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Introduction

Trademark infringement proceedings remain the preferred weapon for brand owners seeking to defend their rights. They uphold the exclusivity attached to the sign and sanction any unlawful appropriation. Yet this right is not absolute; it can be extinguished by the effect of forfeiture through acquiescence.

This mechanism, derived from European law and integrated into the French Intellectual Property Code, penalises the inaction of a trademark owner who, in full knowledge, allows the use of a later mark to continue for more than five consecutive years. Silence then becomes a true acceptance, rendering infringement proceedings permanently inadmissible.

Recent decisions of the Paris Court of Appeal in the SWEET PANTS (11 June 2025) and SCOTT (19 March 2025) cases illustrate the strict application of this rule. They serve as a reminder that tolerance, whether voluntary or not, can prove costly: the effective defence of a trademark portfolio requires constant monitoring and immediate reaction to infringements.

The legal foundations of forfeiture through acquiescence

Definition and statutory conditions

Article L.716-4-5 of the French Intellectual Property Code provides that infringement proceedings brought on the basis of an earlier mark are inadmissible where the proprietor has acquiesced, in full knowledge, for a period of five consecutive years in the use of a later registered mark for the relevant goods or services. The sole exception applies where the later mark was filed in bad faith.

The CJEU has clarified that four cumulative conditions must be met (CJEU, 22 Sept. 2011, Budvar, C-482/09):

1. The later mark must be registered.
2. Its filing must have been made in good faith.
3. It must have been put to genuine use.
4. The proprietor of the earlier mark must have had knowledge of both the registration and the subsequent use.

The role of good faith and statutory presumption

Pursuant to Article 2274 of the French Civil Code, good faith is always presumed. It is therefore for the proprietor of the earlier mark to establish that the later filing was made in bad faith.

Recent case law illustrations

The SWEET PANTS case: acquiescence in the face of extensive commercial use

In its decision of 11 June 2025 (Canada Goose International AG v. Sweet Pants SAS), the Paris Court of Appeal declared actions for invalidity and infringement inadmissible, as they were brought more than five years after the registration of a French semi-figurative mark SWEET PANTS.

• Proven and serious use: the mark had been used since 2012, with growing intensity from 2014 onwards (advertising campaigns, dedicated stores, presence in department stores and on major e-commerce platforms).
• Use in a modified form: slight variations (coloured background, the words “since 1982”) did not affect the distinctive character of the sign.
• Knowledge of the use: public reputation, media presence, and a cease-and-desist letter sent by the claimant in 2016 all demonstrated that exploitation of the mark could not have been ignored.
• Sectoral scope: forfeiture was upheld for clothing but not for headgear, as use on caps had not been sufficiently demonstrated.

This decision underscores that even a major international player (here, Canada Goose) may lose the right to act if it allows concurrent use to become established in the same market segment.

The SCOTT case: insufficient vigilance within a structured group

In its decision of 19 March 2025 (Bifratex SARL v. Scott Sports SA), the Paris Court of Appeal confirmed the inadmissibility of infringement proceedings based on the international word mark SCOTT.

• Continuous exploitation: the later semi-figurative SCOTT mark had been in public use since 2000 on the sportswear market in France and across Europe.
• Good faith presumed: absent contrary evidence, the filing of the later mark was deemed bona fide.
• Genuine use: the word “SCOTT,” being the central and distinctive element, was sufficient to characterise use of the semi-figurative mark.
• Imputed knowledge: the claimant and a sister company in the United States, both responsible for the group’s portfolio, had already brought legal and administrative actions against the defendant. Successive intra-group transfers of the mark could not obscure this knowledge.

The Court held that tolerance exceeding five years, in a context of direct competition and intra-group management, rendered the action inadmissible.

Practical consequences for trademark owners

The risks of prolonged inaction

• Permanent loss of the right to bring infringement or invalidity proceedings against the later mark.
• Weakening of the portfolio and forced coexistence with competing signs.
• Risk of dilution of the mark’s distinctiveness.
• Potential liability for legal costs and expenses.

Strategies for safeguarding rights

• Implement active monitoring of filings and market use.
• Respond swiftly: opposition, invalidity action, cease-and-desist.
• Negotiate coexistence or limitation agreements where necessary.
• Raise awareness within internal teams to ensure early detection of conflicting use.

Conclusion

Forfeiture through acquiescence is far from a theoretical concept: the SWEET PANTS and SCOTT cases demonstrate the strictness with which French courts apply it. They remind trademark owners that protection strategies cannot be limited to registration alone: they demand continuous monitoring and immediate responsiveness to infringements.

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

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is forfeiture through acquiescence?
It is the loss of the right to act against a later mark where its use has been tolerated for five years, in full knowledge.

2. Can the bad faith of the applicant exclude forfeiture?
Yes, but it must be proven by the proprietor of the earlier mark, which is rarely admitted.

3. How is knowledge of use established?
Through public reputation, advertising of the use, coexistence in the same markets, or corporate and procedural links.

4. Does tolerance of a local mark have international effects?
Yes, forfeiture applies in each Member State where the use is established.

5. From when does the five-year period run?
From the moment the proprietor becomes aware of the registration and the actual use of the later mark.

Introduction

For trademark owners and intellectual property professionals, the Internet Corporation for Assigned Names and Numbers (ICANN) plays a crucial yet often underestimated role in the protection of digital assets. As the central body coordinating the global Domain Name System (DNS), ICANN develops policies and implements dispute resolution mechanisms that are essential tools in combating cybersquatting, protecting trademarks, and preserving the online reputation of businesses.

Understanding ICANN’s role and knowing how to engage in its decision-making processes has become indispensable for any organization seeking to safeguard its digital identity in a constantly evolving environment.

The role of ICANN in the Internet ecosystem

Founded in 1998, ICANN is a non-profit organization responsible for coordinating the management of databases related to Internet naming spaces and digital addresses. Its main functions include:

• Managing the root of the DNS system;
• Accrediting registrars and authorizing registries;
• Defining policies governing generic top-level domains (gTLDs) such as .com, .org or .xyz, as well as brand extensions (e.g., .loreal);
• Administering dispute resolution policies such as the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension (URS) system.

ICANN does not regulate the content available on the Internet. Its role is to ensure that each domain name is unique, that the DNS remains reliable, and that the global ecosystem operates in a stable and secure manner.

Why ICANN is essential for trademark owners and IP professionals

UDRP and URS procedures

The UDRP provides a global and relatively cost-effective mechanism for recovering domain names registered in bad faith. The URS, while faster but limited to the temporary suspension of an infringing domain name, complements the enforcement arsenal. Together, these procedures remain indispensable tools in the fight against cybersquatting.

The Trademark Clearinghouse (TMCH)

The TMCH is a centralized database where trademark owners can record their rights. This allows them to:

• Receive alerts in case of attempted registrations of similar names during the launch of new gTLDs;
• Benefit from priority access (Sunrise period) to secure domain names corresponding to their marks before the extension opens to the public.

Brand TLDs and the new wave of gTLDs

The expansion of gTLDs, including brand TLDs (e.g., .google, .sky, .canon), offers companies the opportunity to control their own digital space and reinforce consumer trust. The upcoming application round, expected in the coming years, will require anticipation and well-defined strategy.

WHOIS data and access to registration information

Since the General Data Protection Regulation (GDPR) came into force, public access to WHOIS data has been severely restricted. ICANN is currently developing the Registration Data Request Service (RDRS) to regulate access requests. For rights holders, monitoring and contributing to these discussions is vital, as access to registration data remains a key condition for enforcing trademark rights.

Participation in ICANN’s multistakeholder model

ICANN operates under a multistakeholder governance model, where governments, businesses, technical experts, and civil society all contribute to policy development. Rights holders’ interests are primarily represented within the Business Constituency (BC) and the Intellectual Property Constituency (IPC) of the Generic Names Supporting Organization (GNSO). These groups:

• Advocate for balanced policies that respect trademark rights;
• Influence the development of new dispute resolution mechanisms;
• Participate in the review of domain name policies and registry agreements.

Active involvement in these forums enables businesses to directly influence decisions that impact trademark protection and DNS governance.

Strategic implications for corporate digital policy

For businesses, particularly those with a global presence or exposure to imitation, ICANN policies are not abstract governance issues but practical tools. A proactive strategy should include:

• Monitoring ICANN policy developments and upcoming gTLD application rounds;
• Registering key trademarks in the TMCH;
• Building a robust domain name portfolio covering strategic markets;
• Actively using UDRP/URS mechanisms to enforce rights;
• Engaging in the IPC or working with advisors who participate in ICANN policy groups.

ICANN is more than a technical body: it is a global forum where the future of Internet naming infrastructure is shaped. For businesses seeking to protect their brand identity and minimize digital risks, proactive participation in ICANN processes is no longer optional, it is an essential component of modern IP management.

How Dreyfus can assist with ICANN-related matters

At Dreyfus & Associés, we understand the pivotal role ICANN plays in managing the global domain name system and safeguarding digital assets. As businesses face growing challenges in cybersquatting, trademark infringement, and brand protection in the digital space, our firm provides tailored expertise to help you navigate ICANN’s complex policies and ensure compliance with international digital standards.

Dispute resolution

We guide you through UDRP and URS procedures to recover or suspend domain names registered in violation of your rights.

Digital trademark protection

We handle trademark registrations in the TMCH and advise on opportunities to apply for a brand TLD, particularly with the next application round expected in 2026.

Data access and compliance

We assist you in using the RDRS and in requesting WHOIS data access, ensuring compliance with GDPR.

Strategic representation

As an active member of the IPC, our firm represents your interests in ICANN discussions and helps you prepare public comments to influence future policies.

Comprehensive digital strategy

We monitor ICANN developments on your behalf, optimize domain portfolio management, and prepare you for Universal Acceptance (UA), a key condition for an inclusive and effective digital presence.

Conclusion

At Dreyfus, we provide comprehensive legal and strategic advice to businesses navigating ICANN’s complex systems, from domain name dispute resolution to trademark protection and IP enforcement. Whether you are dealing with domain name recovery, new gTLDs, or compliance with WHOIS data access regulations, Dreyfus is here to guide you.

For expert legal advice on ICANN-related matters, contact Dreyfus & Associés. Our experienced team is dedicated to safeguarding your digital presence and intellectual property rights in today’s constantly evolving online environment.

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

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is ICANN’s role in trademark-related disputes?

ICANN administers specialized mechanisms such as the UDRP (Uniform Domain Name Dispute Resolution Policy) and the URS (Uniform Rapid Suspension System). These procedures allow trademark owners to recover or suspend domain names registered and used in bad faith, without resorting to national courts.

2. How can a trademark owner protect rights during the launch of new gTLDs?

By registering trademarks in the Trademark Clearinghouse (TMCH), rights holders receive early alerts and enjoy priority access to corresponding domain names during the Sunrise period, securing their rights before general availability.

3. Can ICANN help identify domain name holders after the GDPR?

Indirectly. Since WHOIS data access has been restricted, ICANN has launched the Registration Data Request Service (RDRS), which enables rights holders and authorities to request access to registration data in a GDPR-compliant framework.

4. What are brand TLDs and why do they remain strategic?

Brand TLDs (e.g., .canon, .gucci) are Internet extensions reserved and operated by companies to fully control their naming space. They ensure secure, coherent, and value-enhancing communication around the brand. Their relevance remains intact as the next wave of gTLD applications approaches.

5. How can a business or law firm engage with ICANN’s work?

Participation is possible through the Business Constituency (BC) or the Intellectual Property Constituency (IPC), two influential groups within ICANN. Businesses and advisors may also contribute directly by responding to ICANN’s regular public consultations.

Introduction: a paradox in Trademark Law

In principle, trademark rights are territorial: to oppose the registration of a sign in a country, one must have an existing right in that same territory. However, within the Inter-American region, an exception exists. Thanks to the General Inter-American Convention for Trademark and Commercial Protection of 1929, it is possible to obtain the rejection of a trademark application, even without having a locally registered title, provided that certain conditions are met.

The Inter-American Convention of 1929: an overlooked but powerful tool

The General Inter-American Convention for Trademark and Commercial Protection, adopted in Washington in 1929, currently includes nine ratifying states: United States, Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, and Peru. These countries have officially committed to applying its provisions, enabling them to benefit from the protection and opposition mechanisms provided by the Convention.

In contrast, some signatories of the Convention, such as Bolivia, Brazil, Chile, Costa Rica, Dominican Republic, Ecuador, Mexico, Uruguay, and Venezuela, have only signed the text without proceeding with ratification. While their signatures indicate a willingness to support the principle of trademark protection across the Americas, these countries are not legally bound to apply the Convention’s rules, including the opposition mechanism.

The primary objective of the Convention is to provide effective protection against abusive trademark filings within contracting states. It complements and enhances the Paris Convention by introducing a unique opposition mechanism. This mechanism relies not only on the existence of a registered trademark but also on the knowledge of the prior sign by the applicant and the likelihood of confusion. This system offers broader protection by reducing the need for local registration, in contrast to the Paris Convention, which primarily relies on registration priority.

Article 7: Opposing a Trademark Application without local rights

Conditions for implementation

Article 7 allows a trademark holder to oppose the registration of a similar sign in another contracting state, provided that the following conditions are demonstrated:

• The holder has a protected right (through registration or use) in one of the contracting states;
• The contested applicant had knowledge of this right at the time of filing;
• The goods or services are related and likely to cause confusion.

Proof of knowledge of the prior sign

The central element here is knowledge. It is not necessary to prove worldwide fame, but rather to provide concrete evidence (commercial contracts, email exchanges, trade show participation, advertising campaigns, regional market presence). This aspect fundamentally distinguishes the Inter-American Convention of 1929 from the standards of the Paris Convention, which focuses more on registration priority.

Concrete examples and recent Case Law

• COHIBA Case (2022-2025, United States): The Cuban trademark holder successfully had trademarks registered by a third party in the United States canceled based on the 1929 Inter-American Convention. The judges recognized that the knowledge of the sign and the likelihood of confusion took precedence over the absence of prior local registration.
• SULA Opposition (2020, TTAB): A Honduran trademark holder invoked Articles 7 and 8, which was examined by the U.S. Patent and Trademark Office (USPTO). Although the request failed on product similarity, the principle was upheld: use in one contracting state may be sufficient to challenge a filing in another.

These decisions illustrate the vitality of a text often considered outdated, but still usable to prevent opportunistic filings.

Strategic considerations for Trademark holders

The application of the 1929 Convention offers several advantages:

• Neutralizing bad faith filings without having to pre-register the trademark in all contracting states.
• Expediting oppositions with a clear and recognized legal basis.
• Reducing international protection costs, by focusing filings in strategic countries while benefiting from a conventional shield in others.

However, this protection requires solid evidentiary preparation and a mastery of the procedural timelines of each office.

Conclusion

It is not always necessary to justify local trademark rights to win an opposition: the Inter-American Convention of Washington 1929 proves this. This tool, still underused, should be integrated into any trademark protection strategy operating between Latin America and the United States.

Dreyfus & Associés assists its clients in identifying the most effective legal foundations for protecting and defending their intangible assets.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Which countries are parties to the 1929 Inter-American Convention?
Ten countries, including the United States, Cuba, Colombia, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, and Peru.

2. Do you need to register your trademark locally to benefit from the Convention?
No. A registered or recognized use in one contracting state may be sufficient to oppose elsewhere.

3. What is the difference between the Paris Convention and the Washington Convention?
The Paris Convention often requires proof of fame. Here, only the knowledge by the applicant and the likelihood of confusion are required.

4. How do you prove the applicant’s knowledge of the sign?
Through any objective evidence: commercial exchanges, contracts, trade shows, regional advertising campaigns.

5. Can you invoke the Convention outside of signatory countries?
No, its effect is strictly limited to contracting states.

Introduction

Since 1 May 2025, the first phase of the reform of the European Union Design Regulation (EUDR) has come into force, introducing significant changes to the design protection system within the European Union. These changes aim to modernize and simplify the protection of designs, thereby enhancing legal certainty and accessibility for businesses and creators.

Overview of phase 1 changes

A. Expanded definitions and scope of protection

The reform clarifies and broadens the definitions of “design” and “product,” specifying visibility requirements and the scope of protection. In particular, the “informed user”(a person with a level of attention higher than that of the average consumer, but without possessing the expertise of a sector specialist) criterion is now explicitly defined, providing clearer guidance for assessing design and model infringements.

B. Procedural improvements

The new EUIPO examination guidelines take these legislative changes into account, thus simplifying procedures and aligning practices with the updated regulations. EU design fees are set out in Annex 1 of the Regulation: there is no longer a separate registration and publication fee, as a single application fee now covers both. In addition, staggered renewal costs for each renewal period include a higher increase for the third and fourth renewal periods a measure criticised by some industry stakeholders but intended to ensure that only EU designs actually used in the market remain registered.
Furthermore, the reform introduces a harmonised deferment of publication, allowing applicants to delay the publication of their design for up to 30 months after filing, providing extended and uniform confidentiality across the European Union, before automatic publication is triggered.

Implications for businesses

A. Impact on design holders and applicants

Businesses holding registered designs or filing new designs in the EU will benefit from a simpler and more predictable registration process. Clarified definitions and streamlined procedures reduce uncertainties and facilitate strategic management of intellectual property rights.

B. Strategic considerations

Companies should review their existing design portfolios to ensure compliance with the new regulations. This may include reassessing protection strategies and filing new designs to take full advantage of the broadened scope of protection.

Management of disputes and oppositions

A. Strengthening legal certainty

The reform introduces clearer criteria for assessing design infringements, relying notably on the “informed user” criterion, which evaluates similarities based on the overall appearance of the product from the perspective of a person familiar with the market and existing designs. This should facilitate dispute resolution and reduce the risk of prolonged litigation. These clarifications benefit both rights holders and alleged infringers by providing a more predictable legal framework.

B. Impact on opposition mechanisms

The updated reform simplifies opposition procedures by harmonising deadlines, reducing the formalities of notices, clarifying grounds for opposition, and allowing fully electronic filing and monitoring. These changes could lead to faster and more efficient conflict resolution. Companies should consider proactively filing oppositions to protect their design rights and fully leverage this streamlined framework.

Future perspectives: Phase 2 (effective from July 2026)

A. Expected changes

Phase 2 of the reform, scheduled for July 2026, is expected to introduce further improvements, such as:

• Unified representation: allowing a representative to act in both trademark and design matters without requiring separate qualifications.
• Strengthening enforcement mechanisms: enhancing tools available for the enforcement of design rights, including customs measures and cooperation with tax authorities.

B. Preparatory steps for businesses

Companies should begin preparing for these upcoming changes by:

• Training legal teams: ensuring that in-house counsel and representatives are informed about the forthcoming reforms.
• Reviewing enforcement strategies: evaluating current enforcement practices to identify areas for improvement in anticipation of Phase 2.

Conclusion

Phase 1 of the EU design reform marks a significant step in modernising design protection within the European Union. Companies should take proactive measures to understand and adapt to these changes in order to maximise the benefits of the updated framework.

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

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What are the main changes introduced by Phase 1 of the EU design reform?
Phase 1 introduces clarified definitions of “design” and “product,” specifies visibility requirements, and updates procedural guidelines to simplify the registration process.

2. How do these changes affect companies holding registered designs in the EU?
Businesses will benefit from a more predictable registration process and broader design protection, with clearer criteria for infringement.

3. What impact do these reforms have on design dispute management?
The reforms provide greater legal certainty, facilitating the rapid resolution of disputes and oppositions.

4. What can be expected from Phase 2 of the EU design reform?
Phase 2, scheduled for July 2026, will introduce unified representation and strengthen enforcement mechanisms for design rights.

5. How can companies prepare for Phase 2 of the reform?
Businesses should begin training their legal teams and reviewing enforcement strategies to comply with the anticipated changes.

Introduction

The Anti-Counterfeiting Trade Agreement (ACTA) is an international treaty that has sparked numerous debates and concerns since its creation. The update to this agreement introduces significant changes affecting the intellectual property field, particularly in the fight against counterfeiting and online piracy. This article explores the recent developments of ACTA, its objectives, and the reactions from the various stakeholders involved.

What is ACTA?

The Anti-Counterfeiting Trade Agreement (ACTA) is an international treaty aimed at strengthening the protection of intellectual property rights. It was designed to fight counterfeiting, piracy, and other forms of copyright infringement, both in the physical and digital world. This treaty was signed by several countries, but its implementation was hindered by concerns regarding privacy protection and individual freedoms.

Why is this article relevant?

The ACTA comes in a global context where counterfeiting and online piracy are on the rise. Moreover, technological advancements and new digital challenges make it even more crucial to strengthen international rules concerning intellectual property. This update is therefore relevant for all businesses and content creators, as it changes the way intellectual property will be protected globally.

Objectives of the updated ACTA

The primary modifications to ACTA aim to enhance international cooperation in the fight against counterfeiting, especially on the Internet. These include strict measures regarding the responsibility of online intermediaries, as well as harsher penalties for counterfeiters. ACTA also seeks to harmonize the laws of different countries for more effective combat against digital piracy.

Stakeholders of ACTA

ACTA involves several key actors, including the governments of the signatory countries (Japan, the United States, Canada, New Zealand, Morocco, South Korea, Singapore, and Australia), businesses from the digital industry, copyright defense organizations, and end-users. The stakeholders are primarily businesses with intellectual property rights to protect, such as those in the fashion, media, and music sectors. Civil society also plays an important role, particularly in monitoring the impact of the proposed measures on individual freedoms and privacy protection.

Concerns raised by ACTA

Despite its laudable goals, ACTA raises concerns, particularly regarding the protection of human rights and privacy. Some opponents of ACTA argue that the proposed measures could lead to abuses, such as excessive surveillance of internet users or unjust actions against innocent users. Critics have highlighted the lack of transparency in the negotiations and the risk of excessive global governance in the digital domain.

The European Commission’s position

The European Commission initially supported ACTA but changed its position after negative reactions from civil society and European governments. It decided to suspend its signature of ACTA, citing the need for greater clarity and guarantees concerning the protection of fundamental rights of European citizens. The Commission’s current position is to reassess the impact of ACTA on human rights before any reintroduction into European legislation.

The Obsolescence of ACTA and the Emergence of New Mechanisms to Combat Counterfeiting

ACTA (Anti-Counterfeiting Trade Agreement), although initially signed in 2011 by several countries, is no longer in use today. The agreement was widely contested and failed to gain universal ratification, notably due to its rejection by the European Parliament in 2012. Since then, ACTA has not been implemented and is considered obsolete in the context of international counterfeiting regulation. Today, the fight against counterfeiting is governed by other legal instruments, including agreements from the World Trade Organization (WTO), such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), as well as national legislations and trademark and patent protection systems. Furthermore, mechanisms like the European Directive on the Enforcement of Intellectual Property Rights (Directive 2004/48/EC) effectively address counterfeiting issues within the European Union. Thus, while ACTA had an influence on the initial discussions, other legal tools and international agreements have taken over to ensure the protection of intellectual property rights.

Conclusion

In conclusion, the update to ACTA represented an important step in the fight against counterfeiting and digital piracy worldwide. However, it raises legitimate concerns regarding the protection of individual rights.
Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is ACTA?
ACTA is an international trade agreement aimed at strengthening the enforcement of intellectual property rights and combating counterfeiting and piracy.

2. Who are the main signatories of ACTA?
The main signatories of ACTA include countries like the United States, Japan, the European Union, and other developed nations.

3. What is the primary goal of ACTA?
The primary goal of ACTA is to promote the harmonization of international rules for better combatting counterfeiting and piracy.

4. Does ACTA affect the rights of European citizens?
No, according to the European Commission, ACTA does not change the rights of European citizens but harmonizes the enforcement rules for intellectual property.

5. What is the next important event regarding ACTA?
The next round of negotiations on ACTA is scheduled for June 2010.

Introduction

New genomic techniques (NGTs) offer revolutionary possibilities for plant modification, enabling more precise, rapid, and targeted genetic changes than traditional selection techniques. These innovations provide solutions for more resilient and sustainable agriculture, addressing global environmental challenges such as disease resistance or climate change adaptation. However, their rise raises significant legal, ethical, and economic questions.

The European Regulation proposal on NGTs, put forward by the European Commission in July 2023, marks a decisive turning point in the regulation of plant biotechnology in Europe. However, a major disagreement between the European Parliament, the European Commission, and the European Council complicates the adoption of this regulation, making it uncertain.

Definition and scope of NGTs

New genomic techniques (NGTs) refer to methods that allow for precise modification of the genome of plants, meaning their genetic organism. Unlike traditional selection techniques, NGTs enable targeted modifications to specific genes. Among these, CRISPR-Cas9 is the most well-known, allowing for precise cutting and modification of DNA segments. This technology paves the way for traits of interest, such as disease resistance or tolerance to extreme climatic conditions. This represents a significant advancement for agriculture and could transform plant production, offering more sustainable solutions in the face of environmental challenges.

The current legal framework: PVR and patents

The Plant Variety Rights (PVR) system

In Europe, seed companies benefit from legal protection through Plant Variety Rights (PVR). This system allows breeders of new varieties to protect their inventions, thereby guaranteeing their remuneration and encouraging innovation. However, an important exception exists: the “breeding exception,” which allows for the creation of new varieties using plants protected by a PVR. This enables seed companies to have some freedom in their innovation work without risking violating the rights of previous breeders.

Coexistence with patents

While in other regions of the world, such as the United States, entire varieties can be patented, Europe remains stricter. According to Article L611-10 of the French Intellectual Property Code, a patent can be granted for an invention that meets the following three conditions: novelty, inventive step, and industrial application. Thus, in France and Europe, patents apply only to specific traits or technical methods of improvement, not to entire varieties. For example, a seed company may have a PVR for a particular variety of tomato, but a patent could be filed for a specific gene that improves the resistance of this variety to a disease.

The impact of the New European Regulation on NGTs

Position of the European Parliament and the Council

The European regulation proposal on NGTs, put forward by the European Commission, finds itself in a politically tense situation. The European Parliament expresses major concerns, particularly about the patentability of plants derived from NGTs. It fears that the proliferation of patents on living elements could stifle innovation and increase costs for farmers. On the other hand, the European Commission and the European Council argue that certain genetic innovations derived from NGTs should be able to be protected by patents in addition to PVRs. This would ensure a return on investment for breeders while ensuring that genetic research can be monetized.

Implications for seed companies and farmers

If the Parliament’s position is adopted, the patentability of genetic traits derived from NGTs would be excluded, limiting seed companies’ ability to generate revenue from innovations brought by these techniques. This could reduce the incentive to invest in genetic research, with direct consequences on the cost of seeds for farmers. On the other hand, a hybrid system (which would include patents on certain traits) would complicate the market and could lead to an increase in seed costs, which farmers would then bear.

Concerns about the patentability of traits from NGTs

Debates on the patentability of traits and varieties

The proposed hybrid system could lead to a complex situation where each genetic trait derived from NGTs is protected by a separate patent. This would increase administrative costs for seed companies and complicate the legal landscape, with specific licenses needing to be negotiated for each trait used. This could stifle innovation, as a seed company might have to negotiate licenses for widely used genetic traits.

Economic implications for the seed market

Risks of increased costs for seed companies and farmers

If the patentability of traits derived from NGTs is allowed, seed companies would need to negotiate licenses to use these traits, leading to additional costs for farmers. These costs would be passed on to the price of seeds, making genetic innovation more expensive and limiting access to new technologies.

Implications for innovation and competition

The introduction of patents on genetic traits could have negative consequences by creating a market where access to innovations is restricted by exclusive licenses. This could reduce competition in the seed industry and limit farmers’ access to innovative seeds, with adverse effects on the efficiency and sustainability of agriculture.

The importance of administrative responsiveness in managing NGT and PVR rights

A recent case concerning the cancellation of the Community Plant Variety Right (CPVR) for the “Melrose” potato variety due to non-payment of annual fees illustrates the challenges of managing intellectual property rights in the seed sector. In the case Romagnoli Fratelli SpA v. Community Plant Variety Office (CPVO), the Court of Justice of the European Union (C-426/24 P) confirmed that the CPVO acted correctly in cancelling the right after several electronic reminders via the MyPVR platform to the holder, who failed to respond within the deadlines.

This situation highlights the importance for seed companies and plant breeders to strictly adhere to administrative procedures and closely monitor electronic communications related to their intellectual property rights.

In the context of NGTs, which bring rapid and complex changes to plant genetics, increased vigilance is necessary to avoid valuable rights being cancelled for administrative reasons, such as non-payment of fees or negligence in managing information.

In this context, just as with plant variety rights, it is essential for rights holders to ensure that their contact information and communication settings are up to date, and that they respond promptly to official notifications sent electronically. This is particularly relevant in the context of the proposed European regulation on NGTs, where complex administrative processes are likely to come into play, and where seed companies may find themselves in a similar situation if their rights are poorly managed or neglected.

Conclusion

The legal framework for NGTs is in the process of evolution, and the debates surrounding the proposed European regulation suggest significant changes for the seed industry. The compromise between patents and PVRs will be crucial for the future of innovation in this area, as well as for costs and competition in the seed market. If the system proposed by the Commission and the European Council is adopted, it could radically transform the sector, with significant consequences for seed companies, farmers, and the sustainability of European agriculture.

Dreyfus & Associates advises its clients in managing complex intellectual property matters, offering tailored advice and comprehensive operational support for full intellectual property protection.

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Nathalie Dreyfus and the entire Dreyfus team.

FAQ

1. How does the PVR protect plant varieties?

The PVR protects plant varieties by granting their creator exclusive rights to production and commercialization. It allows seed companies to collect royalties from seed sales.

2. What are the issues surrounding the patentability of NGTs?

Patentability of NGTs could protect specific genetic traits but might also lead to market complexity with higher costs for seed companies and farmers.

3. Can NGTs be patented in Europe?

Currently, only technical methods or specific genetic traits derived from NGTs can be patented, not the entire variety.

4. How do seed companies negotiate licenses for genetic traits?

Seed companies negotiate licenses to use patented traits, which can lead to additional costs and complex intellectual property management.

5. What is the implication of the case of the cancellation of a plant variety right?

The case highlights the importance of maintaining compliance with seed protection rules, particularly concerning the payment of protection fees.

Introduction

In an increasingly globalized digital market, Universal Acceptance (UA) has emerged as a fundamental standard for businesses and legal professionals. Universal Acceptance ensures that all domain names and email addresses regardless of script, language, or character length are recognized and supported by all applications, devices, and systems connected to the Internet. This inclusivity is not merely a technical requirement, but a strategic necessity for organizations seeking to expand their digital presence and engage with diverse, multilingual audiences.

Understanding universal acceptance

Universal acceptance is a foundational principle that guarantees the interoperability of all valid domain names and email addresses across the Internet. It includes:

• Internationalized domain names (IDN): domain names that incorporate non-Latin characters, such as Arabic, Chinese, Cyrillic, or Devanagari.
• Email address internationalization (EAI): the ability to use email addresses in local scripts and languages, facilitating communication in native tongues.
• Long top-level domains (gTLDs): domain extensions longer than the traditional two or three characters, such as .photography or .technology.

The introduction of these elements has significantly diversified the digital landscape. However, many legacy systems still assume that domain names and email addresses are limited to ASCII characters and short TLDs, leading to compatibility issues and excluding non-Latin scripts from the digital ecosystem.

Benefits of universal acceptance for businesses

For globally oriented businesses, adopting universal acceptance is not optional, it is essential. Key benefits include:

• Enhanced user experience: Customers can interact with digital platforms in their native scripts, building trust and engagement.
• Market expansion: By supporting a wider range of languages and scripts, businesses can access previously untapped markets, driving growth and innovation.
• Legal compliance: In jurisdictions where digital inclusivity is mandatory, UA compliance is crucial for meeting regulatory requirements.
• Brand protection: UA-compatible infrastructure safeguards brand identity across diverse linguistic and cultural contexts.

Legal implications and considerations

From a legal perspective, universal acceptance has significant implications:

• Intellectual property rights: Protecting trademarks and domain names across multiple scripts requires a deep understanding of UA standards and their application.
• Contractual obligations: Agreements with clients, partners, and service providers may require UA compliance to ensure seamless digital interactions.
• Dispute Resolution: Legal disputes related to domain name registration in non-Latin scripts may require specialized knowledge of the principles of Universal Acceptance and their application.

These extrajudicial procedures (such as the UDRP, ADR, and Syreli procedures) require technical expertise to address issues related to Unicode characters and the compatibility of domain name management systems. A specialized approach is essential to effectively resolve these disputes.

Legal professionals must stay informed about developments in UA to provide accurate advice and effectively safeguard clients’ digital interests.

The role of ICANN and available resources

The Internet Corporation for assigned names and numbers (ICANN) leads global efforts to promote Universal Acceptance through several initiatives:

• Universal acceptance steering group (UASG): a community-driven initiative aimed at raising awareness and facilitating UA adoption.
• Universal acceptance training programs: ICANN offers resources and training to help organizations understand and implement UA principles effectively.
• UA readiness reports: annual assessments that provide a global overview of UA adoption and highlight areas for improvement.

Steps to achieve universal acceptance readiness

Organizations can take several measures to ensure compliance with Universal Acceptance:

• System evaluation: Review existing systems and applications for compatibility with IDN and EAI.
• Staff training: Equip technical teams with the knowledge and skills needed to implement UA standards.
• Internal policies: Develop internal policies to promote and enforce UA compliance.
• Stakeholder engagement: Collaborate with industry groups, legal advisors, and regulators to stay updated on UA developments and best practices.

Conclusion

Universal Acceptance is a key element in the evolution toward a truly inclusive and accessible Internet. For businesses and legal professionals, adopting Universal Acceptance standards is not merely a technical update but a strategic decision aligned with global digital trends and regulatory expectations. By embracing Universal Acceptance, organizations can improve user experience, expand their reach into new markets, and ensure legal compliance in an increasingly diverse digital landscape.

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

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is Universal Acceptance?
It is the recognition and support of all domain names and email addresses, regardless of script or length.

2. Why is it important for businesses?
It enables access to international markets and improves user experience.

3. Which types of domain names are concerned?
Internationalized Domain Names (IDNs) and long top-level domains (gTLDs).

4. Does Universal Acceptance have legal implications?
Yes, it affects trademark protection and contractual obligations related to domains and emails.

5. How can organizations prepare for Universal Acceptance?
By evaluating systems, training staff, and implementing internal policies aligned with UA standards.

6. What domain name disputes are related to Universal Acceptance?

They often involve cybersquatting, trademark infringement, or domain registrations in non-Latin scripts, requiring expertise in Universal Acceptance.

Introduction: why protect an innovation?

Filing a patent is a decisive step in securing a competitive advantage and maximizing returns on research and development investments. In today’s globalized context, it is crucial to understand the French national procedure, as well as the European and international mechanisms such as the PCT (Patent Cooperation Treaty).

Filing a patent in France: steps, costs and ownership

The procedure before the INPI

In France, the patent application is filed with the Institut National de la Propriété Industrielle (INPI). The application must contain a technical description, claims, an abstract, and, where relevant, drawings.
After a formal examination, the European Patent Office (EPO) issues a search report, which is then forwarded to the INPI. The applicant may amend the claims before the INPI examines the patentability criteria:

• Novelty: the invention must not already exist in the prior art.
• Inventive step: the invention must not be obvious in light of existing technology.
• Industrial applicability: the invention must be capable of being used in industry or agriculture.

If these requirements are met, the patent is granted and published.

Who owns the patent?

As a general principle, the inventor is the patent holder. However, in the case of employee inventions made in the course of employment, the patent belongs to the employer, pursuant to Articles L.611-6 and L.611-7 of the French Intellectual Property Code. Ownership may also be transferred or shared by contract.

Costs and professional fees

Official fees include:

• filing fee: approx. €26,
• search report: €520,
• annual renewal fees starting in the 2nd year: €38, gradually increasing.

In practice, taking into account the drafting of the application, correspondence, and strategy, the overall cost ranges between €4,000 and €8,000.

The priority period

A French filing establishes a 12-month priority right (Paris Convention). During this time, the applicant may extend protection abroad while retaining the original filing date.

Opposition and duration of protection

The opposition procedure

Since 2020, any third party may file an opposition before the INPI against a granted patent, on grounds such as lack of novelty, inventive step, or clarity. This administrative procedure is faster and less costly than court litigation.

Duration of protection

The duration of a French patent is 20 years from the filing date, subject to the payment of annual renewal fees. For pharmaceuticals and plant protection products, a Supplementary Protection Certificate (SPC) may extend protection by up to 5 additional years.

Comparison between national patent, European patent and PCT

The French patent

The national patent is limited to the French territory. It is a quick and cost-effective option for protecting an invention in the domestic market.

The European patent (EPO procedure)

The application is filed with the European Patent Office (EPO). After a centralized examination, the patent must be validated country by country in the designated states. The European patent thus becomes a bundle of national rights.

The PCT and its strategic role

The Patent Cooperation Treaty (PCT) allows applicants to file a single international application covering more than 150 countries. It does not result in a global patent but extends the decision period to 30 or 31 months. This procedure provides valuable time to assess markets, seek investors, and plan a strategy before entering the national or regional phases.

Strategic impacts to anticipate

Market expansion

Through the PCT and the European patent, companies can progressively expand their protection according to commercial opportunities.

Anticipating litigation

A carefully structured patent portfolio strengthens the company’s capacity to act against infringers and to secure business partnerships.

Enhancing company value

Patents are intangible assets that increase corporate credibility, particularly in fundraising, licensing, or acquisition operations.

Conclusion

The French patent filing procedure, combined with the European and PCT systems, provides a powerful framework for innovation protection. By mastering costs, deadlines, and strategic options, companies can optimize the value of their creations and strengthen their competitiveness.

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

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is the cost of filing a patent in France?
Official fees are modest, but including drafting and professional support, the overall cost ranges from €4,000 to €8,000.

2. How long does a French patent last?
20 years from filing, subject to annual renewal fees.

3. What is the deadline to extend a French patent abroad?
12 months (priority right).

4. Is the PCT a global patent?
No, it is an international procedure that centralizes and defers the process.

5. Who owns an invention created by an employee?
As a rule, the employer owns the patent, pursuant to the Intellectual Property Code.