cybersecurity Archives

The French SREN Law: Safeguarding the Digital Space and Enhancing Cybersecurity

Written by Dreyfus20/01/2025

The digital landscape has undergone significant transformations, necessitating robust regulatory frameworks to ensure user safety and fair competition. In response, France enacted the SREN Law on May 21, 2024, aiming to secure and regulate the digital space. This legislation introduces measures to protect citizens, particularly minors, combat online fraud, and enhance digital sovereignty.

Protection of Minors

A primary focus of the SREN Law is safeguarding minors from harmful online content. It mandates stringent age verification mechanisms for platforms hosting adult content, ensuring that minors are effectively restricted from access. The law also empowers regulatory bodies to enforce compliance, with non-adherent platforms facing potential sanctions.

Combating Online Fraud

To address the surge in digital scams, the SREN Law introduces a cybersecurity “anti-scam” filter designed to protect users from fraudulent communications, such as phishing emails and deceptive SMS messages. This proactive measure aims to bolster user confidence in digital interactions by mitigating the risks associated with online fraud.

Enhancing Digital Sovereignty

The legislation seeks to reduce dependency on major cloud service providers by promoting interoperability and fair competition within the digital market. By prohibiting restrictive practices that hinder software interoperability, the SREN Law encourages a more competitive environment, fostering innovation and providing businesses with greater flexibility in their digital operations.

Implications for businesses and digital platforms

The enactment of the SREN Law imposes new compliance requirements on digital platforms and businesses operating within France. Entities must implement robust age verification systems, enhance cybersecurity measures to detect and prevent fraud, and ensure their services adhere to interoperability standards. Non-compliance may result in significant penalties, including fines and operational restrictions.

Conclusion

The SREN Law represents a pivotal advancement in France’s approach to digital regulation, emphasizing user protection, particularly for vulnerable populations, and promoting a secure and competitive digital ecosystem. Businesses and digital platforms are advised to thoroughly assess the law’s provisions and undertake necessary measures to ensure compliance, thereby contributing to a safer and more equitable digital environment.

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Written by Dreyfus06/01/2025

In a recent decision, the EUIPO Cancellation Division declared the European trade mark “TESLA,” held since 2022 by Capella Eood, invalid on the grounds of bad faith. This ruling marks a significant victory for car manufacturer Tesla in its fight against abusive trade mark practices, often referred to as “trade mark trolling.” Here, we examine the key aspects of this landmark case.

Background and Stakes of the Case

In 2022, Tesla filed for the cancellation of the trade mark “TESLA” registered with the EUIPO by Capella Eood, a company linked to an individual notorious for “trade mark trolling” practices. The cancellation request was based on Article 59(1)(b) of the EU Trade Mark Regulation (EUTMR), which allows invalidation of a trade mark filed in bad faith.

Tesla argued that Capella Eood engaged in speculative strategies to register trade marks with the aim of blocking other businesses’ operations and extorting financial settlements. Evidence presented included examples of shell companies, delays in opposition proceedings, and strategic transfers of trade mark rights.

For its part, the trade mark holder denied the accusations of bad faith, calling Tesla’s claims defamatory and asserting that the mark was inspired by independent and unrelated sources.

Criteria Analyzed by the EUIPO to Establish Bad Faith

Under Article 59(1)(b) EUTMR, bad faith is assessed based on the applicant’s intent at the time of filing, considering honest commercial practices. The EUIPO examined this intent using several key criteria, informed by cases such as Sky and Others (C-371/18) and Koton (C-104/18 P).

Motives and Context of the Filing

The contested trade mark was filed shortly after Tesla achieved international recognition, particularly following the success of the Tesla Roadster. This timing indicated that the trade mark holder was aware of Tesla’s growing reputation. Claims that the mark was inspired by a newspaper article or a CD were deemed implausible, especially since the targeted products—vehicles and accessories—matched Tesla’s offerings.

History of Speculative Practices

Evidence revealed that the trade mark holder had a history of systematic filings through shell companies across different jurisdictions. These trade marks were often abandoned or withdrawn, reflecting a deliberate strategy to exploit the EU trade mark system for financial gain by creating blocking positions.

Dilatory Tactics and Lack of Genuine Use

The EUIPO identified procedural delays, such as inconsistent modifications to descriptions of goods and services, aimed at stalling opposition proceedings for nearly 15 years. The holder failed to provide any evidence of genuine commercial activity linked to the mark, reinforcing the perception of a purely obstructive strategy.

Awareness of Tesla’s Operations

Tesla’s products were already widely covered by the media in Austria and beyond before the filing of the contested mark. This media coverage, combined with other evidence, demonstrated that the trade mark holder was aware of Tesla’s operations and sought to capitalize on its anticipated success in the European market.

Violation of Fair Practices

The EUIPO concluded that the trade mark was filed without any genuine intent to use it and with the purpose of obstructing legitimate filings. This conduct was deemed contrary to principles of good faith and fair commercial practices.

Implications of the Decision

This decision aligns with a growing body of case law aimed at curbing trade mark trolling and safeguarding fair competition. It also reinforces principles established by the Sky and Others and Koton rulings, which define bad faith as intent contrary to honest practices at the time of filing.

For businesses, this case highlights the importance of monitoring trade mark filings that could impede their operations and acting swiftly to contest abusive registrations. It also underscores the critical role of evidence—such as filing histories and dilatory tactics—in proving bad faith.

Conclusion

The EUIPO’s decision in the TESLA case is a significant step in combating systemic abuse in the trade mark domain. It underscores that commercial practices must remain fair and honest, and that the trade mark system should not be exploited for speculative purposes. For companies like Tesla, such rulings help protect their investments and reputation in the European market. Trade mark law professionals, such as Dreyfus Law Firm, remain committed to assisting clients in addressing such challenges effectively.

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Written by Dreyfus09/12/2024

The fashion industry, known for its dynamism and innovation, is also a sector where protecting trademarks and designs is essential. One of the major challenges brands face in this field is product similarity. The definition and interpretation of this similarity have a direct impact on the scope of legal protections, particularly for trademarks, patents, and designs. This article examines various aspects of product similarity in the fashion industry, based on recent jurisprudence and developments in the field.

What is product similarity?
The INPI vs. the Paris Court of Appeal: A jurisprudential divergence
The importance of similarity for fashion industry players
The rise of “dupes”: A threat to intellectual property
The need for jurisprudential clarification to ensure legal certainty

What is product similarity?

Product similarity refers to the evaluation of the degree of resemblance between two products or services, particularly in the context of trademark registration. This assessment is crucial as it determines whether a product or brand already exists on the market and whether another product could cause confusion among consumers.

In the fashion industry, this involves comparing not only the products themselves (clothing, accessories, perfumes) but also their uses, target audiences, and consumer perceptions. Competent authorities, such as the INPI (French Intellectual Property Office) or the Paris Court of Appeal, are responsible for resolving such disputes when a trademark is contested.

The criteria for similarity include:

Physical characteristics of the product: shape, color, material, etc.
Visual impression: how a consumer might perceive the products when observing them.
Purpose and use: products serving similar purposes may be deemed similar.
Target audience: for example, a luxury brand and an average ready-to-wear brand, while visually similar, may target different market segments and not cause confusion.

The INPI vs. the Paris Court of Appeal: A jurisprudential divergence

Differences in the interpretation of product similarity in the fashion industry have led to contradictory decisions. In some cases, the INPI considers perfumery, jewelry, and watchmaking products to be marginally similar to clothing. According to the INPI, similarity lies in the potential association between these products in the consumer’s mind, which could cause confusion regarding their origin.

However, the Paris Court of Appeal adopts a stricter stance, often relying on jurisprudence from the European Union’s General Court. The Court views the similarity between products as different as clothing and fashion accessories, such as jewelry or watches, as more limited due to clear differences in their use, design, and presentation.

These divergences create legal uncertainty for fashion industry players. Brands may face difficulties determining whether their protections cover all related products or if their trademarks might be challenged over similar but non-identical products. This raises broader questions about intellectual property protection, particularly regarding the scope and validity of registered trademarks.

The importance of similarity for fashion industry players

For fashion brands, legal protection depends on creating a strong and distinct identity. Industry players must be vigilant to avoid their products being perceived as copies of existing designs. This requires a differentiation strategy based on:

Innovative and unique designs
A clear brand image
Effective communication campaigns

Legal decisions on product similarity directly influence this strategy, as they determine how far a brand can go in launching new products while respecting the intellectual property rights of others.

The rise of “dupes”: A threat to intellectual property

The proliferation of “dupes,” imitations of high-end products offered at affordable prices, disrupts traditional notions of intellectual property protection. These products, widely popularized on social media, blur the line between legitimate inspiration and counterfeiting. While they do not claim to impersonate a brand, their visual or functional similarity can confuse consumers and diminish the perceived value of original products.

Legal challenges posed by dupes include exploiting grey areas in existing protections. Although designs effectively protect certain distinctive features, they often fail to counter such imitations. Shape trademarks and copyright laws, while helpful, involve complex and often lengthy legal proceedings.

The rise of dupe culture reflects admiration for luxury products and a desire to democratize style. However, it also poses an economic risk to established brands. By flooding the market with low-cost products, dupes undermine the exclusivity and innovation that define luxury brands.

In a context where consumers increasingly gravitate toward these alternatives, brands must double down on differentiation efforts through both designs and communication. Explicit recognition of intellectual property rights, combined with a proactive strategy against dupes, is crucial for maintaining their market position.

The need for jurisprudential clarification to ensure legal certainty

Disputes over product similarity are common in the fashion industry, as many brands seek to protect distinctive elements such as patterns, cuts, or logos. These disputes can result in significant costs, not only for the parties directly involved but also for the entire market due to the length and complexity of legal proceedings.

The evolution of judicial decisions demonstrates that product similarity in the fashion industry is a constantly evolving concept. The divergences in interpretation between the INPI and the Paris Court of Appeal highlight the need for legal clarification. More consistent jurisprudence would better frame trademark protections and mitigate current legal uncertainty.

Clarifying the criteria for product similarity would enhance legal certainty for fashion industry players. In the meantime, brands must remain particularly vigilant and adopt robust differentiation strategies to protect against litigation and consumer confusion.

The fashion industry, with its specificities, requires in-depth analysis of products, their uses, and consumer perceptions to ensure effective intellectual property protection. The challenge lies in brands’ ability to navigate this complexity while remaining innovative and distinctive.

Our experts are at your disposal to advise you on intellectual property strategy and online brand protection. Dreyfus Law Firm works in partnership with a global network of intellectual property lawyers.

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Written by Dreyfus13/03/2023

The legal landscape of the tech industry is constantly changing, making it difficult to keep up with the latest developments in IT law. Companies must stay up to date with the latest laws and regulations to ensure that their businesses remain compliant. Understanding the latest trends in IT law can help companies ensure that they are taking advantage of the latest legal opportunities and protecting their intellectual property.

One of the most important trends in IT law is the increasing focus on data privacy. As technology has advanced, companies have begun collecting and storing more information about their customers than ever before. In response, governments around the world have implemented new regulations to protect consumer data and ensure that companies are held accountable for how they store and use customer information. Companies must understand these laws and make sure that their practices are compliant. Another important trend in IT law is the emergence of cloud computing.

Cloud computing allows companies to store and access data remotely, eliminating the need for physical storage devices. However, this also creates a new set of legal issues, as companies must consider the legal implications of storing and accessing data in a cloud environment. Companies must be aware of the applicable laws and regulations in order to ensure that their use of cloud computing is compliant. Finally, IT law is also increasingly focusing on cyber security. Companies must be aware of the legal requirements for protecting their networks and data against cyber attacks. Companies must also be aware of the legal implications of any cyber security breaches that may occur. Understanding the latest trends in cyber security law can help companies ensure that they are taking the necessary steps to protect their networks and data.

So, how can companies leverage these trends in IT law? Firstly, they should ensure that they are up to date with the latest laws and regulations. Companies should also consider the legal implications of any new technologies they are using, such as cloud computing or cyber security solutions. Companies must also make sure that they are taking the necessary steps to protect their networks and data against cyber attacks. Finally, companies should consult with an experienced IT lawyer to ensure that they are taking advantage of the latest legal opportunities and protecting their intellectual property.

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.

Written by Dreyfus22/03/2022

The UDRP PROCEDURE is designed to deal with cases of abusive cybersquatting.

Since the implementation of the General Data Protection Regulation and, more generally, when domain names are registered anonymously, it is often difficult to identify the enemy that we intend to strike.

The issue can be solved through filing a UDRP complaint. This is what happened to the US company Capital Distribution Consulting Inc. As the owner of the semi-figurative trademark Royal dragon superior vodka 5X distilled, the company filed a complaint against the anonymously registered domain name <royaldragonvodka.com>.

Once the procedure was initiated, the identity of the registrant was revealed. The latter was a certain Mr. X, who was an officer of Horizons Group (London) in the United Kingdom and the owner of the UK trademark Royal dragon vodka.

In fact, it turned out that both parties obtained their trademarks through a transfer carried out by Dragon Spirits Limited in Hong Kong, of which Mr. Bharwani was one of the shareholders.
This information gave rise to further exchanges between the parties, each accusing the other of having obtained the trademark unlawfully. In particular, the complainant argued that the transfer to the defendant had taken place after the liquidation of the transferee.

The facts reported in this decision are particularly complex and all-encompassing, which indicates that the UDRP is not the appropriate forum for this kind of litigation.
The expert reported that the complainant filed an additional response, which is not provided for in the Regulation, after the defendant’s response and then a second response 9 days later. This response contained 15 annexes, including a sales agreement, court orders, share transfers, a declaration relating to the liquidation procedure, etc.

The expert decided not to accept this response and consequently not to consider the defendant’s request to reply in case these submissions were accepted.
The expert pointed out that this case does not concern a simple case of cybersquatting but rather a competition matter, involving trademarks being registered around the world.

He noted that trademark rectification proceedings based on competition grounds have been granted or are still pending in different jurisdictions. Therefore, the domain name in question is fully in line with this broader dispute. The expert recalled that the Guiding Principles of the UDRP are not designed to settle all kinds of disputes that would have any link with domain names. On the contrary, the Guidelines establish an inexpensive and streamlined administrative procedure being limited to ‘abusive cybersquatting’ cases.
This decision serves as a reminder that it is essential to obtain as much information as possible about the disputed domain name that forms the subject of a procedure. For relatively old names such as <royaldragonvodka.com> being registered in 2011, valuable information can be found through consulting the Whois history of the domain name.

WIPO, Arbitration and Mediation Center, Case No. D2021-2871, Nov. 24, 2021, Capital Distribution Holding Inc. v. Hiro Bharwani, Horizons Group (London) Ltd.

Written by Dreyfus10/11/2021

Anonymity on the Internet, or the eternal debate about social networks, raises more and more moral and legal questions with an exponential number of disputes brought before the courts.

The popularization of social networks is usually associated with anonymity, and therefore with the eternal debate about the lifting of anonymity in the face of the excesses of certain users. The murder in October 2020 of Professor Samuel Paty, targeted on social networks, or a wave of insults towards a candidate of Miss France at the end of 2020, have re-launched this discussion on the political scene. And especially the desire to add a section to the French legislative proposal “strengthening the respect of the principles of the Republic” to fight against online hate.

As a preliminary, it is interesting to really ask ourselves about anonymity on the Internet: are we really anonymous on the Internet?

The answer is no in most cases. Indeed, when we browse the Internet, an IP address anchors each of our researches. This address makes it possible to identify each device that connects to the Internet, even indicating the geographical location of the person.

This is one of the reasons why it is very difficult to leave no trace of your passage on the Internet, unless you are a very experienced technician.

The difficulty in reality is related to the obstacles linked to the recovery of these data allowing to identify a user, more than to the existence of anonymity stricto sensu. The Internet actors play a preponderant role in the possibility that some users have to hide their identity. This concealment has increased especially with social media.

The position of social networks

Social networks and other platforms argue that they are simply “host” or “technical intermediary” to reject a request to lift anonymity or to delete an account that is the author of contentious content.

Only a court decision can force these platforms to lift anonymity on an account. However, judicial decisions are still discreet. This can be explained on the one hand by the fact that positive law only allows the anonymity of an account to be lifted if the content is clearly illicit. On the other hand, the freedom of expression constitutes an obstacle to the lifting of anonymity.

However, some recent decisions seem to reverse this trend.

French jurisprudence on the move

On February 25, 2021, the Paris Judicial Court (Tribunal judiciaire, Paris, (ord. réf.), February 25, 2021, G. B. c/ Sté Twitter International Company) ordered Twitter to communicate the identification data of a user, in a case against a female Youtuber. Under Article 145 of the French Civil Procedural Code, “if there is a legitimate reason to preserve or establish before any trial the evidence of facts on which the solution of a dispute may depend, legally admissible measures of investigation may be ordered at the request of any interested party, on application or in summary proceedings. The influencer filed a request with the Court for the communication of identification data in parallel with the filing of a criminal complaint for defamation.

This communication of data by hosts is provided for by Article 6-II of the law of June 21, 2004. Indeed, this article provides for an obligation for hosts to hold and retain data allowing the identification of persons who have: “contributed to the creation of the content or of one of the contents of the services for which [they] are a provider”.

The Court granted the applicant’s request, as the existence of a legitimate reason was well established, namely the short duration of the storage of these identification data. The court thus ordered Twitter to disclose the necessary information:

♦ The types of protocols and the IP address used to connect to the platform

♦ The identifier used to create the account

♦ The date the account was created

♦ The first and last names or the company name of the account holder

♦ the pseudonyms used

♦ the associated e-mail addresses

The European court, also seized of the matter

The High Court of Ireland has referred to the Court of Justice of the European Union the issue of lifting anonymity in a case between Facebook Ireland and a school, whose staff was subjected to derogatory comments via an Instagram account (a platform recently acquired by Facebook).

The question posed to the CJEU, concerns the threshold of seriousness that allows an exception to the GDPR, which protects our personal data, and thus be able to condemn the platform concerned to lift the anonymity on the authors of the contentious content.

The answer of the CJEU, will not come before several months, however it will surely allow to have clearer criteria concerning the balance between the respect of freedom of expression, protection of personal data, and infringement of people.

These decisions could open the way to a more supervised and therefore better regulated anonymity on social networks. A growing body of case law in this area, could encourage the courts to more condemn more easily these platforms, to communicate these identification data in order to punish the illicit content that users publish too easily, taking refuge behind anonymity and freedom of expression.

Dreyfus is at your disposal to assist you in securing these projects.

ABOUT THIS TOPIC…

♦ How will the Digital Services Act change the legal framework for the Internet service?

Written by Dreyfus04/11/2021

podcast We are pleased to present the “You, Me & IP” Podcast – Episode 4 in which Nathalie Dreyfus, founder of Dreyfus & Associates is the guest of Carlos Northon, founder and CEO of Northen’s Media PR & Marketing Ltd.

“Intellectual property, Cybersecurity and malicious Domain Names: how to combine them?”

If you want to know more about intellectual property issues and discover a rich and experienced vision on the subject, you can also read the article Nathalie Dreyfus wrote for “The Global IP Matrix”.

ABOUT THIS TOPIC…

♦ How to protect your brands in the digital age?

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.

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.

Written by Dreyfus14/04/2021

The DNS NEWS report No. 271 highlights the overall criticism of ICANN solution for not intervening as much as its powers allow in Internet security issues, even though the DNS breaches do not decrease the number of hits. A sort of criticism derives from this observation: should ICANN become a kind of Internet welfare state or should it remain in the background, which would be recommended by the defenders of Internet neutrality.

It should be noted that in 2018, ICANN solution had already undertaken measures to make the Internet a little more secure, by changing the cryptographic key used to protect the Internet’s address book, the DNS (Domain Name System). However, further efforts are expected.
Domain Name System. – V. ICANN, 16 sept. 2018, Approved Board Resolutions [ R]egular Meeting of the ICANN Board).

Source: Dns-news.fr, date, rapp. n° 271,

To discover…

♦ ICANN Summit: the fight against DNS abuse, a GAC priority

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.

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)

Written by Dreyfus26/01/2021

Sources: Domain Incite, Free speech, or bad faith? UDRP panels split on Everything.sucks domains, Oct. 22, 2020:

Free speech, or bad faith? UDRP panels split on Everything.sucks domains

Mirapex.sucks, Case n° 103141, 2020-06-29 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103141
Bioderma.sucks, Case n° 103142, 2020-07-01 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103142DNS News No. 270, Oct. 2020

The top-level domain name extension <.sucks> was open for registration by ICANN in 2015. At the time, some brands were already concerned about the risk of cybersquatting on these extensions, and the possible damage to the brand image that this could generate. In fact, many domain names that use trademarks known and ending in <.sucks> were born. Very often, these domain names refer to pages where Internet users can complain about the brand in question, whether they are consumers or former employees.

During the past months, the phenomenon has intensified with a lot of reservation numbers, clearly done by the same registrar of the domain name in <.sucks>. Suddenly, new online pages have emerged, with the same structure and bad comments about renowned brands. A system of resale at prices between $199 and $599 is also in place.
The question of the dispute resolution about the <.suck> is complex, since the situation raises issues relating to freedom of expression.

Two recent cases with two opposite outcomes illustrate this complexity. The domain names <mirapex.sucks> and <bioderma.sucks> were both registered by the same registrar and are both the subject of UDRP complaints. In response to these two complaints, the defendant based his argument on freedom of expression. For <mirapex.sucks>, the complaint was unsuccessful, on the contrary, for <bioderma.sucks>, the name transfer was ordered.

In the case of <bioderma.sucks>, the expert had taken into consideration the fact that the registrar didn’t use the domain name for bad comments on the trademark in question but was simply a third party who registered the domain name seeking to resell it. The reseller was a company located in the Turks and Caicos Islands whose activity is the purchase and resale of names in <.sucks>. The latter had no way of verifying if the bad comments were authentic. Especially because those comments seemed to have been added only after the complaint was filed.

On the other hand, in the decision on <mirapex.sucks>, reserved by the same company, the transfer was refused. The expert gave special attention to the nature of the <.sucks> and to the freedom of expression, while underlining the insufficiency of the argumentation of the applicant.
One thing is sure: prevention is better than cure, therefore it would preferable to register a brand in the extension <.sucks>, on a purely defensive basis.

Written by Dreyfus22/01/2021

If Virgin Enterprises Limited (“Virgin”) was notably known by the French public as a megastore on the Champs Elysées, now permanently shut down; the company, on the contrary, is still very active in many different sectors such as travel, under the Virgin Voyages brand, or even in the mobile sector under the Virgin Mobile brand. As we all know, success is often followed by harm. Having detected the registration of domain names by a third party taking over its brands, namely <virgincruisevoyages.com>, <virginmediabiz.com>, <virginmobilewifi.com>, Virgin has filed an UDRP complaint against these names, July 23, 2020.

On the day the complaint was notified, July 27, the name <govirginvoyages.com> was registered and the applicant added it to his complaint. The expert reminds that a complaint can indeed cover several names, if they are registered by the same person or under the same name or under a common control.

In order to accept the request for consolidation, the expert takes in consideration the following elements:
* the names <govirginvoyages.com> and <virgincruisevoyages.com> that refer to identical sites and the same email contact;

* the registrant of the name <govirginvoyages.com> has the same first name as the registrant of of <virgincruisevoyages.com>, <virginmovilewifi.com> and <virginmediabiz.com>.

Thus, it seems possible to add a reserved name to a complaint after the filing.

Subsequently, the expert was able to conclude without difficulty that there was no legitimate interest of the defendant and bad faith. The defendant did not respond to the complaint.

All names resolved to sites copying those of Virgin and two of them, in particular, <virgincruisevoyages.com> and virginmobilewifi.com> were used in the context of fraud, aimed at “obtaining public information for commercial gain”. In addition, the registrar already used, in the past, other domain names related to Virgin’s brands. The expert said that “the use of some of the domain names involved in conducting an e-mail phishing scam is the type of illegal activity that is clearly considered to be the proof of bad faith”. This decision also highlights the need to be vigilant when mail servers – also known as “servers MX” – are set on a domain name. When such servers are set up, the reservee can send to anyb0ody e-mails from an address that includes the domain name, and endanger the company and its consumers; just checking if a website is in place on the names cybersquatted is not enough.

In this case, each single name was associated with a fake site and two of them had in addition a mail server that was carrying an e-mail fraud campaign. Thus, would be preferable to set up adequate surveillance on the company’s brands and to carefully analyze those, which are closest to the brand in order to take the right actions once the registration is detected.

Source: WIPO, Arbitration and Mediation Center, Oct. 23, 2020, aff. D2020-1921, Virgin Enterprises Limited v. Aladin Chidi, NA / Aladin Tg.

Written by Dreyfus01/10/2020

Webinar September 10, 2020 :

Intellectual property questions for a successful digital transition

How to secure and optimize your website? What precautions to take? How to defend your intellectual property rights on the Internet?

When you want to succeed in your digital transition, you have to ask yourself certain questions.

Whether you are thinking of selling online or strengthening your e-commerce, intellectual property is a key element.

Webinar replay

Written by Dreyfus31/08/2020

Operators of online hosting platforms will soon know exactly what responsibility to assume for illegal or hateful content published on these platforms. The current climate seems to be very conducive to clarifying the nature and extent of their liability.

In this respect, two schools of thought clash: for some, it is necessary to impose obligations to control the content published on these platforms, but for others, this would reflect the attribution of a new role to these operators, which has not been given to them on a basic level.

“There would be a risk that platform operators would become judges of online legality and a risk of ‘over-withdrawing’ content stored by them at the request of users of their platforms, to the extent that they also remove legal content,” said Advocate General Henrik Saugmandsgaard Øe, who presented his conclusions before the Court of Justice of the European Union (CJEU) on July 20, referring to request for preliminary ruling a preliminary ruling made by the Bundesgerichtshof, the German Federal Court of Justice, on two disputes brought before the German national courts.

The first dispute (1) was between Frank Peterson, a music producer, and the video-sharing platform YouTube and its parent company Google over the users posting , of several phonograms without Mr. Peterson’s permission, to which he claims to hold rights.

In the second (2), Elsevier Inc, an editorial group, sued Cyando AG, in connection with its operation of the Uploaded hosting and file-sharing platform, over the uploading, again by users without its authorization, of various works to which Elsevier holds exclusive rights.

In said requests for preliminary ruling, it is a question of knowing whether the operator of content platforms such as YouTube, performs acts of communication to the public pursuant to Article 3(1) of Directive 2001/29 of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, a directive that was invoked against YouTube.

The answer is negative, according to the Advocate General, who invites the CJEU to bear in mind that the legislator of the Union has specified that the “mere provision of facilities intended to enable or carry out a communication does not in itself constitute a communication within the meaning of [this directive]”. According to the Advocate General, it is, therefore, important to distinguish a person performing the act of “communication to the public”, within the meaning of the Article 3(1) of the Directive 2001/29, from service providers, such as YouTube and Cyando, who, by providing the “facilities” enabling this transmission to take place, act as intermediaries between that person and the public. On the other hand, a service provider goes beyond the role of intermediary when it actively intervenes in the communication to the public – if it selects the content transmitted, or presents it to the public in a different way from that envisaged by the author.

Such a conclusion would lead to the non-application of the Article 3(1) of the Directive 2001/29 to those people facilitating the performance, of unlawful acts of “communication to the public”, by third parties.

Moreover, it is a question of knowing whether the safe harbour – in the case of “provision of an information society service consisting in storing information provided by a recipient of the service” – provided for in the Article 14 of the the Directive on electronic commerce n°2000/31 is in principle accessible to these platforms (according to the Advocate General, it is).

This provision provides that the provider of such a service cannot be held liable for the information that it stores at the request of its users, unless the provider, after becoming aware or conscious of the illicit nature of this information, has not immediately removed or blocked it.

However, according to the Attorney General, by limiting itself to a processing of this information that is neutral with respect to its content without acquiring intellectual control over this content, the provider such as YouTube, cannot be aware of the information it stores at the request of the users of its service.

The CJEU will, therefore, have to rule on these issues in the coming months.

Furthermore, it should be noted that in 2019, the Union legislator adopted the Directive No. 2019/790, not applicable to the facts, on copyright and related rights in the single digital market, modifying in particular the previous Directive of 2001. A new liability regime was introduced in Article 17 for operators of online hosting platforms.

Sources :

https://curia.europa.eu/jcms/upload/docs/application/pdf/2020-07/cp200096fr.pdf

C-682/18 Frank Peterson v Google LLC, YouTube LLC, YouTube Inc., Google Germany GmbH

C-683/18 Elsevier Inc. v Cyando AG

Written by Dreyfus28/08/2020

Consumers are now demanding more privacy and security in t he processing of their personal data.

What are the challenges for the data controller?

There are several challenges for the data controll

er – i.e. the legal or natural person who determines the purposes and means of a processing operation – to overcome at different scales:

– information management: reducing the data collected by establishing a precise commercial context, and reducing the risks by taking care of the contracts;

– communication with suppliers: being able to find solutions and evaluate each other;

– monitoring of data processing: setting up mechanisms for reporting data breaches or threats concerning suppliers (for example, if Easyjet has had a data breach, the data controller, operating in the same business sector as the airline, if notified, can redirect its decisions.

What are the risk management methods?

A more effective risk management includes precise identification of suppliers, prior audits when integrating new suppliers, automation of evaluation and control processes, and risk prevention to protect data.

What about cookies?

They are used to collect data. Their presence is materialized by the banners you find on websites that ask for your consent to collect certain data.

In summary, there are 3 types of cookies:

– cookies strictly necessary for the operation of the site;

– cookies intended to improve the performance and functionality of the site;

– advertising cookies (which will soon disappear, Firefox has already put an end to them, and Google has announced that Chrome will no longer use them in 2021).

How do I collect online consent?

Remember that in France, consent must be free, specific, informed and unambiguous (GDPR).

Nevertheless, in order to collect consent, the user must understand what he is consenting to. He must receive clear information (purpose and duration of the use of cookies, list of third parties with whom the information is shared etc…) and the data controller must be particularly attentive to the layout of his banner.

What should be the role of the DPO (Data Protection Officer) in a modern company?

If the company promotes ethics, innovation, data, then the DPO has a key role: they shed light on data collection, and bring their vision on risks from an individual’s point of view.

In the past, their role was purely administrative, but today it is different, the DPO accompanies the company on a permanent basis, but they cannot guarantee compliance on their own: they have to expand a web within the organization (with the digital or marketing departments in particular) in order to promote the essential principles.

What changes are taking place within companies, in terms of GDPR awareness?

When GDPR came into force, programs were launc

hed to raise awareness of it, , and it was necessary to mobilize the entities and ensure they had good skills (setting up e-learning internally, for example).

Despite the existing similarities in legislation, what differences persist and what are the challenges that companies have to face in this respect?

There are technical differences (in terms of data retention time, each country has its obligations) and very important cultural differences, the way in which people in different countries deal with these subjects depends on their history. Consequently, it is difficult to find “golden rules” (= harmonized rules).

How can organizations benefit from their compliance efforts?

One way to recognize that companies have done their job properly is through certifications, such as HDS certification.

Dreyfus helps you to comply with these new legislations.

Written by Dreyfus17/07/2020

The judges of the Paris Court of Appeal, ruling on a referral from the Court of Cassation, adopted a strict approach to similarities between a figurative trademark and a later , semi-figurative trademark in a dispute between two companies specialized in ready-to-wear clothing.

The company Compagnie Financière de Californie (“Compagnie de Californie”), which specializes in street wear chic clothing, is the owner of the trademarks on the sign, in particular for clothing products.

In 2013, the company noted that International Sport Fashion, also active in the fashion industry, had registered and used a trademark that it believes to be similar to its own:

The signs in question have the shape of an eagle’s head, without detail, reproduced in black and white within a circle.

In order to obtain compensation for the damage it considers to have suffered, Compagnie de Californie brought an action for infringement.

After having been dismissed at first instance and on appeal, the company turned to the Court of Cassation, which referred the case back to the trial judges after partial cassation.

The referring Court of Appeal first compared the trademarks in question. Its analysis is rigorous, particularly from a conceptual standpoint: it considers that the trademark of Compagnie de Californie refers to “the dark side of the bird of prey while the other refers to the image of a much less aggressive bird” (certainly due to the presence of a closed beak).

The court points out, among other things, that visually, these birds’ heads are not facing the same direction and that one has the beak closed and the other open.

On the phonetic level, the court notes, unsurprisingly, that the mark at issue will be pronounced “Eagle Square” in reference to the verbal element it contains, which will not be the case for the earlier mark.

The court, therefore, considers that there is no likelihood of confusion between the marks.

Next, it examines the question of the exploitation by International Sport Fashion of its mark for clothing products. The Court takes into account all possible elements such as the packaging which contains the goods. The name “EAGLE SQUARE” is affixed to the packaging; it, therefore, considers that there is no likelihood of confusion in the minds of consumers.

It also states that the contested sign which appears by itself on some of the articles is each time bicoloured, “inducing a caesura in the sign”, which gives an overall impression, very different from the earlier mark.

The court, therefore, did not grant the applications of Compagnie de Californie.

Thus, with respect to figurative marks, it is necessary to meticulously estimate the chances of success of an infringement action, since great similarities are generally required to recognize the likelihood of confusion.

This case shows that even marks with a comparable style (presence of a bird in a circle, with only the head entirely painted black) can coexist in the market.

It is questionable whether the Court of Appeal would have taken a different approach had International Sport Fashion affixed the only black and white eagle head to its products. The question also arises as to whether the outcome might have been partially different had California Company also registered, as a trademark, its coloured eagle (which can be found in red on its official website https://www.compagniedecalifornie.com/).

Therefore, in addition to a detailed analysis of the chances of success before bringing an action, it is also necessary to protect the trademark as exploited, taking into account its variants, so as to benefit from the widest possible scope of protection.

Written by Dreyfus06/07/2020

CJEU – September 5, 2019

AMS Neve Ltd, Barnett Waddingham Trustees, Mark Crabtree c/. Heritage Audio SL, Pedro Rodríguez Arriba,

It is possible to bring an actionbefore a national court with the purpose proving an infringement of the EU trademark in that Member State, even if the third party has advertised and marketed his goods in another Member State.

That is the answer given by the Court of Justice of the European Union to the preliminary ruling question concerning the interpretation of Article 97(5) of Council Regulation (EC) No 207/2009 of February 26, 2009 on the European Union trade mark.

That reference was made in the context of a dispute between the parties:

– The applicants : AMS Neve, a company founded in the United Kingdom, for manufacturing and marketing audio equipment, represented by its director Mr Crabtree. Barnett Waddingham Trustees “BW Trustees” is the trustee;

versus

– The defendants : Heritage Audio, a Spanish company also marketing audio equipment, represented by Mr Rodríguez Arribas

concerning an infringement action for alleged infringement of rights conferred, inter alia, by an European Union trade mark.

The applicants are the owners of the European Union trademark and of two trademarks registered in the United Kingdom.

Having discovered that Heritage Audio was marketing imitations of AMS Neve products bearing or referring to a sign identical or similar to the said EU and national trademarks and was advertising those products, they brought an action for infringement of an EU trade mark before the Intellectual Property and Enterprise Court in the United Kingdom.

In order to prove the infringement in the United Kingdom, the applicants provided the documents in support of their action, including in particular the contents of Heritage Audio’s website and its Facebook and Twitter accounts, an invoice issued by Heritage Audio to an individual, resident in the United Kingdom.

Then, in order to prove the infringement in the European Union, they provided screen shots from that website showing offers for the sale of audio equipment bearing a sign identical or similar to the European Union trademark. They underlined the fact that these offers are in English and that a section entitled “where to buy” is available on the website, listing distributors in various countries. In addition, they argued that Heritage Audio accepts orders from any Member State of the European Union.

While the Court agreed to rule on the protection of national intellectual property rights, it found that it lacked jurisdiction to rule on the infringement of the EU trade mark at issue.

The appellants appealed against that judgment to the United Kingdom Court of Appeal, which decided to enforce a stay on proceedings and to refer the following questions to the Court for a preliminary ruling:

– Does a national court of a Member State A have jurisdiction to rule on an action for infringement of the EU trademark on account of its advertising and marketing of goods carried out in Member State B?

– If so, what criteria should be taken into account in determining whether the company has taken active measures regarding the infringement?

The answers given by the CJEU are as follows:

– the plaintiff, depending on whether he chooses to bring the infringement action before the EU trademark court of the defendant’s domicile or before that of the territory in which the act of infringement was committed or threatened to be committed, determines the extent of the territorial jurisdiction of the court seized ;

o when the infringement action is based on Article 97(1), it shall cover acts of infringement committed on the territory of the Union (where the action is brought before the court of the defendant’s domicile or, if the defendant is not domiciled in the European Union, in the State in which he is professionally established);

o when it is based on paragraph 5 of the same Article, it shall be limited to acts of infringement committed or threatening to be committed within the territory of a single Member State, namely the Member State of the court seized ;

– in order to ensure that the acts of which the defendant is accused were committed in the EU , it is necessary to determine where the commercial content was actually made accessible to consumers and professionals for whom it was intended. Whether such advertising and offers subsequently had the effect of purchasing the defendant’s goods, is on the other hand, irrelevant.

In the present case, the advertisements and offers referred to by the applicants were aimed at consumers and/or professionals, in particular in the United Kingdom.

In those circumstances, the Court considers that the applicants have the right to bring an infringement action against that third party before a EU trademark court of the Member State within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display.

This possibility of bringing an infringement action before any competent national court to rule on acts of infringement committed in any Member State is very useful in particular to optimise the costs of proceedings, depending on the national regulations. France, for example, offers irrefutable methods of collecting evidence, such as a bailiff’s report, to establish facts of infringement, at attractive prices.

Written by Dreyfus30/06/2020

The whole world’s been in slow motion since the Covid-19 virus spread. Thus, state governments are doing their best to maintain the continuity of the administration despite the implementation of containment measures,. Since an ordinance of March 16, the offices have decided to extend procedural deadlines that expired during this period of health crisis.

Here’s a list of the provisions that offices have put in place in order to allow better management of procedures related to trademarks, as well as patents.

INPI, The National Institute of Intellectual Property

The INPI decided in its order n°2020-32 of March 16, that the deadlines for proceedings relating to patents, trademarks and designs will be extended to 4 months for procedures concerning patents, trademarks and designs. However, the deadlines for priority for international extensions, for payments for patent and supplementary protection certificate filing, which are subject to supranational provisions, have been excluded.

The order adds that “in the event of failure to comply with a deadline, the health crisis will be taken into account when examining the procedures for appealing for restoration or for a forfeiture statement to the INPI. »

It should be noted that the bill put in place by the government was adopted by Parliament on March 2: the aim is to enable the Government to legislate by ordinance in many areas, including that of intellectual property. This ordinance thus includes provisions concerning the extension of the deadlines stemming from the Intellectual Property Code, including those relating to the opposition procedure.

In accordance with the new order dated March 25 (No. 2020-306), the INPI extended the delay of deadlines for procedures concerning trademark oppositions, trademark renewals or design extensions : it allows to benefit from thecorresponding grace period or for the filing of an administrative or judicial appeal.

In this way, it extends the deadlines which expire between March 12th and June 23rd. The statutory deadline for taking action runs until July 23rd if the initial deadline was set for one month, and until August 23rd if it was for two months or more.

The INPI is already planning to extend its deadlines until July. In the weeks to come, it will be necessary to closely monitor the news from the office.

EUIPO, European Union Intellectual Property Office

The Office had stated in its Decision No. EX-20-3 issued on March 16, that all deadlines expiring between 9 March and 30 April 2020 included, would be automatically extended until May 1st, 2020. Since May 1st is a public holiday, the deadlines were therefore extended until May 4, 2020.

EUIPO subsequently explained its decision on March 19. By the expression “all deadlines”, it meant all procedural deadlines, whether fixed by the Office or of a statutory nature. “They are stipulated directly in the Implementing Regulation,” with the exception of the deadlines relating to matters not covered by certain regulations, such as that on the European Union trademark (2017/1001). It is therefore applicable to all procedures, whether for trademarks, patents, renewals or opposition proceedings.

More recently, on April 29, WIPO’s Executive Director issued the Decision No. EX-20-4, extending all deadlines expiring between May 1st and May 17, to May 18, in order to further support and assist users during the COVID-19 pandemic.

WIPO, the International Intellectual Property Organization

In the opinion (No. 7/2020) issued on March 19, WIPO introduced possible remedies for failure to comply with the deadlines under the Madrid system and modalities for the extension of the deadlines when the national offices are closed.

With regard to the international registration of trademarks, WIPO added that the extension of the deadlines is automatic in the event that an IP office is not open to the public. Therefore, if a deadline for a provisional refusal expires on the day an office is closed, it will be extended on the first day following the opening of the office.

The opinion adds that, with regard to trademarks, applicants may request the continuation of the procedure without having to justify themselves, in particular for all matters relating to an international trademark application, a request for registration, a request for modification of a subsequent designation, etc…

WIPO has also recently announced automatic extensions of the deadlines in cases where a national IP office is closed to the public and in the event of disruption in postal or mail services.

USPTO, the United States Patent and Trademark Office

In a press release of March 16 and 19, USPTO had announced that it was waiving the late fees in certain situations for applicants affected by the coronavirus, as well as the requirement of an original handwritten signature in ink for certain documents.

On April 28, USPTO announced an extension of the deadlines up to May 31, 2020. This means that some actions that were due in this period can be postponed to 1 June. The USPTO gives an extension for certain deadlines between March 27 and April 30. This period runs to 30 days from the original deadline.

In order to obtain the extension, applicants or patentees must “submit a declaration that at least one person responsible for the delay has been affected by the COVID-19 pandemic, due to office closures, financial problems, inaccessibility of records, illness of a family member, or other similar circumstances. »

In other countries of the world

-The Canadian Intellectual Property Office is extending the deadline to July 6th, 2020.

–The German Patent and Trademark Office affirmed in a statement dated May 11 that the extension of the deadlines will be until June 2.

–UKIPO, the United Kingdom Office declared on May 7, 2020 that all deadlines falling on or posterior to March 24, 2020 (being those interrupted days) will be extended to the following interrupted day. The period of interruption will end on July 29th. This extension applies to most deadlines for patents, trademarks, supplementary protection certificates and designs.

–The Benelux Organisation for Intellectual Property is the most rigid office. Indeed, in a press release dated March 16, it discloses that trademark applications referring to coronavirus will be refused registration. However, in a press release of March 20, it revised their position by saying that “the BOIP will not withdraw any application or procedure because a given deadline has not been met. This also applies to opposition proceedings not filed on time or to payments not made on time”. These measures will be applicable until May 20, 2020, at least.

The WIPO website regularly updates information on the provisions adopted by various intellectual property offices in order to keep abreast of the various communications that offices can make around the world. With the introduction of deconfinement measures in some countries, including France, it will be necessary to closely follow the future news.

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

Written by Dreyfus29/06/2020

In order to control the coronavirus epidemic, the government plans to create an application called “StopCovid”. Once the Bluetooth function is activated, the application will track who the user has been in contact with in the last 15 minutes and alert them if any of those poeple affirmed to be infected with Covid-19.This method has already been proven effective in some countries, such as China.

Quid juris?

The European Commission has given a favourable opinion on the creation of this application, provided that the data is destroyed once the epidemic is over.

Furthermore, the European Data Protection Supervisor has stated that even in these exceptional circumstances, the controller must guarantee the data protection of the subjects and arrange the least intrusive solutions, by collecting the minimum amount of data.

The CNIL points out that the implementation of such a system requires to be “limited in time” and effectively based on voluntary action and “free and informed consent”. It also recalls the main principles related to the collection of personal data (purpose of processing, transparency, security and confidentiality, proportionality and data minimization).

To be continued! “Stop Covid” is only in the early stages of development; it will take several weeks for the application to be perfected.

Protection of Minors

Combating Online Fraud

Enhancing Digital Sovereignty

Implications for businesses and digital platforms

Conclusion

Background and Stakes of the Case

Criteria Analyzed by the EUIPO to Establish Bad Faith

Implications of the Decision

Conclusion

CONTENTS

What is product similarity?

The INPI vs. the Paris Court of Appeal: A jurisprudential divergence

The importance of similarity for fashion industry players

The rise of “dupes”: A threat to intellectual property

The need for jurisprudential clarification to ensure legal certainty

As a preliminary, it is interesting to really ask ourselves about anonymity on the Internet: are we really anonymous on the Internet?

The position of social networks

French jurisprudence on the move

The European court, also seized of the matter

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