Claiming unregistered trademark rights on a geographical name is a difficult challenge in UDRP proceedings

Written by Dreyfus13/03/2020

While certain geographical names may, by exception, benefit from protection within the meaning of the UDRP rules, it should be remembered that they must be perceived as a trademark or service mark over which the applicant has rights. However, the mere use of a geographical name to identify certain goods and services as a territorial entity is not sufficient to demonstrate rights in a trademark or service mark within the meaning of the Guidelines, as the pannelist rightly pointed out in the present Decision.

In this case, the geographical name Solothurn (‘Soleure’ in French), corresponding to a city in Switzerland, was reproduced in its entirety in the domain name <solothurn.com>. It was registered in 1997 and has not been used since except to redirect to a “pay-per-click” page.

The applicants, the City of Solothurn and two associations under Swiss law promoting mainly tourism and unsurprisingly showing a strong interest in the domain name <solothurn.com>, claimed an unregistered trademark right on the sign “Solothurn”, which has been used extensively over the years. They also claimed protection of the name as “trademark-like” within the meaning of the Swiss law on unfair competition.

In this regard, they provided several documents attesting to the use of this geographical name by tourists since 1890 and its recognition as such. The applicants inferred that the use of the sign “Solothurn” constituted a trademark used to identify tourism and other related services. They also cited several decisions of the centre concerning geographical names, which are far from having argued in their favour.

The defendant, domiciled in the United States and known for his activities related to domains specializing in “geographical” domain names, had put the domain name <solothurn.com> up for sale. The defendant cited numerous decisions on how geographical names should be assessed (including a decision about the name <rouen.com>) and on the need to fulfill the function of a trade-mark.

Faced with this case and the question of whether the applicants could validly claim an unregistered trademark right in the name “Solothurn”, the panellists carried out a meticulous examination of the case law of the decisions of the WIPO panellists (overview) in the field of geographical names.

In particular, they recalled that according to the overview, “geographical terms used only in their ordinary geographical sense, except when registered as trademarks, do not, as such, provide standing to act in UDRP proceedings”. They also noted that in UDRP matters, it has generally been difficult for affiliates or entities responsible for a geographical territory to demonstrate trademark rights over that geographical name. However, the panellists noted that the decisions cited by the applicants all acknowledged that the geographical name was used in a purely descriptive way of a geographical location and not as a trademark.

On the other hand, they took note of the fact that some panellists have indicated that an unregistered trademark right in a geographical name may be granted to an official authority in exceptional circumstances. The circumstances in question cover the increasingly rare assumption that the geographical name would be used in connection with products and services but without any connection to the geographical location to which it corresponds. The idea is that the trade name should not generate an association with a geographical location in the minds of consumers, but rather an association with products and services, as the main function of the brand requires. For example, we can mention the products of the Ushuaïa brand, unrelated to Tierra del Fuego.

In the present case, the panellists noted that the applicants had not provided any proof of use of the name “Solothurn” in connection with products and services beyond those provided by the City of Switzerland. On the contrary, the applicants merely pointed out the use of the name “Solothurn” in connection with the name of the city of Switzerland and the tourist activities offered there. Consequently, the panellists could not validly conclude that the applicants had established that they had rights in the unregistered Solothurn trademark.

The panelist added that the applicants could not rely on the protection of this name as “trademark-like” within the meaning of the Swiss law on unfair competition insofar as Article 4.a. (i) of the Guidelines expressly refers to the “trade or service mark”.

Finally, the complaint was rejected as the applicants had not provided proof of trademark rights. However, this decision seems to be qualified by the panellists, who point out that it is a decision rendered under the UDRP principles, adapted to disputes between registrants and trademark owners whereas the solution could have been different under Swiss law and in matters of unfair competition.

The “morality” of this decision is not new; the UDRP procedure is not suitable for all disputes involving domain names and should not be systematically preferred to legal proceedings, even if it does have the advantage of being faster and less costly.

WIPO WIPO, Arbitration and Mediation Center, July 25, 2019, No. D2019-1164, Einwohnergemeinde Solothurn, Verein “Region Solothurn Tourismus”, Verein “Katon Solothurn Tourismus” c/ M.A. Stenzel,

COMPUTER GRAFICS – Modification of the opposition procedure in France: an increased protection for the right holders

Written by Dreyfus10/03/2020

RDAP replaces WHOIS

Written by Dreyfus11/09/2019

The WHOIS protocol now appears to be outdated due to the evolution of technical requirements in the digital era. Indeed, this tool, provided by registrars, is inter alia not capable of working with either encoding or with non-latin characters. Consequently, since 2015, ICANN in collaboration with the Internet Engineering Task Force (IEFT) has been working on the replacement of WHOIS through the RDAP (Registration Data Access Protocol), in compliance with the Temporary Specifications and the GDPR.

Like WHOIS, the RDAP provides registration data, although its implementation is different since it allows standardization, security data access and enquire response formats. As a result, it will be possible to search all the registration data available from various registrars, unlike WHOIS that is limited to the database being searched. It also takes into account the internationalisation of domain names.

The possibility of granting different accesses to the registration data is being considered. For instance, access for anonymous users could be limited whereas authenticated users could have full access to all data.

While some elements still have to be worked out, registrars are required to implement the RDAP service prior to August 26, 2019.

This brief was published in the July-August 2019 issue of the French magazine “Propriété industrielle”.

Audiovisual works: the protection of program titles by trademark law

Written by Dreyfus02/09/2019

Companies which specialise in the audiovisual sector often require protection for their program titles through trademark law. If granted, this protection obviously offers considerable advantages for the company, but it is necessary to take into consideration some limits to it.

The advantages of trademark protection

First, the term of protection of a title by trademark law. Trademark law initially grants protection for 10 years, but this term is renewable indefinitely (Art L712-1 CPI). Thus, provided the owner submits a renewal application within the time limit, the trademark can be protected indefinitely. Copyright, on the other hand, can grant protection up to 70 years after the death of the author of the work, but the ‘guarantees’ of protection may be less obvious than trademark law because there is no register of copyright.

On the other hand, while copyright imposes a condition of originality (Art.L711-2 CPI), trademark law requires a distinctive character (Art L711-2 CPI). Thus, if the title of TV show or audiovisual program is distinctive and acts as an indicator of origin, it may be protected. In contrast, for copyright, it is necessary to prove originality, which is more difficult to prove. Since copyright is not subject to registration, the condition of originality must always be demonstrated in the course of a dispute. Thus, copyright protection is never certain.

A title may be protected by trademark law if it does not directly designate the goods and services for which registration is sought. Thus, if the title is arbitrary, there is nothing to prevent the title from benefiting from this protection. Finally, it should be borne in mind that trademark protection is not an impediment to copyright protection; it is thus possible to combine both protections.

The limits of trademark protection

Some limitations to the protection of audiovisual programs’ titles by trademark law should nevertheless be noted. The protection conferred by trademark law grants a monopoly on the use of the registered terms (Art L-713-1 CPI) and therefore the right to oppose use by third parties. However, in order to do so, it is necessary to prove :

The use of the sign by a third party “as a trademark”

First, it must be proven that the use of the title by a third party was “as a trademark”. To illustrate this concept, we can refer to the judgment rendered about the series “Le Bureau des Légendes”. In this case, the Paris Court of First Instance (TGI) dismissed the infringement action brought against a book, using the title, devoted to the study of the series. The purpose here was not to offer goods and services designated in the registration, but simply to refer to the series as such (TGI Paris, réf., April 16, 2018, n°18/53176). Use as a trademark would have been in the context of the sale of derivative products in connection with the series.

A commercial use of the sign

Secondly, in order to oppose the use of a sign, the owner must provide proof of commercial use. This means that it is not sufficient to prove merely a reference to the title. The use must take place in the course of business and not only for illustrative purposes. There must be a genuine commercial link between the sign and the use made by a third party.

A risk of confusion in the mind of the public

Finally, the risk of confusion in the public mind must be shown. The use of the sign must raise doubts as to the origin of the goods and services offered. A trademark is intended to guarantee in particular the origin of the goods and service. Thus, the use of the sign by a third party must infringe this guarantee of origin, severing the direct link between the sign and its owner.

For instance, the judges considered that there was no likelihood of confusion between Canal+’s trademark “LE ZAPPING” and the trademark “LE Z#PPING DE LA TELE”. In view of the evidence provided, and the overall impression, there was no likelihood of confusion. The phonetic and visual differences of the two signs were sufficient to eliminate this risk (CA Versailles, 12th ch., July 3, 2018, n°18/02091).

However, the principle of speciality of the trademark may be used against the owner of a trademark. Since a trademark is registered for specific categories of goods or services, the owner can only oppose the use of the sign for identical or similar goods or services. Thus, if a sign is used for a completely different area of activities, the owner will not be able to oppose this use of the sign. This was the case for Canal +, concerning its mark “LE ZAPPING”. The notoriety of this brand was certainly recognized by the Court, but only in the field of television broadcasts. Thus, it was not possible for Canal + to oppose the filing of a similar trademark for other categories of goods and services than those designated in registration of the trademark “LE ZAPPING”.

Conclusion

Trademark law grants additional protection to a title of an audiovisual program. It complements the protection that copyright can grant, in a more certain way through the requirement of registration. The point of filing a sign representing the title of an audiovisual work is therefore to acquire double protection, on both grounds. Admittedly, the conditions to be met in order to be able to bring an infringement action under trademark law may be difficult to achieve. Nevertheless, trademark law offers more means of action, and therefore of compensation for damage in the event of unjustified use by third parties.

Dreyfus law firm, expert in trademark law, will assist you in the management of your trademark portfolio.

The EU cybersecurity certification Framework

Written by Dreyfus30/08/2019

Cyber-attacks are on the rise, and they are becoming more sophisticated. Our current business model is globally interconnected; commercial transactions and even social life transcend national borders. Consequently, our vulnerability to cyber-attacks has been increased, however, the competences of the cyber security and police authorities, as well as political responses, are predominantly national.

This situation has made European authorities aware of the need to deal with these threats in an effective and coordinated way, relying their actions on policies dealing specifically with cybersecurity within the European Union. By means, the aim is thus to improve cooperation, exchange of information and coordination between the Member States and the institutions, bodies, offices and agencies of the Union.

The European Commission, as part of the Digital Single Market Strategy, has approved Regulation No. (EU) 2019/881, on ENISA (the European Union Agency for Cybersecurity) and on certification of information and communications technology cybersecurity, which came into force on June 27, 2019.

This new regulation has two main objectives. On the one hand, to give ENISA (the European Agency for Cybersecurity, now named the European Union Agency for Cybersecurity) a greater role in the field of cybersecurity, establishing a series of objectives and tasks. On the other hand, the creation of a common certification framework at European level, with the aim of guaranteeing an adequate level of cybersecurity of ICT products, services and processes in the EU, avoiding the fragmentation of the internal market.

Concerning the first objective, the first substantive point of the Regulation is to give more powers to the European Union Agency for Cybersecurity (ENISA). It will now have a permanent mandate facilitating the exercise of the new functions assumed, one of which is to increase cooperation on cybersecurity within the Union, for example in cases of large-scale cyberattacks or cross-border crises. This strengthening is also reflected in the economic resources for ENISA, increasing from 11 to 23 million euros over a period of five years.

It is noteworthy that European regulation focuses on users by addressing concepts such as users’ awareness, and the application of good practices online. Both public bodies and private stakeholders will receive recommendations on safe configurations and maintenance of their devices, and the availability and duration of updates, as well as the perceived risks.

With regard to the second objective, the regulation creates a framework for European Cybersecurity Certificates for products, processes and services that will be valid throughout the EU. It is the first EU legislation on the internal market to take up the challenge of enhancing the security of connected products, Internet of Things devices and critical infrastructure through such certificates.

The creation of the cybersecurity certification framework incorporates security features in the early stages of their technical design and development (security by design). It also enables their users to ascertain the level of security assurance, and ensures that these security features are independently verified.

As to the second objective of the regulation, the certification framework will provide EU-wide certification schemes as a comprehensive set of rules, technical requirements, standards and procedures. This will be based on agreement at EU level for the evaluation of the security properties of a specific ICT-based product or service, for instance, smart cards. This will certify that ICT products and services which have been certified in accordance with such a scheme comply with specified requirements. In particular, each European scheme should specify: a) the categories of products and services covered, b) the cybersecurity requirements, for example by reference to standards or technical specifications, c) the type of evaluation such as self-assessment or third party evaluation, and d) the intended level of assurance for instance, basic, substantial and/or high.

ENISA’s mandate is immediate from the entry into force of the Regulation, whereas the cybersecurity certification framework will have to be developed. In this respect, the Commission’s agenda has already included the submission of proposals to ENISA for the preparation of certification projects, as well as the creation of expert groups on cybersecurity.

Finally, this European regulation not only seeks to increase users’ confidence in the use of connected devices, but also to strengthen the European cybersecurity industry and the European Single Market, positioning it as a global benchmark, in line with other markets such as the United States or China.

With significant expertise in protecting innovative products and designs, and in defending intellectual property rights on the Internet, Dreyfus is well positioned to assist you in enhancing your assets on the web.

Social networks and online reviews: how to defend against unfair competition

Written by Dreyfus05/08/2019

In a short time, networking sites have become one of the main channels for companies’ communication. eBay, Tripadvisors, Amazon or even the more conventional social networks such as Facebook or Twitter have, in fact, become preferential showcases for advertising. They do undoubtedly represent an opportunity for making a company visible, but they nonetheless pose a real threat to reputation. Companies are now faced with a new, major challenge in terms of unfair competition, that is to say “fake customer reviews”, that, although false, have a great influence on the consumption of the products and services they target.

The French Directorate-general for competition, consumer affairs and prevention of fraud (DGCCRF) revealed that 74% of surfers have already changed their minds about buying a product because of negative comments or reviews.

Faced with this hefty problem, companies endow themselves with legal instruments with the intention of stamping out such practices.

Disparagement and deceptive marketing practices

The case law has already determined in the past, that defamation cannot be a valid foundation for “judgements, even excessive, concerning the products or services of an industrial or commercial undertaking”.[1]

Concerning unfavourable reviews regarding a commercial activity, undertakings must base their case in the domain of unfair competition, particularly by referring to an act of disparagement. This practice consists in a person or an undertaking discrediting the goods or services of an undertaking with the intent to harm reputation. Like any act of unfair competition, the author of disparagement can be held liable on the basis of article 1140 of the Civil Code.

For instance, on this basis, the Court of Appeal of Paris ruled against a company selling food supplements which had strongly criticised the products of their rival on their site in the “product reviews” section, describing them as “crap” among other things.[2]

The Court had, in the case in point, also based its decision on article 121-1 of the Code of Consumption which sanctions deceitful marketing practices to the extent that such comments corrupt the natural behaviour of the consumers.

Similarly, sanctions had been pronounced concerning negative opinions of a restaurant which had not yet even opened when they were posted.[3]

New sanctions for false online reviews

Although disparagement and deceitful practices had been the traditional foundations concerning these exaggeratedly negative remarks, the legislator specifically intended to control and thereby punish these fake reviews.

In the light of this, three implementing decrees of the law for a Digital Republic entered into force on 1^st January 2018. Introducing the new article L111-7-II of the Code of Consumption, they oblige undertakings and individuals whose activity consists in collecting, moderating or disseminating online reviews from customers, to provide fair, clear and transparent information on their processing and publication. This must be presented alongside said reviews, their date of publication as well as that of the consumer experience concerned and whether or not they underwent a control procedure. These decrees replace individual platforms’ voluntary compliance with the Afnor standard, which is supposed to ensure the fairness of the comments. It remains to be seen how the platforms will comply with such requirements.

This new obligation which imposes increased monitoring of such reviews on undertakings, shows that, although unfair competition was a convenient tool, case law has shown that these extensive large scale practices represented a real challenge for companies and should be framed by specific texts.

[1] https://www.legalis.net/jurisprudences/tribunal-de-grande-instance-de-paris-17eme-chambre-correctionnelle-jugement-du-13-fevrier-2014/

[2] https://www.legifrance.gouv.fr/affichJuriJudi.do?idTexte=JURITEXT000018909511

[3] http://www.lemonde.fr/societe/article/2015/10/27/2-500-euros-d-amende-pour-avoir-denigre-un-restaurant-sur-internet_4798047_3224.html

The firm Dreyfus & associés specialises in the field of intellectual property. Their team is up to date on the new developments in European legislation. They will be able to provide you with all the help and guidance you require concerning your intellectual property rights in Europe.

New French Decree on the protection of trade secrets : provisional sequestration of seized documents

Written by Dreyfus04/06/2019

French Decree No. 2018-1126 of 11 December 2018 on the protection of trade secret s, enacted in application of Act No. 2018-670 of 30 July 2018published in the Official Journal on December 13, 2018 establishes new rules to preserve trade secrets.

This decree modifies the rules of protection of confidentiality for seized documents. From now on a provisional sequestration will include protection of documents that may contain information related to trade secrets.

Prior to the entry into force of the French act on the protection of trade secrets judges actively used the sequestration to protect confidentiality of seized documents. This decree legalizes the jurisprudential practice by introducing the provisional sequestration of seized documents.

Article R 153-1 of the French Commercial Code now allows judges, to directly order the provisional sequestration of seized documents, based on Article 145 of the Code of Civil Procedure, in order to ensure protection of trade secrets.

The decree amends articles R. 521-2, R. 615-2, R. 623-51, R. 716-2 and R. 722-2 of the Intellectual Property Code in the same way in order to give the same powers to the judges who authorize infringement seizures.

However, it is only a temporary sequestration of seized documents. For a period of one month, the party or third party claiming that documents contain trade secrets may ask the judge to amend or withdraw his order.

According to Article R. 153-3 of the French Commercial Code, it is the responsibility of the party or third party claiming trade secrets to ask the judge to withdraw his order before a deadline set by the judge. It is up to the party to provide the following:

– The full confidential version of the document

– A non-confidential version or a summary of the document

– A statement specifying the reason why the document or a portion of the document is considered a trade secret

The judge may also hear separately the holder of the document, assisted or represented by an authorized person, and the party that appeals the order.

In case the party claiming that the document contains trade secrets has not sent an application to withdraw or amend the order within one month, the judge may rule on the total or partial lifting of the sequestration. If it is lifted, the documents can then be sent to the applicant.[/vc_column_text][/vc_column][/vc_row]

US : A copyright registration is required prior to filing a copyright infringement suit

Written by Dreyfus29/05/2019

The U.S. Supreme Court held on March 4, 2019 on a long-debated question. In “Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC” the Court decided that the copyright owner of a work created in the United States must first have registered it with the U.S. Copyright Office « Fourth Estate Public Benefit Corp. v. Wall-Street.com , LLC » du 4 mars 2019.

In this case, Fourth Estate Public Benefit Corporation, an online news producer, had granted copyright licenses on some of its content to Wall-Street.com, a news website. The license agreement required that the licensee delete any item produced by Fourth Estate after the license had expired, which Wall-Street.com refused to do. Therefore, Fourth Estate filed a copyright infringement suit against Wall-Street.com., which in response requested dismissal of the action, claiming that Fourth Estate could not take legal action before the Copyright Office had followed up on its application for registration. The district court granted this motion and the Court of appeals for the Eleventh Circuit affirmed. Fourth Estate asked the United States Supreme Court to review the case, and its petition for certiorari was granted.

The debate focused on the interpretation of section 411 (a) of the Copyright Act (1976). This article states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title”.

The question was whether, in order to bring an infringement action, it was sufficient to have filed an application for registration, payed the fee, and provided copies of the work, or if the Copyright Office had to have already granted the application for registration. The Supreme Court held that the fact that registration “has been made” means that the Copyright Office has registered the copyright or has definitively refused to register it, after having examined the duly filed application. This judgment therefore highlights the importance of the registration procedure before the Copyright Office.

In this respect, we recommend applying for copyright registration as soon as possible. Indeed, an earlier registration offers important advantages for right’s owners. Indeed, if the registration is made within five years of the publication of the work, it has probative value. If the registration is made within three months of the publication of the work, a right’s holder may be granted statutory damages and attorney’s fees, not merely damages. In addition, once registration has been completed, the copyright owner may object to the importation of counterfeit works into the United States.

Therefore, the right to file an infringement suit to protect rights is only one of the advantages granted by the Copyright Act to copyrights holders. Following the Supreme Court’s decision, copyright owners must now pay close attention to the Copyright Office’s examination delays. It takes approximately seven months to examine an application. Exceptionally, an accelerated procedure, called “special handling”, allows the Office to rule within five working days. However, this accelerated procedure carries higher fees. Therefore, it is in the holder’s interest to anticipate having to defend his rights. The earlier the application for registration is filed, the more likely the applicant will be able to defend his rights by filing a copyright infringement suit.

Under section 411 of the Copyright Act, if registration is refused, the applicant may nevertheless file an infringement action if a notice to that effect is sent to the Copyright Office, along with a copy of the complaint. The Office can choose within sixty days to become a party to the action with respect to the issue of registrability of the copyright claim. . A right’s holder can thus take legal action even if the absence of registration makes his situation more precarious.

In conclusion, we note that it is in the best interests of rights holders in the U.S. to register their copyrights. Furthermore, despite the United States’ accession to the 1886 Berne Convention in 1989, this text is not directly applicable in U.S. law, under the Berne Convention Implementation Act of 1988. As a result, rights holders from a country party to the Berne Convention, such as France, have to register their rights with the Copyright Office in order to be able to invoke all the rights conferred by American copyright law. This registration is particularly recommended if the owner wishes to exploit his work through licensing agreements (e.g. software), or if the work is to be distributed online (e.g. music).[/vc_column_text][/vc_column][/vc_row]

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