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How to protect your trademark in the United States ?

Written by Dreyfus04/02/2025

The United States is a key market for many businesses. Registering a trademark in this country helps secure your brand identity and avoid legal disputes related to unauthorized use of your distinctive sign. However, the U.S. trademark registration process differs from that in Europe and other jurisdictions. This guide outlines the filing options, registration process, and associated costs.

Why Register a Trademark in the United States?

A registered trademark in the U.S. provides several benefits:

  • Legal Protection: Prevents third parties from using an identical or similar sign in a commercial context.
  • Exclusive Usage Rights: Registration grants a monopoly over the trademark for the designated goods/services.
  • Increased Commercial Value: A registered trademark can be sold, licensed, or used as an asset in investments.
  • Simplified Legal Recourse: In case of infringement, the trademark owner can take legal action in federal courts.

Different Bases for Filing a U.S. Trademark

In the United States, the legal basis for a trademark application refers to the foundation on which the filing is made. Unlike in some jurisdictions, the United States Patent and Trademark Office (USPTO) generally requires proof of use before granting full registration. The choice of filing basis depends on the applicant’s business strategy, the current use of the mark, and any existing international trademark portfolio.

Application Based on Actual Use in Commerce (§1(a))

This option applies to businesses that are already using the trademark in the United States at the time of filing. The applicant must submit a specimen of use demonstrating that the mark is actively used in commerce in connection with the claimed goods or services. Acceptable specimens include packaging, labels, website screenshots, advertisements, or invoices that clearly display the trademark in a commercial context. The applicant must also provide the first use date (when the mark was first used anywhere) and the first use in commerce date (when it was first used in a way that affects interstate or international commerce in the U.S.).

One of the main advantages of this basis is that it allows for a faster path to registration since no further proof of use is required later in the process. However, the applicant must maintain continuous use of the mark to avoid cancellation for non-use.

Application Based on Intent to Use (§1(b))

This option is available for businesses that have a bona fide intent to use the trademark in the United States but have not yet started using it at the time of filing. After the USPTO examines and approves the application, a Notice of Allowance (NOA) is issued. From that point, the applicant has six months to provide proof of actual use by submitting a Statement of Use. If the applicant is not ready to prove use, they can request up to five six-month extensions, subject to additional fees.

This basis allows applicants to secure an earlier filing date while preparing for market entry in the U.S. However, the trademark will not be registered until actual use is demonstrated.

Application Based on a Foreign Registration (§44(e))

This option is available to businesses that already hold a registered trademark in their country of origin. Unlike the previous bases, the USPTO does not require immediate proof of use in the United States. However, the applicant must submit a copy of the foreign registration, which must remain valid.

One key advantage of this basis is that it allows an applicant to register a trademark in the U.S. without proving use initially. However, after five years of registration, the applicant must submit a declaration of use to maintain the trademark and avoid cancellation.

Application Based on a Foreign Application (§44(d))

If an applicant has filed a trademark application in another country within the past six months, they may claim priority rights in the United States. This allows them to benefit from the earlier foreign filing date for their U.S. application.

No proof of use is required before the fifth year of registration. However, to finalize the registration process, the applicant must submit a copy of the foreign registration certificate. This option is particularly advantageous for businesses looking to secure U.S. trademark rights while relying on an international application.

The choice of filing basis depends on the applicant’s strategic objectives and readiness to use the mark in U.S. commerce.

The U.S. Trademark Registration Process

Registering a trademark with the USPTO involves several key steps:

Step 1: Trademark Search

Before filing, it is highly recommended to conduct an availability search to ensure that no similar or identical trademark already exists. This search can be performed via the USPTO’s TESS database or by consulting a trademark attorney.

Step 2: Choosing the Filing Method

The USPTO offers two options for filing a trademark application:

  • TEAS Plus: Lower cost but requires strict compliance with the USPTO’s Goods & Services Manual.
  • TEAS Standard: More flexibility in product/service descriptions, but with higher fees.

Step 3: Examination by the USPTO

Once the application is submitted, a USPTO examiner reviews it and may:

  • Approve it directly.
  • Request additional details through an Office Action (e.g., clarification of descriptions, proof of distinctiveness).
  • Reject it if it is too similar to an existing trademark or considered descriptive.

Step 4: Publication in the Official Gazette

If the application is accepted, the trademark is published in the Trademark Official Gazette. Any third party who believes the trademark may harm their interests has 30 days to file an opposition.

Step 5: Registration or Notice of Allowance

  • If the trademark is already in use, a registration certificate is issued.
  • If the application was based on intent to use, the USPTO issues a Notice of Allowance, and the applicant must submit proof of use within six months (with the possibility of extensions).

Trademark Filing Costs in the U.S.

The cost of filing depends on several factors, including the number of classes and the filing method chosen.

Filing Method First Class Additional Class
TEAS Plus $665 $455
TEAS Standard $765 $555

Additional Fees:

  • Declaration of First Use: $350 for the first class, $250 per additional class.
  • Six-month extension to submit proof of use: $350 for the first class, $250 per additional class.

Choosing the Right Trademark Type

Word Mark

Protects only the name, regardless of font or logo.

Offers broader protection since it covers all typographical variations.

Logo Mark

Protects only the design of the logo, not the name.

Useful if the visual identity is crucial to the brand.

Combined Mark (Name + Logo)

Protects both the name and design, but with limited flexibility if changes are made later.

Recommended if the brand identity is strongly tied to a specific visual representation.

Trademark Renewal and Maintenance

Once registered, a trademark must be maintained to remain valid:

  • Between the 5th and 6th year: A Declaration of Use (Section 8) must be filed.
  • Between the 9th and 10th year: A Declaration of Use and Renewal (Sections 8 and 9) must be filed.
  • Every 10 years: The trademark must be renewed to retain protection.

Failure to meet these requirements may result in cancellation by the USPTO.

Handling Oppositions and Disputes

If a third party contests the trademark after publication, an opposition can be filed before the Trademark Trial and Appeal Board (TTAB). In case of a refusal or objection from the USPTO:

  • The applicant can modify the application and respond to the Office Action.
  • If the issue persists, a trademark attorney may be necessary to defend the registration.

Conclusion

Registering a trademark in the United States is a crucial step to protect your business identity. Choosing the right filing basis, anticipating costs and timelines, and proactively managing legal obligations will help ensure optimal protection for your brand in the U.S. market.

Dreyfus Law Firm supports clients throughout the entire trademark registration and protection process in the United States. Our intellectual property experts conduct availability searches, handle all USPTO filing procedures, and provide tailored assistance for renewal and enforcement. Through our global network of IP-specialized attorneys, we ensure effective protection of your trademarks both in the U.S. and internationally.

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FAQ

How do I register a trademark in the United States?

Trademark registration is done online through the USPTO (United States Patent and Trademark Office) using the TEAS (Trademark Electronic Application System). You must choose a filing basis (actual use, intent to use, or foreign registration), complete the application form, and pay the required fees.

How much does it cost to register a trademark?

TEAS Plus: $665 for the first class, $455 for each additional class.

TEAS Standard: $765 for the first class, $555 for each additional class.
Additional fees may apply for proof of use or extensions.

How can I register a trademark internationally?

You can register a trademark internationally through the Madrid System with WIPO (World Intellectual Property Organization) or by filing directly in each target country. A U.S. registration can serve as a priority basis for international filings.

What are the requirements for trademark registration?

A trademark must be distinctive, available, and associated with specific goods or services. Proof of use is required unless filing under a foreign registration basis.

How long does it take to register a trademark?

On average, 12 to 18 months, depending on examination timelines, possible objections, and proof of use requirements.

Do I need to prove use of my trademark?

Yes, except when filing based on a foreign registration. Proof of use is required to finalize the registration and must be submitted between the 5th and 6th year after registration, and every 10 years thereafter.

How long does a U.S. trademark last?

A U.S. trademark is valid indefinitely, provided it is renewed and proof of use is submitted every 10 years.

Can I protect a logo and a name separately?

Yes. A word mark protects the name alone, while a logo mark protects the visual design. A combined mark covers both but offers more limited flexibility if changes are made later.

What happens if my trademark is challenged?

After publication, third parties have 30 days to file an opposition. If opposed, you must either negotiate or defend your case before the Trademark Trial and Appeal Board (TTAB).

What happens if I don’t renew my trademark?

If you fail to submit the required renewal or proof of use, the USPTO cancels the trademark, making it available for new registration.

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Intellectual Property Law in the Wine Sector: Protecting heritage and innovation

Written by Dreyfus27/01/2025

The wine industry represents a unique confluence of tradition, innovation, and commerce. Intellectual property (IP) law plays a pivotal role in preserving this delicate balance by safeguarding trademark identities, regional heritage, and innovative practices. This article delves into the intricacies of IP law in the wine sector, examining the role of trademarks, geographical indications, and other IP tools in protecting the interests of stakeholders while fostering innovation.

The pillars of intellectual property in the wine industry

I – Trademarks: Securing brand identity

Trademarks are vital for distinguishing one producer’s products from another. In a competitive market, a strong trademark ensures brand recognition, consumer loyalty, and legal protection against imitation.

There are challenges in trademark registration :

  • Similarity of Products: Many wine trademarks fall under Class 33 (alcoholic beverages excluding beers). The dense registration landscape often leads to disputes regarding the similarity of products and signs.
    • Example: Opposition cases where trademarks like “MARQUIS DELATRE” and “MARQUÈS DEL ATRIO” were scrutinized for phonetic and visual resemblance.
  • Distinctiveness: Terms such as “Château” or “Domaine”, often used descriptively, require additional elements for registration.

Recent rulings from bodies like the French INPI and the EUIPO emphasize the need for trademarks to exhibit clear distinctiveness and avoid consumer confusion. For instance, rulings on marks like “LOUIS DE LA ROCHE” and “DOMAINE DE LA ROCHE” underline the importance of evaluating the overall impression of signs.

II- Geographical Indications: Preserving regional heritage

Geographical indications protect the names of regions associated with specific qualities or reputations, ensuring authenticity and preserving cultural heritage. Examples include Champagne, Bordeaux, and Chianti.

The EU’s comprehensive framework, such as the recent Regulation (EU) No. 2024/1143, governs the use and protection of GIs.

Some case studies :

  • Evocation and Misuse: Attempts to register terms evocative of protected geographical indication, such as “TIZZANO” for Corsican wines, often lead to legal challenges. Courts examine whether such terms might mislead consumers.
  • Modification of Specifications: Changes to PDO (Protected Designation of Origin) rules, such as permitting new grape varieties, must align with preserving the essence of the GI.

III – Innovation and patents in viticulture

Innovations in vineyard management and winemaking—from advanced irrigation systems to fermentation techniques—can be patented. Such protection incentivizes R&D while allowing producers to capitalize on their ingenuity.

While patents foster innovation, the wine sector’s reliance on tradition necessitates careful consideration of cultural impacts. For example, patents related to non-traditional production methods, like de-alcoholized wines, must respect established GI rules.

IV – Design Protection: Packaging and presentation

The aesthetic appeal of wine packaging often influences consumer choice. Design rights protect elements like bottle shapes, labels, and closures, ensuring that unique presentations remain exclusive to their creators.

Innovative designs, such as eco-friendly packaging, have gained traction. Protecting these designs reinforces a producer’s commitment to sustainability and brand differentiation.

Enforcement and Dispute Resolution

Infringement Challenges

The wine industry’s premium products are frequent targets of counterfeiting. IP enforcement mechanisms, such as customs interventions and litigation, are essential for combating this issue.

Domain Name Disputes

Cybersquatting cases, such as those involving domain names mimicking famous wine brands, highlight the need for vigilance in digital spaces. The UDRP (Uniform Domain-Name Dispute-Resolution Policy) provides an effective resolution mechanism.

Arbitration and Mediation

Given the international nature of the wine trade, alternative dispute resolution methods like WIPO arbitration offer efficient solutions to cross-border IP conflicts.

Navigating the Future of IP in the Wine Sector

Sustainability and IP

As sustainability becomes a market priority, producers are leveraging IP to protect eco-friendly innovations and branding strategies.

Digital Marketing and E-commerce

With the rise of e-commerce, protecting trademarks and designs in digital marketplaces is increasingly critical.

Strengthening International Cooperation

Harmonizing IP standards through international agreements, such as the Lisbon Agreement and TRIPS, is essential for ensuring robust protection across jurisdictions.

Conclusion

The wine industry’s reliance on intellectual property law underscores its commitment to preserving heritage while embracing innovation. By navigating the complexities of trademarks, geographical indications, patents, and design rights, stakeholders can protect their assets and ensure a thriving future for viticulture worldwide. Effective enforcement and adaptation to emerging trends will further solidify the role of IP as a cornerstone of the wine sector’s success.

Dreyfus Law Firm excels in protecting and promoting wine trademarks, as well as managing appellations of origin (AOC/AOP) and geographical indications (GI). With our deep expertise in intellectual property and wine law, we support producers, trade unions, and other stakeholders in safeguarding and enhancing their products.

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Co-branding: Strategy, Opportunities, and Challenges

Written by Dreyfus28/10/2024

By Dreyfuslawfirm

 

Co-branding has emerged as an indispensable strategy for companies aiming to extend their influence, enhance brand equity, and foster product innovation. However, this form of multi-brand collaboration necessitates meticulous planning and rigorous scrutiny due to its inherent risks. This article delves into the essential elements of co-branding, both from marketing and legal perspectives, while also identifying the opportunities and challenges associated with these strategic alliances.

 

Strategic Alignment and Value Convergence

The success of co-branding hinges on the precise strategic alignment between partner brands. These entities must share fundamental values and pursue compatible strategic goals, a condition necessary to establish a seamless collaboration and leverage potential synergies. Furthermore, each brand must target similar or complementary audiences to ensure a positive market impact and maximize the partnership’s overall outcome.

Mutual Benefits and Complementary Competencies

The core of successful co-branding lies in the creation of shared value. Co-branding thrives when each partner leverages its unique strengths: one brand may possess cutting-edge technological expertise, while another has established market recognition. By merging these distinct competencies, brands can offer high-value products or services unattainable independently, generating synergistic outcomes that exceed the sum of individual contributions.

Reputation and Risk Management

The reputation of partners is a critical factor in co-branding initiatives. Associating with a brand that has a questionable or undeveloped reputation can impair the overall image of the initiating company. Thus, thorough due diligence is paramount to evaluate the prospective partner’s stability and ensure their alignment with the project’s dynamics. Risks, including those related to consumer perception, must be identified and thoroughly assessed.

Legal Considerations: Intellectual Property and Contractual Agreements

Legal considerations are fundamental in ensuring the stability and viability of a co-branding partnership. Intellectual property (IP) rights concerning trademarks, logos, and co-created content must be clearly defined from the outset. Comprehensive contractual agreements are necessary to delineate each party’s roles and responsibilities, including revenue-sharing clauses and financial obligations. These agreements should incorporate predetermined dispute resolution mechanisms aimed at preventing and managing potential conflicts throughout the collaboration.

 

Quality Control and Consumer Perception

Quality control is another major aspect of co-branding. The perceived quality of co-branded products or services must be maintained to avoid damaging the brand image, which could negatively impact both entities. Quality standards must be established early and adhered to strictly to ensure consistency and protect the reputation of each partner.

 

Recent Statistics: Growth and Evolution of Co-branding

Recent data underscores the growing prevalence of co-branding: approximately 65% of marketing executives view these partnerships as essential for brand growth. Moreover, 71% of consumers report being more inclined to purchase a product co-branded with a trusted brand. These statistics highlight the importance of selecting strategic partners to maximize growth and reinforce consumer trust.

 

Expanding Industries and Digital Integration

Several sectors are distinguished by their effective use of co-branding:

– Technology: Partnerships between technology firms and health applications.

– Food and Beverages: Creation of unique products through collaborations between snack and confectionery brands.

– Fashion: Limited-edition collections that are often highly publicized and impactful.

– Automotive: Integration of advanced technologies through collaborations with high-tech companies.

 

These industries leverage co-branding to innovate, reach new market segments, and create unique value propositions, often utilizing digital strategies such as video marketing on social media platforms.

Challenges and Risks of Co-branding

Despite its numerous benefits, co-branding also presents challenges. Among the most significant are brand dilution, differences in corporate culture, and quality control issues. A major difficulty is ensuring equitable benefit distribution between partners to avoid tensions or resentment. Proactive management, through clear contracts and regular communication, is crucial to prevent these issues and guarantee the partnership’s success.

Conclusion: Optimizing Co-branded Collaborations

Co-branding offers a unique opportunity to expand each brand’s reach and enhance overall credibility, provided that the inherent challenges are fully understood. Rigorous strategic planning, structured risk management, and a clear delineation of roles and responsibilities are essential for maximizing success. With a methodical approach and anticipation of obstacles, companies can effectively leverage the unique advantages of co-branding while mitigating potential pitfalls.

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France’s IP Legislation: Mastering Trademarks in a Global Playground

Written by Dreyfus21/10/2024

The French Intellectual Property Legal Framework: A Comprehensive Overview

The foundation of intellectual property (IP) law in France is a testament to its historical influence on legal traditions and reflects its progressive adaptation to new technological developments and globalization. The French IP system, particularly in the realm of trademarks, is robust, detailed, and harmonized with international conventions. It is structured to protect the creativity and innovations of individuals and companies alike.

 

The Core of French Trademark Law

 France’s trademark law is primarily governed by Law No. 91-7 of January 4, 1991, which was amended by Ordinance No. 2019-1169 of November 13, 2019. These laws are codified in the French Intellectual Property Code (FIPC), which forms the backbone of domestic regulations. The amendments have largely been driven by the need to align French law with broader European Union directives and international standards.

 

Trademarks in France serve as legal instruments that safeguard distinct business identifiers, names, logos, designs, and even sounds by ensuring exclusive rights to their use. The legal system also extends protection to non-traditional trademarks, including motion marks, holograms, and multimedia representations. The core requirements for trademark protection in France are quite clear: a trademark must be capable of distinguishing goods or services from those of others and be capable of being represented clearly in the official registry. The National Institute of Industrial Property (INPI) is the official body responsible for regulating trademarks in France.

 

A Global Player in Intellectual Property

France is not isolated in its legal approach to intellectual property. It actively participates in several key international agreements that shape global IP law. Among these, the Paris Convention for the Protection of Industrial Property (1883) and the Madrid Agreement (1892) have been foundational. Additionally, France’s signature on the TRIPS Agreement (1994) aligns it with international trade obligations, while agreements such as the Nice Agreement (1957) ensure a harmonized classification of goods and services worldwide. These treaties facilitate the international registration of trademarks and create a cohesive framework that allows French businesses to compete globally while protecting their intellectual property.

 

International agreements simplify the process of cross-border trademark registrations and provide mechanisms for French entities to enforce their rights in other jurisdictions. For instance, the Madrid Protocol (1997) and the Vienna Agreement (1973) offer frameworks for international classification and protection of figurative marks.

 

Establishing and Enforcing Rights: The Role of Registration

While registration is not mandatory to establish trademark ownership in many jurisdictions, in France, unregistered trademarks are not afforded legal protection. The concept of “common law” trademarks does not exist in French law. However, owners of well-known marks, defined under Article 6-bis of the Paris Convention, can use provisions under French tort law to prevent the misuse of similar signs. In practical terms, registration with the INPI ensures a more straightforward path to enforcement, including access to specialized courts and legal remedies in infringement cases.

 

Once registered, a French trademark is valid for a period of 10 years, and the registration can be renewed indefinitely. The registration also provides a presumption of validity, simplifying legal disputes related to ownership and use. Notably, the non-use of a trademark over a five-year period opens the door for third-party cancellation actions.

 

Challenging a Trademark: Opposition and Cancellation Proceedings

The French trademark system allows third parties to challenge applications and existing registrations. Once a trademark application is filed, it is published in the Trademark Gazette, opening a two-month window for opposition. Oppositions can be based on prior rights, including existing trademarks, copyright, company names, or geographical indications.

 

Cancellation proceedings are equally vital in maintaining the integrity of the trademark register. Such actions may be based on grounds including the lack of distinctiveness, bad faith, or non-use. The process typically involves multiple exchanges of evidence and legal arguments between the parties. Moreover, if a trademark is found to be misleading, deceptive, or descriptive, it can be invalidated.

 Online and Digital Dimensions of Trademark Protection

As the world becomes increasingly digitized, the protection of trademarks in online environments has gained prominence. Under the Electronic Post and Telecommunications Code, French law provides mechanisms to cancel or transfer infringing domain names. Domain names, which hold significant commercial value, can form part of opposition proceedings if they have established sufficient recognition among the public.

 

Infringement in the online space is treated similarly to traditional forms of infringement, with courts recognizing the unique challenges posed by digital platforms. Trademarks can also be enforced under the French unfair competition law, which extends protection against unfair commercial practices, particularly in cases where foreign well-known trademarks are involved.

 

Licensing and Assignment: Managing Trademark Rights

Trademarks, as valuable business assets, can be licensed or assigned, partially or wholly, for specific goods and services. Licensing agreements, when recorded with the INPI, allow for easier enforcement of trademark rights and enable the licensee to pursue infringement claims if authorized. The assignment of trademarks, which can be for tax purposes or business restructuring, must be executed in writing and signed by both parties.

 

Recording such transactions is not mandatory for validity, but it is crucial for enforceability against third parties. The INPI manages the recorded licenses and assignments with processes designed to be efficient and cost-effective.

 

Conclusion: The Future of French Intellectual Property Law

France’s intellectual property legal framework is a dynamic system that balances tradition with modern innovation. Its alignment with international standards and robust domestic regulations ensures that businesses operating within its jurisdiction can effectively protect and enforce their intellectual property. As new technologies emerge, the French legal system will likely continue to adapt, ensuring that its IP laws remain relevant and responsive to the needs of creators and businesses alike.

 

At Dreyfus Law Firm, our team is well-versed in the intricacies of the French IP legal framework, ensuring that our clients confidently navigate the complexities of trademark registration, enforcement, and international agreements. We understand the unique challenges that arise in today’s digital landscape and are committed to providing tailored solutions that protect your creative assets.

 

By partnering with Dreyfus Law Firm, companies can effectively manage their intellectual property portfolios and safeguard their innovations. Our comprehensive approach facilitates smooth registration processes and equips clients with strategies to tackle potential infringements and disputes. With our guidance, businesses can focus on what they do best, innovating, while we handle the legal intricacies of IP management. Choose Dreyfus Law Firm to ensure your intellectual property is in expert hands!

 

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The EU AI Act and Its Implications for Global Business

Written by Dreyfus14/10/2024

Rapid artificial intelligence (AI) technology development has created the need for clear and harmonized regulation to ensure ethical use, safety, and innovation. The European Union’s AI Act (EU AI Act) is poised to become the world’s first comprehensive legal framework regulating AI, impacting not only European businesses but global industries operating within or interacting with the EU market. This article delves into the key aspects of the EU AI Act and its far-reaching implications for global business operations.

 

Overview of the EU AI Act

The Scope of the AI Act. The EU AI Act categorizes AI systems into different risk levels—unacceptable, high, limited, low, and minimal—each requiring varying degrees of regulatory scrutiny. The legislation primarily targets high-risk AI systems that significantly impact people’s safety, rights, and freedoms. These include AI applications in healthcare, transportation, and critical infrastructure sectors.

Compliance Requirements for High-Risk AI Systems. Under the AI Act, businesses must adhere to stringent compliance requirements for high-risk AI systems. These compliance requirements include conducting conformity assessments, ensuring robust risk management systems, and maintaining transparency and accountability throughout the AI lifecycle. Companies must also prepare for regular monitoring and audits, which designated authorities across EU member states will enforce.

 

Implications for Global Businesses

Direct Impact on AI Developers and Providers. Any company developing or providing AI systems based within or outside the EU must comply with the EU AI Act if its products are used within the Union. This extraterritorial reach of the regulation means that global businesses, particularly those in tech-heavy industries, must prioritize legal compliance to avoid penalties, including fines of up to 6% of their global annual turnover.

Increased Costs of Compliance and Innovation. The need for AI system conformity assessments, data governance policies, and risk management frameworks can significantly improve operational costs. For non-EU businesses, navigating the complex compliance landscape may require engaging local legal and technical experts, further driving up costs. However, these compliance measures also encourage responsible AI development and consumer trust, potentially opening new markets for companies able to demonstrate adherence to ethical AI standards.

 

Strategic Considerations for Businesses

Risk Mitigation and Liability. Understanding the liability risks associated with AI implementation under the EU AI Act is critical for global businesses. Companies must proactively establish comprehensive risk management processes to mitigate the legal and financial risks tied to AI systems that are deemed high-risk. Compliance can help reduce liability exposure and enhance operational security.

Competitive Advantages of Early Compliance. While compliance with the EU AI Act may initially seem burdensome, businesses that invest in early compliance efforts stand to gain significant competitive advantages. These include improved consumer trust, better market positioning in Europe, and reduced risk of facing regulatory penalties. Additionally, businesses that adhere to the Act’s principles will likely see enhanced brand reputation globally as ethical AI becomes a growing concern for consumers and regulators worldwide.

 

Broader Global Impact of the EU AI Act

Influence on Other Jurisdictions. As the EU AI Act sets a global precedent, other jurisdictions, including the U.S., China, and the UK, are expected to follow suit with their own AI regulations. This cascading effect may lead to the global harmonization of AI laws, pushing businesses to simultaneously adapt their AI strategies in multiple markets.

The Role of AI in International Trade. AI has become integral to various industries, and its regulation will affect international trade agreements, especially those involving digital products and services. Global companies must prepare for AI-related clauses to appear in trade negotiations, with compliance with the EU AI Act becoming a critical element of future international agreements.

 

Conclusion

The EU AI Act represents a landmark regulatory effort that will have significant implications for global businesses. While the compliance requirements are rigorous, they offer opportunities for companies to lead in the AI space by embracing ethical AI practices. The key for businesses is to view this regulatory shift not as a burden but as a pathway to building trust and ensuring sustainable growth in the ever-evolving world of artificial intelligence.

 

Our expertise in intellectual property enables us to guide companies through the regulatory challenges related to artificial intelligence. The European AI Act imposes strict requirements for compliance, transparency, and risk management, particularly for high-risk AI systems. With our deep understanding of intellectual property and emerging technologies, we help our clients navigate this complex framework, protecting their innovations while ensuring they meet the new standards.

 

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Combating Counterfeiting: Organizing European Customs Surveillance

Written by Dreyfus14/10/2024

Counterfeiting represents a major challenge to modern economies. Each year, between four and twenty million counterfeit goods are intercepted by European customs, highlighting the extent of this phenomenon and the crucial importance of customs interventions in the fight against counterfeiting.

Extent of Counterfeiting and its Impacts

Although the collective imagination often associates counterfeiting with luxury products, statistics reveal a more nuanced reality. Toys rank first in the sad ranking of the most counterfeited products, followed by sports articles, empty packaging and labels, then food and beverages, which present significant risks to consumers. Clothing and accessories only come in fifth place. This diversity of products underscores the need for constant vigilance adapted to each category of goods.

Economically, counterfeiting represents a colossal threat, with a market valued at 410 billion euros, or 2.5% of global trade—far surpassing the drug trafficking market valued at 320 billion euros. Within the European Union, counterfeiting is estimated at 119 billion euros and accounts for 5.8% of imports. Beyond the economic impact, counterfeiting also harms the environment and public health, with products often manufactured under deplorable conditions and waste discharged into nature.

Legislation and Customs Actions

In the face of this challenge, the French Customs Code plays a predominant role. Article 414 provides for specific offenses such as smuggling and the importation or exportation of prohibited goods without declaration. These offenses lead to sanctions independent of those for counterfeiting.

The Code also grants customs extensive control powers, allowing them to conduct inspections on public roads, in businesses, and even, under certain conditions, in private homes.

Customs do not just control; they can also detain suspect goods. This detention can be initiated with or without a prior request for intervention by the rights holder. The verification process and the initiation of legal action are governed by strict deadlines (10 days if there is a request for intervention or 4 days without this document), thus providing a quick and effective response to combat counterfeiting.

Cooperation and Responsibilities

Collaboration between customs and rights holders is essential in determining whether goods are counterfeit. The goal is to decide whether to maintain the goods in retention.

However, in the event of seizure of non-counterfeit goods, the rules of liability are clear: customs may be held responsible for their employees’ errors, and rights holders may also be involved, according to applicable national law. This shared responsibility ensures a certain caution in seizure operations.

On a global scale, the fight against counterfeiting is supported by organizations such as the World Customs Organization and Interpol. At the European level, EUIPO, Europol, and OLAF (European Anti-Fraud Office) play a key role. Nationally, customs wield considerable power, often being the first to intercept goods upon their entry into the territory. Again, the cooperation is important.

Perspectives and Evolution

Counterfeiting is inseparable from other forms of criminality, such as drug trafficking and tax fraud, making its combat all the more complex and essential. By strengthening cooperation mechanisms and continuously adapting legislative measures, it is possible to hope for a significant reduction in this scourge. Vigilance remains crucial to protect consumers, support legitimate businesses, and preserve the integrity of global economic markets.

Dreyfus law firm, with its expertise in intellectual property law, is committed to continuing the fight against counterfeiting and contributes every day to stopping infringements on your trademark, designs, as well as domain names…

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Plagiarism of art by fashion: inspiration or violation of intellectual property?

Written by Dreyfus29/03/2023

In a world where the lines between different artistic disciplines are becoming increasingly blurred, fashion designers often draw inspiration from art to bring their collections to life or to promote their brands.

 

This issue echoes the recent dispute between the brand Zadig&Voltaire and artist Julian Charriere over a promotional video for the brand that features a flaming fountain, similar to the one captured by the artist in his “And Beneath it all Flows Liquid Fire” video in 2019.

 

Many fashion designers are inspired by works of art to create their collections and advertising campaigns. However, some of them cross the line and copy the work of established artists almost exactly, without giving them the credit they deserve. This practice is not only ethically questionable, but can can also be harmful to the original artists in terms of violating their intellectual property (“IP”) rights.

 

 

  1. Legal issues of intellectual property in fashion and art

 

Copyrighting protects original works of the mind, whether they are literary, musical, graphic, plastic or photographic creations. Fashion designers may be tempted to take inspiration from a work of art to design a new piece or an advertising campaign, but it is essential to consider the legal issues related to IP.

 

Plagiarism, or mindless copying of a work, is a violation of copyright. In the case of fashion, it can mean using a work of art without permission to create prints, patterns or even the shape of a garment. If the copying is obvious, the original artist can sue for damages.

 

The fine line between fashion and art is even more blurred as many luxury brands have launched their own art foundations such as the Cartier Foundation or the Louis Vuitton Foundation.

 

However, it is important to note that copyright does not protect ideas, only their expression. Thus, taking inspiration from a work of art in order to create a fashion piece is not necessarily illegal, so long as the creation is suitably original and does not directly copy the work in question. Additionally, some artists occasionally can collaborate with fashion designers, such as Louis Vuitton, who recently worked with Japanese artist Yakoi Kusuma to produce a new collection as well as to transform the Louis Vuitton store in Paris, now decorated with a monumental silhouette of the artist.

 

  1. Consequences of intellectual property infringement

 

IP infringement can have negative consequences for artists and the fashion industry.

 

Plagiarism robs original artists of recognition and fair compensation for their work. When a piece of work is copied without permission, the original artist is not credited or paid for their work. This can lead to a loss of income for artists, causing them to abandon their creative work or settle for less than their talent.

 

In addition, intellectual property infringement hinders innovation in the creative industry. When artists are not rewarded for their work, it can discourage innovation and the creation of new works. Companies that copy original works do not need to devote resources to research and development of new ideas, as they can simply copy those of others.

 

Finally, intellectual property infringement can have a negative impact on the brand image of companies that engage in this practice. Consumers are increasingly aware of the importance of ethics and corporate social responsibility. When a company is accused of plagiarism or intellectual property infringement, it can damage its brand image and consumer confidence in the company.

 

In summation, the phenomenon of plagiarism of art by fashion raises complex questions and considerable stakes, both artistically and legally. The line between inspiration and copying can sometimes be unclear, and the fashion industry seems to navigate these murky waters in search of creativity and innovation.

 

While some see this appropriation as a democratization of art and a way to enrich fashion, others see them as a threat to the value and integrity of original works. At a time when legislation is struggling to adapt to these issues, it is the responsibility of fashion designers and consumers to commit to ethical fashion that respects art and its creators.

 

It is critical to continue the dialogue between the different actors involved and to rethink the mechanisms of intellectual property protection to ensure a fair balance between creative freedom and respect for copyright. Creators, as well as artists, can call upon professionals such as Industrial Property Attorneys, with their networks of lawyers specialized in intellectual property, to ensure that no IP rights are infringed upon.

 

 

 

 

 

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.

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.

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What Are The Latest Trends In IT Law And How Can You Leverage Them?

Written by Dreyfus13/03/2023

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

 

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

 

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

 

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

 

 

 

 

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

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How do you protect a trademark in the metaverse?

Written by Dreyfus01/02/2023

As a new technology of the future digital world, the metaverse has become important to society and to such an extent and rapid pace, that many companies are entering this new world and making their goods available there.

There is no official definition of what metaverse is. The vision of the Metaverse is to allow us to build a digital representation of anything in the physical world. Furthermore, this technology can be defined as a virtual world where individuals interact through the use of Avatars.

Although full of opportunities and promises, the metaverse raises some legal questions, especially when it comes to trademark law. And because the metaverse is a combination of new digital technologies , few answers are given by National or European courts.

 

On September 13, 2022, in the webinar “Trademarks and Designs in the metaverse: legal aspects/EUIPO practice” trademarks and designs in the metaverse was discussed.

Lots of companies and individuals have decided to take a step forward by entering the metaverse. The metaverse can be considered an extension of the physical world. Consequently, some companies decide to put their products or services into this new world.

 

What about trademark protection in the metaverse?

Trademark protection in the metaverse begins with the filing of a trademark. To explain this simply, it is at the actual time of filing that protection of a trademark begins.

The choice of wording is therefore essential for the protection of one’s trademark in the metaverse. In fact, the protection goes hand in hand with the list of goods and/or services covered. In this regard, article L.713-1 of the French Intellectual Property Code states that the registration of the trademark confers to its owner a property right in the trademark for the goods and services designated.

However, it can be complicated to register a trademark for the metaverse. In practice, it is indeed difficult to classify goods or services in order to provide proper protection in this new world. The EUIPO, for example, only accepts the registration of goods or services in the metaverse under certain specific classes.

The EUIPO has set out the classes in which individuals/companies can register trademarks in the metaverse. In this respect, an individual wishing to register a trademark for the metaverse will only be able to do so if the registration covers certain classes.
A few examples are outlined here:

For example: class 9 (downloadable virtual goods, i.e., computer programs presenting footwear and clothing for use online in online virtual worlds or collectibles in the form of non-fungible tokens), class 35 (providing an online environment for the exchange of virtual art and virtual tokens), class 36 (financial services including digital tokens) and class 41 (entertainment services, i.e., the provision of virtual environments in which users can interact for recreational, leisure, or entertainment purposes).

In the context of trademark licensing, it is important to ensure that use is authorized or adapted to the virtual world, or, failing that, to ensure future contracts can be adapted accordingly.

One may also wonder what territorial pAll Postsrotection is needed or required in order to protect a trademark in the metaverse. The Internet is by definition free of all borders.

Is a French trademark enough to obtain protection in the metaverse?

No answer has been given by the courts at the moment. However, it can be assumed that the criteria, for determining when a metaverse area/service is directed to a certain audience, would remain the same as for any Web 2 website, such as the proposed language (as an example).

Finally, in order to secure an optimal protection, registering the trademark among decentralized domain names, such as .ETH, has to be foreseen.

National, European and international jurisdictions have understood the importance of the metaverse. As a result, by extending classes, the jurisdictions are allowing the protection of trademarks in this new world.

See also…

Metaverse: is it necessary to register specific trademarks for protection?

♦ Afin d’offrir à nos clients une expertise unique, nécessaire à l’exploitation des actifs immatériels, nous vous tenons informés des enjeux actuels de la propriété intellectuelle et de l’économie numérique à travers les articles rédigés par l’équipe juridique du Cabinet Dreyfus & associés.

♦ 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.

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What are the design issues in the metaverse ?

Written by Dreyfus13/12/2022

the design issues in the metaverseWhen changing Facebook to Meta, Mark Zuckerberg tried to justify Meta as the future. The metaverse is indeed a reality for millions of online players, a place to meet, interact, and create in this new world.

There is no sole definition of what metaverse is. However, it can generally be defined as a 3D immersive world, in which individuals can interact through the use of Avatars.

Metaverse is a promising technology with a possibly bright future. In fact, as an immersive world, users can do everything they do in the real world. Since this new technology is winning over millions of users, scores of industries, and companies are beginning to enter this world where they can extend and offer their products and services.

 

 

 

 

 

 

One of the industries that has benefited the most from this new technology is the luxury industry. During the Covid 19 pandemic businesses were severely disrupted.

The metaverse began to appear as a very attractive alternative for companies to continue to exist and have a presence in the marketplace. Many luxury houses have adopted a presence and entered the metaverse where they are able to offer a full immersion of styles, clothes, accessories and peripherals to Avatars. The industry has even started to conduct fashion shows with this new environment. A Metaverse Fashion Week was even created. Besides, the perk of digital fashion is that it allows to create designs which could not exist in the real world, due to technical constraints.

These digital clothes can be sold as NFTs and they can broaden the public of a luxury house, which until now could only touch the masses through more affordable goods such as perfumes and cosmetics. These houses are able – from now on – to attract them with virtual clothes.

With this change, and with the potential in this new world, there are legal issues arising. In fact, we can confirm that there is most definitely a grey area when it comes to this virtual world, especially due to the fact that rules and legal frameworks have not yet been fully developed and adapted to this world. One could even wonder whether specific legal rules should apply to the metaverse.

These questions are all the more relevant for companies to consider seriously considering that Offices have not yet brought clear and precise responses. The metaverse therefore, remains a grey legal world, where enforcing intellectual property rights is an uphill struggle.

Here, we will focus on the questions connected to protection of designs in the metaverse.

The European Intellectual Property Office (EUIPO) has been looking at the metaverse and the issues it raises. In its webinar of September 13, 2022 “Trademarks and Designs in the metaverse”, the EUIPO raises some legal issues that trademarks and designs are facing in the midst of the metaverse.

 

 

1. The use of designs in the metaverse

 

Registering the feature of a product is all the more important for some individuals or companies. When an individual or company is granted design protection, it obtains a monopoly on the exploitation of the design.

This is explained in Article 19 of the Council Regulation (EC) on Community designs which concludes “a registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes”.

The EUIPO noted that the term “use” is understood in a broad sense. Therefore, it can include the use of a product on the Internet and thus, in the metaverse. This makes sense since the metaverse is a new “market” for business.

 

 

2. The availability of unregistered designs in the metaverse

 

For a design to be protected, it is essential that it meets the condition of novelty.

Under both European and French law, a design is considered to be new if, at the date of filing of the application for registration or at the date of ownership claimed, no design has been disclosed. According to article 11 (2) of the Council Regulation (EC) on Community designs “a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialized in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality”.

 

When a luxury house suggests new designs on the metaverse, is it disclosure ?

From a certain perspective, metaverse is a world without any borders where individuals can have access to a bunch of different goods or services.

Consequently, when a company or an individual publishes or exposes a design in the metaverse, the notion of novelty is undermined. So far, there has been no clear answer concerning this question. This question also induces another one: does the uploading of new creations in the metaverse give rise to unregistered design rights in certain territories, such as the United Kingdom?

 

 

3. Protection of designs in the virtual world

 

The last issue raised by the EUIPO concerns the protection of designs in the virtual world.

In fact, one of issues that may be considered is whether products in the metaverse meet the same definition as a product in the real world.

Article 3 of the Council Regulation (EC) on Community designs enounces that a “product means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs”.

A handicraft item is a product made in one-off pieces or in a small series of pieces. It requires the knowledge and skill of one or more craftsmen.

Therefore, some will argue that a product in the metaverse cannot be considered as a handicraft or industrial product.

The EUIPO’s response on this issue does not provide any clear answer due to the lack of case law on the matter. As a matter of fact, it is difficult to say that digital designs are industrial or handicraft items. Nonetheless, the EUIPO accepts digital designs, which are generally classified in class 14-04 of the Locarno classification (such as “icons (for computers)”). Hence, we could completely envision the extension of this class or alternatively, the possibility to add the virtual version of goods in their traditional class (such as class 2 for clothing).

 

 

 

 

The metaverse is the technology of the moment. However, it raises numerous questions, particularly in relation to designs as to the use of products, their availability and protection within the metaverse. Although the EUIPO gave us some answers as to the use of a product within the metaverse, most of the answers will come with case law.

 

 

SEE ALSO …

♦ https://www.dreyfus.fr/en/2022/03/11/metaverse-is-it-necessary-to-register-specific-trademarks-for-protection/

 

 

 

 

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