Opposition is a crucial procedure to ensure the protection of trademarks. It is a way to solve potential disputes quickly, simply and with reasonable costs and time limits.
Following the transposition of the « Trademark reform Package » into French law, modifications were made to the opposition procedure, ensuring right holders a broader protection against the infringement of their rights.
The first major change is the expansion of prior rights that can serve as the basis for the opposition before the French Trademark office. So far, it has only been possible to file an opposition on the basis of a prior trademark application, a prior registered or well-known trademark in the sense of article 6bis of the Paris Convention; an appellation of origin or a protected geographical indication; the name, the reputation or the image of a territorial collectivity.
From now on, article L712-4 of the French Intellectual Property Code, modified by the ordinance of November 13, 2019, allows for the opposition of the registration of a trademark on the basis of :
This new legal provision also makes it possible for the opponent to invoke, if need be, several rights to form the opposition.
The second important transformation concerns the opposition process.
As in the former procedure, the opponent has a 2 month deadline from the date of publication of the trademark application to file an opposition. However, they now have an additional month to present their observation as well as the documents necessary to prove the existence and the scope of their rights. It will be qualified, firstly, as a “formal” opposition, as in the procedure before the EUIPO, until the statement of case on the merits is filed and, secondly, in the event that the Parties have not settled their dispute amicably in the meantime.
The adversarial phase of the opposition, during which the Parties exchange documents and their arguments in writing, subsequently begins. The parties may request an oral hearing at this time. However, no new pleas or documents may be presented during the hearing.
Depending on the number of exchanges between the Parties, this first phase of investigation may last anywhere between 6 months and a year. At the end of this period, the director of the French office must render a decision within 3 months.
The changes made by the transposition of the European directive into French law provide greater protection for rights holders. This new procedure is more precise because it has been limited by the stipulation of short and non-extendable deadlines. Furthermore, it makes it possible to base the opposition on a larger number of prior rights, thus putting the protection of holders at the forefront of this procedure.
This new opposition system applies to all trademark applications filed from December 11, 2019.
Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world and accompany you in your opposition proceedings. Do not hesitate to contact us.
With the appearance of the blockchain, monitoring the life cycle of the creation of your Intellectual Property by setting a specific registration date and ensuring the traceability of its evolution is a lot simpler. Opening the account is easy, as is backing up and viewing the data embedded in it.
The Blockchain is a database (a growing list of records, called ‘blocks’) that are linked using cryptography. Each block contains a cryptographic hash of the previous block, a timestamp and transaction data.
It is a reliable and transparent registry which everyone can access and contains the history of exchanges between users. However, once recorded, the data in any given block cannot be altered retroactively without alteration of all subsequent blocks, which requires consensus of the network operators. Material can be saved on this decentralized and secure system for an unlimited period of time.
The blockchain is of great practical use in the traceability of intellectual property rights.
On the one hand, it is low cost and speedy. The decrease in costs can be explained by the fact of intermediaries are bypassed. As for its speed, all you need to do is open an account and download the document that includes the data concerning creation of your Intellectual Property.
On the other hand, all the steps concerning the creation of your Intellectual Property should be recorded ; whether it is the date of the first application for registration, of the first use in trade or an assignment etc. Similarly, operations such as mergers or acquisitions are more easily recorded via the database.
The document containing information about your creation of the Intellectual Property is not stored in the blockchain, only its digital footprint. Accordingly, it is impossible for third parties to access its content, you are the only one having access to it. You can therefore be confident that your data will be safe.
Thanks to the blockchain, proof of creation is made easier and the procedure made faster, the Blockchain giving certainty of the time and date. It also makes it possible to trace the exploitation of digital works on the web.
Nevertheless, to acquire incontestable force of proof, it is necessary to have the evidence concerned established by a bailiff. The bailiff is able to establish an indisputable proof of origin and anteriority before a judge.
The blockchain is a register which cannot be falsified, providing proof of the authenticity of the creation of your Intellectual Property and thus limiting the possibilities of counterfeiting. This system indicates who is the author of the creation and therefore is a significant piece of evidence to establish the actual date of the creation.
The blockchain is a register which cannot be falsified, providing proof of the authenticity of the creation of your Intellectual Property and thus limiting the possibilities of counterfeiting. This system indicates who is the author of the creation and therefore is a significant piece of evidence to establish the actual date of the creation.
The blockchain has many advantages with regard to intellectual property rights. Whether it is security, transparency, lower cost, speed, ease of proof, confidentiality or even the certainty of authenticity : it has multiple strengths which are favourable to the protection of your creations.
With the service of the DreyfusBlockchain , we offer simple, effective and secure protection for your creations.
Meet Nathalie Dreyfus at the World Intellectual Property Forum in Grand Hyatt Taipei, Taiwan, from November 6 to 8, 2019.
This year’s conference will be on the following theme: “IP as a Powerhouse for Innovation and Economic Growth“. This three-day forum will focus on recent developments in intellectual property and their synchronization with business objectives.
Nathalie Dreyfus will be speaking on November 8 from 1:30 pm to 3 pm on the following panel “How can emerging technologies be adopted in the current intellectual property law system? ».
As a reminder, the World Intellectual Property Forum is an opportunity to hear from intellectual property experts who will share the latest trends, ideas and strategies in patenting, litigation, trademarks and other current issues related to intellectual property. This forum also offers participants many opportunities to meet visionary entrepreneurs and industry experts from around the world.
More information: https://www.worldipforum.com/
Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.
The Federal Bar Association, in collaboration with the French American Bar Association, is organizing the 2019 Fashion Law and Innovation Conference. This event will take place on Friday, October 4 at 8:30am at the Maison du Barreau in Paris.
Programming will feature a notable group of law experts and industry representatives who will discuss recent developments and current challenges from both the French and US perspective.
Nathalie Dreyfus will speak at 9am for a conference about The Five Senses: The growth of non-traditional brands in the fashion industry.
For more information and registration, please click here.
*Note that this conference is organized in collaboration with the French American Bar Association so it will be in English.
Information
Where: Maison du Barreau, 2 Rue de Harlay, 75001 Paris
When: October 4th, 8 :30am – 12 :30pm
On April 23rd 2019, the Russian Supreme Court adopted Resolution No. 10/2019, which clarified the provisions of Part 4 of the Russian Civil Code relating to intellectual property rights, and therefore to domain names, which are the subject of this article.
Among the clarifications provided, the Russian Supreme Court decided in particular that the commercial courts had jurisdiction to rule on disputes relating to distinctive signs (with the exception of appellations of origin, however), whether the party concerned is an individual person, a private entrepreneur or a company. Previously, the commercial courts and the general courts had jurisdiction based on the identity of the holders of intellectual property rights.
Furthermore, it is increasingly difficult to obtain information on the identity of Russian domain name registrants.
Indeed, although it is possible to make a request to registrars to disclose the identity of domain name registrants, obtaining this information has become increasingly complicated without legal action since many registrars refuse to disclose this information by taking refuge behind applicable legislation or requesting additional documents.
Resolution No. 10/2019 specifies that this information may be obtained through a court by filing a request for disclosure of personal data in legal proceedings. However, this is complicated when the identity of the domain name registrants is unknown. One solution would be to take legal action against registrars and then file a request for disclosure of personal data. It would be then possible to substitute the defendant.
In addition, with regard to infringement of a trademark by registration and use of a domain name, the Russian Supreme Court ruled that trademark infringement is characterized by the use of a domain name for goods and services similar to those designated by the trademark in question, and in some cases still, by registering the domain name only. Consideration should be given to the purpose behind registering the domain name to judge whether there is trademark infringement.
Finally, the Russian Supreme Court provides various additional clarifications. For example, a monetary claim may be filed against the current user of a domain name. In addition, it is possible to request provisional measures in respect of domain names. Finally, in cases concerning domain names, evidence consisting of printed screenshots of websites clearly showing i) the address of the websites in question, ii) the time at which the screenshots were taken and iii) whether they have been verified by the parties to the proceedings is admissible.
These clarifications are welcome. We will keep you informed of any further developments in this regard. Dreyfus is a specialist in domain name protection and defense strategy and can find solutions adapted to your needs. Do not hesitate to contact us.
The WHOIS protocol now appears to be outdated due to the evolution of technical requirements in the digital era. Indeed, this tool, provided by registrars, is inter alia not capable of working with either encoding or with non-latin characters. Consequently, since 2015, ICANN in collaboration with the Internet Engineering Task Force (IEFT) has been working on the replacement of WHOIS through the RDAP (Registration Data Access Protocol), in compliance with the Temporary Specifications and the GDPR.
Like WHOIS, the RDAP provides registration data, although its implementation is different since it allows standardization, security data access and enquire response formats. As a result, it will be possible to search all the registration data available from various registrars, unlike WHOIS that is limited to the database being searched. It also takes into account the internationalisation of domain names.
The possibility of granting different accesses to the registration data is being considered. For instance, access for anonymous users could be limited whereas authenticated users could have full access to all data.
While some elements still have to be worked out, registrars are required to implement the RDAP service prior to August 26, 2019.
WIPO, Arbitration and Mediation Centre, March 11, 2019, No. D2019-0035, Pharnext versus Wang Bo, Xiang Rong (Shanghai) Sheng Wu Ke Ji You Xian Gong Si
On numerous occasions, we have noticed that even those complainants who are represented in UDRP proceedings, could have been better informed about the nature and extent of the rights on which the respondent may rely. Detailed research is an essential prerequisite to filing a complaint, otherwise, the success of the complaint is jeopardised.
On January 7, 2019, the French company Pharnext, whose main activity is in the biopharmaceutical industry, filed a UDRP complaint seeking the transfer of the name <pharnex.com>, which had been registered by a Chinese company.
The complainant contended that it had trademark rights in PHARNEXT through ownership of its “PHARNEXT” logo protected by an international trademark since 2013 and used on its website located at www.pharnext.com.
The respondent had registered the domain name <pharnex.com> in October 2017. At the time the complaint was submitted, the disputed name connected to a website in both English and Chinese indicating that PHARNEX is a platform to help medical companies set up operations in China.
The complainant claimed that the respondent must have had the “PHARNEXT” trademark in mind when registering the domain name, because in May 2017, its partnership with Tasly, one of the most recognised pharmaceutical companies in China, had been announced. The complainant also said there is no plausible explanation for the Respondent’s registration of the Domain Name. It also claimed to have done searches which revealed no evidence that the respondent had any right or legitimate interest in the name.
However, the respondent, Xian Rong (Shanghai), firstly, proved that it had a licence on the “PHARNEXT” trademark for financial services, and secondly pointed to its active use of the trademark since December 2017. Although the ownership of a trademark does not automatically confer a legitimate interest or rights on the respondent, the complainant bears the burden of proof throughout the complaint.
In the present case, the expert was “convinced that the PHARNEXT trademark was registered in good faith”. She further noted that the domain name was used, before the filing of the complaint, in connection with a genuine offer of goods and services. Hence, though the domain name was confusingly similar to the complainant’s trademark, the complaint could not be accepted.
The expert stressed that “her findings are made in the limited boundaries of the UDRP; any matters outside the scope of the Policy may be handled by the parties in a relevant court of law.. Quite simply, the complainant had not proved that the disputed domain name had been registered and used in bad faith.
This decision once again highlights that it is essential to carry out research on all aspects of the proposed complaint; including the respondent and the sign from which the disputed domain name has been derived. For example, researching the “PHARNEX” sign on the Chinese databases would have made the complainant aware of the existence of the word mark “PHARNEX” on which the respondent relied. This would have alerted the complainant to a potential weakness in its case and enabled it to consider alternative strategies. It is essential to think of every possible defense a respondent may raise and be prepared to counter any such defense.
Companies which specialise in the audiovisual sector often require protection for their program titles through trademark law. If granted, this protection obviously offers considerable advantages for the company, but it is necessary to take into consideration some limits to it.
First, the term of protection of a title by trademark law. Trademark law initially grants protection for 10 years, but this term is renewable indefinitely (Art L712-1 CPI). Thus, provided the owner submits a renewal application within the time limit, the trademark can be protected indefinitely. Copyright, on the other hand, can grant protection up to 70 years after the death of the author of the work, but the ‘guarantees’ of protection may be less obvious than trademark law because there is no register of copyright.
On the other hand, while copyright imposes a condition of originality (Art.L711-2 CPI), trademark law requires a distinctive character (Art L711-2 CPI). Thus, if the title of TV show or audiovisual program is distinctive and acts as an indicator of origin, it may be protected. In contrast, for copyright, it is necessary to prove originality, which is more difficult to prove. Since copyright is not subject to registration, the condition of originality must always be demonstrated in the course of a dispute. Thus, copyright protection is never certain.
A title may be protected by trademark law if it does not directly designate the goods and services for which registration is sought. Thus, if the title is arbitrary, there is nothing to prevent the title from benefiting from this protection. Finally, it should be borne in mind that trademark protection is not an impediment to copyright protection; it is thus possible to combine both protections.
Some limitations to the protection of audiovisual programs’ titles by trademark law should nevertheless be noted. The protection conferred by trademark law grants a monopoly on the use of the registered terms (Art L-713-1 CPI) and therefore the right to oppose use by third parties. However, in order to do so, it is necessary to prove :
First, it must be proven that the use of the title by a third party was “as a trademark”. To illustrate this concept, we can refer to the judgment rendered about the series “Le Bureau des Légendes”. In this case, the Paris Court of First Instance (TGI) dismissed the infringement action brought against a book, using the title, devoted to the study of the series. The purpose here was not to offer goods and services designated in the registration, but simply to refer to the series as such (TGI Paris, réf., April 16, 2018, n°18/53176). Use as a trademark would have been in the context of the sale of derivative products in connection with the series.
Secondly, in order to oppose the use of a sign, the owner must provide proof of commercial use. This means that it is not sufficient to prove merely a reference to the title. The use must take place in the course of business and not only for illustrative purposes. There must be a genuine commercial link between the sign and the use made by a third party.
Finally, the risk of confusion in the public mind must be shown. The use of the sign must raise doubts as to the origin of the goods and services offered. A trademark is intended to guarantee in particular the origin of the goods and service. Thus, the use of the sign by a third party must infringe this guarantee of origin, severing the direct link between the sign and its owner.
For instance, the judges considered that there was no likelihood of confusion between Canal+’s trademark “LE ZAPPING” and the trademark “LE Z#PPING DE LA TELE”. In view of the evidence provided, and the overall impression, there was no likelihood of confusion. The phonetic and visual differences of the two signs were sufficient to eliminate this risk (CA Versailles, 12th ch., July 3, 2018, n°18/02091).
However, the principle of speciality of the trademark may be used against the owner of a trademark. Since a trademark is registered for specific categories of goods or services, the owner can only oppose the use of the sign for identical or similar goods or services. Thus, if a sign is used for a completely different area of activities, the owner will not be able to oppose this use of the sign. This was the case for Canal +, concerning its mark “LE ZAPPING”. The notoriety of this brand was certainly recognized by the Court, but only in the field of television broadcasts. Thus, it was not possible for Canal + to oppose the filing of a similar trademark for other categories of goods and services than those designated in registration of the trademark “LE ZAPPING”.
Trademark law grants additional protection to a title of an audiovisual program. It complements the protection that copyright can grant, in a more certain way through the requirement of registration. The point of filing a sign representing the title of an audiovisual work is therefore to acquire double protection, on both grounds. Admittedly, the conditions to be met in order to be able to bring an infringement action under trademark law may be difficult to achieve. Nevertheless, trademark law offers more means of action, and therefore of compensation for damage in the event of unjustified use by third parties.
Dreyfus law firm, expert in trademark law, will assist you in the management of your trademark portfolio.
Protecting authors’ rights is a necessity in the digital age, as information flows more and more easily. That is why the European Commission reported in September 2017 that it was necessary to tackle illegal online content, while the French legislature has already transposed several European directives and has modified its literary and artistic property law.
In this respect, a great deal has been written by the Directive 2019/790 (EU), adopted on 26 March 2019 by the European Parliament. Among its 30 articles, we count in particular the establishment of a related right for press publishers (Article 15) and an obligation for platforms to control hosted content (Article 17). These provisions have been fiercely debated, and have led to multiple lobbying campaigns by authors and performers, newspaper publishers, and web giants (Google, Facebook and YouTube). In the present article, we will examine the changes made by the Directive.
New exceptions to copyright
There are currently many exceptions to copyright. In that respect, the Directive introduces three new exceptions to author rights and related rights in the digital environment. These exceptions and limitations are:
– Text and data mining for the purpose of scientific research when carried out by research organisations and cultural heritage institutions. However, rightholders are allowed to put in place technical measures aimed at ensuring the security and integrity of the networks and databases where their works are hosted. They may also expressly reserve their rights “in an appropriate manner”, for instance by machine-readable means, such as a digital watermark (Articles 3 and 4);
– The use of works in digital learning activities including distance learning. States may, however, provide a fair compensation for rightholders (Article 5);
– The copying by cultural institutions, for conservation purposes, of works which are part of their permanent collections (Article 6).
French law already provides similar exceptions in the article L. 122-53°) e) 8°) and 10°) of the French Intellectual Property Code, but this is not necessarily the case for all member States.
Under both French law and the Directive, these exceptions must be strictly interpreted and require that the work has been lawfully published.. All the conditions required by law must be met in order to benefit from these exceptions without having to obtain the author’s prior consent..
Furthermore, these new dispositions do not modify existing limitations and exceptions, such as parody or short quotation, which are retained (Article 17 (7) of the Directive). However, Member States will now have to specify that reproductions of visual works of art in the public domain cannot be protected by copyright unless the reproduction itself is original enough to be protected (Article 14). In France, this clarification is a mere application of copyright: a work in the public domain is no longer protected by author rights. Consequently, it can be freely reproduced without authorization. By contrast, if the production is original, it becomes a work on its own right and, as such, can be protected.
Licenses: out-of-commerce works, audiovisual video-on-demand works and collective management
The article 8 of the Directive authorizes collective management organisations to conclude non-exclusive licenses for non-commercial purposes with cultural heritage institutions for exploiting (reproducing, distributing, etc.) out-of-commerce work which are in their permanent collections.
According to Article 8 (5) of the Directive, a work is out-of-commerce: “(…) when it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public.”
Such licenses do not require prior mandate from the rightholder, but the collective management organization must be sufficiently representative of rightholders. The owner may, however, exclude at any time his works from this licensing mechanism, whether this exclusion is general or specific. In addition, the moral right to authorship of the work must be respected by indicating the author’s name, “unless this turns out to be impossible” (Article 8(2)).
Therefore, there is a switch from a prior authorization regime to an implied consent regime, and this will require greater vigilance on the part of authors and rightholders.
In France, article L. 134-4 of the French Intellectual Property Code already gives authors of out-of-commerce books the right to oppose to their exploitation.
Article 12 of the Directive provides that States may authorize collective management organizations to extend collective licenses to rightholders who have not authorized the organization to represent them.
Here again, the organization must be sufficiently representative of rightholders, and they in turn may exclude their works at any time from this licensing mechanism.
Furthermore, article 13 of the Directive provides for a negotiation mechanism in which “an impartial body or of mediators” will be in charge, in order to assist in the conclusion of licensing agreements “making available audiovisual works on video-on-demand services”.
The related right of press publishers
Article 15 of the Directive creates a related right for newspaper publishers established in a Member State. They can now be remunerated for use of their content by information service providers, in particular news aggregators. This right is subject to strict conditions of application and does not apply to :
– Private and non-commercial uses;
– Hyperlinks;
– Use of isolated words or very short extracts of a press publication;
– Works published for the first time before the Directive’s entry into force.
Moreover, this right is only granted for two years from January 1st of the year following the date on which that press publication is published.
This related right is a right of its own, and thus publishers no longer have to demonstrate they indeed own the economic rights transferred to them by the author of the work.
Part of the remuneration paid by service providers to newspaper publishers must be paid to the authors. However, the Directive does not specify how this payment must be carried out. In addition, authors can exploit their works independently of press publication.
Online content-sharing service are fully responsible (Article 17)
In France, platform operators enjoy the protective status of article 6-I-2 of the law “for confidence in the digital economy” n° 2004-575 of 21 June 2004. They are not
liable if they “promptly” remove the content at stake.
Platforms will now be liable if they communicate to the public without authorization works protected by copyright. However, they will be exempt from liability if they have:
– “Made best efforts to obtain an authorization” from rightholders;
– “Made best efforts” to ensure the unavailability of the work and
– Acted “ expeditiously” to disable access to the work or remove it from their websites after receiving a « sufficiently substantiated notice” of the rightholders.
Compliance with these requirements will be examined with regard to the type, audience, and size of the service, as well as the type of works downloaded. Article 17 (8) specifies that platforms are not subject to any general monitoring obligation, but its paragraph 4 (b) requires that they provide their “best efforts”, “in accordance with high industry standards of professional diligence”, to ensure the unavailability of protected works, which seems to be a sneaky way to require automatic content filtering.
Platforms that have been in service for less than three years, and which have an annual turnover of less than €10 million, will benefit from a less restrictive liability regime, as they will only have to make their best efforts to obtain an authorization and will have to act promptly upon receipt of a “sufficiently substantiated notice” from a right holder.
Furthermore, all platforms will be required to put in place an “effective and expeditious complaint and redress mechanism” so that users can challenge blocking or removal of a work posted online. States must also provide for alternative dispute resolution procedures.
Finally, it should be noted that authors and performers will now have to be remunerated in an “appropriate and proportionate” manner (Article 18). They must receive, at least once a year, information on the exploitation of their works (transparency obligation provided for in article 19). Contracts which are already concluded should be adapted to provide for an “additional, appropriate and fair remuneration” (article 20). Article 22 of the Directive also gives authors a right to revoke a license or a transfer of rights. These measures already exist in French law, but the Directive will harmonize European law.
The next step is the transposition of these provisions, which must be done by 21 June 2021 at the latest. France, which supports this text, should proceed with this transposition next summer. A proposal for a law on related rights with regard to press articles is already under consideration.
These developments are to be monitored…
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