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

Written by Dreyfus23/03/2021

domain name registration 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.

The creation of a data access system Whois by ICANN

Written by Dreyfus27/01/2021

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

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

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

Source: LexisNexis, N°1 (January 2021)

Domain names in <.suck> : between attack to brand image and freedom of expression

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.

The opportunity to add a registered domain name to the complaint after the filing

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.

Webinar – Intellectual property questions for a successful digital transition

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

Liability of online platforms operators : where do we stand?

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

Data protection : what are today’s real issues?

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.

Figurative trademarks: be aware of the extent of your protection

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.

The lovelinesss of the European Union: to obtain in one Member State a declaration of counterfeiting for acts committed in another Member State

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.

Coronavirus: the measures implemented by intellectual property offices to deal with the health crisis

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.

cybersecurity