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.

UDRP Procedure: manage a domain name portfolio with attention

Written by Dreyfus03/07/2020

WIPO, Arbitration and Mediation Center, March 10, 2020, No. D2019-3175, Orfeva SARL v. Vianney d’Alançon.

The company Orfeva has specialized for many years in baptism medals. Since 2010, it has been using the domain name ” medailledebapteme.fr ” as the domain name for its official website. Orfeva is also the owner of the French trademark “MEDAILLEDEBAPTEME.FR”.

Orfeva filed a UDRP complaint before the WIPO Arbitration and Mediation Center against the domain name <medailledebapteme.com>, claiming that it infringes its rights, and asking for a transfer.

This domain name was initially registered on July 21, 2010 by Mr. de Graaf, legal representative of the applicant, then, due to a non-renewal in 2016 – for reasons not explained – this name fell back into the public domain and was reserved on September 26, 2016 by Mr. Vianney d’Alançon to designate his own website for the sale of jewelry and silverware. Mr. Vianney d’Alançon has been the owner of the French trademark “1000 MEDAILLES DE BAPTEME.FR” since December 2015.

The applicant argued that the defendant registered the disputed domain name with perfect knowledge of the existence and use of its earlier mark. Consequently, it considers that the defendant sought to generate confusion with its earlier mark in order to try to divert consumers to its own internet site, by offering them the same goods on a very similar site. In addition, the applicant states that has filed an applicaion by letter, through its Counsel, for the restitution of the disputed domain name, without receiving a reply from the defendant.

The defendant, for its part, maintains that it purchased the domain name <medailledebapteme.com> because it is descriptive of his products and not in order to disrupt the applicant’s business. He argued that the expression ‘baptismal medal’ in everyday language cannot be the subject of a monopoly, being the generic, necessary and customary designation of baptismal medals in the jewellery sector.. Furthermore, he adds that he replied to the letter from the applicant’s counsel, refusing to uphold his claims. Finally, the defendant argues that there has been no demonstration of customer poaching. In that regard, it states in particular that the applicant’s business is not disrupted by the operation by a third party of the domain name <medaille-de-bapteme.fr> which predates the applicant’s domain name <medaille-de-bapteme.fr>.

The applicant’s position is not followed by the expert who considers that the domain name has not been registered and is not being used in bad faith.

Indeed, the name is descriptive of the Respondent’s activity, which justifies the registration of the domain name. The applicant’s knowledge of prior trade mark rights cannot affect the legitimacy of that registration.

Furthermore, the expert endorses the Respondent’s argument that it was not intended to disrupt the applicant’s business, pointing out that several companies specialising in the sale of christening medals and using very similar domain names coexist peacefully.

The expert concludes that the complaint must be rejected. In addition, he states that there is no evidence or reason to suspect any customer poaching or disruption of the applicant’s business operations. A court of law may rule on this matter, if necessary.

It should therefore be borne in mind that the abandonment of a domain name describing the activity, especially if it includes the highly prized top level domain “.com”, will most certainly be registered by a third party as soon as it falls into the public domain. Indeed, this type of name is generally very coveted, especially because it can enjoy high visibility on search engine results, corresponding to the keywords that Internet users can search for.

The same applies to domain names that reproduce the company’s brand and especially its corporate brand. Even if it is decided to no longer use a name, it may be advisable to keep it as a defensive measure to prevent a third party from taking it over.

Finally, it should be recalled that the parties must be attentive to the arguments they present before the WIPO, at the risk of departing from the UDRP’s legal regime. Unlike the judge, the expert does not have the power to declare a trademark invalid, nor to conduct investigations for unfair competition.

Keywords: generic designation of domain name – bad faith – trademark right – domain name – unfair competition

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.

Will trademark non-use due to quarantine be considered a valid reason?

Written by Dreyfus12/06/2020

Due to the current health situation, the majority of companies have reduced their activity. This suspension or reduction of activity will have an impact on all intellectual property and may in particular result in the non-use of the trademark by the owner, leading to its forfeiture.

In fact, in accordance with the French law, and more specifically Article L714-5 of the Intellectual Property Code, if a trademark is not used for an uninterrupted period of five years for the goods and services covered by the registration, the court may, order the revocation of the trademark and the cancellation of its registration, at the request of an interested third party

The holder must therefore ensure that there is genuine use during this five-year period, i.e. real exploitation.

Thus, owners of trademarks that had not been exploited before the health crisis and quarantine could not start or resume exploitation. This unprecedented period could therefore lead to a period of non-use of more than five years.

However, the trademark owner may invoke a valid reason justifying the absence of serious use. According to established case law, this just reason must have a direct link with the trademark, be a circumstance outside the control of the trademark owner which has made the use of the trademark impossible or excessively difficult.

Therefore, it seems that the court may consider the restrictions imposed by the Government because of the pandemic as a valid excuse for the non-use of the trademark by the owner. Indeed, this obstacle, which is external to the owner’s will and which has made the use of the trademark extremely difficult, may be qualified as a just cause which will prevent or should lessen the delay of a possible revocation of the trademark.

The important business of domain names related to the coronavirus: simple speculation or sophisticated scams?

Written by Dreyfus08/06/2020

Individuals, entrepreneurs, professional url brokers… all are trying to buy and resell domain names with keywords related to the virus. The prices go up to several thousand euros. For example “corona-vaccination.fr” was bought on March 16 by a German developer, who is now offering it for sale for 9,000 euros.

The DomainTools search team began monitoring the terms related to Covid-19 in February 2019. From a slight increase in domain names using the terms “Coronavirus” and “COVID-19” at the begining, to registrations with a significant spike in recent weeks, it is clear that many of them are scams!

Among them, there is a site developed by a private individual offering the user to install an Android application called “CovidLock”, claiming to have a tool for monitoring the epidemic in real time. In reality, it is a ransomware that asks for of $100 Bitcoins. Thanks to a proactive “hunt”, DomainTools detected it within hours of its creation, before it claimed any victims, and was able to obtain the scammer’s Bitcoin wallet.

Many domain names that should be watched closely at the height of the epidemic, are paving the way for resale at hefty prices or for cyber attacks!

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

Source: https://www.domaintools.com/resources/blog/covidlock-mobile-coronavirus-tracking-app-coughs-up-ransomware

A Complainant who claims an old domain name must demonstrate its use in order to justify prior rights

Written by Dreyfus12/05/2020

Source: WIPO, Arbitration and Mediation Center, Jan. 22, 2020, No. D2019-2992, Cyberplay Management Ltd v/ WhoisGuard Protected, WhoisGuard, Inc./DIREX NV and Johann Mayer.

The Maltese company Cyberplay Management holds a gaming license for the purpose of operating an online casino. The latter owns the European trademark “Loki”, deposited on January 10, 2017 and registered on 6 September 2017, as well as the domain name <loki.com>, registered in 1992 and currently operated for online casino services. Said Company filed a UDRP Complaint before the WIPO Arbitration and Mediation Center against the domain names <lokicasino16.com>, <lokicasino17.com>, <lokicasino18.com>, <lokicasino19.com> and <lokicasino.com>, with the prejudice that they infringe its rights. Indeed, they associate the “Loki” trade mark with the term “casino”, which refers to its activity. The domain name <lokicasino.com> had been registered on May 16, 2016 and the other four domain names on January 11, 2017 (one day after the registration of the Complainant’s trademark,).

At the time the Complaint was filed, the Respondents were using these domain names in connection with an online casino. The Complainant considers that the Respondents registered and used the domain names in bad faith. The Respondents, for their part, claim that they never had knowledge of the applicant and its trademark. In addition, the Respondents have provided several screenshots, taken from the WayBack Machine website databases (archive.org) of the history of the Complinant’s website, showing the latter has never used the domain name <loki.com> for casino activities prior to the current period. For example, in 2006, it referred to a site allowing the user to find all types of events near their location.

The expert ruling on the case concludes that the complaint must be rejected, since the applicant did not provide evidence showing it was the holder of trademark rights for the sign “LOKI” at the time of registration of the disputed domain names. The trademark application was filed after the registration of the domain name <lokicasino.com > owned by the Respondents. Furthermore, in regard to the law on unregistered trademarks (right of use), the Complaint does not submit any evidence of use of the sign “LOKI” in connection with the services of an online casino. Thus, it is important to recall that in order to prosper in a UDRP proceeding, it is imperative for a Complainant to submit evidence establishing, in particular, the registration and use of a domain name in bad faith. In this case, the Complainant failed to provide such evidence. This decision also shows the growing importance of the archives proposed by WayBack Machine, which the judges now tend to accept as evidence (subject to justifying a bailiff’s report).

The rise of phishing in the midst of the coronavirus crisis

Written by Dreyfus07/05/2020

Source: Bank Info Security, Feb. 11, 2020

The global health crisis caused by the coronavirus is a favorable context for phishing techniques. Indeed, many organized gangs of cybercriminals are pretending to be health organizations by using fake domain names. As a result, they send an e-mail pretending to be a health-related entity, in which they ask the recipient to click on a link and enter or confirm a login and password. For example, cybercriminals therefore send phishing e-mails containing domain names similar to those used by the Centers for Disease Control and Prevention. For example, cybersquatters have incorporated the domain name “cdc-gov.org” which is similar to the official domain name “cdc.gov”.
Thus, these malicious e-mails encourage users to click on a link that looks like it contains information related to the issues related to the coronavirus. In fact, Internet users are redirected to a fake website where they have to enter a username and password. In other cases, cybercriminals send phishing e-mails looking like they originate from the World Health Organization, inviting users to a link to download a document on security measures against the spread of the virus. Of course, this is not the case and users are redirected to a pop-up screen asking for a username and a password. It should be noted that some cybercriminals adopt a different tactic by posing as entities linked to the world of economics, such as shipping companies or manufacturing industries. The coronavirus crisis can have an impact that extends beyond health concerns. Hence, it is necessary to be doubly careful about the extension of these phishing campaigns, alert may be raised for example by e-mails containing numerous spelling mistakes.

The <.eu> extension against Brexit

Written by Dreyfus06/05/2020

Source: EURid, registry of the <.eu> extension

The United Kingdom parted from the European Union on January 31, 2020. As a result, the United Kingdom and the European Union entered into a transitio period, a period that has been announced to last till December 31, 2020. During this period, UK residents are still entitled to register and renew names in <.eu>.

However, once this period expires, they will no longer be able to register domain names with the <.eu> extension, nor to keep those they already hold, unless they comply with the requirements. The EURID originally detailed a comprehensive plan that was supposed to be implemented from November 1, 2019, the date when the United Kingdom was due to leave the European Union. It will finally apply at the end of the transition period, although no precise deadlines have yet been set. Once the transition period ends, only the following persons are entitled to register domain names in <.eu>: a citizen of the European Union, regardless of his/her place of residence; a natural person who is not a citizen of the Union European but is a resident of a Member State; a company established in the Union; or an organization established in the Union, without prejudice to the application of national law.

Thus, for already registered domain names, registrants will be able to update their contact details in an attempt to maintain their assets. In particular, they will have to indicate a country code of citizenship corresponding to a Member State of the European Union of 27 regardless of their residence or establish an entity legally established in one of the eligible Member States of the European Union of 27 or the EEA. All registrants who do not comply with these eligibility rules will see their domain names cancelles such the domain names will then be available for registration to all.

As non-compliant domain names will be withdrawn, it is appropriate to carry out a thorough analysis of registrants’ domain name portfolios to see whether any of their registrations is at risk.

Registries and artificial intelligence

Written by Dreyfus05/05/2020

A number of national top-level domain name registries such as the English registry Nominet have begun to use artificial intelligence to prevent abusive domain name registrations. Each registry uses its own system to suspend registrations if they believe there is suspicious activity on an IP address or if the identity of the applicant cannot be verified.

Ongoing assessment of the identity of the registrant thus helps reducing domain name infringements.

domain name