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.

Bringing a lawsuit does not necessarily preclude the UDRP procedure.

Written by Dreyfus05/08/2020

Usually, when a legal action is brought in the margins of the UDRP proceeding, the experts refrain from any decision on the merits and invite the Parties to settle their dispute before the court. However, whether or not to make a decision on the merits is left to the discretion of the expert.

Here, the dispute is between Associated Newspapers Limited from the United Kingdom on the one hand, and a natural person from Pakistan, Mr Makhdoom Babar, on the other. Associated Newspapers, the applicant, publishes the Daily Mail and The Mail newspapers. The Applicant claims that in November 2019, each issue of the Daily Mail sold more than one million copies.

The Respondent, Mr. Babar reserved the domain name <dailymailpk.com> on February 22, 2019.

The latter has repeatedly requested an extension of the time limit to file a response to the complaint, referring to the Covid-19pandemic as a justification for this request. Finally, the Respondent did not file a submission on the merits but indicated that it had filed a lawsuit in Pakistan to block the UDRP proceeding. He provided a document mentioning the complaint and indicated that the next hearing would take place on May 22, 2020.

The expert points out that they has the power to either stop the UDRP proceeding or not, when there exists a legal action in relation to the domain name at stake. The expert mentioned that many Panels in this situation refuse to suspend or terminate the procedure to avoid an indefinite delay in the decision. Especially when the legal action was introduced after the UDRP procedure, with the aim of disturbing it.

Following these preliminary remarks, the expert notes that there is no guarantee that the legal action will resolve the domain name issue. In fact, there is nothing in the file to show that the defendants in the legal action have been served with it or that they have agreed to submit to the jurisdiction in question. Furthermore, the court has not taken any action following the alleged hearing on May 22, 2020.

In addition, the action has not been brought to court in Massachusetts, United States, where the Registry Office is located. Thus, the Registrar may not enforce the decision in Pakistan.

Therefore, the expert decides to rule on the complaint and orders the transfer of the domain name to the applicant. To do so, he takes several elements into account. Firstly, the Complainant and the Respondent have already crossed paths in the past, since the Complainant had filed a complaint against them, concerning the domain name <dailymailnews.com>.

Secondly, the site set up by the Respondent on the name <dailymailpk.com> bears strong resemblances to that of the Complainant, to the extent that it cannot be a matter of coincidence alone, but rather of a desire to attract Internet users to its site by suggesting an affiliation with that of the Complainant. Thirdly, no articles have been published on the site since February 24, 2020, the date when the applicant was notified of the complaint. Finally, the expert notes that, in view of the circumstances, the defendant could not have been unaware of the existence of the “DAILY MAIL” trademark, which enjoys a great reputation.

Thus, the legal action does not per se obstruct the UDRP procedure. Nevertheless, it should be noted that in this case the defendant was a proven cybersquatter, at the origin of the legal action, initiated after the filing of the UDRP Complaint and in order to obstruct this procedure. Experts tend to react differently when the legal action precedes the UDRP action and especially when the dispute is between former trading partners. It is therefore necessary to remain vigilant before opting for the UDRP course of action.

E-reputation: what you need to know about your possible actions

Written by Dreyfus31/07/2020

If the Internet did not exist, you or your company would remain safe from public criticism, except for the one’s coming from journalists’ pen, or from economic actors revolving around your activity. The absence of online media, Twitter, Facebook, Instagram, and search engines, excludes the possibility of gathering people around networks to discuss your business.

Nowadays it is essential to know how to deal with these criticisms, and sometimes, even slander.

It has already been eight years since the European Court of Human Rights (“ECHR”) stated that “websites contribute greatly to improving the public access to news and, in general, to facilitating the communication of information” (Ahmet Yıldırım v. Turkey, no. 3111/10, ECHR 2012).

However, “on the other hand, the Internet might adversely affect other rights, freedoms and values, such as the respect for private life and secrecy of correspondence, as well asthe dignity of human beings.” (Pravoye Delo and Shtekel v. Ukraine, no. 33014/05 ECHR 2011).

The Court recently reminded that “the right to protection of reputation is a right which, as part of the right to respect for private life, falls within the scope of Article 8 of the Convention”, echoing previous cases concerning defamatory statements in the press (Pfeifer v. Austria, no. 12556/03, 15 November 2007, and Polanco Torres and Movilla Polanco v. Spain, no. 34147/06, 21 September 2010).

Nonetheless, although there are many actions to defend oneself when discovering “unlawful” content, such as defamation, libel, denigration or any form of abuse of freedom of expression, what actions should we take against dissemination of online content that is not unlawful, but is, nevertheless, damaging to our reputation, such as negative opinions or online newspaper articles relating to various facts about your experiences, arises?

Clarification of personal data, the right of opposition and the right to be forgotten

According to the french National Commission for Information Technology and Individual liberties (Commission Nationale de l’Informatique et des Libertés (CNIL)), an administrative authority whose role is to ensure respect for personal data, personal data is defined as “any information relating to an identified or identifiable natural person (…)”

Therefore, your name and surname are personal data, and with regard to the processing of this data, you have certain rights, such as the right to object or the right to erasure (also the right to be forgotteen).

The right to object

You may object at any time, for instance because of your specific situation, to the processing of personal data, while explaining your reasons, based on legitimate grounds.

In the event of an unsatisfactory response or failure to respond to your request, you may refer the matter to the CNIL.

The right to be forgotten

You have the right to obtain the erasure of your personal data as soon as possible from the person, public authority, company or body processing your data (more commonly known as the “data controller“) in particular where there is no overriding legitimate reason for their processing . This includes in particular the right to dereferencing of links contained on search engines.

The operator of a search engine is in principle obliged, subject to the exceptions provided, to comply with requests for dereferencing of links to web pages containing personal data relating to criminal proceedings or convictions.

Requests for dereferencing from search engines can be made directly online via a corresponding tool. However, it is often necessary to send an official letter to the operators of websites containing harmful articles.

It will then be necessary to argue, for example by demonstrating the prejudice you suffer because of these articles – the cancellation of a professional appointment following the search of your name and surname could be one of them! – or by explaining that a web page mentions a step in a legal procedure that no longer corresponds to your current legal situation.

However, this right to be forgotten is weighed against the necessity of the processing, especially when it pursues a legitimate interest, such as the exercise of the right to freedom of expression and information.

Your request may, therefore, be refused if access to such information concerning you is considered strictly necessary for the information of the public. Indeed, according to Article 17 of the GDPR, there are certain situations which prevent the implementation of the right to freedom of expression and information.

In this respect, the controller or the authority seized must in particular take account of various criteria, including the nature of the data in question, their content, their accuracy, the repercussions which their listing is likely to have for the data subject, the notoriety of that person, etc.

In case of refusal of dereferencing or lack of response from the search engine, judicial solutions may be considered.

In sum, possible actions require complete mastering of the legal grounds and to cement your arguments when requesting dereferencing from the data controllers.

The difficult recognition of colour trademarks

Written by Dreyfus30/07/2020

A rticle L 711-1 of the French Intellectual Property Code states that “figurative signs such as (…) arrangements, combinations or shades of colour” may constitute trademarks.

Thus, in order to obtain trademark rights to a colour, the colour must reflect the trademark in the mind of the consumers, i.e., when they see that colour, they think specifically of that trademark.

Despite numerous registrations of colours as trademarks, the French Trademark Office, the INPI rarely accepts those registrations.

The question then arises as to when such marks are admissible.

To do this, let us look at the case law that have marked this colourful saga!

Case law from the Court of Justice of the European Union

In a judgment dated 22 November 2018, the Court stated that “this sign must be distinctive, i.e. it must enable a consumer to identify the commercial origin of the goods or services covered by it in relation to those of competitors. However, a colour is generally perceived by the public as a decorative element, not necessarily as a sign identifying the commercial origin of goods or services. “(CJEU, 22 November 2018, C-578/17).

The judges further specify that one cannot register a colour but a shade or combination of shades which must be recognizable and identified according to a Pantone code, which is an internationally recognized colour code.

Louboutin has obtained trademark protection for its famous red sole. It is specified in the application that the right relates to a certain shade of red connected to a sole.

However, “colour trademark” should not be confused with the use of a colour in a logo. Indeed, in this particular case, one can resort to the registration of a coloured logo without having to resort to the Pantone.

Colour and unfair competition

A distinction must be made between colours that are protected as trademarks and those that are assimilated to the identity of the company. Thus, in the case of a color protected as a trademark, the company will be able to sue the competitor for infringement by demonstrating that there is a risk of confusion for the consumer. In the case of a color assimilated to the identity of the company, there may be a risk of parasitism or unfair competition if a competitor voluntarily decides to use the same colours in order to use them to mislead the consumers.

It is necessary to recall that the notion of “colour trademark” relates to the fact that in order to “be a trademark, colour must be assimilated to a combination of colours or a single colour, filed without shapes and contours”. This principle was laid down by the Court of Justice of the European Union in the Libertel judgment of 6 May 2003 and the Heidelberger Bauchemie judgment of 24 June 2004. Thus, a distinction must be made between colour trademarks and figurative trademarks that claim a specific colour shape without a verbal element.

This principle has been taken up in Article 4 of the European Trade Mark Regulation: “Any sign, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, may constitute trade marks of the European Union, provided that such signs are distinctive …”:

a) to distinguish the goods or services of one undertaking from those of other undertakings ;

b) to be represented in the Register of Trademarks of the Union in a manner which enables the competent authorities and the public to determine precisely and clearly the subject matter for which protection is granted to their owners. »

This principle was also taken up by the Singapore Treaty in 2006, which states that “it is possible to register trademarks consisting of non-visible signs and thus color or scent marks. “».

The Distinctiveness Criteria

In order to be distinctive, the colour sign must must comply with the principles laid down by the Court, and in particular in its Libertel ruling of 6 May 2003:

(a) it is graphically represented in a clear, accurate, complete, lasting, objective, accessible and intelligible manner. For this purpose, it must be possible to convert this colour by means of an internationally recognised identification code ;

(b) the color sign must make it possible to distinguish the origin of the goods or services which it designates and it must be distinguishable from competing undertakings;

(c) it must be taken into consideration the public interest prevailing in the sector of activity for which the registration of the sign is requested ;

This assessment is made by the judge on the basis of the facts but also on the use that has been made of it.

Cases of counterfeiting

As an example, the infringement by imitation of a monochrome sign was admitted for the colour shade of pink pantone 212 by the High Court of Paris (Tribunal de Grande Instance de Paris) in a dispute concerning the two fuschia pink bands underlining the edges of the decoration of infant milk products between Candia and Blédina.

Similarly, the French Supreme Court upheld the infringement of a red label champagne trademark in a decision opposing Charles Laffitte Société and Pieper Heidsik Company on the grounds that the Court of Appeal, in a reasoned decision, examined the overall impression produced by these trademarks, and characterized the infringement by imitation as provided for in Article L. 713-3 of the French Intellectual Property Code.

But in a judgment of 27 April 2006, the Versailles Court of Appeal ruled that the shade of a primary colour, frequently used in the stationery supplies field, is not of a serious nature (Court of Appeal of Versailles, 12th Chamber 1st Section, 27 April 2006).

Conclusion

Thus, it is clear that, while trademark offices and judges accept the possibility of registering a colour as a trade mark and assuming legal protection for it, the validity of such signs remains subject to strict conditions arising from both national and European legislation. This makes it difficult to recognise the validity of such signs. However, the protection of colour as an identity and therefore as a logo is widely accepted. One can thus speak of royal blue for Ikea, or turquoise blue for Tiffany.

It is therefore almost impossible to consider the protection of a colour shade or combination of colours without prior use. The applicant will therefore have to limit the protection sought to specific products or services to increase his chances of protection. The application must expressly indicate the colour reference indicated using an internationally recognized colour code (the Pantone code).

In particular, the applicant must precisely determine the position of the colours.

The protection of a trademark also requires proof of a distinctive character acquired through use. This requirement limits the registration of colours already present on the market and enjoying strong recognition among a relevant public.

The whole difficulty is therefore based on proof of distinctiveness acquired through use.

Sale of the domain name extensions: .cars, .car and .auto at auction

Written by Dreyfus23/07/2020

The domain name extensions (gTLDs) “.cars”, “.car” and “.auto” are about to be auctioned on July 13, 2020. Launched in 2015, these extensions have been at the forefront of innovation in the domain name and automotive marketing. They have been used around the world by dealerships, startups and major automotive technology companies.

After a five-year partnership, and more than $11 million raised, XYZ, a company offering new domain name options, and Uniregistry, both a registrar and a domain name registry, have jointly decided to divest this investment.

The auction will be conducted by Innovative Auctions, an independent auction consulting firm, and all assets to be auctioned will include the extensions in question, as well as all intellectual property rights, trademarks, social network accounts and high-value domain names such as <electric.car> and <rental.car>, which are currently reserved by Uniregistry.

It should be noted that this is the first gTLD auction in which anyone can participate. Interested parties can contact cars@innovativeauctions.com for more information.

Admissibility of the complaint against several defendants, subject to the existence of a body of evidence

Written by Dreyfus22/07/2020

Source: WIPO, Arbitration and Mediation Center, May 7, 2020, No. D2020-0491, Crédit Industriel et Commercial S.A. and Confédération Nationale du Crédit Mutuel v. Whois Privacy Service / Yassine Ahmed / Yassine Cleoo / Yassinee Cleo / Yacin Helaloa / Robert Michel

The companies Crédit industriel et commercial (“CIC”) and Confédération nationale du Crédit Mutuel (“Crédit Mutuel”), which belong to the same group, jointly filed a UDRP complaint against six defendants, including an anonymous service, following the reservation of 25 domain names. One reproduces the trademark CIC ( ), the others the trademark Crédit Mutuel ( ).

In theory, the UDRP Complaint should only be directed at one defendant. However, a complaint against several defendants may be admissible if it is shown, by corroborating evidence, that the domain names were most likely reserved by the same person or are under common control, despite disparities in the information communicated by the registrants at the time of registration. This is known as “consolidation of the complaint”. Of course, each defendant is given the opportunity to rebut this alleged connection by filing a response in the proceedings.

Here, the expert accepted the applicants’ request for 24 of the 25 domain names in question. Indeed, numerous elements tend to show that these names are under common control:

– they have similar structures: <credit-mutual-online-space-customer-confirmation-mobile.net>, <credit-mutual-service-security.org>, <cic-online-space-customer-confirmationmobile.com>, etc.

. – three defendants have the same first name, except for a few spelling variations: Yassine Cleoo, Yassinee Cleo, Yacin Helaloa. And two of them have almost the same last name: Cleoo / Cleo;

– four defendants mentioned addresses in Madrid, Spain;

– the domain names have been reserved through the same registrar, Amazon Registrar, Inc. ;

– the reservation date is close: December 2019 ;

– all used the same anonymity service (first respondent, namely Whois Privacy Service).

On the other hand, the request for consolidation of the complaint was refused because of the 25th domain, reserved by the sixth defendant. In fact, the expert noted that the information which defines this domain name and its reserved name does not make it possible to establish a link with the other defendants:

– the structure of the domain is different: <creditmutuel.com;

– the reservee has given an address in France and not in Spain;

– the domain name was registered in January 2020 while the other domains were registered in December 2019. Thus, the expert, after analysing the complaint on the merits, agreed to the transfer of the first 24 domain names to the applicants. As for the domain name, they refused to pronounce its transfer, considering that it was not demonstrated that its registrant was linked to the other defendants. They specifies, however, that the applicants may very well file a separate complaint against this domain name if they wish so.

The consolidation of the complaint allows several complainants to file a joint complaint and to target several defendants at the same time or alternatively. When several defendants are involved, concrete elements that lead to the belief that the registrants are related, should be reported. In addition to elements relating to identity, one can take into account the structure of the domain names, the date of registration, the hosting providers and registration of the domain, the page that the domain points to, etc.

This possibility offered to complainants has several beneficial aspects: mutualizing costs, getting around the “trap” of cybersquatters which consists in filling in false data when reserving domain names, not to mention a considerable time saving for both right holders and arbitration centres.

Our commentary of the decision is available in the issue n° 7-8, July 2020, alert 54 of the review Industial Property.

Invalidity action: assessment of the likelihood of confusion between a trademark and an earlier company name when the companies maintain economic links at the time of filing

Written by Dreyfus20/07/2020

In a decision of the Court of Justice of the European Union from April entretiennent, 2020 Gugler France SA v Gugler GmbH (Case No 736/18), the Tenth Chamber held, in the context of an invalidity action, that there is no likelihood of confusion between a trade mark and an earlier corporate name if, at the time of filing, the companies do in fact maintain economic links, and provided that there is no likelihood of error among the public as to the origin of the designated goods.

As a reminder, the Article L711-4 of the Intellectual Property Code states that it is not possible to register a trademark that could infringe prior rights, and in particular, if there is a likelihood of confusion, distinctive signs such as the company name or corporate name.

Thus, a conflict may arise when a company files as a trademark a sign that is identical to the corporate name of a company operating in the same sector of activity, creating in consequence a likelihood of confusion. The owner of the previous corporate name will then be entitled to act to cancel the trademark.

While the coexistence of a company name with a subsequently registered trademark had already been admitted (decision of the Paris Court of Appeal from February 24, 1999), it had also been affirmed that, if the use of the prior rights infringed their trademark right, the owner could request that the use be limited or prohibited (Commercial Chamber of the Court of Cassation of November 12, 1992). Therefore, the trademark right could defeat the prior right.

Thus, in case law, there is a certain prevalence of trademark rights over other distinctive signs.

In its decision from April 23 ,2020 Gugler France SA v. Gugler GmbH, the ECJ clarified the assessment of the likelihood of confusion between a trademark and an earlier company name.

The German company Gugler GmbH registered the semi-figurative Community trade mark “GUGLER” on August 25, 2003.

On November 17, 2010, Gugler France filed an application for a declaration of invalidity of the trade mark, in respect of all the goods and services designated, on the basis of its earlier company name.

The CJEU, seized after an application filed with the Cancellation Division of EUIPO and the filing of an appeal before the General Court of the European Union, confirmed the latter’s decision and dismissed Gugler France’s application for a declaration of invalidity.

In fact, on the day the trademark was registered, there were commercial relations between the parties, Gugler France being the distributor in France of the products manufactured by Gugler GmbH. In addition, Gugler GmbH held shares in the capital of Gugler France.

The Court held that the fact that consumers may believe that the goods and services in question come from companies which are economically linked does not constitute an error as to their origin.

The Court therefore rejects the argument of Gugler France that, in order to avoid the likelihood of confusion, the economic link must exist in a particular sense, namely from the holder of the earlier rights (Gugler France) to the holder of the later rights (Gugler GmbH).

According to the Court, the mere existence of a single point of control within a group in respect of products manufactured by one of them and distributed by another may be sufficient to exclude any likelihood of confusion as to the commercial origin of those products.

By this solution of the Court, the essential function of a trade mark right, which is the function of guaranteeing the identity of origin of the marked goods or services, is also indirectly recalled. The trade mark thus serves to distinguish the goods or services of one company from those offered by another company. Therefore, in this case, the commercial links between the two parties made it possible to consider that the goods had the same commercial origin.

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

Dreyfus