The <.eu> extension against Brexit

Written by Dreyfus06/05/2020

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

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

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

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

As non-compliant domain names will be withdrawn, it is appropriate to carry out a thorough analysis of registrants’ domain name portfolios to see whether any of their registrations is at risk.

Registries and artificial intelligence

Written by Dreyfus05/05/2020

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

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

The liberalization of prices for domain names in <.com>: a possible increase from2021

Written by Dreyfus04/05/2020

The gTLD <.com> apparently occupies more than 40% of the domain name market share, according to statistics provided by the site www.domainnamestat.com. These results confirm that it is an unavoidable extension, especially because the <.com>, which addresses the whole world, is a strong rallying sign.

However, the negotiations in progress between ICANN and the <.com> registry, VeriSign, could lead to a modification of the approval on this extension, so that the <.com>’s price would increase by possibly 7% per year, from 2021 to 2024. In return for this right, VeriSign would pay $4 million to ICANN.

This negotiation is notably allowed by an amendment accepted by the American Department of Commerce, datedOctober 26, 2018, by which it was indicated that “in view of the more dynamic market of domain names, the Department considers it advisable to modify the cooperation agreement in order to provide flexibility in the prices related to the registration and renewal of domain names of the .com registry”.

If the price of <.com> increases, it will be relevant to see whether other TLDs recover some of its market shares, especially among the new gTLDs. If it seems unlikely that companies will abandon the names in <.com> that they already hold, newcomers to the market could possibly prefer other extensions.

Association between blockchain and domain names

Written by Dreyfus24/04/2020

Domain names appear to be a fertile ground for innovators related to blockchain technology.

Domain names and blockchain meet around the launch of the new extension “.luxe”, which contrary to what one might think was not created for the luxury industry (which already has its extension “.luxury” launched in 2014). The Ethereum foundation, whose aim is to promote blockchain technology, has entered into a partnership with the Minds + Machines (MMX) registry to create a new use for domain names, making “.luxe” the equivalent for cryptocurrency of what a classic extension represents for the IP address.

This association thus makes the IP addresses for the “.luxe” extension more intelligible.

Indeed, holders can link their domain name composed of the “.luxe” extension to their Ethereum account to replace their 40 characters identification number and make it easier to remember and use.

Provisional French patent applications for a simplified registration are now possible

Written by Dreyfus20/04/2020

With the publication of Decree No. 2020-15 adopted for the application of the PACTE law, it is now possible to file provisional patent applications as of July 1, 2020.

What is a Provisional Patent Application ?

A provisional application is a patent application whose registration procedure is simplified since certain filing requirements may be deferred in time. It is a procedure which permits the setting of an earlier filing date.

What is the Objective of a Provisional Application ?

This procedure is intended to allow companies to file patent applications before the French National Institute of Intellectual Property (“INPI”) in a simpler and less costly way. Therefore, it aims to facilitate access to IP protection, especially for start-ups and SMEs. The main objective is to provide a more flexible procedure for registration of patents.

How to File a Provisional Application?

With this Decree, it is possible to file a provisional patent application and defer the submission of the claims, the technical content of the invention and a copy of the prior filings.

On the other hand, the applicant is obliged, when filing the application, to indicate explicitly that this is a provisional application.

After Filing the Provisional Application

Within twelve months of the filing date of the provisional application, the applicant may request that his provisional application be transformed into a “normal” patent application (by completing the above-mentioned requirements that he had previously deferred) or that his application be converted into a utility certificate.

At the end of this period, the provisional patent application is withdrawn. Ultimately, this procedure allows applicants to gain additional time before deciding on the future of their applications.

Payment of the Filing Fees

The applicant must pay the filing fee within one month of the filing date. However, the applicant may pay the fee for the search report within one month of making a request to turn the patent application into a normal one.

This less stringent registration procedure will allow applicants to apply for patents in a more flexible way, under certain conditions. It will render it possible to fix the date of creation of an invention and then to determine what action will be taken later on with regard to its protection.

The reform of the tax regime for patentable products: “the French-style IP BOX“

Written by Dreyfus17/04/2020

The 2019 Finance Act harmonizes French and European tax rules in order to best promote the investment of patentable creations and inventions. We are talking about the French IP Box.

Thus, the taxation regime for the products of patents and similar industrial property rights is brought into line with OECD provisions.

While Irelandwas the first country to set up this system (1973), other countries followed suit, such as Belgium, China and, more recently, the United Kingdom (2013).

The principle allows companies to benefit from a tax advantage on their intellectual property assets with a tax rate that amount to 10% instead of 33% previously.

Eligible assets

The assets that are eligible for this plan are:

Patents and patentable inventions
Certificates of utility
Plant variety certificates
Copyrighted software

To be eligible, inventions must have been filed. Taking into account that the regime is open to software protected by copyright. It should also be added that this plan is applicable to annual net income calculated after deducting research and development expenses. The aim is to encourage research and development efforts in relation to the overall effect, i.e. in relation to all the investments that the company can make.

To be eligible for the reduction rate, the company will have to provide several elementsto establish its file such as:

Eligible assets
The rule for determining the protection of the proportion of net income taxable at a reduced rate
The method for allocating research and development expenses.

This makes it possible to monitor the company’s expenses and, above all, to justify the request for a reduction in the tax rate. It will be necessary to submit this file to the tax authorities under penalty of a 5% penalty.

The tax rate

The regime consists in deducting first the proceeds of sale and concession as well as research and development expenses and then, in a second step, calculating from this deduction the net result in order to obtain the net result of the assets on the basis of the Nexus ratio.

What is the Nexus ratio?

The idea is to limit “the preferential regime in proportion to the part of the expenditure relating to intellectual property. »

This is how the OECD defines this ratio. This is intended to sanction patents acquired and research and development costs subcontracted to affiliated companies. It should be noted that research and development costs in third party companies will not penalize the Nexus ratio. This ratio will be calculated on a cumulative expenditure basis.

Some consider this ratio a “not irrefutable presumption.”

Conclusion

The advantage of this regime is that it will encourage companies to their research and development in France and produce quality intellectual property assets that generate income.

Webinar April 7, 2020: Internet and Compliance (part 1)

Written by Dreyfus15/04/2020

Webinar : Internet and Compliance (part 1)

The rules of the game have changed,

strategies to protect the company and its leaders.

The legal, regulatory and fiscal constraints (resulting in particular from the Sapin 2 Law, the LCEN or the EU
Directive of 23 October 2019 on the protection of whistleblowers) that weigh on companies are increasingly rigorous. Companies must implement a governance policy capable of minimizing their responsibility and exposure to their customers, shareholders and the competent authorities.

Among the aspects to be considered in the context of this compliance are domain names. While they are an undeniable corporate asset, they are also vectors of risk: phishing, fraud against the president, fake sites, identity theft, forged e-mails, and so on.

In the event of a breach, they can also damage the reputation of the company and its managers, resulting in a loss of customers. It is therefore imperative to put in place the appropriate strategies to anticipate the dangers, react effectively in the event of an attack and ultimately protect the company.

The current situation linked to the coronavirus epidemic is increasing the risks, with the number of frauds increasing considerably while companies are disorganized and vulnerable.

We propose to analyse these issues with you, sharing our experience. In particular, we will be able to answer the following questions:

– What are the obligations of companies with regard to compliance?

– What are the risks to be anticipated?

– What strategies should be implemented to do so?

– What are the control points?

– What levers should be implemented to react effectively in the event of a proven breach?

Proceedings for invalidity and revocation before the INPI

Written by Dreyfus14/04/2020

As of April 1, 2020, it is now possible to bring actions for cancellation on grounds of invalidity and revocation on grounds of nonuse of trademarks at the French trademark Office –INPI.

Among the new developments resulting from the implementation of European Directive 2015/2436 of December 16, 2015, (known as the “Trademark reform Package”) into French law, the new procedures for the cancellation on grounds of invalidity and revocation on grounds of nonuse of trademarks are those that will undoubtedly change the landscape of intellectual property law in France.

The European directive placed an obligation on member states to create an administrative procedure to bring invalidity and revocation proceedings. The aim of this measure being to facilitate challenges to registrations in order to declutter the trademark register.

In France, since April 1, 2020, these actions can be brought before the French Trademark Office INPI, bringing French trademark law increasingly closer to European law. Until now, only the Court was able to hear these cases. From now on, the competence is shared between some specialized courts and the INPI.

How is this to be done?

The division of competences is set out in Article L.716-5 of the French Intellectual Property Code. With the exception of applications for invalidity based on a prior Copyright, Design right or Personality right (which must be brought before a competent judicial Court), INPI has exclusive jurisdiction for applications for invalidity where no other legal issue arises based on an absolute ground, and applications for invalidity (again where no other legal issue arises) based on the following relative grounds :

– A trademark right

– A corporate name

– An appellation of origin or geographical indication

– The name of a local authority or public entity.

The judicial court has exclusive jurisdiction over counterclaims for invalidity or revocation of rights, applications for invalidity or revocation of rights on any grounds whatsoever where the application is connected with another action falling within its jurisdiction and, finally, applications for invalidity of rights brought as a principal claim on the following relative grounds:

– Copyright

– Design

– Personality rights.

In order to avoid any delaying measures, it is provided that the principle of “res judicata” will apply to such decisions of the Director of INPI and of the judicial court.

The French legislator has gone beyond the provisions of the European Directive, which only requires Member States to confer jurisdiction on the Trademark Offices with respect to certain grounds of invalidity (invalidity based on absolute grounds or on an earlier similar or identical trademark).

Which trademark registration can be challenged?

An application for invalidity or revocation may be filed against a registered French trademark or on the French part of an international trademark.

What is the procedure before the INPI?

Like the new trademark opposition procedure, the invalidity or revocation procedure follows the principle of a fair hearing. Following the examination phase, which starts from the day on which the action was filed, and as soon as the action is considered admissible, the owner has a period of 2 months to submit his observations in the case of an invalidity action or to provide proof of use in a revocation action.

The applicant has then one month to file a response. The parties may make up to three contradictory written exchanges at the end of which, and where appropriate, an oral presentation of the observations may be requested by either party but also requested by the INPI.

Depending on the number of exchanges carried out, this investigation phase may last between two and six months. The INPI then has a maximum period of three months to render its decision.

Thus, the total duration of the procedure should last a maximum of nine months from the date of notification of the action to the adverse party, which is much faster than the legal action hitherto open to the applicant.

A stay of proceedings may be requested jointly by the parties for a period of four months, renewable twice. It may also be suspended at the initiative of the INPI, in particular pending the receipt of information and elements likely to have an impact on the outcome of the dispute or the situation of the parties.

Finally, unlike court proceedings, the applicant need not demonstrate a specific legal interest. This will therefore allow a greater number of actions and give rise to new strategies for the release of rights.

In conclusion, the introduction of these new administrative procedures by the implementation of the “Trademark reform Package” in France provides a fast and inexpensive procedure, against a registered nuisance trademark avoiding the much more restrictive judicial process.

Domain name registration by an unauthorized distributor: importance of the trademark holder’s behavior in assessing good faith

Written by Dreyfus10/04/2020

The French company Adventure is specialized in the sale of paramotors. It owns the French semi-figurative trademark including the terms “adventure” and “paramotor” as well as the domain names “paramoteur.com” and “adventure-paramotors.com”.

The company has filed a UDRP complaint before the WIPO Arbitration and Mediation Center against the domain name <adventureparamotorsusa.com>, claiming that it infringes its rights.

The domain name was registered on March 14, 2018, by respondent Mike Robinson who acted as the Complainant’s authorized reseller for the United States. The domain name offered the Complainant’s products and services for sale. Due to the low level of sales generated by the Respondent in the United States, the Complainant decided to terminate the dealership agreement and instructed the Respondent to stop using the domain name <adventureparamotorsusa.com>.

The dispute between the parties arises as a result of the Respondent’s refusal to comply with this request. Indeed, the latter is ready to close the website on the condition that the complainant pays him $10,000, a sum that would represent the investment made by the Respondent for the construction of the website.

The French company maintains that the website associated with the disputed domain name was created by the Respondent without the prior express authorization of the Complainant.

The Complainant’s position is not supported by the expert, who considers that it fails to demonstrate that the Respondent registered and used the domain name in bad faith. The expert states: “the domain name was registered on March 14, 2018, the month the parties entered into their commercial agreement. It is also the month when the parties met to discuss the agreement (…). The panel assumes that the parties must have discussed during that March 2018 meeting the means by which the Respondent planned to promote the Complainant’s products in the United States (…). After all, the plaintiff must have known that the defendant would have an online presence and, usually trademark owners are concerned about whether these marketing elements (…) are in line with the image of the trademark. Similarly, the expert notes that “in none of the exchanges (…) between the parties during the term of the agreement did the Complainant argue about the registration of the domain name by the Respondent”.

The various exchanges between the protagonists show that the Complainant’s only reproach to the Respondent is that the latter continued using the domain name after the termination of the Concession Agreement, and not the registration of the domain name per se. Therefore, the Complainant does not prove in any way that the domain name was registered in bad faith. According to the expert and in view of the content of the exchanges between the parties, the Respondent did register the domain name in good faith for the purpose of promoting and selling the Complainant’s products under its trade agreement.

The expert ruling on the case concludes that the complaint should be dismissed.

In addition, he also states that the complaint was filed in bad faith by the Complainant, seeking to deprive the Respondent of ownership of its domain name.

Indeed, the UDRP procedure is not a tool for deliberately depriving a respondent of a domain name in circumstances that are outside the policy of the procedure.

In regards to the facts of the case, the Complainant clearly should have known that its complaint could not succeed since the respondent had registered the domain name in good faith.

Thus, great care must be taken with regard to the portfolio of domain names related to the company name or trademarks, as these are valuable assets. Drawing up a restrictive naming charter makes it possible to prevent as far as possible any dispute regarding the ownership of names that may arise with business partners.

Dreyfus firm, an expert in trademark law, can help you with the management of your domain names and trademarks portfolios.

UDRP Procedure: abuse of right or, when the complaint is brought in bad faith

Written by Dreyfus09/04/2020

Advice Group is an Italian company founded in 2006 and specialized in marketing. It is based in Turin but has offices in Rome, Bari and subsidiaries in Bulgaria, Kosovo, Portugal, Colombia and Peru.

Having noted the registration of the domain name <advicegroup.com> by a third party, the company turns to the WIPO Arbitration and Mediation Center for its transfer. The domain name was reserved in 2014 by Michele Dionia of Macrosten LTD, located in Cyprus. The domain name resolves to a page of commercial links and suggests that the name may be for sale (Internet users can make an offer).

The Respondent did not respond to the complaint.

The expert acknowledges the likelihood of confusion between the disputed domain name and the applicant’s Italian semi-figurative trademark, “A Advice Progressive Marketing Thinking”.

However, he decides not to rule on the issue of legitimate interest, referring to his observations on the issue of bad faith. Nevertheless, he makes several observations on the legitimate interest, in favor of the Respondent: the terms that make up the domain name are generic and the Respondent did not make active use of the name, he simply let the registrar promote its services and included a message advising Internet users to contact the registrant for the purchase of the name.

The expert also obviously did some research on his part, which he is not bound to do, since he notes that there are many companies called Advice Group throughout the world.

Concerning bad faith, the expert insists on the fact that at the time of the registration of the name, the applicant had not yet registered a trademark. The filing took place nine months after the reservation of the name in question and the obtaining of rights, two years later! Nothing suggests that the Respondent had the Complainant in mind when registering this domain name consisting of dictionary terms. Moreover, the fact that Internet users could propose the purchase of the name does not mean that the aim of Macrosten LTD was to resell it at a high price to Advice Group.

Thus, not only is the complaint rejected, but the expert also decides to qualify the complaint as a case of “reverse domain name hijacking”, i.e. it is considered that the complaint was filed with the sole purpose of depriving the domain name holder of the domain name. Here, the Complainant accused the Respondent of cybersquatting even though no evidence to that effect was provided and the name, consisting of generic terms, predates the Complainant’s trademark registration.

It should be remembered that proving the bad faith of a registrant when the domain name consists of generic terms is difficult. It is essential to show that the registrant had the applicant’s trademark in mind. In the present case, it can be assumed that even if the Complainant’s trademark had been older, this would not have been sufficient to ensure the success of the complaint. The setting up of a site similar to that of the Complainant or for the same activities, or contact made by the registrant are elements that make possible to constitute a relevant case . Here, the Complainant had no evidence to justify his position.

Dreyfus firm, an expert in trademark law, can help you by offering you unique online trademark management services.

Intellectual Property