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

Written by Dreyfus30/06/2020

The whole world’s been in slow motion since the Covid-19 virus spread. Thus, state governments are doing their best to maintain the continuity of the administration despite the implementation of containment measures,. Since an ordinance of March 16, the offices have decided to extend procedural deadlines that expired during this period of health crisis.

Here’s a list of the provisions that offices have put in place in order to allow better management of procedures related to trademarks, as well as patents.

INPI, The National Institute of Intellectual Property

The INPI decided in its order n°2020-32 of March 16, that the deadlines for proceedings relating to patents, trademarks and designs will be extended to 4 months for procedures concerning patents, trademarks and designs. However, the deadlines for priority for international extensions, for payments for patent and supplementary protection certificate filing, which are subject to supranational provisions, have been excluded.

The order adds that “in the event of failure to comply with a deadline, the health crisis will be taken into account when examining the procedures for appealing for restoration or for a forfeiture statement to the INPI. »

It should be noted that the bill put in place by the government was adopted by Parliament on March 2: the aim is to enable the Government to legislate by ordinance in many areas, including that of intellectual property. This ordinance thus includes provisions concerning the extension of the deadlines stemming from the Intellectual Property Code, including those relating to the opposition procedure.

In accordance with the new order dated March 25 (No. 2020-306), the INPI extended the delay of deadlines for procedures concerning trademark oppositions, trademark renewals or design extensions : it allows to benefit from thecorresponding grace period or for the filing of an administrative or judicial appeal.

In this way, it extends the deadlines which expire between March 12th and June 23rd. The statutory deadline for taking action runs until July 23rd if the initial deadline was set for one month, and until August 23rd if it was for two months or more.

The INPI is already planning to extend its deadlines until July. In the weeks to come, it will be necessary to closely monitor the news from the office.

EUIPO, European Union Intellectual Property Office

The Office had stated in its Decision No. EX-20-3 issued on March 16, that all deadlines expiring between 9 March and 30 April 2020 included, would be automatically extended until May 1st, 2020. Since May 1st is a public holiday, the deadlines were therefore extended until May 4, 2020.

EUIPO subsequently explained its decision on March 19. By the expression “all deadlines”, it meant all procedural deadlines, whether fixed by the Office or of a statutory nature. “They are stipulated directly in the Implementing Regulation,” with the exception of the deadlines relating to matters not covered by certain regulations, such as that on the European Union trademark (2017/1001). It is therefore applicable to all procedures, whether for trademarks, patents, renewals or opposition proceedings.

More recently, on April 29, WIPO’s Executive Director issued the Decision No. EX-20-4, extending all deadlines expiring between May 1st and May 17, to May 18, in order to further support and assist users during the COVID-19 pandemic.

WIPO, the International Intellectual Property Organization

In the opinion (No. 7/2020) issued on March 19, WIPO introduced possible remedies for failure to comply with the deadlines under the Madrid system and modalities for the extension of the deadlines when the national offices are closed.

With regard to the international registration of trademarks, WIPO added that the extension of the deadlines is automatic in the event that an IP office is not open to the public. Therefore, if a deadline for a provisional refusal expires on the day an office is closed, it will be extended on the first day following the opening of the office.

The opinion adds that, with regard to trademarks, applicants may request the continuation of the procedure without having to justify themselves, in particular for all matters relating to an international trademark application, a request for registration, a request for modification of a subsequent designation, etc…

WIPO has also recently announced automatic extensions of the deadlines in cases where a national IP office is closed to the public and in the event of disruption in postal or mail services.

USPTO, the United States Patent and Trademark Office

In a press release of March 16 and 19, USPTO had announced that it was waiving the late fees in certain situations for applicants affected by the coronavirus, as well as the requirement of an original handwritten signature in ink for certain documents.

On April 28, USPTO announced an extension of the deadlines up to May 31, 2020. This means that some actions that were due in this period can be postponed to 1 June. The USPTO gives an extension for certain deadlines between March 27 and April 30. This period runs to 30 days from the original deadline.

In order to obtain the extension, applicants or patentees must “submit a declaration that at least one person responsible for the delay has been affected by the COVID-19 pandemic, due to office closures, financial problems, inaccessibility of records, illness of a family member, or other similar circumstances. »

In other countries of the world

-The Canadian Intellectual Property Office is extending the deadline to July 6th, 2020.

–The German Patent and Trademark Office affirmed in a statement dated May 11 that the extension of the deadlines will be until June 2.

–UKIPO, the United Kingdom Office declared on May 7, 2020 that all deadlines falling on or posterior to March 24, 2020 (being those interrupted days) will be extended to the following interrupted day. The period of interruption will end on July 29th. This extension applies to most deadlines for patents, trademarks, supplementary protection certificates and designs.

–The Benelux Organisation for Intellectual Property is the most rigid office. Indeed, in a press release dated March 16, it discloses that trademark applications referring to coronavirus will be refused registration. However, in a press release of March 20, it revised their position by saying that “the BOIP will not withdraw any application or procedure because a given deadline has not been met. This also applies to opposition proceedings not filed on time or to payments not made on time”. These measures will be applicable until May 20, 2020, at least.

The WIPO website regularly updates information on the provisions adopted by various intellectual property offices in order to keep abreast of the various communications that offices can make around the world. With the introduction of deconfinement measures in some countries, including France, it will be necessary to closely follow the future news.

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

Tracking system, real-time geolocalisation… digital solutions are being developed to facilitate the gradual deconfinement.

Written by Dreyfus29/06/2020

In order to control the coronavirus epidemic, the government plans to create an application called “StopCovid”. Once the Bluetooth function is activated, the application will track who the user has been in contact with in the last 15 minutes and alert them if any of those poeple affirmed to be infected with Covid-19.This method has already been proven effective in some countries, such as China.

Quid juris?

The European Commission has given a favourable opinion on the creation of this application, provided that the data is destroyed once the epidemic is over.

Furthermore, the European Data Protection Supervisor has stated that even in these exceptional circumstances, the controller must guarantee the data protection of the subjects and arrange the least intrusive solutions, by collecting the minimum amount of data.

The CNIL points out that the implementation of such a system requires to be “limited in time” and effectively based on voluntary action and “free and informed consent”. It also recalls the main principles related to the collection of personal data (purpose of processing, transparency, security and confidentiality, proportionality and data minimization).

To be continued! “Stop Covid” is only in the early stages of development; it will take several weeks for the application to be perfected.

Instagram and social networks : what rights do users have in their posted photos?

Written by Dreyfus18/06/2020

With the development of social networks, creativity on Internet expanded to a point that it became almost imposible for an artist or a brandto not have their Instagram or Facebook page. The presence on social networks has become an almost essential prerequisite for the reputation of an artist.

The Terms of use of Instagram, especially popular with photographers for exhibiting their work, provide that users remain as owners of the content they post on the network. However, in several recent cases, photographers have noted their work shared or reposted without being able to oppose.

Therefore, an essential question arises :Do we keep the ownership of the photos we post on social networks ?This question seems to animate the debate between different countries.Inthe US the answer looks negative, while, on the other hand, France seems to be more protective.

Precedents on Instagram : The Richard Prince Case

In 2015, Richard Prince, stylist, painter and photographer chose to expose screenshots of the social network Instagram with different pictures without obteining the author’s agreement. He earned more than 100 000 dollars from the sale of these artworks, and the authors of the original pictures didn’t receive any money for this commercial exploitation.

In the United States, this practice falls under the so-called « Fair use » exceptions which alllow an artist to work from an existing picture and to transform it without infringing the copyrights.

A circumvention of the law: the Mashable case

More recently, the american information website Mashable wanted to publish an article related to the work of ten women photographers. One of them, Stephanie Sinclair, denied Mashable the right of using her artwork. The site therefore bypassed this refusal by using the Instagram network function “embed”, allowing to share content without having to download it. Thus, the image used is only stored on the social network and not on the server of the Mashable website, directly.

The New York Southern District Court, in a judgment given on April 13, 2020, declared that the author of the photographs posted on a public Instagram account could not oppose that an online media integrates them in his articles. In addition, the judge based his decision on the Terms of use of the social network which provide that users grant for each posted image “a non-exclusive right, free of rights, transferable, sublicensable and worldwide“. According to the judge, the integration of an image on a third-party site therefore constitutes a sub-license right.

It is considerated that when a user posts a photo on a public Instagram account, they give their agreement for all use via the « embed » function.

Following this decision, the photographer Stephanie Sinclair said she would appeal.

What about French law on social networks ?

In France, this statement may be attenuated by articles L.131-1and L.131-3of the Intellectual Property Codewhich prohibit the “global transfer of future works” and provide that “the transmission of the rights of the author is subject to the condition that each of the rights transferred is the subject of a separate mention in the deed of transfer and that the area of exploitation of the rights transferred is defined as to its extent and destination, as to the place and as to the duration”.

Based on this, the Paris Tribunal de Grande Instance (High Court of Paris) has already judged unfair, in the Twitter (2018) and Facebook (2019) cases, clauses similar to that invoked by the American judge concerning Instagram.

In short, while the struggle of artists in the United States to assert their rights on social networks and particularly on Instagram, seems laborious, it should be noted that French law is more protective of authors and artists. To be continued

Dreyfus can assist you in the protection of your rights on social networks in all countries of the world. Do not hesitate to contact us.

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

Written by Dreyfus12/06/2020

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

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

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

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

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

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

World Anti-Counterfeiting Day: issues and challenges

Written by Dreyfus10/06/2020

In honor of the 22nd World Anti-Counterfeiting Day, Dreyfus Law Firm attended a Webinar organized by INDICAM(Istituto di Centromarca per la lotta alla contraffazione) involving directors of various anti-counterfeiting organizations: GACG, EUIPO, UNIFAB, INDICAM, ANDEMAand ACG.

Anti-counterfeiting issues are always of paramount importance. In fact, approximately 5% of imports into the European Union are counterfeit products. The counterfeiting market is very lucrative for counterfeiters: it requires a very low investment for a very high profit. In addition, the risks associated with it are lower.

During the health crisis linked to the Covid19, the sale of counterfeit products increased significantly: masks, hydro-alcoholic gel, medical equipment; and all this to the detriment of the population’s health. This phenomenon was particularly observed on Marketplace platforms, which were forced to invest impressive means to suppress fraudulent advertisements.

Consequently, the question arises: if the platforms are capable of actively combating the sale of counterfeit medical products in times of crisis, why cannot the same be said of other acts of counterfeiting? Cooperation with the platforms should therefore be initiated to this end. European associations are closely following the progress of the Digital Single Act, which should represent an additional opportunity in the protection of rights.

Moreover, during the health crisis, the fight against counterfeiting has mainly been focused on medical products and devices. As a result, many infringements went undetected. For example, only products arriving by air were checked during this period and not products imported via cargo ships. To make things worse, in Belgium, for example, all the police officers whose mission was usually to combat counterfeiting were requisitioned in order to enforce anti-Covid-19 measures.

With the coronavirus, the fight against counterfeiting must therefore be stepped up. One of the challenges for the years to come is to provide consumers with the best possible information. Delphine Safarti-Sobreira, Director of UNIFAB (Union des Fabricants), said that awareness campaigns were already being launched through various media, including television broadcasts and YouTube. The next step will be to convince the government to introduce compulsory education in schools on this subject.

Three elements are essential in order to fight effectively against counterfeiting: an effective law, more information for consumers and an unwavering determination to continue the fight.

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

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

Written by Dreyfus08/06/2020

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

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

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

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

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

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

A senator is worried about parliamentarians IT security

Written by Dreyfus18/05/2020

Jérôme Bascher, the republican Senator of Oise (LR party) expressed his concerns in the report to the Senate No. 82 (2019-2020), on October 22, 2019 : ″Parliamentarians IT security is close to zero″

It is primarily a matter of distinguishing between institutional functions and the IT practices of parliamentarians themselves. While the former are relatively well protected, since they benefit from assistance such as that provided by the Anssi (national agency for the security of information systems), the latter are a source of great IT insecurity.

IT insecurity factors related to the workforce

1. Having its own IT equipment

The workforce is a key element in IT security. Each parliamentarian is free to have their own equipment (Huawei or Apple telephone), yetinsecurity can arise from their exchanges and from the means of communication they use. In fact, mobile instant messaging applications that are likely to be used, go through the GAFA. They are hosted by servers of Amazon web service and not by OVH, for example, which could potentially be an efficient French server. This could be countered by the argument that Amazon Web service is also based in France,

2. Not enough awareness among senators

While the Parliament benefits from the Trojan horse attacks detecting systems on institutional sites, the level of IT security among parliamentarians is still very low.

In 2018, the Senate’s IT security systems intercepted more than 30,000 high-risk contents. Senator Bascher assures that security services experience at least 2 or 3 cyber attacks per week.

Only wiling senators are aware of the importance of IT security. Senator Bascher pointed out : “I’ve never had a virus in my life, because I’m careful,”. Among the risks that public authorities may incur, appears the so called “facing”, that is,the creation of a fake Internet page that could be an apology for terrorism, that French channels Public Sénat and LCP-AN, whose credits are included in public authorities mission, can suffer from. It is a bit reminiscent of the past attack against the channel TV5 Monde a few years ago, which has since had to make considerable investment efforts to pay for its protection.

In addition, an increaseof requests that makethe site inaccessible – hasto be considered,

Cyber attacks against public authorities are now undeniable, as evidenced by the cyber attacks that hit Estonia in 2007, the German Bundestag in 2015 and, to a lesser extent, the Senate, in 2011.

Implementation of solutionsto reinforce the parliamentarians IT security

1. The current IT protection system

Senator Bascher points out that, 10% of the IT budget in France is spentonsecurity. A program administeredby the Ministry of Defence consisted in recruiting cyber-combatants, however there is a protection imbalance since the Elysée had its own network, which is not the case for the Parliament. Senator Bascher claims that the budget designated to cybersecurity should be increased.

2. A mechanism to be reinforced

The primary objective would be to improve the parliamentarians equipment and make them more aware of IT risks.

According to the Senator, it would also be necessary to reinforce the resources of the Anssi, which is currently the only entity that deals with all the organs of power.

Public authorities are therefore at the heart of the strategic and decision-making challenges of Western democracies, as a result of which, they became the main target of IT attacks. This is all the more true in the election period, as demonstrated by the 2016 American presidential election. It’s time to strengthen the parliamentarians IT protection.

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

Written by Dreyfus12/05/2020

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

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

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

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

UDRP procedure. The bad faith complainant: when the chances of success are so low that the applicant should not have taken action

Written by Dreyfus11/05/2020

Source: WIPO, Arbitration and Mediation Center, Jan. 30, 2020, No. D2019-2937, Scalpers Fashion, S.L. c/ Dreamissary Hostmaster

The Spanish company Scalpers Fashion is active in the fashion industry. It is the owner of numerous trademarks incorporating the “Scalpers” sign, including the European Union trademark “Scalpers” No. 6748578, registered on September 29, 2008. The company has filed a UDRP complaint before the WIPO Arbitration and Mediation Center against the domain name <scalpers.com>, claiming that it infringes its rights. The domain name was registered on September 15, 1997, by the Respondent Dreamissary Hostmaster, who is in fact a natural person, a U.S. citizen and the holder of a substantial number of domain names featuring dictionary words. The domain name at issue was exploited to generate pay-per-click revenues by leading to sponsored links referring to the sale of tickets. At the time the complaint was filed, the domain name in question resolved to a parking page.

The Complainant submits that the Respondent intends to take undue advantage of its reputation in fashion and to disrupt its business. In addition, the Complainant submits that the large sums proposed by the Respondent in various attempts t negotiate are evidence of his bad faith. Indeed, the Respondent allegedly offered initially $150,000 and then $195,000. Finally, the Complainant considers that the Respondent’s bad faith is manifested by the registration of more than 100 domain names, for him to be able to resell them for a profit.

The Respondent contends that he registered and used the domain name <scalpers.com> because of the definition of the word “scalper”: a person who buys tickets at the normal price and then resells them at a high price when demand is high and available seats are scarce. In addition, the latter requires the expert to conclude to reverse domain name hijacking.

The Complainant’s position was not followed by the expert. The expert considers that the domain name was neither registered nor used in bad faith. Indeed, the Respondent had registered the domain name more than 10 years before the Complainant’s alleged date of first use of the “Scalpers” trademark. In such circumstances, there was no basis to conclude that the Respondent targeted the Complainant’s mark, which was not in existence at the time the Respondent registered the disputed domain name. As regards the use of ???, the expert also concluded that there was no bad faith, since the Respondent had used the domain name for the meaning of the word “scalpers”. The expert ruling on the case indicates that the complaint should be dismissed. In addition, he stated that the complaint was filed in bad faith by the Complainant, and was intended to deprive the Respondent of ownership of his domain name. Indeed, several facts contribute to the expert’s position: the domain name was registered by the Respondent long before the Complainant owned a trademark right in the Scalpers sign; the UDRP Complaint was filed after two unsuccessful attempts to purchase the domain name from the Respondent; and the Respondent’s counsel notified the Complainant that the complaint should be withdrawn due to the manifest impossibility of establishing bad faith.

The Complainant clearly should have known that the complaint could not succeed. Thus, it should be borne in mind that the UDRP procedure is not a one-way tool. The aggrieved Respondent may attempt to reverse the proceedings to obtain a decision against the Complainant. Here, the lack of chance of success was particularly blatant, as the domain name predates the trademark rights of Scalpers Fashion.

The rise of phishing in the midst of the coronavirus crisis

Written by Dreyfus07/05/2020

Source: Bank Info Security, Feb. 11, 2020

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

Intellectual Property