What is an intellectual property attorney?

Written by Dreyfus03/03/2023

An intellectual property attorney is a lawyer specialized in intellectual property law, who has a mission to support the protection of intellectual creations. Intellectual property law includes industrial property such as patents, trademarks and designs, as well as literary and artistic property. Intellectual property lawyers have a unique set of skills and knowledge related to filing, drafting contracts, as well as litigation related to intellectual property rights.

The purpose of an intellectual property lawyer is to assist individuals and businesses in protecting their intellectual property rights. This includes providing legal advice and representation to clients involved in the development, protection and enforcement of their intellectual property rights, primarily in the areas of patent, trademark, design and copyright.

Patents: A patent is a government grant that gives the owner exclusive rights to make and sell his invention. To obtain a patent, you must file a patent application with the national or regional Intellectual Property Office and meet the criteria for patentability including novelty, inventive step and industrial application. An intellectual property lawyer can assist in the patent application process, as well as in the application of a patent.

Trademarks: A trademark is a sign that distinguishes the products or services of a company from those of its competitors. The trademark can be a word, a name, a logo, etc. or a combination of these elements. Being one of the industrial property rights, it is necessary for the owner to file the trademark application with the coorect office. In order to be registered, the trademark must also meet certain criteria, including availability, distinctiveness and lawfulness. Trademarks have a central place in the work of intellectual property attorneys because they are important assets and the capital of companies.

Designs: Intellectual property lawyers also assist clients with the protection of designs. They protect the appearance of a product or part of a product characterized by lines, contours, colors, etc.

Copyright: Copyright is the legal protection of an original work expressed in tangible form. Copyright protects not only literary works, but also musical, graphic, and sound creations, as well as software and applied art. Although copyright is automatically protected without procedures, it is recommended to file the application for registration. An intellectual property lawyer can assist in the registration and enforcement of a copyright.

An intellectual property lawyer is an important asset for individuals and companies seeking to protect their intellectual property. The role of intellectual property lawyers contributes significantly to the development of technology as well as the economy.

This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

What is the role of the Legal Expert in Intellectual Property?

Written by Dreyfus02/03/2023

The Legal Expert’s role is to give an opinion on precise technical points. He or she can be designated by the Judge or by parties to the proceeding. Legal experts are present in all fields where a technical opinion may be required, for example for medicine, architecture, law, which of course includes Intellectual Property law.

What is the “specific” role of the Legal Expert in Intellectual Property?

Technicality and technicity are at the heart of intellectual property. Innovation and creation are the essence of this subject. Therefore, resorting to Experts is often mandatory to analyze, explain or interpret an Inventor’s invention or a Creative’s creation from a technical point of view.

For example, the Legal Expert in Intellectual Property may be called upon to evaluate the prejudices caused by an infringement of an Intellectual Property Right, which are often difficult to estimate, particularly in the case of Trademarks. More generally, the expert may examine the technical evidence or question parties in order to provide an impartial opinion.

It is important to note, that the judge is not required to follow the Expert’s recommendations, however they may rely on the Expert’s report or testimony at the hearing as a basis for their decision.

How are Legal Experts in Intellectual Property appointed?

There are two distinct ways to designate a Legal Expert during a legal proceeding.

Firstly, a Judge will call upon the experts registered on the National lists. The Experts are specialized and there are several lists available that classify Experts by specialty and subspecialties. . One list is made by the French Cour de cassation (Supreme Court) and there is also one list via the Appeal Courts. Secondly, the parties to the proceeding may also directly contact a Legal Expert of their choice. This Expert may not be on the lists of the Cour de cassation or the Appeal Courts. In this case, the Expert will have to take an oath before a Judge at the time of the hearing.

What is the role of Dreyfus & associés ?

Dreyfus is an Industrial Property law firm based in Paris.

Nathalie Dreyfus, founder of Dreyfus & associés, is a registered Legal Expert before the Paris Court of Appeal for specialty E.09.02 Industrial Property – Trademarks. In December, 2022, she was named as a Legal Expert before the French Cour de cassation (Supreme Court) for the same specialty.

The Legal Expert in Intellectual Property is above all a technical and Legal Expert in one or more Intellectual Property specialties, having several years of experience practicing Intellectual Property Law.

The process involves the Legal Expert intervening in a legal proceeding to provide their expertise on a Trademark, a Patent or a design’s technical aspects and in so doing, they help the Judge to motivate towards a decision.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

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.

How to protect Building information modelling (BIM)?

Written by Dreyfus08/12/2022

Over the past decade, the architecture, engineering, construction and Operations (AECO) industry has undergone several developments, particularly in the area of information technology. Building Information Modelling (BIM) is now globally considered a better solution to enormous building problems, which made a huge effect on the building and construction industry. The industry is facing a practical challenge in protecting design when conflict arises between owner’s and architect’s proprietary rights.

“We shape our buildings ; thereafter they shape us.” – Winston Churchill

There was a time when pencil, paper and complex drawing were the base of construction planning, creating a tiring process with lots of loopholes. However, things have changed. It is now all about Building Information Modelling (BIM) which has been part of the construction industry for some time now. It connects the AECO professionals to design, build and operate infrastructure more efficiently. It is more than just 2D or 3D modelling. It is the process of designing a building collaboratively using one cohort system of computer models rather than as a separate set of drawings.

So, what does make BIM so exciting?

It provides insights into design constructability, reduces errors, and improves the efficiency and effectiveness of the construction phase. It can help owners in predictive maintenance, asset tracking and facilities management for future changes and renovation work. It does not solely refer to buildings, but to all sectors that have to do with construction, including roads, railways, utilities, bridges, tunnels, structures, architecture, topography, etc. BIM can be classified into different levels.

Where does intellectual property come into this conversation?

Let’s take a situation- an architect draws a design plan for the construction of a cafeteria. The contractor executes the work as per plan. However, the owner decides to reuse the design with some small changes for a second cafeteria. In such a case, apart from monetary consideration for services of design, does the architect have any other rights? Can he stop the owner from making changes to the design suggested by him? The answer to all such questions lies in Copyright and Design Law.

BIM models created in the tendering process before the award of the contract will not usually be registered. Therefore, BIM models cannot be protected by Design Law. Article 10 of Directive 98/71/EC, provides that the protection of designs is subject to their registration. However, unregistered designs can be covered by copyright under the concept of artistic work although EU Member States differ in how national copyright law protects unregistered designs. For instance, the French Intellectual Property Code (Code de la propriété intellectuelle) article L112-2.7, and the Danish Consolidated Act on Copyright 2014, Consolidated Act No 1144 of 23 October 2014 (Bekendtgørelse af lov om ophavsret (LBK nr 1144 of 23/10/2014)) in section 1.1, all list works of architecture under copyright law.

Determining the ownership of IP rights over the BIM model and its elements is necessary to determine the lawful exercise of ownership. Generally, an owner of a model is granted exclusive right regarding the use of Intellectual Property, and consequently to copy and disclose it as it wishes. In BIM Level 3, however, the authors of the model are regularly indistinguishable. However, if the contracting authorities are services of design, does the architect have any other rights ? Can he stop the owner from making changes to the design suggested by him ? The answer to all such questions lies in Copyright and Design Law.

Determining the ownership of IP rights over the BIM model and its elements is necessary to determine the lawful exercise of ownership. Generally, an owner of a model is granted exclusive right regarding the use of Intellectual Property, and consequently to copy and disclose it as it wishes. In BIM Level 3, however, the authors of the model are regularly indistinguishable. However, if the contracting authorities are to be granted ownership of a BIM model jointly with a tenderer or winner, exercising their right by disclosing it to a third party would be contrary to the interest of the other joint owner. Therefore, the French, German and Danish legislatures grant joint ownership of jointly developed BIM models and regulate in their copyright laws the right of the owners in exercising ownership rights.

In this regard, the French Intellectual Property Code Article L.113-3 provides:

‘The collaborative work is the common property of the co-authors. The co-authors must exercise their rights by an agreement. In the event of disagreement, it is for the civil jurisdiction to rule.’

The developers of a BIM model in a tendering process will be the joint owners of the model and the exercise of their rights is governed by the copyright law of the relevant EU Member State. Since the exercise of its ownership rights by each owner can potentially conflict with the interests of another owner, such exercise would generally only be permitted with the consent of the other owner(s). Therefore, the contracting authorities would not have the right to disclose the BIM model to third parties without the prior consent of the tenderer with whom they developed the BIM model.

The possibilities of BIM are endless, the trend in the construction industry is, and when there is something new, people immediately want to assign more risk to it. Thus, companies/individuals have Thus, companies/individuals have started getting the intellectual property right registered during the initial stage of a project.

Science and technology are developing faster than intellectual property legislation. As a result, previously unknown products of intellectual activity are regulated by general rules. While working and exchanging digital data on a collaborative platform can cause problems related to intellectual property such as if a copyright violation of models and intellectual property enters the court process, it poses a great financial risk and can cause project delays that will result in its loss. Before a project is implemented, there needs to be a clear understanding not only of who owns the model but also of who is responsible for the model. Then, we must consider which actors have the potential to retain the collaborative product for its sustainability. Therefore, it is necessary to conduct a review and synthesis of the related studies to identify the model ownership and intellectual property rights.

Legal Watch: UDRP Proceedings: Legitimate Interest of the Respondent

Written by Dreyfus03/06/2022

The legitimate interest of the respondent justified by the use of his trademark in connection with the services for which it is registered.

A respondent’s legitimate interest in UDRP proceedings is likely to be acknowledged when its registered domain names reproduce its trademark and said trademark is used for the services it covers, even though the trademark was registered subsequently to the domain name registrations. It is therefore essential for the complainant to prove in great detail that the defendant has sought to infringe its IP rights.

On 27 September 2021, Easy Online Solutions filed a UDRP complaint seeking the transfer of the domain names <cloud-mojo.com>, <cloudmojo.tech>, <cloudmojotech.com> and <cloudmojotech.website>, which were registered on varying dates between 8 May 2020 and 12 February 2021 by Cloudmojo Tech LLP.

The applicant is a US-based company specializing in the provision of web hosting, content distribution and other “software as a service (SaaS)” services. It owns four word trademarks registered in the United States between the years of 2012 and 2019 for services in class 42 relating to the signs ‘MOJOHOST’, ‘THAT’S GOOD MOJO’, ‘MOJOCDN’ and ‘MOJOCLOUD’. In addition, it has been using the domain name <mojohost.com> since 2002, and has also reserved the domain name <mojocloud.com> which redirects to the website www.mojohost.com.

Cloudmojo Tech LLP, established in June 2020 in Mumbai, India, specializes in the resale and distribution of Microsoft products and has reserved the disputed domain names in the course of its business. Furthermore, prior to the start of the proceedings in June 2022, the defendant filed the word trademark “CLOUDMOJO TECH” in India for services in Class 42, and notably for “computer programming”, “technology consulting” and “SaaS services”. Said trademark was registered on 9 December 2021.

The Panel acknowledges that there is a likelihood of confusion between the disputed domain names and the trademark “MOJOCLOUD” insofar as they consist of the same verbal elements, “MOJO” and “CLOUD”, although the terms are reversed.

In terms of the respondent’s rights or his legitimate interest, the Panel raised several points.

Firstly, the respondent is active in the IT industry, although on a relatively average scale.

Secondly, the domain names are very similar to the respondent’s corporate name. However, the respondent assumed the name only after the first three domain name registrations, i.e. a few weeks later.

The respondent argues that he was not aware of the complainant’s company, nor of its trademarks, at the time of the reservation of the disputed domain names (or at least of the first three domain names).

In fact, it must be noted that the term “cloud” is rather descriptive of the services concerned. In addition, although the term “mojo” is not descriptive of the services concerned, it is still a generic term. Thus, it is plausible that the respondent chose the term “mojo” without having been aware of the complainant’s trademarks.

This hypothesis is supported by the fact that the applicant’s marks do not seem to be known throughout the world. The Panel notes that the applicant has servers in the USA and the Netherlands. He has also been using the trademark “MOJOHOST” in the United States for numerous years. “MojoCloud” is the name used for a service offered on its website www.mojohost.com. Therefore, the claim that its trademarks have a substantial international reputation is not proven. The claimant provides no evidence of sales revenue, advertising expenditure, or of the volume of traffic generated by the www.mojohost.com website and by the redirection of www.mojocloud.com to www.mojohost.com.

In addition, the respondent has registered the trademark ‘CLOUDMOJO TECH’ in India, which is used for the relevant services. The applicant was aware of this registration application . However, no action was taken to oppose it. From this inaction it can be inferred that the applicant has no business in India. The Panel notes that although the applicant’s website is accessible from India, it has not demonstrated any activity in that territory.

In view of these elements, the complaint is rejected.

The decision is not surprising in that it is customary for a company to reflect its corporate name in a domain name, especially since the use of the respondent’s trademark is correlated with the services for which it is registered.

As such, it was essential for the complainant to prove the use of its marks in India but also to provide further evidence of its alleged international reputation. In view of the defendant’s corporate name, which was only revealed after the complaint was filed, a strong India-centered case was essential to have a chance of obtaining the transfer of the names.

(WIPO, Arbitration and Mediation Center, Case No. D2021-3197, 3 January 2022, Easy Online Solutions, Ltd. d/b/a MojoHost v. Ahmed Parvez Banatwala, Cloudmojo Tech LLP, and Ahmed Parvez Banatwala, Construma Consultancy Pvt. Ltd)

Womens IP World Podcast

Written by Dreyfus31/05/2022

We are pleased to present the “Women’s IP World Podcast” in which Nathalie Dreyfus, founder of Dreyfus & Associates is the guest of Michele Katz, founder and CEO of Advitam IP, LLC.

“Gender washing & Greenwashing: Mother Nature, emblem of the instrumentalisation of societal and environmental struggles by tomorrow’s enterpreneurship?”

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 “Women’s IP world Annual”.

ABOUT THIS TOPIC…

♦Online Trademark Protection

International Designs: China joins the Hague Agreement and WIPO

Written by Dreyfus16/05/2022

In a major development for the global Intellectual Property ecosystem, China joined the Hague System for the International Registration of Industrial Designs on 5 February 2022. This accession will enter into force on 5 May 2022. Following Belarus and Jamaica, the world’s second largest economy has just joined this Union which aims to facilitate the international registration of designs.

Joining a system to facilitate access to design protection

The Hague System was set up to facilitate the protection of industrial designs internationally, through a simplified filing system with a single office: The World Intellectual Property Organization (WIPO). Currently, 76 contracting parties are members of the system, bringing together 93 countries, including France, the European Union, the US, but also many countries in Africa, Asia and Eastern Europe. Given the importance of the appearance of a product, many countries have ratified the Hague Agreement in recent years. China has become the 77th contracting party to the Agreement.

Registering designs with WIPO allows them to be protected in the chosen countries – provided they have actually joined the Hague system – by paying a fee for each requested country. It is therefore not, strictly speaking, an international protection, as each title remains valid only in the concerned territory. Similarly, all acts relating to the protection of the design (registration, renewal) will be carried out in a single procedure.

The consequences of such accession

From now on, all Chinese designers will be able to benefit from the international design system. It is faster and less costly, and limits formalities by providing for a single filing covering up to 100 designs. As for foreign designers, they will have an easier access to the Chinese market, the world’s largest design application market. In 2020, the Chinese Intellectual Property Office received applications containing some 770,362 designs, which represents about 55% of global design applications. By comparison, there were “only” 113,196 EUIPO design filings.

However, the sole registration of a design with WIPO does not guarantee its protection in all the countries requested. WIPO then notifies the offices of all the designated States for an examination specific to each legislation. It is therefore necessary to pay particular attention to the conditions for protection. For example, in France: novelty, specific character and visibility of the design!

In order to file an application for design protection, French legislation provides for a grace period of 12 months following the first disclosure of the design. China, on the other hand, requires absolute novelty. It will therefore be necessary to pay attention to the specific protection conditions in certain countries in order to optimize the protection of a design internationally.

China’s accession to the Hague Agreement is therefore a real step forward in the homogenization of design registration. China has thus become the 77th contracting party to the Hague Agreement and gives hope that other highly innovative States will soon join in.

Trademark Modernization Act

Written by Dreyfus20/04/2022

Trademark Modernization Act: new fast and efficient procedures to challenge non-used U.S. registered trademarks.

The United States Trademark system is based on use. This means that U.S. trademark holders are required to use their trademarks in relation to the goods and services designated in the trademark registration.

Contrary to the EU Trademark system, this use requirement applies both before and after the registration of U.S. trademarks. The U.S. system requires trademarks to be used before their actual filing. As regards foreign trademark registrations, an intent to use the trademark in the U.S is required.

The U.S. system traditionally provides two cancellation procedures to challenge non-used trademarks: the cancellation procedure based on ‘abandonment’ and the cancellation procedure based on ‘non-use’. While the former procedure requires a lack of use and a lack of intent to re-use it, the latter requires an asserted non-use within 5 years of its registration.

These two cancellation procedures still apply today.

However, the problem is that they are relatively expensive, time-consuming and not necessarily effective. For trademark holders, it is fairly easy to win these procedures as they simply need to show their intention to start or to resume the use of their trademarks.

Nonetheless, the Trademark Modernization Act changed this system.

The Trademark Modernization Act came into effect on December 18, 2020 and has an important impact on U.S. trademark owners and future applicants. It regards both national (U.S.) trademarks and international registered trademarks designating the United States.

This act adds two new procedures regarding non-used U.S. trademarks.

Expungement petition

A first important new procedure is the so-called ex parte expungement petition.

What?

The ex parte expungement petition is a new and relatively simple procedure to cancel U.S. registered trademarks for lack of use. It regards national and international trademarks (designating the U.S.) that have never been used in the U.S. in commerce and/or in connection with the goods and/or services after their registration.

The petition can be filed by anyone – contrary to traditional cancellation proceedings – and does not require a lack of intent to resume use.

When?

Until February 27, 2023, the petition can be filed against any non-used U.S. trademark that is older than 3 years.

After this date, the expungement petition will only be opened within 3 to 10 years after the registration of the non-used trademark in question.

Consequence?

The trademark holder has three months following the action to provide proof of use. The burden of proof, which is strictly interpreted, is thus put entirely on the latter. In case of insufficient proof of use, the trademark registration will be partly/fully cancelled.

Reexamination petition

A second important new procedure is the so-called ex parte reexamination petition.

What?

This procedure makes it possible to obtain a reexamination of trademarks registered via a national or international trademark filing (designating the U.S.) that have not been used in commerce or in connection with goods and services on a certain date. This petition can also be filed by anyone.

When the underlying application was initially filed based on use of the trademark in commerce, the relevant date will be the filing date of the application.

When the underlying application was filed with an intent-to-use basis, the relevant date will be the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired.

When?

The reexamination petition can only be filed within 5 years of the registration of the trademark.

Consequence?

The trademark holder will need to provide sufficient proof of use for all of the challenged goods and services. Should the trademark holder fail to do so, the trademark registration would risk cancellation.

(Dis)advantages?

Firstly, these new procedures make it possible to challenge non-used U.S. registered trademarks more quickly and efficiently. Contrary to the traditional cancellation procedure, these new procedures do not require the element of abandonment. It only requires non-use. The fact that a trademark holder has the intent to resume use is irrelevant in this regard.

Secondly, this new procedure makes it easier to get rid of ‘dead wood’ (non-used trademarks), and consequently, to register (non-used) trademarks faster and cheaper. Before the Trademark Modernization Act, it was generally burdensome to apply for a trademark registration when an older similar/identical non-used trademark prevented the application. In this context, cancellation procedures could take several years and bring forth substantial costs.

Thanks to the new expungement and reexamination procedures, it is more flexible and less time-consuming (it doesn’t require briefs, motions, etc.) to act against non-used trademarks and to try to register a non-used trademark yourself at a later stage.

Moreover, the new procedures require U.S. trademark holders to be (more) careful. They need to really use their trademarks and they should constantly keep evidence to prove, when needed, the actual use of trademarks in the U.S., in relation to goods and services, before and after the registration. The less evidence of use, the higher the risk of losing a U.S. trademark, and the easier it becomes for competitors to register similar and even identical U.S. trademarks.

The new procedures make it possible to challenge non-used U.S. registered trademarks more quickly and efficiently.

Therefore, we recommend you to audit your trademark rights in the United States, in order to avoid the risk of cancellation or reexamination.

As regards your trademark registrations that are currently under review, we invite you to contact us so that we can discuss and develop the best strategy to adapt your registrations to this new regulation.

We can also accompany you in the assessment of your trademarks in order to identify the products and/or services that would be likely to weaken them.

Legal Watch : THE UDRP PROCEDURE

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.

Can the French public be advertised for the sale of non-prescription drugs on the Internet?

Written by Dreyfus21/03/2022

In France, the online sale of non-prescription drugs is strictly regulated, for public health considerations. Thus, some advertisements are prohibited, including paid referencing on the Internet.

In a dispute opposing a Dutch company to French pharmacists and e-pharmacists, the Paris Court of Appeal ruled, on September 17, 2021, that the Holland based seller who advertised his products on French soil, as well as on the Internet did not, in doing so, carry out acts of unfair competition.

In 2015, shop-pharmacie.fr, an online sales site for non-prescription drugs administered by a Dutch company, launched a large-scale advertising campaign on French soil. Millions of flyers were thus included in postal packages sent by major e-commerce players such as Zalando and La Redoute. The Dutch company also carried out a paid referencing strategy on the Internet, targeting the French audience.

This campaign, which French companies could not in any case have carried out, appeared excessive and even unfair for some of the associations representing the profession. The Union des groupements de pharmaciens (the Union of pharmacists’ consortium) and the Association française des pharmaciens en ligne (the online pharmacists Association) thus sought to have this campaign qualified as an act of unfair competition, basing their request on legal provisions of the French Public Health Code.

The Paris Commercial Court granted this request but the Dutch company appealed this ruling. The Paris Court of Appeal then referred the matter to the Court of Justice of the European Union. The question raised was whether France could apply to e-pharmacies established in another EU Member State the same limitations it imposed on French e-pharmacists in regards with the promotion of their business and products on its territory.

Greater interests of the Internal Market and rejection of the French protectionism

Can European regulations, in particular Article 34 TFEU and the provisions of Directive 2001/83, allow an EU Member State to impose on pharmacists, who are nationals of another EU Member State, rules derived from Articles R.4235-22 and R.4235-64 of the Public Health and good practices Code issued by the public authority of the Member State?

The Court of Justice of the European Union answered this question in its October 1^st 2020 decision C-649/18 by the negative. This legal and political decision relied namely on the fundamental notion of the European internal market.

This decision brought the protectionism of the French provisions to a standstill but it was initiated in 2016 by the French Competition Authority which at the time stated that the French legislation introduced “additional constraints that appear to be disproportionate for the intended purpose of public health protection” (French Competition Authority, 20^th April 2016, notice n°16-A-09 §91). In 2019, another notice further supported this opinion and stated that online sale was “obstructed in its development by excessive constraints that limit the development of players established in France compared to their European counterparts” (French Competition Authority, 4^th April 2019, notice n°19-A-08).

Thus, the European justice system decided to mitigate the implementation of the French legal limitations in order to protect the Internal Market.

Possibility of limiting advertising on French territory through targeted legal provisions

The Court of Justice of the European Union has established a first principle whereby a Member State can impose limitations on advertising if its legislation is strictly circumscribed. The Paris Court of Appeal followed this clarification in the dispute between French pharmacists and the Dutch e-pharmacy and ruled that the provisions invoked from the French Public Health Code were not specific enough. More precisely, they did not solely target drugs, but referred to the general term of “pharmaceutical products”.

The door is therefore left open for the French legislator to specify its legal provisions relating to the framework of pharmaceutical drugs online advertising.

Paid referencing on the Internet in principle possible for companies established in another Member State of the European Union

In order to prevent the over-consumption of pharmaceutical drugs, French law prohibits French e-pharmacies from carrying out paid referencing campaigns in the digital space, particularly on search engines and price comparators.

In this case, the Court of Justice of the European Union stated that such referencing is in principle possible, unless it is limited by a measure that is necessary and proportionate to the purpose of safeguarding public health. Therefore, the general rule is that referencing is possible, unless the opposing Member State provides a targeted, proportionate and necessary legal rule.

Yet, such legislation does not exist in France. Moreover, the provisions of the Public Health Code that have been included in the debate seem inadequate for e-commerce. Indeed, e-commerce has its own constraints, namely its universal, instantaneous and continuous access via the Internet. Consequently, it seems very difficult to provide a sufficiently concrete and specific framework for the practice of paid referencing on the Internet for this type of activity.

To sum up, French e-pharmacists and e-pharmacists located in other EU Member States are not on an equal footing regarding advertisements carried out in France.

This case provided the Paris Court of Appeal the opportunity to reaffirm the right to paid referencing by stating that the decree of December 1^st 2016 “relating to the technical rules applicable to e-commerce websites for pharmaceutical drugs ” and relating in particular to the prohibition on referencing in search engines or price comparators in return for payment, was unenforceable. Furthermore, the French Council of State had annulled this decree on March 17, 2021.

LEGAL WATCH : THE NAME PARISTECH.ORG

Written by Dreyfus18/03/2022

The name < PARISTECH.ORG >, operated by Parisian entrepreneurs, would not infringe Paritech’s rights.

At the end of the year 2021, a surprising UDRP decision was issued. It concerned a complaint filed against the domain name < paristech.org > that was registered by an anonymous registrant in 2017. The complaint was filed by the French ParisTech Foundation («ParisTech») who is known for its higher education services primarily in the fields of science and technology,

ParisTech notably owns two French Paristech trademarks, registered in 1999 and 2010 and subsequently renewed, as well as the international trademark “Paris Institute of science and technology Paristech” registered in 2010 and renewed in 2020. It also owns the <paristech.fr> domain name, registered in 2004.
The disputed domain name was used to disseminate French articles on a variety of topics, most of which related to technology and innovation. Before filing a complaint, the complainant attempted to contact the registrant at the address mentioned on its website, but without success.

After the complaint had been filed, the defendant indicated that he was open to find an amicable agreement with the complainant. Although it led to the suspension of the proceedings, the negotiations – whereof the content has not been reported – were not successful. Consequently, the proceedings resumed. The defendant submitted a late response to the complaint, which the expert decided not to accept, based on the consideration that it would not have changed the outcome of the case anyway.
In his analysis, the expert acknowledges that the domain name is identical to the complainant’s prior Paristech trademarks.

However, as far as the legitimate interest is concerned, his position may seem unexpected since he decided not to rule on the matter.

He noted that the website included articles on various topics that mostly related to technology and innovation. The site incorporates a «Paris Tech» logo at the top of the page and at the bottom, a reference to the city of Paris and a postal code.

He noted that the «Paristech» website is managed by two Parisian entrepreneurs who want to keep track of technological developments.

The only method of contact is an email address. Nonetheless, the complainant demonstrated that this email address does not work.

The expert further noted that the legal notices only contained the contact details of the OVH host and that the contact details did not correspond to those provided by the registration office.
However, he noted that there is no evidence to suggest that the purpose of the defendant was to target the complainant’s trademark. The “Paris Tech” logo on the site is different from that of the complainant. In addition, the expert stated that the content presented on <paristech.org> and <paristech.fr> are different.

He explained that «Paristech» can easily be understood as “Paris Technology” referring to the content of the site.

Based on these facts, the expert considered that the complainant failed to prove the defendant’s bad faith and referred to his comments on this point.

He considered that the defendant could have known about the Paristech trademark when he registered the domain name since the complainant’s trademark appears to be known in France in connection with its research education services and that the website is operated by Parisian entrepreneurs, where the complainant is based.

Nevertheless, he noted that the site was non-commercial, relating to technology and innovation, and did not refer to the complainant’s field of activity, namely education.

Moreover, the expert noted that the complainant did not provide proof that the registrant had proposed the domain name for sale before the start of the proceedings, nor that he would have obtained a financial gain by making use of this domain name through taking advantage of the risk of confusion. Hence, the domain name registration does not constitute an abusive reproduction of third-party trademarks.

He therefore rejected the complaint, stating that the choice to hide his contact information on the Whois file and to provide on his website a contact email address that does not work is not sufficient to conclude bad faith registration.
This decision may seem surprising given the complainant’s reputation among the French speaking and international public.

The domain name is strictly identical to the earlier trademark and reproduces part of the complainant’s legal name. The website is operated in French. However, the complainant is located in France where it enjoys a certain reputation.

The legitimacy of the site may seem questionable since no legal notice is inserted and the contact address is false. The defendant does not claim trademark rights or a legal name «Paristech».
The website’s topics are similar to those covered by ParisTech. The fact of not drawing active income or not actively proposing the sale of the domain name does not mean that the defendant did not intend to target the complainant’s trademark. We note that as of December 30, 2021, the site is inactive.

By consulting the history of the Whois of the disputed domain name, we can see that on February 12, 2017, the name was held by Mr. X, ParisTech company. According to our research, the latter was the general manager of ParisTech. Subsequently, the name became anonymous. Therefore, there appears to be a very clear link between the complainant and this domain name.

Finally, although the articles promoted on the site do not focus on education, it could be argued that the dissemination of informative articles can be related to it.

It appears that the expert based his decision primarily on the lack of commercial intent in the use of the disputed domain name.

However, the expert noted that if the content of the website were to change in order to infringe the complainant’ rights, then the complainant would be free to pursue legal action.

WIPO, Arbitration and Mediation Center, Case No. D2021-2417, October 28, 2021, Paristech Foundation v. Domain Administrator d/b/a privacy.cloudns.net

Dreyfus