispute between a consumer and a micro-entrepreneur operating via Instagram. The seller had failed to inform the buyer of their withdrawal rights. The buyer subsequently requested the cancellation of the sale and a refund. The court confirmed that the transaction qualified as a distance contract, as it had been concluded without the simultaneous physical presence of both parties.

Understanding the right of withdrawal

What is the right of withdrawal ?

The right of withdrawal entitles consumers to cancel a purchase within 14 days without having to provide any justification and without incurring additional charges, apart from potential return shipping costs. This right applies to contracts concluded at a distance or outside the seller’s business premises, including online, by telephone, and increasingly, through social media.

The legal framework

In France, the right of withdrawal is governed by Articles L.221-18 to L.221-28 of the French Consumer Code. Article L.221-18 grants consumers 14 days from delivery or contract signature to exercise this right. Importantly, if the seller fails to inform the consumer of this right, the withdrawal period is extended by 12 months, pursuant to Article L.221-20.

Social media sales as distance contracts

Are social media sales considered distance sales ?

In ruling No. 23/01999, the Montpellier Court of Appeal held that Instagram-based sales do indeed qualify as distance sales. While social media platforms are not designed solely for commercial transactions, the court emphasized that the absence of simultaneous physical presence between seller and buyer meets the criteria set out in Article L.221-1 of the French Consumer Code.

The seller’s duty to inform

Sellers operating via social media are legally obliged to inform consumers of their right of withdrawal before the contract is concluded. This includes providing clear and accessible information about the existence of the right, how it may be exercised, and the applicable timeframe. Failure to comply with this obligation not only extends the withdrawal period but may also expose sellers to legal consequences.

The role of social media platforms

Can social media platforms be held liable ?

The obligation to inform consumers rests primarily with the seller. Social media platforms, as intermediaries, are not generally held responsible unless they are directly involved in the transaction, for instance, by facilitating payment or processing orders. Nevertheless, platforms can support compliance by offering features such as customizable terms and conditions fields or links to consumer rights information.

EU regulations on online intermediaries

What does EU law say ?

Directive 2011/83/EU on Consumer Rights harmonizes distance and off-premises contract rules across the EU, mandating that consumers be informed of their right of withdrawal before contract formation. Additionally, Regulation (EU) 2019/1150 on promoting fairness and transparency for business users of online intermediation services reinforces the importance of transparency in digital transactions, thereby indirectly supporting the enforcement of consumer rights, including the right of withdrawal.

Conclusion

The Montpellier Court of Appeal’s decision of 6 March 2025 underscores a key principle : sales conducted via social media platforms are subject to the same consumer protection rules as traditional distance sales. Sellers must ensure compliance with their obligation to inform consumers about the right of withdrawal, in accordance with both national and EU legislation. Failing to do so not only erodes consumer trust but also exposes sellers to legal risks and potential sanctions.

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

Dreyfus & Associés is partnered with a global network of Intellectual Property attorneys.

Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

The Court of Justice of the European Union (CJEU)‘s decision in Case C-575/23, concerning the Orchestre National de Belgique (ONB) and the Belgian State, has far-reaching consequences for the right to remuneration and protection of artists’ neighboring rights under European Union law. The ruling challenges national mechanisms that force artists to assign their neighboring rights to their employers without their prior consent, highlighting a potential conflict with EU regulations.

This article will explore the legal principles set out in this landmark decision, assess its impact on European intellectual property law, and discuss its ramifications on national systems that involve assigning rights without consent, particularly in the context of employment contracts and collective works.

Overview of the CJEU’s ruling in case C-575/23

In the case at hand, the CJEU ruled that national regulations mandating the automatic assignment of neighboring rights by artists-interpreters or performers under administrative status, particularly within public institutions such as the Orchestre National de Belgique, are contrary to EU law. The decision explicitly states that such assignment mechanisms, without prior consent from the artists, violate the principles of fair remuneration and the right of authors to control the exploitation of their creations.

The CJEU referred to multiple provisions of EU directives, particularly Directive 2019/790, which emphasizes that the consent of artists is a necessary precondition for the transfer of rights, specifically addressing the issue of fair remuneration for the exploitation of these rights.

Legal context: The Union’s regulations and the assignment of rights

The CJEU based its decision on key provisions of several EU directives regulating copyright and neighboring rights, including Directive 2001/29/EC (on copyright in the information society) and Directive 2006/115/EC (on rental and lending rights). These directives stress that:

• Artists have exclusive rights over their performances and neighboring rights, including the right to control how their performances are used.
• Any assignment of these rights requires their prior consent and must adhere to appropriate remuneration principles.

The CJEU emphasized that an assignment without consent is incompatible with the European Union’s protection standards, which are designed to guarantee fair treatment and compensation for artists.

Analysis of the ruling’s impact on national systems

4.1. The applicability of consent in assignment of rights

One of the central points of the CJEU‘s decision is the requirement for consent. It ruled that automatic assignment of rights, especially those of artists-interpreters, is not valid without prior consent. This principle is rooted in the protection of artistic freedom and the right to fair remuneration for the exploitation of their work.

In practical terms, this ruling makes it imperative for national laws to respect the artists’ right to negotiate and consent to the transfer of their rights, ensuring that they are remunerated appropriately for the use of their works. The directive 2019/790 reinforces the necessity of consent for the assignment of rights in employment settings and in the context of performing arts.

Key quote from the judgment:

“In the light of all the foregoing considerations, the answer to the questions raised is that Article 2(b) and Article 3(2)(a) of Directive 2001/29, and Article 3(1)(b), Article 7(1), Article 8(1) and Article 9(1)(a) of Directive 2006/115 must be interpreted as precluding national legislation which provides for the assignment, by means of a regulatory act, for the purpose of exploitation by the employer, of the related rights of performers engaged under an administrative law statute, in respect of the performances carried out in the context of their service to that employer, without the prior consent of those performers.”

4.2. Consequences on employment contracts and artist rights

The ruling carries significant implications for employment contracts in the creative industries, particularly in public institutions or non-profit organizations such as orchestras, theaters, and other performance arts entities. By invalidating automatic assignment provisions in employment contracts, the CJEU upholds the contractual freedom of artists, ensuring that their neighboring rights are protected under EU law.

This decision could lead to revisions in employment contracts, with employers now required to engage in explicit negotiations and ensure that artists’ rights are not only recognized but also fairly compensated.

4.3. Implications for future legislation

This ruling serves as a catalyst for potential changes in EU and national legislation. It challenges existing legal mechanisms that permitted forced assignment of rights, and it might prompt revisions in areas such as labor law and intellectual property law. Furthermore, the CJEU ruling brings clarity to the implementation of fair remuneration, which is a critical component of Directive 2019/790.

Additionally, this ruling could influence the classification of collective works and how authors’ rights are addressed in creative industries. The shift towards artist-centric regulations could mean greater control for performers and creators over the exploitation of their intellectual property.

Conclusion: A turning point for artists’ protection in the EU

The CJEU’s decision in Case C-575/23 marks a significant milestone in the protection of artists’ rights within the European Union. By invalidating the practice of automatic assignment of neighboring rights without prior consent, the Court reaffirms the EU’s commitment to ensuring that artists and performers are fairly remunerated and have control over their work. This ruling is likely to have far-reaching consequences for employment contracts, collective works, and the overall protection of intellectual property in the EU.

FAQ

The valuation of intangible assets has become a major issue in the economic strategies of modern companies. These assets, which include trademarks, patents, software, designs & models and databases, now account for an ever-increasing proportion of corporate value. Thanks to technological advances, and in particular the emergence of artificial intelligence (AI), new valuation methods are possible, enabling more accurate, dynamic and efficient valuation of these often-underutilised exploited intangible resources. This article explores the global impact of AI in the valuation and maximisation of the value of these intangible assets, offering tools for predictive analysis, automation and legal security.

Why AI is revolutionising intangible asset valuation

The emergence of artificial intelligence is profoundly changing the way we value intangible assets, which are now at the heart of economic strategies. These assets have gone from being simple ‘positive externalities’ to becoming genuine instruments of growth. With AI, the valuation of intangible assets is becoming more objective, detailed and consistent, considering dynamic factors that were previously inaccessible.

According to the Organisation for Economic Co-operation and Development (OECD), intangible capital now accounts for a large proportion of the market capitalisation of listed companies. In this context, it is imperative to adopt tools that are equal to the challenge. AI is now established as a vector for automation, anticipation and security, contributing to the legal, financial and strategic optimisation of intangible assets.

New value drivers enabled by AI

AI as a catalyst for intellectual property development

Artificial intelligence tools can proactively identify exploitable inventions, creations or distinctive signs, facilitating their protection by intellectual property rights. Numerous technologies developed by AI support innovation while automatically tracing the authorship of assets.

In particular, semantic analysis refers to the ability developed by AI to understand the meaning of words within a text or data. For example, by simply reading a patent, AI will be able to determine key concepts and their links, such as a specific technology or a particular innovation, without needing to be explicitly programmed for each detail. AI also facilitates the recognition of technical patterns, which enables the identification of recurring motifs or structures in technical data, such as product drawings, diagrams or technical ideas. In particular, it will be able to automatically detect a technical solution similar to an existing invention in a patent.

These technologies are even more effective because they are based on self-learning models. These algorithms enable AI to learn and improve over time, without being explicitly programmed for each situation. In this way, AI will become better at predicting the novelty of a patent as data on past patents is accumulated.

This translates into an acceleration of patent, design and trademark filings, but also into an improvement in the quality of registered rights, based on objectively qualified criteria of distinctiveness, use or novelty.

Predictive analytics and scoring of intangible assets

AI enables detailed evaluations of intangible assets based on extensive datasets: social media presence, scientific citations, prior art, comparable transactions, and market trends. These analyses produce dynamic and regularly updated ratings, invaluable for fundraising, asset sales, or financial reporting.

Moreover, AI-generated scenarios predict future valuations, considering market shifts and regulatory developments crucial for M&A due diligence and IP litigation strategy.

Toward standardised AI-based valuation methods

Concrete examples: patents, databases, software

In the technology, healthcare and telecoms sectors, AI can be used to value patents based on the estimated lifetime of the titles, their potential for commercial exploitation or cross-citation mapping. In fact, AI can examine patents and identify those that have been cited in other patents or publications. These citations highlight connections between ideas and similar technologies, providing a better understanding of the evolution of innovation in a specific field. By cross-referencing this information, AI can create a “map” listing the various inventions and their relationship in a network, making it easier to assess the novelty, importance or influence of an invention in relation to overall technological development.

Similarly, databases and software can be assessed on the basis of their functional architecture, reuse rate and competitive exposure.

The critical issue of algorithm traceability

The use of AI in this context requires traceability of the valuation processes, both for reasons of legal security and regulatory compliance, particularly with regard to the European General Data Protection Regulation (GDPR) and the European Digital Services Act (DSA). Any potential biases in algorithms must be documented, particularly in terms of financial predictions or investment decisions. Algorithms must also be auditable.

Legal and regulatory framework: risks and opportunities

The European Commission, the OECD and the World Intellectual Property Organisation (WIPO) are encouraging the use of artificial intelligence in the analysis of intangible assets, while insisting on the need for open, interoperable and auditable standards. To achieve transparency, economic efficiency and legal certainty, companies must rely on partners specialising in intellectual property, AI and asset valuation.

The French Data Protection Authority (CNIL) also stresses that the use of personal data in predictive models must be processed lawfully, proportionately and in accordance with the principles of minimisation and purpose.

Conclusion: strengthening strategic approaches with AI

Incorporating AI into intangible asset valuation equips companies with a structural competitive edge. This transformation transcends technology, touching legal, financial, and organisational domains. The ultimate goal is to convert intangible assets into measurable, actionable, transferable, and defensible capital.

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

FAQ

Counterfeiting remains a critical threat to the integrity of intellectual property rights, impacting not only brand owners but also consumer safety and market trust. The publication of the new counterfeiting study by EUIPO and the OECD, notably involving complex product sectors such as pharmaceuticals and cosmetics, underscores evolving challenges. These sectors illustrate the legal and practical intricacies where product categorization, consumer perception, and regulatory frameworks converge to shape enforcement outcomes.

This article offers a detailed, professional analysis of the latest trends in counterfeiting, focusing on the European Union’s legal regime, recent case-law insights, and pragmatic enforcement strategies. Our aim is to equip clients with an in-depth understanding and effective tools to anticipate and counteract these sophisticated infringements.

I – Legal framework governing counterfeiting in the European Union

EU trademark regulation and anti-counterfeiting measures

The cornerstone of anti-counterfeiting law within the EU is the European Union Trade Mark Regulation (EUTMR). Article 8(1)(b) explicitly prohibits the registration of trademarks when the goods or services are similar enough to cause likelihood of confusion among consumers, including associative confusion. This principle forms the legal basis for challenging infringing marks that underpin counterfeit products.

In addition to the EUTMR, Directive 2001/83/EC and Regulation (EC) No 1223/2009 delineate the scopes of pharmaceuticals and cosmetics respectively, influencing the classification and legal treatment of counterfeit goods within these sectors. The legal overlap necessitates nuanced analyses, particularly when goods straddle both classifications.

Complementary legal instruments against counterfeiting

Beyond trademark law, the EU employs a multi-layered approach including customs enforcement (Regulation (EU) No 608/2013), criminal sanctions, and civil remedies. These legal tools work synergistically to prevent the importation, distribution, and sale of counterfeit goods, ensuring brand protection and consumer safety.

II – Challenges and specificities of counterfeiting in pharmaceuticals and cosmetics

Similarities and conflicts between pharmaceuticals and cosmetics in trademark law

Recent case-law and Board of Appeal reports emphasize the blurred lines between pharmaceuticals and cosmetics, especially in skin and hair care products. The degree of similarity between these categories affects the assessment of trademark conflicts and counterfeiting claims.

• Pharmaceuticals: Medicinal products intended to treat or prevent diseases, regulated under Directive 2001/83/EC.
• Cosmetics: Products intended mainly for cleaning, perfuming, protecting or altering the appearance of the human body, as defined by Regulation (EC) No 1223/2009.

The case-law consistently finds low to average degrees of similarity between these categories depending on product specifics, distribution channels, and intended purposes, complicating the enforcement against counterfeiting when product categories overlap.

Case-law developments addressing counterfeiting in overlapping sectors

Notable judgments (see below) highlight the common distribution channels (pharmacies, specialized shops) and overlapping target consumers, which create conditions conducive to confusion and potential counterfeiting. Courts recognize the evolving nature of products, such as cosmeceuticals, which combine pharmaceutical and cosmetic attributes, further intensifying enforcement challenges:

• CLEANIC: 13/05/2015, T-363/12, CLEANIC natural beauty (fig.) / CLINIQUE; 13/05/2015, T-364/12, CLEANIC Kindii (fig.) / CLINIQUE; 13/05/2013, T-363/13, CLEANIC intimate (fig.) / CLINIQUE
• MITOCHRON: 13/05/2016, T-62/15, MITOCHRON / mito (fig.)
• SANOLIE: 24/03/2021, T-175/20, SANOLIE / SANODIN

III – Enforcement mechanisms and practical responses to counterfeiting

Customs and border measures

The EU’s customs regulations empower border authorities to seize counterfeit goods upon importation or exportation. This preventive measure is vital for intercepting counterfeit pharmaceuticals and cosmetics that pose serious health and safety risks.

Judicial remedies and damages

Right holders can initiate civil and criminal proceedings against counterfeiters, seeking injunctions, damages, and destruction orders. Recent jurisprudence stresses the need for robust evidence on similarity, consumer confusion, and commercial origin to succeed in litigation.

Conclusion: Strategic IP protection against new counterfeiting threats

In light of newly published counterfeiting study, it is imperative for rights holders to adopt proactive strategies, including comprehensive trademark registrations across relevant classes, vigilant market surveillance, and swift enforcement actions. Recognizing the nuanced interplay between pharmaceuticals and cosmetics can substantially enhance the effectiveness of anti-counterfeiting efforts.

The Dreyfus Law Firm stands ready to assist clients in navigating these complexities, delivering tailored advice and enforcement support across the full spectrum of intellectual property protection.

The law firm Dreyfus et Associés is partnered with a global network of lawyers specializing in Intellectual Property.

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

FAQ

The beverage market is evolving rapidly, marked by a significant rise in non-alcoholic alternatives such as alcohol-free beers, often marketed as substitutes for traditional alcoholic drinks like gin or vodka. This shift raises important trademark law questions : can a trademark registered for an alcoholic beverage prevent the registration of a similar mark covering a non-alcoholic product ? More broadly, is there a genuine risk of confusion between these product categories ?

The answer is yes, as recently confirmed by the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) in the landmark KINGSMAN case dated January 24, 2025. This ruling highlights the criteria that authorities consider when assessing the risk of confusion, moving beyond the mere alcoholic content of the product.

How case law, and in particular the EUIPO, analyzes the similarity between different products in trademark law

2.1 Product classification

Alcoholic beverages (such as gin, wine, or champagne) are generally classified under Class 33 of the Nice Classification, whereas non-alcoholic drinks (including alcohol-free beer) fall under Class 32. Traditionally, these distinct classes helped to limit confusion risks, as the products were perceived as fundamentally different.

2.2 A holistic assessment beyond Classes

However, market realities call for a broader analysis. The EUIPO evaluates product similarity by considering not only their nature but also their usage, distribution channels, points of sale, and how the average consumer perceives them.

Thus, the mere presence or absence of alcohol does not automatically eliminate the risk of confusion if the products are offered in similar or even identical contexts and target the same consumer base.

The KINGSMAN decision : A pivotal turning point

3.1 Case overview

In the KINGSMAN case (R 1426/2024-5), the applicant sought to register a trademark for non-alcoholic beers under Class 32, while an identical earlier mark existed for alcoholic beverages in Class 33 such as whisky, vodka, or gin.

3.2 Analysis of confusion risk

The EUIPO’s Fifth Board of Appeal confirmed that a likelihood of confusion exists between alcoholic (such as gin) and non-alcoholic beers. Several factors underpin this conclusion :

• These products often target the same consumer in similar social settings (bars, restaurants, supermarkets).
• They circulate through overlapping distribution channels and points of sale.
• Consumers primarily perceive these products as “beverages,” regardless of alcohol content, which can lead to confusion about their commercial origin.

3.3 Practical implications

This ruling requires heightened vigilance for trademarks in this sector :

• A trademark for a non-alcoholic beverage may be challenged based on the existence of a similar mark for an alcoholic drink, and vice versa.
• De-alcoholized beverages (such as dealcoholized wines) are also considered close to alcoholic beverages in this analysis.

Understanding consumer perception and the commercial context

4.1 Points of sale and consumption patterns

Alcoholic and non-alcoholic drinks are frequently sold side by side in the same venues (supermarkets, bars, restaurants) and via identical sales channels. This proximity increases the likelihood that consumers may confuse similar trademarks.

4.2 The role of alcohol content in perception

Even though consumers recognize the difference in alcohol content, trademark law focuses on the overall impression and commercial context, which can diminish this distinction. The average consumer does not necessarily possess detailed expertise and often relies on the visual and phonetic similarities of trademarks, as well as the purchasing environment.

Practical advice to effectively protect your trademark

5.1 Filing strategy and choice of Classes

To secure trademark protection in the beverage sector, it is advisable to file in both Classes 32 and 33. This dual coverage is crucial to protect both alcoholic and non-alcoholic beverages, especially in a market where product lines often overlap or evolve.

5.2 Monitoring and enforcement actions

Active monitoring is essential to detect promptly any filings or use of similar trademarks in related classes. This allows for swift and effective enforcement in the event of confusion risk or infringement.

Conclusion : Anticipating and managing confusion risks

The beverage market’s evolution, driven by the growing popularity of non-alcoholic alternatives, profoundly impacts the criteria for assessing confusion risks under trademark law. The KINGSMAN ruling marks a turning point by recognizing a real risk of confusion between trademarks covering alcoholic and non-alcoholic beverages.

For trademark owners and applicants, adopting a strategic, proactive, and comprehensive approach is key to effectively safeguarding brand image and rights.

FAQ

Artificial Intelligence (AI) represents both an industrial and legal revolution. As a key driver of innovation in software development, it raises a fundamental question: can AI be legally protected as software under current law? Addressing this requires an examination of the applicable legal frameworks primarily copyright and patent law as well as complementary protections, in light of existing legislation, including the EU Regulation 2024/1689 on artificial intelligence, commonly known as the AI Act.

Copyright protection

Eligibility criteria

Under French law, software is protected by copyright pursuant to Article L.112-2 13° of the Intellectual Property Code (IPC). This protection extends to original programs defined as those bearing “the imprint of the author’s personality” (CJEU, C-5/08, Infopaq). Protection arises automatically upon creation, without formal registration, subject to proof of authorship.

Limitations of protection

Algorithms, computational methods, and mathematical models, as such, are excluded from copyright protection under Article L.611-10 IPC. Moreover, works generated autonomously by AI without human intervention currently cannot be considered rights holders due to the absence of legal personality.

Patent protection

Patentability criteria

According to Article L.611-10 IPC and Article 52 of the European Patent Convention (EPC), software “as such” is not patentable. However, an AI program that produces a further technical effect beyond its implementation on a computer may be patentable, provided it satisfies the criteria of novelty, inventive step, and industrial applicability. 

Specific considerations for generative AI

Generative AI systems (e.g., those producing images, code, or text) present particular challenges. They may be eligible for patent protection if they address a concrete technical problem (see EPO decision G 1/19). Purely abstract or algorithmic models remain excluded from patentability.

Other forms of protection

Trade secret

The French Law No. 2018-670 of 30 July 2018 on the Protection of Trade Secrets safeguards confidential information with economic value. This includes AI training datasets, model parameters, and proprietary architectures, provided reasonable protective measures are implemented (such as confidentiality agreements and access controls). 

Database protection

Under Article L.341-1 IPC, databases are protected by sui generis rights if their creation involved a substantial investment. This protection can extend to AI training databases. However, individual, non-original data elements remain outside the scope of protection.

Legal risks associated with the use of AI

Using AI in software development may entail risks including violations of open-source licenses, inadvertent reproduction of protected works, and infringements of moral rights. Generated code must be carefully reviewed to ensure it does not constitute unauthorized derivative works. Non-compliance with the AI Act’s provider obligations (Articles 16 to 29) may also result in civil and administrative liability.

Conclusion

The legal protection of AI as software relies on a combination of frameworks: copyright (requiring human authorship), patents (for technical innovations), trade secrets, and database rights. The AI Act regulates AI deployment without conferring legal rights upon the AI itself, placing responsibility on human operators. Therefore, protection fundamentally depends on the extent of human involvement in the creation and use of AI technologies.

FAQ

The increasing reliance on digital platforms has reinforced the critical role of access to online identification data in enforcing rights. Yet, this access remains deeply constrained by a fragmented legal framework, often subordinating victims’ rights to the anonymity of wrongdoers. In practice, victims of civil wrongs are deprived of effective recourse, while only serious criminal offenses may justify lifting anonymity.

I – Legal mechanisms to access identification data

Civil investigative measures under article 145 CPC

Victims may request data disclosure under Article 145 of the French Code of Civil Procedure before initiating legal action. This allows a judge to order disclosure measures to preserve or establish evidence, including the identity of pseudonymous online users. However, such access is fundamentally restricted by Article L. 34-1 of the French Postal and Electronic Communications Code (CPCE), which prohibits civil litigants from accessing connection data, such as IP addresses, outside the criminal sphere.

This limitation has de facto created a regime of civil impunity for online misconduct, even when the infringement is deliberate and documented, as in the case of identity theft or reputational harm.

Criminal measures and the threshold of serious crime

By contrast, the CPCE authorizes the retention and disclosure of identification data in the context of criminal proceedings. These include:

• Subscriber information,
• Account registration data,
• Payment-related information.

Yet access to connection logs (IP addresses and source ports) is conditional upon the existence of “serious criminal offenses,” as required by Article L. 34-1, II bis, 3° CPCE. This threshold creates interpretative uncertainties, as demonstrated by recent case law.

II – Typology of online anonymization strategies

Identifying offenders online involves varying degrees of complexity:

1. Use of real identity: Rare and easily traceable.
2. Pseudonym with real data: Requires platform cooperation.
3. Pseudonym with fake data: Necessitates IP address to cross-reference with ISP records.
4. Advanced anonymization (VPN, TOR): Identification becomes technically improbable without real-time surveillance or source port data.

The IP address is often the only viable path to traceability—yet it is precisely the element least accessible under civil jurisdiction.

III – Case law analysis: Meta vs. Telegram

In the case involving Meta (CA Paris, 10 Sept. 2024, n° 23/16504), the Court denied access to IP addresses based on the proportionality principle and the perceived minor gravity of the identity theft. Meta’s defense—claiming non-possession of certain data—further underscores the inadequacy of enforcement mechanisms, especially where platforms fail to collect or retain relevant information.

Conversely, in the Telegram case (TJ Paris, 12 Nov. 2024, n° 24/57625), the judge ordered disclosure of all relevant data, including IP addresses, in response to a blackmail attempt. The decision bypassed the gravity requirement, focusing instead on the necessity of the measure to halt ongoing criminal behavior.

These cases reveal a dangerous inconsistency in judicial interpretation, leading to legal unpredictability and selective access to justice.

IV – Legal uncertainty and the challenge of enforcement

While the LCEN (Law for Trust in the Digital Economy, Art. 6, V) imposes a mandatory data retention obligation on hosts and ISPs, the 2021 decree is interpreted by platforms like Meta as optional in nature. This legal ambiguity undermines enforcement and shifts the burden onto victims, who are forced to navigate Kafkaesque procedures.

Moreover, a victim cannot even obtain proof that their own stolen data is misused, as access to IP logs is categorically denied in most civil contexts.

Conclusion and strategic insights

Access to online identification data remains structurally unbalanced, favoring anonymity over redress, particularly for civil victims. The current framework, riddled with procedural thresholds and vague terminology, fails to uphold the fundamental right of access to justice. A legislative clarification is urgently needed, alongside a stricter enforcement of data collection duties by platforms.

Dreyfus Law Firm advises and represents clients in complex cross-border matters involving digital rights enforcement, online reputation, and intermediary liability.

Dreyfus Law Firm is partnered with a global network of Intellectual Property attorneys.

Nathalie Dreyfus

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