What Are the Pitfalls of Not Having IP Protection?

Written by Dreyfus10/03/2023

Intellectual property (IP) is a valuable asset that can help businesses grow and protect their investments. Without adequate IP protection, businesses are vulnerable to having their ideas and inventions stolen or copied without any legal recourse. This article will discuss the pitfalls of not having IP protection in place and the importance of having it.

The first major pitfall of not having IP protection is that your ideas and inventions are open to theft or copying by someone else. Without a registered trademark or patent, anyone can use your ideas or inventions and claim them as their own. This could mean that someone else is profiting off of your hard work and creativity, while you receive nothing in return.

Additionally, if your ideas or inventions are widely stolen or copied, it can hurt your reputation as an innovator and make it difficult to differentiate yourself from the competition. Another pitfall of not having IP protection is that you may be unable to stop others from using your ideas or inventions. If you don’t have a registered trademark or patent, you can’t legally stop others from using your ideas or inventions without your permission.

This means that anyone can take your ideas and sell them, or use them as part of their own product or service, without your consent. Finally, not having IP protection can also lead to costly legal disputes. If someone does use your ideas or inventions without your permission, you may need to take legal action in order to stop them. This can be a costly and time-consuming process, and you may be unable to recoup any of the money or effort you lost due to the infringement.

In conclusion, it’s important to have IP protection in place in order to protect your ideas and inventions. Without IP protection, you may be vulnerable to theft or copying of your ideas or inventions, unable to legally stop others from using them, and may have to take legal action in order to protect your rights.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

What are the suggested modifications to the UDRP?

Written by Dreyfus06/07/2021

Following the UDRP ‘s new gTLD program, new Rights Protection Review Mechanisms (RPM) have been implemented to protect trademark holders, such as the Uniform Rapid Suspension System (URS) procedure.

ICANN has now decided to address changes suggested by trademark holders and intellectual property experts regarding the UDRP. For instance, one of these suggestions is that a domain name should be considered abusive if it is registered OR if it is used in bad faith, instead of requiring that both these conditions are met. The idea is to lighten the burden of proof on the rights owner to take into account a more up-to-date reality. Another suggestion is to provide for an accelerated procedure in case of abusive conduct and to get a decision more rapidly if the defendant fails to respond to the complaint.

It has also been proposed to provide for a presumption of bad faith if the registrant has lost three UDRP complaints and to require any repeat offender to pay a response fee to defend the case. The central issue at this stage of the study is to understand the extent to which the UDRP principles should be changed in favour of trademark owners, while knowingt hat it may weaken the UDRP principles.

Sources:

Overview: The Rights Protection Mechanisms (RPM) Review https://newgtlds.icann.org/en/reviews/cct/rpm

Phase: 1 Initial Report of the Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process :

https://www.icann.org/public-comments/rpm-initial-report-2020-03-18-en

Towards increased protection for authors and performers: what does Directive 2019/790 bring to the harmonization of contract chains?

Written by Dreyfus20/05/2021

The Copyright Directive n° 2019/790 of April 17, 2019 is a milestone in strengthening the protection for authors and performers. The provisions of the directive regarding contracts in the field of literary and artistic property generally tend to rebalance the legal relationship between contractors, to the benefit of creators. This is notably reflected in the rules on contract chains.

A. The European classifications of contract chains in the field of copyright law

The European legislator specifies the chains of contracts that are subject to the new regulation.

1. Primary contracts: Licenses and transfer of rights

As regards primary contracts, Article 18(1) of the Directive distinguishes between licenses and transfer of rights.

These provisions thus implicitly rely on a criterion, which looks at whether there is a transfer of ownership or not, and which is used in French law to distinguish between assignments and licenses, to classify contracts in the field of literary and artistic property. So far, this aspect was not clearly stated in the intellectual property code.

In other words, the assignment is a transfer of ownership whereas the license confers only an exploitation right: the assignment is therefore always exclusive whereas the license is not necessarily exclusive; the assignment includes, in particular, a transfer of ownership of the infringement action, which is not the case in a license.

2. Secondary contracts: sub-licenses, licenses and subassignments

When the primary contract is a license, the secondary contract is a sub-license, by virtue of Article 19 of the Directive.

Where the first contract of the chain consists in a transfer of ownership, the second contract will be, depending on the case, assimilated to either a licensing contract (if its object is to confer an exploitation right) or to a sub-assignment contract (if another transfer of ownership is completed).

B. Increased protection of creators in contractual matters

The new European provisions outline a legal regime that strongly protects creators in contract chains, and thus substantially reform the case law of the Court of Cassation on these issues.

1. Prior to the enactment of the directive, limited protection for authors in chains of contracts

In French law, many specific provisions in the field of literary and artistic property aim at protecting the author in his/her contractual relations, especially the rules concerning the formal requirements of authors’ contracts. Yet, the protection of the author beyond the first contract remained rather limited.

Indeed, the intellectual property code does not specifically regulate contract chains. In a Perrier decision dated October 13, 1993, the French Supreme Court distinguished between contracts concluded with authors and contracts concluded between operators, considering that the latter operators were not subject to the provisions of the intellectual property code. Thus, the obligations of sub-operators towards authors were limited.

For instance, an obligation of transparency towards authors had already been enacted, but it was very limited, and only concerned distributors of long cinematographic works and audiovisual works created thanks to funding from the National Center for Cinema and the Moving Image (articles L213-28 and L251-5 of the Cinema and the Moving Image Code).

Similarly, the principle of a proportional remuneration of authors by sub-operators was interpreted quite restrictively, and only applied to audiovisual works, according to rulings of the French Supreme Court dated July 16, 1998, and May 29, 2013.

2. The benefits of the Copyright Directive for authors and performers

The Directive changes the old framework and extends the protection of creators in contractual matters.

From now on, Article 19 of the European Union directive states an obligation of transparency for sub-operators towards authors and performers, and grants authors and performers a direct right of action against sub-operators who would not comply with their obligation.

Moreover, Article 18 generalizes the principle of appropriate and proportional remuneration by the sub-operator to authors and performers to all fields of literary and artistic property.

Finally, Article 20(1) establishes an adjustment mechanism together with a direct right of action for authors or performers against the party with whom they have concluded a contract for the exploitation of rights or against their successors. This mechanism is designed to provide for an additional remuneration when the remuneration initially agreed upon proves to be unreasonably low compared to the total income subsequently derived from the exploitation of the works or performances.

The European directive therefore extends the regulation of contract chains in the field of literary and artistic property, while strengthening the protection of creators.

Article 34 of Law n°2020-1508 of December 3, 2020 authorizes the French government to enact, by ordinance, any law aimed at ensuring the transposition of articles 17 to 23 of this directive.

Why does the willingness to sell a domain name is not conditioned on an active approach?

Written by Dreyfus18/05/2021

(OMPI, Centre d’arbitrage et de médiation, 23 février 2021, affaire n° D2020-3322, Netflix Inc. c. WhoisGuard, Inc. / Siddharth Sethi)

Avons-nous encore besoin d’introduire Netflix ? Cette plateforme proposant des services de streaming vidéo compte 195 millions de membres dans plus de 190 pays et semble être connue dans le monde entier. Pourtant, certaines personnes tentent de se soustraire à cette notoriété pour tenter de se construire une légitimité artificielle et justifier l’enregistrement d’un nom de domaine .

En effet, alors que la société Netflix détient de nombreux enregistrements dans le monde pour le signe « NETFLIX » en tant que marque , la société a détecté l’enregistrement du nom de domaine <netflix.store> . En conséquence, elle a déposé une plainte auprès du Centre d’arbitrage et de médiation de l’OMPI pour obtenir son transfert.

Le nom de domaine, enregistré le 3 septembre 2017, pointe vers une page qui présente une animation composée d’un effet d’éclatement de couleur et se termine par un écran de couleur vierge.
Le titulaire soutient que le nom de domaine ne reproduit pas la marque NETFLIX mais est plutôt composé de deux termes , “net” et “flix”. Or, comme prévu, l’expert considère que la marque NETFLIX est reproduite à l’identique dans le nom de domaine.
L’expert considère que si l’utilisation du nom de domaine n’est pas commerciale, son enregistrement ne serait pas non plus considéré comme légitime. En effet, le site mis en place vise à légitimer l’enregistrement afin de dissimuler l’intention de vendre le nom de domaine au Plaignant. Ni la reproduction de la marque NETFLIX dans le nom de domaine litigieux, ni l’extension <.store> n’ont de sens si le projet devait effectivement être non commercial.

En conséquence, il estime que l’intimé n’a aucun droit ou intérêt légitime sur le nom de domaine .
Par ailleurs, l’expert constate que le Défendeur connaissait le Plaignant et son activité et prévoyait qu’en achetant le nom de domaine, il serait en mesure de le revendre au Plaignant avec un bénéfice significatif. Cette stratégie a été partiellement couronnée de succès, car Netflix a fait une offre que l’intimée a refusée, essayant d’obtenir une somme considérablement plus élevée.

Or, l’enregistrement d’un nom de domaine qui correspond à la marque d’un Plaignant avec l’intention de le vendre au Plaignant lui-même , établit la mauvaise foi. L’expert précise que le titulaire « [n’aurait pu] raisonnablement penser qu’un tiers serait en mesure d’utiliser commercialement le Nom de domaine litigieux ». Il convient également de noter que l’intimé a tenté de faire croire à la personne qui l’a contacté qu’il avait reçu d’autres offres plus élevées. En effet, le représentant de Netflix, qui n’avait pas indiqué qu’il agissait pour Netflix, ce qui était un secret de polichinelle, avait proposé la somme de 2 000 USD, que le déclarant jugeait trop faible.

L’expert commente ce comportement récurrent de certains cybersquatteurs : « Peu importe que le Défendeur n’ait pas proposé activement à la vente le Nom de domaine litigieux. Il n’est pas rare que des déclarants opportunistes de noms de domaine incluant une marque tierce attendent d’être approchés, réalisant qu’une offre active de vente du nom de domaine peut faciliter un procès UDRP à leur encontre ».

En conséquence, l’expert conclut que le nom de domaine litigieux a été enregistré et est utilisé de mauvaise foi et ordonne ainsi son transfert au Plaignant.

Sauf dans les cas où un nom de domaine reproduisant une marque notoire telle que NETFLIX est utilisé à des fins de critique sans usage commercial, ou pour un usage commercial minimal, il est quasiment inconcevable d’imaginer qu’un tel nom de domaine ait pu être enregistré de bonne foi . Netflix savait évidemment qu’elle gagnerait le procès, mais a visiblement choisi d’essayer de négocier un rachat à l’amiable pour un budget légèrement inférieur à celui d’une procédure UDRP, si l’on compte les 1 500 USD d’honoraires et les honoraires d’avocat. Cette approche, si elle réussissait, aurait permis d’économiser du temps et de l’argent, mais la simple offre de rachat a pour effet d’encourager le cybersquattage.

How does the bad faith duplicate between registration and bad faith use?

Written by Dreyfus29/04/2021

UDRP While one generally refers to the “three criteria” of the UDRP (a trademark similar to the domain name; the absence of rights or legitimate interests of the defendant in the disputed domain name; and the bad faith of the registrant), it should be kept in mind that bad faith in UDRP matters has two aspects: the first is bad faith registration and the second is bad faith usage. Therefore, proving only one of these elements is insufficient even though it may be considered “fair” that a name used in bad faith should be transferred to the applicant.
In the present case, Great American Hotel Group, Inc. complained that its former vice-president retained the domain name <greatamericanhg.com> and changed the password of the account used to manage this name with the registrar.

It all started in 2011 when the applicant decided to adopt the name Great American Hotel Group. Its president at the time asked Mr. Greene, then vice-president of the company, to reserve the domain name <greatamericanhg.group>.
The latter did so, but – apparently without notifying his superior – reserved the domain name in his name instead of that of the company. He did, however, record the company’s postal address, and pay with the company card. In 2012, he hired an anonymity service to hide his data.

Since its registration, the name had been used for the company and Mr. Greene had always treated the domain name as part of the company’s assets.

However, following disagreements, Mr. Greene was suspended from office in 2015 and dismissed in 2016. In 2017, the name was renewed by the company’s technical teams even though Mr. Greene was no longer present. However, the latter subsequently changed the password so that the name could no longer be renewed by the company. The applicant’s counsel proceeded to send Mr. Greene a letter of formal notice, which remained unanswered, leading to the filing of a UDRP complaint.

The panellist acknowledged that the applicant had common law trademark rights through the use of the sign “Great American” and that the registrant did not have any legitimate rights or interest in the name as it was created for the applicant company.
He also acknowledged that the domain name was used by Mr. Greene in bad faith.

Nevertheless, the panellist was more sceptical regarding the issue of bad faith registration. Indeed, the name had been reserved by Mr. Greene at the request of the president of the applicant company, which, in principle, had, in fact, been a registration in good faith.

In order for registration by an employee to qualify as having been done in bad faith, the panellist specified that the employee must have, from the beginning, had “an intention to cause harm”. Therefore, the evaluation must be factual and done on a case-by-case basis.

In this case, Mr. Greene had registered the domain name in his own name. The panellist found that “this may be subject to questioning, and the fact that he did not mention the company does not constitute a good domain name management practice”, however, the president and the company seemed to be equally as uninterested in formalizing the reservation of the name.

For four years, until he was suspended from his functions, the registrant had always displayed conduct that demonstrated that he understood that the name belonged to the company. Thus, there is no reason to suppose that by reserving the name four years earlier, he had intended to compete with the applicant or to benefit from some type of tactical advantage against him.

Consequently, the plaintiff’s complaint was dismissed as the registration in bad faith had not been established. Nevertheless, the panellist specified that the applicant could turn to other avenues to try to obtain relief.

The significance of this decision, in addition to highlighting the dual condition of bad faith, is that it reiterates the need to set up an internal naming charter to avoid any dispersion of assets, both in terms of trademarks and domain names.

How to protect your brands in the digital era?

Written by Dreyfus26/04/2021

“Intellectual property was viewed with passion – and in a style steeped in pre-Romanticism! – as “the most sacred, the most legitimate, the most unassailable […], the most personal of properties”; “The least likely to be contested, the one whose increase can neither hurt republican equality, nor overshadow freedom,” said Patrick Tafforeau in his book Intellectual Property Law published in 2017.

It should be borne in mind that intellectual property is protected by law. This protection is notably achieved through patents, copyright and trademark registrations. These intellectual property rights allow creators to obtain a certain form of recognition or even a financial advantage from their inventions, plant varieties or creations.

In this sense, paragraph 1 of article L111-1 of the Intellectual Property Code provides that: “The author of a work of the mind enjoys on this work, by the sole fact of his creation, of an exclusive and intangible property right enforceable against all”.

In fact, the Internet has created tremendous opportunities for companies in terms of communicating their brand message. However, its global reach, openness, versatility and the fact that it is largely unregulated are all elements that have created fertile ground for trademark infringement such as counterfeiting.

For a long time, real world activity and Internet activity were separated. Today, the two worlds undeniably tend to come together. Trademark law is therefore very useful in defending yourself in the digital era. By appropriately balancing the interests of innovators with those of the general public, the intellectual property system aims to foster an environment conducive to the flourishing of creativity and innovation.

When you create a company or launch a product, know that it is recommended to protect your trademark (which can be the name of your company, a logo, numbers, letters, etc. …). This registration will protect your company from counterfeiting.

Once registered, the trademark is an industrial property title which gives you a monopoly of exploitation for a period of ten years, renewable indefinitely.

Registering your trademark gives you an exclusive right to a sign that distinguishes the products or services you offer from those of your competitors, which is a significant competitive advantage ! As such, your sign is protected for the categories of goods and services referred to in your trademark registration and in the territory for which said registration is accepted.

In this perspective, it is necessary to put in place a strategy for the protection of your brand as soon as possible. Before filing a trademark, it is important to make sure that it is available and that there is no owner of an earlier right to that trademark. You must therefore be the first to register this mark.

The reasons why trademark registration is becoming a necessity are multiplying in the face of the phenomenon of cybersquatting. Thus, owners of registered trademarks benefit from new advantages in the defense of their rights on the Internet.

First, it has become increasingly important to protect your brand on social media. Since 2009, Facebook has allowed its members to create usernames, easily accessible, but which can include brands. Prior to 2009, Facebook allowed registered trademark owners to identify their trademarks and prevent their use by other members.

Most social networks register user names on a “first come, first served” basis. In order to defend your rights, it is preferable to have a registered trademark in order to report a violation of trademark rights, according to the general conditions of use of social networks.

Secondly, the presence of a mark on the Internet also imposes its protection in referencing on search engines and in particular paid referencing. Through the AdWords system, Google allows advertisers to select keywords so that their ads will appear to Internet users after entering those words into a search. Conflicts arise when advertisers buy keywords that contain brands, but do not have rights to them.

Owning a trademark right then also becomes extremely useful in the fight against unfair practices.

Thirdly, the proliferation of new gTLD domain name extensions must also attract the attention of trademark owners. To date, more than 300 new gTLDs have been delegated, and gradually hundreds more will follow. Faced with the risk of conflicts with protected trademarks, a new tool is made available to trademark rights holders: The Trademark Clearinghouse. It is a centralized declarative database of registered trademarks. Once the trademark is registered, the holder benefits from the priority registration period for new gTLDs – Sunrise Period – and is notified when a third party wishes to register a domain name identical or similar to its trademark. The registrant of the disputed domain name is also informed that he may infringe trademark rights.

Finally, if a domain name reproducing or containing a trademark is registered, the trademark rights holder has the possibility of taking action against cybersquatters using dedicated extrajudicial procedures such as the Uniform Rapid Suspension (URS) and the Uniform Domain Resolution Policy (UDRP). These dedicated procedures are only open to trademark holders.

It should be remembered that the business landscape has changed with the rise of the Internet and, in order to thwart the risks of intellectual property infringements on online markets, it is important that companies adapt their management of industrial property rights portfolio accordingly.

Nathalie Dreyfus – Industrial Property Attorney, Expert at the Paris Court of Appeal, Founder & Director of Cabinet Dreyfus in Paris – Dreyfus.fr

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.

The current reputation of the trademark is not sufficient to prove bad faith registration of an old domain name

Written by Dreyfus23/03/2021

Source: WIPO, Arbitration and Mediation Center, Nov. 24, 2020, case DRO2020-0007, NAOS c/ Bioderm Medical Center

The Bioderma brand has a world-wide reputation but was this reputation already established in Romania at the beginning of the years 2000? The Bioderm Medical Center, a clinic based in Romania, answers no to this question.

NAOS, owner of the Bioderma trademark, has detected the registration by the Centre Médical Bioderm of a domain name reproducing its trademark, namely <bioderma.ro>. However, said domain name is quite old as it has been registered on February 24, 2005.

On September 4, 2020, NAOS filed a complaint with the WIPO Arbitration and Mediation Center to obtain the transfer of this domain name. This complaint is based on an International trademark Bioderma, protected in Romania since 1997.

Nonetheless, the defendant claims to have used the sign Bioderma as its business name for several years, hence the registration of the domain name <bioderma.ro> and the subsequent change of its coporate name.
The expert in charge of the case is particularly thorough in its assessing whether the defendant has the legitimate interest and rights in the disputed domain name or not.
He considers that even if the latter produced a Kbis extract showing that its commercial name, in 2003, was indeed Bioderma, it is insufficient to prove a legitimate interest or rights on the domain name. The defendant should have brought evidence that it was commonly known by the Bioderma name.

The expert also notes that the disputed domain name resolves to an inactive web page and therefore concludes that there was nobona fide use of the name in connection with an offer of goods and services and no legitimate non-commercial use of the name.
It is however on the ground of bad faith that the expert finally decides in favour of Bioderm Medical Center.
The latter notes that the International registration of the applicant’s Bioderma trademark is several years older than the disputed domain name and that this trademark is currently renowned. However, the evidence brought by the applicant are deemed insufficient to demonstrate the possible or actual knowledge of this trademark by the defendant in 2005, at the time of registration of the disputed domain name.

Indeed, although the earlier mark was established in the 70’s in France and was first registered in Romania in 1997, the first subsidiary of the applicant, established in Italy, only opened in 2001: the true starting point of the brand’s internationalization.
Yet, the defendant founded the company in 2003 and carried on its business under the name Bioderma until 2008.

From there, it is not possible to establish that it had targeted the company or its trademark to mislead or confuse Internet users. Moreover, the defendant did not conceal its identity and responded to the complaint, which shows good faith.

This decision is a reminder that it is essential to place oneself at the time of domain name registration in order to assess the aim of the registrant. Even if the prior trademark enjoys a world-wide reputation on the day of the complaint, the dive into the past is inevitable: it must be determined whether the defendant, located in a certain country, had knowledge of the rights or reputation of the trademark. In this case, the expert took into account, among other things, that the defendant used the commercial name “Bioderma” in 2005. Therefore, it is essential to investigate on the registrant and their situation at the time of registration of the domain name, here particularly old. To that end, seeking legal advice from an IP lawyer specialized in UDRP procedures is strongly recommended.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.

Unfair competition: a doomed market place

Written by Dreyfus24/02/2021

On November 20, 2020, the Court of Appeal of Paris, condemned Webedia, a company specialised in the management of Internet sites, for unfair competition towards the Bonpoint company.

Bonpoint is specialized in the manufacture and sale of high-end children’s clothing, marketing its discontinued products through online retailers of multi-brand clothing, including Yoox.com.

The Webedia company, for its part, run the marketplace shopoon.fr which is a guide for buying fashion and decoration items online putting Internet users in touch with e-commerce merchant sites. In particular, it offers products appearing on the site yoox.com.

So far so good. However, the Bonpoint company has found that 93% of the products of its brand displayed on the site shopoon.fr are unavailable for sale, and when the user clicks on these unavailable products, he is redirected to similar and competing products belonging to other brands.

The Court of Appeal of Paris considered that the presentation of products on the site shopoon.fr allowed the consumer to clearly distinguish available items from unavailable items. Consequently, this presentation was not likely to substantially alter the economic behavior of the normally informed and reasonably attentive consumer who, in case of unavailability of the desired branded product, would turn to articles of another brand.

Therefore, the Court ruled that Webedia had not committed deceptive marketing practices.

However, the Court reminds that if the Webedia company does not sell directly the articles which it presents on its site, it is nevertheless remunerated as soon as it puts forward the products of different sites and brands, in the event of unavailability of the initially sought-after product. It thus draws a financial advantage from the redirection of web users to these products.

Consequently, the judges held on this point that the Webedia company was guilty of unfair competition, by presenting on the site shopoon.fr 93% of articles of the Bonpoint company which it knew unavailable, and by “referring the web user to the possibility of seeing similar competing products“. They considered that the Webedia company had thus used the attraction force of the Bonpoint brand to generate traffic of web users oriented towards other products.

The Court thus ordered Webedia to pay Bonpoint the sum of 22,043 euros in damages, including 20,000 euros in compensation for moral prejudice and 2,043 euros for misappropriation of customers.

Filing a trademark on behalf of a company in the process of creation: who may bring a trademark infringement action?

Written by Dreyfus22/02/2021

It is common for trademarks to be filed by individuals acting on behalf of a company in the process of creation.

The founder of the company is then the regular owner of the trademark until the company in question takes over the filing. Therefore, the founder may initiate proceedings, in the meantime, in case of trademark infringement.

But what happens if the company that was supposed to be created and, therefore, become the owner of the trademark, is never formed?

The French Supreme Court expressed its view in a decision dated October 14, 2020. Ms. T, who had registered the trademark “Dousè Péyi” in the name of the company in the process of being created Dousè Péyi, filed a lawsuit against the company Sérénade des saveurs (Cass. Comm. 14 Oct. 2020, No. 18-23-965 T.c/ Sté Sérénade des saveurs).

The dispute concerned the filing of the trademark “Doucè Péyi”, almost identical to the earlier trademark.

Following this application, Ms. T sued Sérénade des saveurs for trademark infringement and unfair competition. The applicant raised a motion to dismiss the action, based on the lack of interest of the founder of the company to act in defence of a trademark registered on behalf of a company which was not yet created (see Article 31 of the French Code of Civil Procedure).

The company Sérénade des Saveurs claimed that Ms. T did not personally own the trademark. According to the defendant, since the company had never been created, Mrs. T should have recorded the change of ownership of the trademark at the INPI.

The first judges declared Ms. T’s action for infringement inadmissible for lack of interest in acting. The Court of Appeal confirmed this decision and stated that Ms. T “cannot claim ownership of this trademark in a personal capacity without having [recorded the change of ownership] on the National Trademark Register before initiating any action reserved to the owner of the trademark”. Otherwise, the change is unenforceable and any action in defence of the mark is therefore inadmissible.

Ms. T appealed to the Supreme Court and, rightly so, since the Commercial Chamber of the Court of Cassation ruled that the Court of Appeal had violated Article L210-6, paragraph 2, of the French Commercial Code, which establishes a system of taking over acts performed on behalf of a company in the process of creation: “every person who acted on behalf of a company in the process of creation before it acquired legal personality shall be held jointly and indefinitely liable for the acts thus performed, unless the company, after having been duly formed and registered, takes over the commitments entered into. Such commitments are then deemed to have been entered into from the outset by the company”.

The Supreme Court overturned the appeal decision and affirmed that in the absence of legal personality, the founder of the company, who registered the trademark, is the owner of the trademark and therefore Ms. T could rightly file a trademark infringement suit.

This solution guarantees the legal security of project leaders. The creation of a company can, in fact, take time. During this time, several acts must be accomplished and the law acknowledges their retroactive effect.

Filing a trademark in the name of a company in the process of creation is an interesting practice to enhance the value of the trademark assets and protect them against third parties that may file a similar or identical trademark while the company is not yet formed.

However, case law in this area is not consistent and requires to be attentive to details when filing a trademark.

In order for the company to automatically become the owner of the trademark at the time of its registration, a statement of the acts performed on behalf of the company while it being created should be made, which will be annexed to the articles of association, and should mention the filing of the trademark, indicating that the company takes over the legal act of filing on its behalf.

Dreyfus can assist you with the management of your trademarks portfolios in all countries around the world. Please feel free to contact us.

The creation of a data access system Whois by ICANN

Written by Dreyfus27/01/2021

Since the advent of the General Data Protection Regulations (GDPR), it has become really difficult to obtain information about the registrant of a domain name. This obviously complicates the dialogue between trademark and domain name holders.

ICANN has proposed a project to create a System for Standardized Access/Disclosure (SSAD), which would allow standardized access to non-public data on domain name registrations.
The objective of the SSAD is to provide a predictable, transparent, efficient and accountable framework for access to non-public registration data. It must also be consistent with the GDPR.
However, the decision whether or not to grant requests would still belong to the registrars, as legal constraints on personal data may vary from country to country.

This project accelerated in August during Stage 2 of the policy development process, during which a final report was presented that provides 22 recommendations for the system.
The creation of this SSAD could, in the coming years, facilitate the fight against cybersquatting, which has been strongly impacted by the GDPR and WhoIs anonymization processes. It should be remembered that the next round of requests for domain name extensions should take place in 2023, bringing a whole new set of challenges in the fight against Internet attacks.

Source: LexisNexis, N°1 (January 2021)

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