News

Introduction

Advertising jingles are everywhere, whether it’s a melody associated with a TV commercial or a short sound signature on a mobile app, they play an essential role in the marketing strategy of many companies. But beyond their marketing function, can they be legally protected? The question arises in the context of trademark law, which has gradually evolved to include sound elements as objects of protection.

The question arises in the context of trademark law, which has gradually evolved to include sound elements as objects of protection. Recently, the Court of Justice of the European Union provided a clear answer to this question. In a decision dated September 10, 2025 (case T-288/24, Berliner Verkehrsbetriebe – BVG), the Court held that a short two-second jingle could be protected as a sound trademark at the European level.

What is a sound trademark ?

A trademark is no longer just a name or logo : it can now take the form of a sound. A sound trademark is a jingle, melody, or musical pattern used to identify a company’s goods or services and distinguish them from those of its competitors.

To qualify as a trademark, the melody must above all fulfill a distinctive function: it must allow consumers to immediately associate the sound with the trademark / company, without any possibility of confusion with other companies.

Conditions for protecting a jingle

Not all jingles can be protected as a trademark. For a melody to be protected as a sound trademark, it must meet certain essential criteria:

• Distinctiveness: The key requirement. The sound or musical phrase must be capable of distinguishing the company’s goods or services from those of others.
• Availability: The jingle must not already be registered or used by a competitor for identical or similar goods or services.
• Legality : The jingle must not be contrary to public order or morality.

The BVG case (T-288/24): the decision of the General Court of the European Union

In this case (T-288/24), Berliner Verkehrsbetriebe (BVG), a public transport company in Berlin, had filed a two-second jingle as a sound trademark. The EUIPO refused to register this trademark, considering that the melody was too short and banal to be perceived as a sign of commercial origin.

The General Court of the European Union annulled this decision, ruling that the brevity and simplicity of the jingle were not sufficient to exclude its distinctive character.

According to the Court, in a sector such as transport, sounds can play a key role in creating a sound identity, and a short melody can be easily memorized by the public and associated with a given company.

This decision confirms that a jingle is eligible for protection as a sound trademark if it is deemed distinctive, memorable to the public, and not purely functional.

Difference between copyright and trademark law

It is important to distinguish between the two types of protection that may apply to a jingle :

• Copyright : It protects the melody as an original work of authorship, regardless of its commercial use. Protection arises automatically upon creation..
• Trademark law: It protects the use of the jingle as a distinctive sign in commercial use. This protection requires registration with the INPI and is valid for a limited period (10 years, renewable).

Thus, a jingle can benefit from dual protection : copyright guarantees the protection of the musical creation itself, while registration as a sound trademark secures its commercial use.

Some practical examples

Some companies have taken full advantage of this opportunity:

• Intel : its jingle has been registered as a sound trademark.
• Netflix : The short melody that accompanies the launch of its series content has been registered as a trademark.

These examples illustrate how protecting a jingle can become a real strategic and commercial asset.

Conclusion

Jingles can be protected as trademarks, provided they are original, distinctive, and used commercially. Legal protection for a jingle strengthens the company’s sound identity, secures its use in the marketplace, and constitutes a valuable intangible asset. To maximize the chances of success, it is recommended to carefully prepare the application and ensure that the melody is clearly distinct from those already used by others.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1.What is a sound trademark ?

A sound trademark is an audible sign used to identify a company’s goods or services. It can be a melody, a jingle, or a distinctive sound pattern associated with the company.

2.How can a jingle be registered as a sound trademark ?

Since December 15, 2019, it has been possible to register a sound trademark with the INPI in the form of an audio file (MP3, MP4). Registration is done online via the INPI website.

3.What are the criteria for protecting a jingle?

The jingle must be original, distinctive, reproducible accurately, and used in a commercial context to identify a company’s goods or services.

4.What is the difference between a sound trademark and a copyrighted musical work ?

Copyright protects musical creations as a work of authorship, while trademark law protects the commercial use of jingles as distinctive signs. A jingle can benefit from both types of protection simultaneously.

5.Are there any examples of famous sound trademarks ?

Yes, companies such as Intel,and Netflix have registered their jingles as sound trademarks, thereby strengthening their sound identity and public recognition.

Introduction

ICANN84 was held in Dublin from October 25 to 30, 2025, bringing together more than 1,500 participants from 129 countries in a hybrid format that combined in-depth policy work with operational capacity building. The goal of this annual meeting was to translate the policies developed into concrete practices within the domain name ecosystem.

ICANN84 took place within the broader context of the upcoming review of the World Summit on the Information Society (WSIS+20), the ongoing reform of Internet governance, and ICANN’s own internal review process.

Context and challenges of ICANN84

The 2025 edition of the annual meeting of the ICANN was characterized by a strong commitment to transforming policy work into operational mechanisms in support of a stable and inclusive DNS.

Three key challenges defined this edition:

• Policy/Technical Alignment : The aim was to ensure that recommendations from the working groups (Policy) were effectively translated into technical and contractual operations.
• DNS Abuse : As DNS abuse through phishing, malware, and malicious domains continues to grow, the community reunited focused on developing mechanisms for prevention, detection, and rights protection.
• Regional Balance/Inclusiveness : The goal was to ensure that new gTLD cycles remain accessible, especially to underrepresented regions, and to encourage global participation.

Multi-stakeholder governance at the heart of the ICANN model

One of the defining features of the ICANN governance model lies in its bottom-up approach, based on the participation and coordination of multiple stakeholders, rather than on a centralized, top-down form of regulation.

This balanced model, which combines technical, political, and user perspectives, is what makes ICANN unique as a distributed governance model.

DNS Abuse: From Debate to Implementation

Throughout the week, DNS abuse remained at the forefront of discussions. Key themes included:

• Measurement and Reporting: How can abuse be reliably quantified by  registrars, and third parties?
• Roles of “Trusted Notifiers”: Defining the actors authorized to report abuse, and outlining their relationship with registries and registrars.
• Enforcement/Fundamental Rights Balance: Ensuring that mechanisms to address abuse do not undermine fundamental rights like freedom of speech.
• International Harmonization: Given the differences in jurisdictions, policies must be coordinated without imposing a single framework on states.

Although no binding policy was adopted during the meeting, ICANN84 helped solidify a roadmap. The Final Issue Report on DNS abuse is expected in November 2025, and the GNSO will need to decide whether to launch one or more Policy Development Processes (PDPs), particularly on API control and verification of associated domains.

Next cycle of new extensions: preparation and challenges

One of the key moments at ICANN84 was the preparation for the new gTLD cycle, scheduled to open in April 2026, the first expansion since the 2012 wave. The sessions in Dublin covered the following topics:

On this topic, the various working sessions in Dublin addressed the following:

• Program Design : Rules, evaluation criteria, and support for applicants.
• Security and Anti-Abuse Safeguards: Integrating prevention mechanisms from the outset.
• Geographic and Financial Inclusivity: Reducing bias in favor of large entities or developed countries.
• Dispute Resolution, Technical Evaluation, and Compliance Procedures
• Integrating Public Interest Principles : Ensuring that public interest is at the heart of the process.

A major milestone was reached in Dublin with the approval of the final version of the  Applicant Guidebook (AGB) by the ICANN Board of Directors. The result of lengthy community negotiations, this document now establishes the official rules for the 2026 application cycle, consolidating, in particular, the obligations related to the prevention of DNS abuse and the protection of rights.

ICANN bodies and their missions

ICANN operates through an ecosystem of bodies with complementary missions. In Dublin, each of them played a specific role in implementing the 2025-2026 priorities:

• The Governmental Advisory Committee (GAC): represents public interests and government authorities. In Dublin, it reinforced its recommendations on consumer protection, strengthened its dialogue with the ICANN Board, and was actively involved in discussions on the Applicant Guidebook.
• The Generic Names Supporting Organization (GNSO): The driving force behind gTLD policies. At ICANN84, it led the Policy Development Process, particularly on DNS abuse and the RDRS, while prioritizing and planning resources for the implementation of recommendations. Its role is to sequence work in a way that avoids scheduling conflicts and ensures that decisions are actionable.
• The At-Large Advisory Committee (ALAC): Defends the interests of end users. At the meeting, it emphasized accessibility and universal acceptance, ensuring that measures to combat abuse do not restrict users’ rights or hinder innovation.

• The Country-Code Names Supporting Organization (ccNSO): shared its expertise on country code domains, providing feedback on registry governance and compatibility with local legislation. Its interventions helped harmonize procedures between gTLDs and ccTLDs, particularly with a view to promoting cross-border cooperation.
• The Security and Stability Advisory Committee (SSAC) and the Root Server System Advisory Committee (RSSAC) provided technical recommendations on DNS system resilience and risk management. Their work aims to translate technical recommendations into contractual obligations and operational routines in order to maintain the stability and security of the global infrastructure.
• Finally, the Address Supporting Organization (ASO), representing regional IP address registries, emphasized the importance of ensuring consistency between address allocations and the development of DNS services, thereby guaranteeing the sustainability of routing and compatibility between domain name expansion and addressing capacity.

Implications for trademark holders and strategic directions

For trademark owners, these developments present both challenges and opportunities. It is increasingly essential to adapt trademark protection strategies to the evolving landscape of enhanced security, compliance, and governance standards. This proactive approach will help mitigate the risks associated with abuse and leverage the new opportunities offered by the next round of gTLDs.

Conclusion

ICANN84 marked a key milestone in global domain name governance, reaffirming the critical role of the multi-stakeholder model and the transition to the concrete implementation of developed policies.

For trademark holders, the next round of new gTLDs, scheduled for April 2026, presents both an opportunity and a challenge. The expansion of the domain name space will be governed by stricter policies on abuse prevention, data protection, and contractual liability. As a result, rigorous legal and strategic preparation will be essential to protect rights, anticipate potential conflicts, and capitalize on new opportunities.

ICANN84 illustrates how international coordination and engagement among various stakeholders are shaping a safer and more reliable environment for all DNS participants, while underscoring the need for brands to stay proactive in the face of upcoming changes.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. What is the ICANN and what is its role?
The ICANN (Internet Corporation for Assigned Names and Numbers) is the international organization that oversees the governance of the domain name system (DNS). It coordinates policies for assigning domain names and IP addresses worldwide, ensuring the stability, security, and accessibility of the Internet.

2. When will the next round of new gTLDs begin?
The next cycle of new gTLDs is scheduled for April 2026, marking the first expansion since 2012. This round aims to expand the available namespace while incorporating robust policies for security, inclusivity, and user protection.

3. What is the Applicant Guidebook (AGB) and why is it important?
The Applicant Guidebook is the official manual governing the application process for new gTLDs. It specifies requirements for DNS abuse prevention, data transparency, and rights protection, and defines procedures for applicant support and geographic name management.

4. How should trademark holders prepare?
Trademark holders should anticipate the risks and opportunities associated with the expansion of gTLDs: analyze the AGB, review their contracts with registries and registrars, strengthen compliance and rights protection procedures, and participate in public consultations to influence the applicable rules.

Introduction

The specification defines the scope of goods and services covered by the trademark, in other words, the precise boundaries of its exclusive rights. Too often seen as a mere administrative formality, this step is in fact an exercise in legal and strategic precision that directly determines the strength of the protection granted by the registration.

An imprecise, overly broad or overly narrow wording can have serious consequences: refusal by the office, vulnerability to revocation for non-use, or the inability to effectively act against an infringer.

This article examines, in light of our experience in trademark law, why and how a well-drafted specification constitutes the foundation of a successful trademark strategy, identifying common mistakes to avoid, best practices to adopt, and the long-term advantages of a legally sound approach.

The strategic importance of a precise and comprehensive trademark specification

Defining the exact scope of protection

When a trademark is filed, the list of goods and services determines with legal precision the extent of protection. The rights conferred on the owner apply exclusively to the goods and services mentioned in the specification.

A poorly drafted specification can therefore reduce the legal value of the trademark or even compromise its effectiveness in case of infringement. For instance, a trademark registered for “clothing” (Class 25) does not automatically cover “protective footwear” (Class 9) or “medical uniforms” (Class 10). Such distinctions, often overlooked by unassisted applicants, can prove costly in litigation.

Anticipating business and market developments

A specification should not only reflect the company’s current activities but also anticipate its future growth. The careful inclusion of related categories, without engaging in overprotection, can prevent the need for additional, costly filings.

For example, a cosmetics company planning to expand into dietary supplements may wisely include Class 5 (“dietetic products for medical use”) from the outset to avoid a subsequent filing.

Common pitfalls in drafting a trademark specification

The risk of an overly broad specification: allegations of bad faith

Filing for classes unrelated to the company’s actual or intended activity may lead to partial or total invalidation. IP offices such as the INPI, EUIPO, and UKIPO now closely examine the proportionality between the scope of protection and the applicant’s declared commercial activity.

The arbitrary inclusion of classes without genuine intent to use may be deemed a bad-faith filing, a risk reinforced by the Sky v. SkyKick decision of January 29, 2020 (ECJ, C-371/18), where the Court emphasized that the applicant’s intention to use must be serious and justified.

For further details on the implications of Sky v. SkyKick, please refer to our previously published article on the subject.

The danger of an overly narrow specification: loss of protection

Conversely, an excessively narrow description limits the trademark’s reach. If the specification only covers “sport shoes,” the owner cannot act against a competitor selling “formal shoes.”

A balanced formulation, such as “footwear, including sports shoes,” ensures coverage of both the general category and its subcategories.

The risk of a misinterpreted or non-compliant specification

Some applicants, through misunderstanding or excess caution, include goods or services that do not reflect their actual business, such as “advertising services” or descriptions of internal sales processes, believing this broadens their protection..

In a decision of May 21, 2025 (T-1032/23), the General Court of the EU upheld the partial revocation of Airbnb’s trademark for “advertising services,” reasoning that the term referred to advertising for third parties, not the promotion of Airbnb’s own offers. Therefore, there is no need to claim “advertising services” if the company merely promotes its own products; only providers offering genuine advertising services to others should include such terms.

Formal errors: punctuation, wording, exclusions

Punctuation rules carry legal significance. A comma separates items within the same category, while a semicolon distinguishes between groups. A misplaced punctuation may thus narrow the scope of protection.

Similarly, the improper use of parentheses can limit protection to what they contain: the expression “footwear (namely sports shoes)” will be construed as covering only sports shoes.

Finally, overly generic terms such as “machines” or “sales services” are deemed insufficiently specific by the INPI and EUIPO. They should be clarified, for example as “machine tools” or “retail services for clothing.”

Best practices for drafting an effective trademark specification

Rely on the Nice Classification without copying

The Nice Classification, updated annually, serves as the reference framework for categorizing goods and services. However, merely copying its headings is not enough: the specification must be tailored to the company’s actual business and trademark strategy.

Personalizing the wording enhances the coherence of the filing and strengthens the trademark’s enforceability in case of litigation.

Favour clarity and terminological precision

Trademark offices and courts favour clear and precise wording. Ambiguous expressions such as “namely” or “including” must be used carefully, as their interpretation can either broaden or narrow the protection depending on context.

A meticulous drafting approach also helps avoid revocation actions for non-use. If certain listed goods are never used, the trademark may be partially cancelled after five years of non-use, in accordance with Article L714-5 of the French Intellectual Property Code.

Adapt the specification to an international strategy

Each jurisdiction has its own interpretative rules. The United States requires a demonstrable intent to use for each listed item, while China applies a very literal reading of the specification.

For further details on trademark protection in the United States, please refer to our dedicated page.

A globally filed trademark must therefore be harmonized while respecting local specificities. Consulting an intellectual property firm helps avoid hazardous translations or divergent interpretations.

Conclusion: a well-drafted specification, a lasting asset for the trademark

Drafting the specification of a trademark means laying the legal foundation of its commercial identity. This strategic step determines not only the breadth of protection but also the trademark’s longevity and value.

By adopting a precise, consistent, and forward-looking drafting approach, companies safeguard their intangible assets and prevent future disputes.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Can the specification be modified after filing?

No. Once the application is filed, it is not possible to broaden the protection, only to restrict it (by means of a partial withdrawal). Hence the need for meticulous drafting from the start.

2. What happens if the trademark is not used for all the listed goods and services ?

After five years of non-use, the trademark may be partially or entirely revoked for the  goods or services concerned.

3. Why should overly broad terms be avoided?

An excessively general specification may be challenged for bad faith or face objections from the office. It also increases the risk of conflicts with earlier rights.

4. Can one use the Nice Classification headings?

Yes, but they should be adapted to the company’s real activity and specify the relevant goods and services.

5. How can a specification be adapted to an international strategy?

By harmonizing terminology in line with the requirements of each jurisdiction while ensuring global consistency across the trademark portfolio.

Introduction

As the ICANN 84 in Dublin (October 15 to 30, 2025) approaches, anticipation is building around a pivotal milestone: the expected adoption of the final Applicant Guidebook (AGB). This long-awaited document will mark the last major step before the official launch of ICANN’s Next Round of new gTLDs, expected in 2026.

The first expansion of the ), launched in 2012, brought over 1,200 new domain extensions such as .shop, .bank, .paris, and .google. However, that expansion also exposed significant challenges, technical complexity, high costs, limited diversity, and ongoing issues around rights protection and DNS abuse.

ICANN’s upcoming round aims to learn from these lessons and create a more balanced, inclusive, and secure program, reshaped to meet the demands of today’s Internet: more global, more commercial, and more sensitive to cybersecurity and brand protection.

A restructured program for a new internet era

The Next Round will introduce several reforms designed to simplify the process while promoting fairness and technical reliability. Central to this is the Registry Service Provider (RSP) pre-evaluation system, ensuring that only pre-qualified technical backends can operate new extensions.

At the same time, ICANN is emphasizing inclusion through the Applicant Support Program (ASP), which offers substantial fee reductions (up to 85%) and mentorship for applicants from developing regions or limited-resource organizations. This initiative aims to support community, linguistic, or public-interest TLDs, long underrepresented in the DNS landscape.

Timeline and key milestones

The preparatory phase for the Next Round is finished. The pre-evaluation of Registry Service Providers (RSPs) started in November 2024 and finished in May 2025. This step allows ICANN to certify the technical operators that may later be selected by applicants, ensuring a uniform baseline of technical quality and security.

Simultaneously, the Applicant Support Program (ASP) was launched on November 19, 2024, giving resource-limited applicants early access to assistance and mentoring. The deadline to apply for support is currently set for November 19, 2025, with a possible one-month extension until December 19, 2025. Once the ASP phase closes, ICANN will identify the successful candidates before the main application period begins.

The final version of the Applicant Guidebook is expected to be published around December 2025, following the public comment period opened in May 2025. The application window itself is projected to open in April 2026 and remain open for approximately 12 to 15 weeks.

From mid-2026 onward, ICANN will begin the evaluation, contention, and objection processes, depending on the number of applications received and the challenges filed. Finally, from late 2026 into 2027, successful applicants will sign their Registry Agreements and move toward delegation of their new extensions.

What has already happened

Registry Service Provider (RSP) Pre-Evaluation

Unlike the 2012 round, applicants must now select an ICANN-approved technical provider. This measure prevents redundant evaluations, enforces uniform security standards, and improves DNS resilience. Over 50 providers have entered this pre-evaluation phase, with results expected by the end of 2025.

Applicant Support Program (ASP)

The ASP is designed to democratize access to the DNS. It provides financial assistance, technical mentorship, and operational guidance to smaller entities and organizations in emerging economies. Applicants are not required to disclose their proposed string at this stage, preserving confidentiality and encouraging participation in the public-interest space.

The Applicant Guidebook (AGB)

On May 30, 2025, the Applicant Guidebook was published in draft form. It sets out the complete framework for the new gTLD application process, including evaluation criteria, objection mechanisms, technical and financial requirements, and rights protection measures. It also strengthens mechanisms such as the URS and UDRP and introduces new obligations for DNS abuse prevention.

A complementary Base gTLD Registry Agreement introduces a 10-year term, stricter renewal standards, and stronger abuse reporting duties.

Clearing the 2012 Backlog

ICANN has begun resolving or closing unresolved applications from 2012, including .GCC, .WEB, and .WEBS, ensuring that these long-contested strings can re-enter the 2026 process without administrative obstacles.

What to expect at ICANN 84 (Dublin, October 25 to 30, 2025)

The Dublin meeting will likely confirm several decisive steps:

• Board approval of the final Applicant Guidebook.
• Publication of the qualified RSP list.
• Progress reports from the ASP and the Universal Acceptance Steering Group (UASG).
• GAC (Governmental Advisory Committee) sessions addressing public interest safeguards, geographic names, and DNS abuse.

Governments are expected to tighten oversight on sensitive identifiers, including geographic, cultural, and linguistic terms, and emphasize transparency and accountability across registry operations.

Anticipated Challenges

While the framework has evolved, familiar tensions from 2012 are likely to resurface:

• String contention: Competing applications (e.g., .music, .hotel, .shop) may lead to auctions or negotiations.
• Rights protection: Brand owners must once again monitor applications to prevent trademark misuse or cybersquatting.
• Speculation and warehousing: ICANN will impose stricter “intent-to-operate” conditions to discourage speculative filings.
• DNS abuse: Enhanced scrutiny on security, phishing, and malware control.
• High costs and complexity: Despite simplifications, total costs may still range from USD 150,000 to 250,000, excluding legal and operational fees.

A Turning Point for the DNS

Beyond the procedural aspects, this new round has a broader policy and governance dimension. ICANN faces growing expectations to balance innovation with stability, as governments and rights holders call for stronger IP enforcement and faster takedown mechanisms.

For further insight on ICANN’s strategic role, please refer to our earlier article published on this topic.

Emerging technologies, AI-driven abuse detection, DNSSEC adoption, and identity-based models, could profoundly reshape compliance and monitoring obligations for registries.

Ultimately, this new wave of domain extensions represents more than a technical expansion. It is a strategic opportunity for businesses to:

• Secure new digital real estate for branding and innovation.
• Expand linguistic and geographic reach.
• Reinforce digital sovereignty and brand protection.

For policymakers and ICANN itself, Dublin 2025 will mark a defining moment, a delicate balance between openness and control, between innovation and trust. As the launch countdown begins, the Internet community will be watching closely to see whether ICANN has truly learned from 2012, and whether the next era of gTLDs will deliver a more responsible and sustainable Internet.

Conclusion

The upcoming launch of ICANN’s new gTLD program marks a historic evolution in Internet governance. More than a decade after the first expansion, the Next Round embodies a more structured, secure, and equitable approach to domain creation.

For companies, it will open unprecedented possibilities for innovation, marketing, and digital positioning, but also require vigilance and proactive brand defense. For ICANN and policymakers, it represents a test of credibility: ensuring that the mistakes of 2012 are not repeated while adapting to the realities of today’s Internet, shaped by cybersecurity imperatives, global diversity, and accountability demands.

When the final Applicant Guidebook is approved in Dublin, it will not only signal the beginning of a new application cycle, it will mark the beginning of a new chapter for the Internet itself, one that must balance openness and control, innovation and trust.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A:

1.What is a gTLD?

A gTLD (generic Top-Level Domain) is a generic domain name extension appearing at the end of an Internet address, such as .com, .org, .shop, or .paris. gTLDs serve to structure the Domain Name System (DNS) and provide new opportunities for communication, visibility, and digital positioning for businesses, institutions, and communities.

2. Why is a new round of gTLDs being launched?

The ICANN is launching a new round of gTLDs to foster innovation, competition, and diversity within the Internet ecosystem by allowing the creation of extensions tailored to specific brands, communities, languages, or business sectors..

3. What is the Applicant Guidebook (AGB)?

The Applicant Guidebook (AGB) is the official ICANN document setting out the rules, procedures, and requirements applicable to applicants seeking to operate a new gTLD. It defines the evaluation criteria, objection and dispute resolution mechanisms, and the technical, financial, and contractual obligations applicable to prospective registry operators.

4.What is the impact of this new round of gTLDs for trademark owners?

Businesses and trademark holders  will need to:

• Closely monitor new gTLDs applications to detect any parasitic or infringing uses,

Assess strategic opportunities to apply for their own branded extension;Adapt their trademark-enforcement policies to the new objection and appeal mechanisms set out in the Applicant Guidebook (AGB).

5. How can companies prepare now?

It is recommended to:

• Identify strategic extensions to monitor or potentially apply for,
• Audit existing trademark and domain name portfolios,
• Establish internal responses procedures to react swiftly in case of publication of a problematic application;
• And anticipate the costs and timelines associated with a possible participation in the next round.

To learn more about how businesses can prepare for the introduction of new gTLDs, please refer to our earlier article published on this topic.

Introduction

Participating in an ICANN international program is not just an opportunity: it is a true immersion in the global Internet governance. Global governance is based on a multi-stakeholder model involving governments, businesses, technical organizations, civil society, and academia. To ensure balanced and inclusive representation, the Internet Corporation for Assigned Names and Numbers (ICANN) created the ICANN Fellowship Program in 2007.

This flagship program enables professionals, particularly those from underrepresented regions or communities, to actively participate in Internet governance and gain unique experience on the global stage.

A program promoting diversity and global participation

Since its creation, the ICANN Fellowship program has enabled hundreds of participants from more than 30 countries to attend ICANN public meetings. By covering travel, accommodation, and living expenses, the program makes it possible for candidates who are far from major digital decision-making centers to participate.

The goal is clear : to increase diversity, inclusion, and active participation so that Internet governance reflects the plurality of its users.

Each edition brings together approximately 45 fellows from technical, legal, academic, or non-profit backgrounds, accompanied by experienced mentors from the ICANN community, who guide them through decision-making processes and working sessions of the ICANN.

Operation and support for scholarship recipients

The ICANN Fellowship Program consists of three main phases :

Before the meeting

• Training via ICANN Learn, presenting the ICANN’s structure, governance, DNS, and related policies.
• Mentoring to prepare participants to become actively involved and develop their network

During the meeting

• Participation in sessions, workshops, and group discussions.
• Interaction with members of the ICANN community and ongoing support from the mentor.

After the meeting

• Post-meeting follow-up, maintaining links with mentors, and involvement in ICANN working groups or support organizations.

Eligibility criteria and selection process

The program is open to candidates aged 21 or older who can demonstrate a genuine interest in Internet governance and ICANN policies (DNS, security, stability, TLDs).

Applicants must :

• Complete the required courses on ICANN Learn prior to evaluation.
• Not be receiving other ICANN funding at the time of selection.
• Not have received more than two scholarships previously (past scholarship recipients must demonstrate continued involvement).
• Present a clear motivation and concrete long-term engagement plan.

Evaluation: Selection is based on a standardized grid that takes into account diversity, professional experience, and potential for future engagement. The selection committee, composed of representatives from various ICANN organizations, spends 30 to 40 hours reviewing applications.

Why this program should be of interest to legal and intellectual property professionals

While the ICANN’s program aims to strengthen global participation, it is of particular interest to legal, intellectual property, and digital technology professionals.

Participating in an ICANN meeting allows you to :

• Gain direct insight into the technical and political governance of the Internet, including domain names, DNS security, and new TLDs.
• Develop an international network of experts, lawyers, engineers, decision-makers, and academics.
• Enhance your professional credibility: being a former ICANN fellow is a mark of recognized expertise in digital governance, cybersecurity, and ICT law.
• Contribute to national or regional digital transformation initiatives.

For lawyers, corporate legal professionals, and intellectual property experts, this program represents a unique opportunity to explore the intersection of law and technology in a global and interconnected context.

Conclusion

The ICANN Fellowship Program is far more than financial support : it serves as a gateway into the global Internet governance community.Training, mentoring, and personalized support enable each participant to become an active contributor to an open, secure, and inclusive Internet.

Legal, intellectual property, and technology professionals would be well advised to follow the upcoming application cycles (ICANN85 and ICANN86) and start preparing their applications now.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. What is the ICANN Fellowship Program?
The ICANN Fellowship Program enables professionals, particularly those from underrepresented regions or communities, to participate in ICANN public meetings, with comprehensive support through mentoring, training, and post-meeting follow-up.

2. Who can apply for the ICANN Fellowship Program?
Applicants must be at least 21 years old, demonstrate an interest in Internet governance, and complete the required modules on ICANN Learn. They must not receive any other ICANN funding and must not have received more than two fellowships in the past.

3. What are the benefits for legal and intellectual property professionals?
Scholars gain firsthand understanding of Internet governance, enhance their professional credibility, develop an international network, and can apply this knowledge to local or regional initiatives related to digital law, cybersecurity, or domain name management.

4. What does the ICANN Fellowship Program cover?
The program funds travel, accommodation, and living expenses, and offers structured support : mentoring before and during the meeting, training via ICANN Learn, and post-meeting follow-up to encourage ongoing engagement with the ICANN community.

5. How can I best prepare to maximize my chances of being selected?
It is recommended to complete the ICANN Learn modules, to prepare a clear and well-structured motivation letter, and to set out a concrete plan for future contributions.

Introduction

The Max&Co case illustrates the growing importance of a trademark’s reputation in opposition proceedings before the EUIPO, even when the goods or services in question are fundamentally dissimilar. The EUIPO opposition Division has clarified the conditions under which a well-known trademark in the fashion industry can protect its image against commercial use on entirely unrelated services, in this instance, transportation.

The Max&Co case : opposition concerning transportation services

On May 15, 2024, Max Mara Fashion Group S.r.L., owner of the earlier Max&Co trademark for clothing and bags (classes 18 and 25), filed an opposition against an EU trademark “” application designating transport services (class 39).

The opposition was based on article 8(5) of the EU Trademark Regulation (EUTMR), which allows the reputation of the earlier trademark to be invoked to prevent a third party from taking unfair advantage of or causing damage to the distinctive character or reputation of the earlier trademark.

Brand reputation as a determining factor

In order to demonstrate the reputation of the Max&Co trademark, the opponent submitted a convincing set of documents, including :

• Official statements relating to turnover, advertising expenditure, and the distribution network;
• Press articles and excerpts from renowned specialist magazines (Cosmopolitan, Elle, Vanity Fair, Vogue).
• Judgments from Italian courts and decisions from the Italian Patent and Trademark Office (UIBM).
• Screenshots from the brand’s official website.

After examining this evidence, EUIPO acknowledged that the Max&Co trademark enjoyed significant reputation in Italy, at least in relation to clothing.

Assessment of the “link” between the signs

In order to establish a likelihood of confusion, case law requires demonstrating that the relevant public is likely to establish a mental link (or association) between the earlier trademark and the contested sign.

The main criteria examined in assessing such a “link” include :

1. The degree of similarity between the signs;
2. The nature of the goods and services, including their degree of similarity or difference;
3. The degree of reputation of the earlier trademark;
4. The distinctiveness of the earlier trademark, whether inherent or acquired through use;
5. The existence of a likelihood of confusion on the part of the public.

In this case, the EUIPO ruled that the signs were very similar (common element Max&Co) and that the earlier trademark enjoyed significant reputation and normal distinctiveness.

Even though the goods (clothing) and services (transport) are dissimilar, the EUIPO identified a relevant link between them:

• Transport services can relate to any category of goods, including clothing;
• In the digital age, fashion manufacturers often actively participate in the delivery of their products via their online platforms.

Thus, the relevant public could mentally associate the contested sign with the Max&Co trademark, believing that the transport services originate from the fashion house or that the products transported are related to that trademark.

Unfair advantage and commercial parasitism

The EUIPO then assessed whether the contested sign could take unfair advantage of the reputation of the Max&Co trademark :

• Consumers might attribute to the transport provider the same standards of quality and prestige associated with MAX&Co.
• The contested sign could transfer Max&Co’s image of reliability and logistical efficiency to the transport services, facilitating its marketing in an unjustified manner.

On this basis, the EUIPO rejected the trademark application for all of the services claimed.

Conclusion

The Max&Co case confirms the importance of a trademark’s reputation as a protective tool, even when the goods or services are unrelated. The EUIPO is thus strengthening the protection of well-known trademarks against commercial parasitism and free-riding, particularly in sectors such as fashion where image and perceived quality are essential.

This decision also illustrates that reputation allows trademark protection to be extended beyond its initial class, taking into account modern commercial practices, including online sales and delivery.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can the reputation of a trademark justify opposition against unrelated goods or services?
Yes. A well-known trademark may oppose registration of an identical or similar sign for dissimilar goods or services when such use creates a mental link in the public’s mind or takes unfair advantage of the trademark’s reputation.

2. What criteria does the EUIPO consider when assessing such a link?
The similarity of the signs, the reputation and distinctiveness of the earlier trademark, the nature and degree of similarity of the goods or services, and the likelihood of confusion on the part of the public.

3. What is “unfair advantage” or free-riding?
It occurs when a contested sign benefits from the reputation or image of a well-known trademark to promote itself more easily, without investing in its own goodwill.

4. What are the implications for fashion trademarks?
Renowned fashion brands enjoy broader protection, which may extend to non-related services perceived as connected in consumers’ minds, particularly in the context of online sales and logistics activities.

Introduction

ICANN’s new Registration Data Policy (RDP), effective since August 21, 2025, establishes a unified and globally consistent framework for the collection, processing, publication, and disclosure of domain name registration data by registrars and registry operators. Replacing the temporary GDPR-related measures introduced in 2018, the RDP harmonizes data management practices across all gTLDs (generic Top-Level Domains) and ensures compliance with international personal data protection standards.

The policy clarifies the responsibilities of contracted parties with respect to data accuracy, security, and accountability, while strengthening transparency for legitimate disclosure requests through the Registration Data Request Service (RDRS), ICANN’s new system for accessing WHOIS data. Since 2018, access to certain personal data has been restricted or anonymized in the WHOIS database for domain names. In response to these restrictions, the RDRS was implemented to enable controlled, GDPR-compliant access to certain data masked by WHOIS. This is the first consensus policy to directly embed data protection principles within ICANN’s contractual ecosystem.

Key measures of the Registration Data Policy

Although the policy is detailed and technical, several major changes and obligations have been introduced for registrars and registry operators.

Data protection agreements and data processing specification

Registries and registrars must, where required by local law, enter into Data Protection Agreements to ensure that the processing of personal data complies with applicable regulations, including the GDPR.

The policy also introduces the Data Processing Specification (DPS), a contractual framework setting out the rules for processing “personal registration data” and defining the respective obligations of independent data controllers, including the conditions under which data may be collected, used, or transferred.

Minimal data collection and removal of certain contact roles

The new policy establishes a “minimum data set” model, under which registrars and registries may collect and retain only the data strictly necessary for registration operations and legal compliance.

Administrative, technical, and billing contact roles are no longer mandatory for most gTLDs, only the registrant contact remains required. Following the policy’s entry into force, registrars must delete data associated with these secondary contact roles.

Organization name as registrant: legal ownership recognition

When the “Organization / Company” field is filled out in the registrant contact information, that entity is now recognized as the Registered Name Holder, meaning the legal owner of the domain. If the field is left blank, the domain remains owned by the individual identified by first and last name. This clarification enhances legal certainty and reduces ownership disputes.

Disclosure criteria and registration data directory services (rdds)

The policy imposes stricter rules on the disclosure of registration data through Registration Data Directory Services (RDDS). It sets precise criteria to balance transparency, privacy, and legitimate data access.

It also revises the procedure for managing conflicts between disclosure obligations and data protection laws, while defining specific timelines for urgent lawful disclosure requests.

Implementation obligations and timeline

Registries and registrars were required to achieve full compliance by August 21, 2025. During the transition phase (from August 20, 2024 to August 20, 2025), they could adopt the policy in part or maintain certain aspects of the previous regime. ICANN and contracted parties must now adapt their systems, processes, and internal policies to ensure consistent and harmonized global implementation.

To learn more about online trademark protection strategies and the support our firm provides in light of these ICANN developments, we invite you to visit Dreyfus’s dedicated page.

Practical consequences and challenges

These changes entail a major technical and organizational overhaul. Registries and registrars must modernize their systems to integrate the minimum data model and remove outdated contact roles.

Contractual adjustments with third parties will also be necessary. External service providers involved in data management, such as WHOIS/RDAP operators, billing systems, or customer support, must be incorporated into data protection or processing agreements, in line with the Data Processing Specification (DPS).

A higher risk of ownership errors has also emerged: a registrant who mistakenly fills in the “Organization” field may inadvertently transfer legal ownership of the domain to an unintended entity. Registrars should therefore inform and educate their clients about this change.

The policy also introduces stricter limits on data marketing and bulk access. Mass access to registration data is now subject to tighter restrictions. Third parties wishing to use such data must comply with the Registration Data Marketing Restriction Policy, which defines precise usage conditions and prohibits unauthorized processing for commercial purposes.

All disclosure requests must be justified, documented, and handled within specific timeframes, strengthening accountability and traceability throughout the process. Finally, ICANN foresees regular compliance audits and inspections. Non-compliance may lead to corrective actions or sanctions.

Conclusion: key obligations under the new Registration Data Policy (RDP)

The RDP establishes a unified global framework aimed at reinforcing personal data protection, security, and transparency.

Key obligations for registries and registrars include:

• Standardized data management: collection, processing, and publication in accordance with ICANN and GDPR standards.
• Limited publication: only non-personal data may be made public via WHOIS/RDAP.
• Controlled disclosure: all access requests must be justified, documented, and processed through a standardized procedure.
• Data accuracy and reliability: regular verification and updating of registrant information.
• Data retention and security: protection and storage for the minimum period defined by ICANN (typically two years).
• Accountability and compliance: proper documentation, technical safeguards, and cooperation with ICANN audits.
• Secure transfers: data updates and transmissions must follow ICANN-approved protocols.
• Use of the RDRS: registrars are encouraged to rely on the Registration Data Request Service for handling disclosure requests efficiently.

The implementation of the RDP marks a shift toward a more harmonized and responsible model of data governance. Industry stakeholders must now balance legal compliance, operational efficiency, and privacy protection. A proactive approach, combining technical adaptation, contractual updates, and staff training, will be essential to strengthen trust within the global domain name ecosystem.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Why was this policy adopted?
The RDP ensures that domain registration practices comply with global data protection laws, including the GDPR, while maintaining the level of transparency required for the stability of the domain name ecosystem. It establishes a uniform framework of accountability, security, and transparency for all registries and registrars.

2. Does the RDP affect domain name disputes (UDRP, URS, etc.)?
Indirectly, yes. Trademark owners or their representatives may find it more difficult to identify registrants quickly due to redacted personal data. However, the RDRS compensates for this by offering a structured channel to request the necessary information for dispute proceedings.

3. Do national data protection authorities (such as France’s CNIL) still play a role?
Yes. While the RDP provides a global framework, it does not override national data protection laws. In cases of conflict, local legislation prevails, particularly within the European Union, where the GDPR remains the primary legal standard.

4. Does the RDP affect the transparency of the public WHOIS?
Yes, but more exactly it redefines it. Raw WHOIS data is no longer universally accessible; instead, it is replaced by a selective and justified access model. The goal is to protect privacy while preserving the ability to combat misuse and cybercrime.

5. What are the next steps following the implementation of the RDP?
ICANN plans to conduct an implementation review in the second half of 2026. This assessment will evaluate the consistency of global deployment, identify operational challenges faced by registrars, and consider potential adjustments, particularly regarding the scope of the RDRS and alignment with regional data protection laws.

An international recognition confirming the excellence of Dreyfus & Associés

The 2025 IP Stars rankings have been released, once again highlighting the most influential figures in the world of intellectual property law. Among them is Nathalie Dreyfus, founder of Dreyfus & Associés, who has been named a trade mark star 2025 for France.

Awarded by Managing IP, one of the most respected global publications dedicated to IP, this distinction celebrates practitioners whose expertise, leadership, and influence shape the future of trademark law. For Nathalie Dreyfus and her firm, it is the recognition of more than two decades of excellence in protecting, defending, and enhancing the intangible assets of companies and creators.

Global significance of the IP Stars ranking

IP Stars, published by Managing IP, is one of the most respected independent guides to the world’s leading IP firms and professionals. Each year, it identifies top practitioners through a rigorous and transparent methodology based on:

• Confidential client and peer feedback,
• In-depth interviews with market experts,
• Analysis of notable cases and achievements,
• Reputation and long-term industry impact.

The various categories — patent star, trade mark star, copyright & design star — recognize professionals whose contributions to the advancement of intellectual property are considered exemplary.

Being named a trade mark star 2025 places Nathalie Dreyfus among the leading trademark practitioners in France, acknowledged by an international, independent assessment process.

Nathalie Dreyfus: expertise, experience, and commitment

A French & European trade mark attorney and court-appointed expert before the French Cour de cassation and Paris Court of Appeal, Nathalie Dreyfus has built a reputation that extends well beyond national borders.

Founder of Dreyfus & Associés, she is widely recognized for her strategic vision in intellectual property, especially in trademarks, designs, domain names, and digital assets.

Her professional philosophy rests on three pillars:

1. Deep legal expertise, bridging law, innovation, and technology;
2. Practical experience, advising multinational companies, startups, and public institutions;
3. Active contribution to the global IP community through teaching, speaking engagements, and participation in international organizations such as WIPO, ECTA, and INTA.

This new IP Stars recognition celebrates a career devoted to the strategic and ethical protection of intellectual property rights, driven by passion and precision.

The Dreyfus approach to intellectual property excellence

For more than 25 years, Dreyfus & Associés has supported clients in the global management of their intellectual property assets, including:

• Trademark filing, watch, and enforcement worldwide;
• Domain name management and anti-cybersquatting actions;
• IP litigation and anti-counterfeiting strategies;
• Portfolio valuation and licensing support;
• Digital law and web3/NFT/metaverse issues.

The trade mark star 2025 recognition highlights the firm’s commitment to combining legal rigor, strategic insight, and innovation in a rapidly evolving technological landscape.

Why this recognition matters

Beyond its prestige, the trade mark star 2025 title has strong strategic value:

• Enhanced credibility with global corporate clients and partners who rely on Managing IP rankings to identify trusted experts;
• International visibility for French expertise in a field often dominated by Anglo-Saxon firms;
• Team acknowledgment, since this honor reflects the collective commitment and excellence of the Dreyfus team.

Being listed by IP Stars is a testament to excellence validated by the market itself — a guarantee of competence, integrity, and performance.

A continuous pursuit of excellence

This new honor joins a long series of international recognitions: WTR 1000, Leaders League, Who’s Who Legal, Chambers Europe, and more.

Each award reinforces the firm’s commitment to innovation and client success:

• Delivering cutting-edge solutions for IP protection;
• Anticipating emerging digital and AI-related challenges;
• Supporting clients in turning their brands into competitive advantages.

A trusted partner for brands and creators

The trade mark star 2025 recognition confirms the firm’s authority in:

• Strategic brand counsel and trademark management;
• IP portfolio audits and valuation;
• Internal training on brand and digital risk management;
• Global trademark and domain name strategy.

For corporations, luxury brands, startups, and creators alike, Dreyfus & Associés transforms intellectual property into a true business asset — secure, valuable, and future-proof.

Conclusion

Being named a trade mark star 2025 by IP Stars is more than a title — it is a confirmation of vision, integrity, and impact.

“This recognition honors our team and our clients’ trust. It reflects our ongoing commitment to excellence and our mission to protect ideas, innovations, and identities that shape the future.” — Nathalie Dreyfus, founder of Dreyfus & Associés

🔗 Learn more

• Official IP Stars profile
• Dreyfus & Associés
• Managing IP / IP Stars

Introduction

At the heart of trademark law, use plays an essential role: without real exploitation, the legal protection of a trademark is at risk. But not just any use will suffice. Many right holders mistakenly believe that displaying their trademark on a storefront or window is enough to establish genuine use. European case law, particularly the K-Way decision, firmly reminds us that such practice does not meet the standards of genuine use under trademark law.

The fundamental principle of trademark maintenance: genuine use

The concept of “genuine use”

Under Article 18 of Regulation (EU) 2017/1001, the trademark holder who, without proper justification, has not made genuine use of the trademark within a continuous period of five years, starting at the earliest from the registration date, risks revocation of the trademark. This principle is reflected into French law under Article L.714-5 of the French Intellectual Property Code. The use invoked must be genuine and not merely symbolic. In other words, there must be serious and effective exploitation in the relevant economic sector, in connection with the goods or services for which the trademark is registered.

The burden of proof and its implications

The burden of proof lies with the trademark holder – not with the applicant for revocation. However, vague or incomplete evidence will not suffice: the proof must be objective, specific, and dated. Courts reject speculation or probability.

Why the use of a trademark on a storefront is insufficient to demonstrate genuine use

Legal distinction between a trade sign, a company name, and a trademark

A trade name identifies a business establishment (its façade or sales point), while a name or company name identifies, respectively, the commercial entity or the legal person. The mere presence of a trademark on a storefront shows an intention to associate the sign with the business activity, but does not ensure that consumers perceive the sign as identifying the origin of the goods or services offered.

This identification function is the essential purpose of a trademark, as established by the consistent case law of the ECJ (see Terrapin case, 22 June 1976, C-119/75 a trademark must enable consumers to distinguish goods or services as originating from one undertaking rather than another. Without a perceptible link between the sign and the goods themselves, using a trademark as a trade sign is insufficient to maintain the rights conferred by registration.

Recent case law: the K-Way decision of 25 June 2025

The reasoning of the General Court (GC)

The K-Way case (T-372/24)originated from a 2019 non-use revocation action before the EUIPO against a figurative EU trademark registered since 2006 by K-Way. The figurative trademark, consisting of a coloured rectangular band, was registered notably for goods in Classes 18 and 25 (leather goods, clothing, footwear, headgear).

In a decision dated July 11^th, 2023, the EUIPO partially upheld the revocation request, cancelling the registration for all goods except outerwear and footwear in Class 25. K-Way appealed. In a decision dated May 21^st, 2024 (R 1748/2023-2), the EUIPO Board of Appeal partially reversed the previous decision, finding that genuine use had been demonstrated for certain goods. K-Way then appealed again before the General Court, claiming that genuine use had also been proven for the remaining goods.

To oppose the revocation, K-Way argued that the trademark was indeed used in its mono-brand stores, where only its products were sold, and that displaying the trademark on store-front was sufficient to demonstrate genuine use for all the relevant goods. It relied on earlier case law, notably Céline SARL v. Céline SA (C-17/06), where the ECJ held that “the use of a company name, trade name, or trade sign may constitute genuine use of a registered trademark where the sign is affixed to the goods marketed, or where, even in the absence of such affixing, the use of the sign creates a link between the sign and the goods marketed or the services provided.”

The General Court acknowledged that displaying a trademark on the façade or storefront could serve as an indicator or piece of evidence in the assessment of genuine use. However, such display alone does not suffice to establish genuine use for all goods or services covered by the registration. The display of a trademark on a shopfront does not, by itself, fulfil the essential function of a trademark.

The Court accepted that the use of a trademark on a storefront may contribute to the overall evidence, but it is not in itself enough to demonstrate genuine use for all registered goods. Precise, dated, and consistent evidence must be provided, showing a direct and unequivocal link between the sign and the marketed goods or services. A presumed consumer perception or purely internal use within the company is insufficient: the use must be public, external, and commercially significant.

The fragility of trademark use evidence in mono-brand stores

The Court’s reasoning is entirely consistent with the objectives of trademark law. Indeed:

• If the owner simultaneously uses other trademarks for certain goods, the consumer’s perception of the storefront sign as identifying the specific trademark may be diluted.
• The use of a trademark as a storefront may relate only to the business premises rather than the promotion of the products themselves: if the trademark is not visible on the goods or packaging, consumers may not associate the trademark with the products.

By emphasizing these points, the Court reaffirmed that use of a trademark as a storefront or store can only serve as supplementary evidence, not as the main proof of exploitation. This approach preserves the consistency of the system by preventing trademarks from being maintained without genuine market presence for the products they claim to cover.

Conclusion

Using a trademark as a trade sign or company name can be a relevant indication of use but does not replace evidence of genuine use of the trademark in connection with the goods and services. The recent K-Way decision (T-372/24) confirms that displaying a trademark on a mono-brand store does not exempt the owner from the burden of proving use of the trademark to designate the registered goods and services. Only a comprehensive strategy combining various forms of evidence can ensure the maintenance of rights.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can use of a trademark as a trade sign be invoked in a revocation action?
Yes, but it will only serve as one piece of evidence among others, never as stand-alone or genuine use.

2. What if evidence of use is not dated?
Its evidential value is significantly weakened. Courts require elements clearly situated in time and directly linked to the trademark.

3. Is use of a trademark on the Internet taken into account?
Yes, provided it is shown that the website targets the relevant market (through language, currency, or product destination) and that the trademark is used to identify goods, not merely the business itself.

4. Can a trademark be maintained if only partial use is proven?
Yes. If the trademark is used for only some of the registered goods, protection may be maintained for those goods, but not for the others.

5. When must the trademark owner prove genuine use?
The owner is not required to prove use spontaneously, but must do so whenever a revocation action is filed or a counterclaim for revocation is raised in opposition proceedings. The proprietor must provide evidence of genuine, continuous, and relevant use during the five-year reference period preceding the filing of the action.

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