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Intellectual Property

International Designs: China joins the Hague Agreement and WIPO

Written by Dreyfus16/05/2022

In a major development for the global Intellectual Property ecosystem, China joined the Hague System for the International Registration of Industrial Designs on 5 February 2022. This accession will enter into force on 5 May 2022. Following Belarus and Jamaica, the world’s second largest economy has just joined this Union which aims to facilitate the international registration of designs.

 

 

Joining a system to facilitate access to design protection

 

The Hague System was set up to facilitate the protection of industrial designs internationally, through a simplified filing system with a single office: The World Intellectual Property Organization (WIPO). Currently, 76 contracting parties are members of the system, bringing together 93 countries, including France, the European Union, the US, but also many countries in Africa, Asia and Eastern Europe. Given the importance of the appearance of a product, many countries have ratified the Hague Agreement in recent years. China has become the 77th contracting party to the Agreement.

Registering designs with WIPO allows them to be protected in the chosen countries – provided they have actually joined the Hague system – by paying a fee for each requested country. It is therefore not, strictly speaking, an international protection, as each title remains valid only in the concerned territory. Similarly, all acts relating to the protection of the design (registration, renewal) will be carried out in a single procedure.

 

 

The consequences of such accession

 

From now on, all Chinese designers will be able to benefit from the international design system. It is faster and less costly, and limits formalities by providing for a single filing covering up to 100 designs. As for foreign designers, they will have an easier access to the Chinese market, the world’s largest design application market. In 2020, the Chinese Intellectual Property Office received applications containing some 770,362 designs, which represents about 55% of global design applications. By comparison, there were “only” 113,196 EUIPO design filings.

However, the sole registration of a design with WIPO does not guarantee its protection in all the countries requested. WIPO then notifies the offices of all the designated States for an examination specific to each legislation. It is therefore necessary to pay particular attention to the conditions for protection. For example, in France: novelty, specific character and visibility of the design!

In order to file an application for design protection, French legislation provides for a grace period of 12 months following the first disclosure of the design. China, on the other hand, requires absolute novelty. It will therefore be necessary to pay attention to the specific protection conditions in certain countries in order to optimize the protection of a design internationally.

 

China’s accession to the Hague Agreement is therefore a real step forward in the homogenization of design registration. China has thus become the 77th contracting party to the Hague Agreement and gives hope that other highly innovative States will soon join in.

 

 

See also…

♦International designs: why has Belarus ratified the Hague Agreement?

♦International designs: South Korea ratifies the Hague Agreement

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Trademark Modernization Act

Written by Dreyfus20/04/2022

Drapeau USTrademark Modernization Act: new fast and efficient procedures to challenge non-used U.S. registered trademarks.

The United States Trademark system is based on use. This means that U.S. trademark holders are required to use their trademarks in relation to the goods and services designated in the trademark registration.

Contrary to the EU Trademark system, this use requirement applies both before and after the registration of U.S. trademarks. The U.S. system requires trademarks to be used before their actual filing. As regards foreign trademark registrations, an intent to use the trademark in the U.S is required.

The U.S. system traditionally provides two cancellation procedures to challenge non-used trademarks: the cancellation procedure based on ‘abandonment’ and the cancellation procedure based on ‘non-use’. While the former procedure requires a lack of use and a lack of intent to re-use it, the latter requires an asserted non-use within 5 years of its registration.

 

These two cancellation procedures still apply today.

However, the problem is that they are relatively expensive, time-consuming and not necessarily effective. For trademark holders, it is fairly easy to win these procedures as they simply need to show their intention to start or to resume the use of their trademarks.

Nonetheless, the Trademark Modernization Act changed this system.

 

The Trademark Modernization Act came into effect on December 18, 2020 and has an important impact on U.S. trademark owners and future applicants. It regards both national (U.S.) trademarks and international registered trademarks designating the United States.

This act adds two new procedures regarding non-used U.S. trademarks.

 

Expungement petition

A first important new procedure is the so-called ex parte expungement petition.

What?

The ex parte expungement petition is a new and relatively simple procedure to cancel U.S. registered trademarks for lack of use. It regards national and international trademarks (designating the U.S.) that have never been used in the U.S. in commerce and/or in connection with the goods and/or services after their registration.

The petition can be filed by anyone – contrary to traditional cancellation proceedings – and does not require a lack of intent to resume use.

When?

Until February 27, 2023, the petition can be filed against any non-used U.S. trademark that is older than 3 years.

After this date, the expungement petition will only be opened within 3 to 10 years after the registration of the non-used trademark in question.

Consequence?

The trademark holder has three months following the action to provide proof of use. The burden of proof, which is strictly interpreted, is thus put entirely on the latter. In case of insufficient proof of use, the trademark registration will be partly/fully cancelled.

 

Reexamination petition

A second important new procedure is the so-called ex parte reexamination petition.

What?

This procedure makes it possible to obtain a reexamination of trademarks registered via a national or international trademark filing (designating the U.S.) that have not been used in commerce or in connection with goods and services on a certain date. This petition can also be filed by anyone.

When the underlying application was initially filed based on use of the trademark in commerce, the relevant date will be the filing date of the application.

When the underlying application was filed with an intent-to-use basis, the relevant date will be the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired.

When?

The reexamination petition can only be filed within 5 years of the registration of the trademark.

Consequence?

The trademark holder will need to provide sufficient proof of use for all of the challenged goods and services. Should the trademark holder fail to do so, the trademark registration would risk cancellation.

 

(Dis)advantages?

Firstly, these new procedures make it possible to challenge non-used U.S. registered trademarks more quickly and efficiently. Contrary to the traditional cancellation procedure, these new procedures do not require the element of abandonment. It only requires non-use. The fact that a trademark holder has the intent to resume use is irrelevant in this regard.

Secondly, this new procedure makes it easier to get rid of ‘dead wood’ (non-used trademarks), and consequently, to register (non-used) trademarks faster and cheaper. Before the Trademark Modernization Act, it was generally burdensome to apply for a trademark registration when an older similar/identical non-used trademark prevented the application. In this context, cancellation procedures could take several years and bring forth substantial costs.

Thanks to the new expungement and reexamination procedures, it is more flexible and less time-consuming (it doesn’t require briefs, motions, etc.) to act against non-used trademarks and to try to register a non-used trademark yourself at a later stage.

Moreover, the new procedures require U.S. trademark holders to be (more) careful. They need to really use their trademarks and they should constantly keep evidence to prove, when needed, the actual use of trademarks in the U.S., in relation to goods and services, before and after the registration. The less evidence of use, the higher the risk of losing a U.S. trademark, and the easier it becomes for competitors to register similar and even identical U.S. trademarks.

 

The new procedures make it possible to challenge non-used U.S. registered trademarks more quickly and efficiently.

Therefore, we recommend you to audit your trademark rights in the United States, in order to avoid the risk of cancellation or reexamination.

As regards your trademark registrations that are currently under review, we invite you to contact us so that we can discuss and develop the best strategy to adapt your registrations to this new regulation.

We can also accompany you in the assessment of your trademarks in order to identify the products and/or services that would be likely to weaken them.

 

See also…

♦ Keeping your registration alive

♦Expungement or reexamination forms

 

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How could Louis Vuitton, a well-known brand, fail to prevent the registration of a competing trademark?

Written by Dreyfus04/04/2022

On November 2, 2020 Louis Vuitton Malletier filed an opposition against the application for registration of the figurative mark “LOVES VITTORIO” designating the same goods in classes 25 and 26, on the basis of Article 8(1)(b) of the European Union Trade Mark Regulation (EUTR). The Office rejected the opposition on the grounds that the similarity between the earlier sign and the contested sign was slight, and thus not sufficient enough to create a likelihood of confusion on the part of consumers with an average level of attention. The opponent invoked article 8, paragraph 5, of the EUTR concerning the reputation of the trademark. However, due to a lack of evidence the judges rejected the complaint without examination of its merits.

 

1. Assessment of the likelihood of confusion in light of the overall impression given by the signs

 

Since the “SABEL BV v. Puma AG” judgment handed down on November 11, 1997 by the  Court of Justice of the European Communities, a new approach to the assessment of the similarity between two signs has been put forward. This approach is more global, notably by studying the three following criteria: visual aspect, aural aspect and conceptual aspect. As a result, the Office conducts a step-by-step analysis of these criteria between the earlier mark and the application for registration of the contested mark.

First of all, on the visual aspect, the Office found a very low degree of similarity insofar as the two signs “have in common only the letter L” and “partially coincide in the stylization of the two letters”. In addition, although the stylization and colours used in the two signs are the same, consumers will perceive these elements as being merely decorative. The judges especially note a difference between the two signs by the addition of the words “LOVES” and “VITTORIO” and the letter “N” in the contested sign.

Likewise, in terms of aural similarity, the judges found only a slight degree of similarity in the pronunciation of the letter “L”. Finally, the Office stated that the two signs are conceptually different.

Thus, the Office concludes that the few similarities between the two signs are not sufficient to cause a likelihood of confusion for the consumer with an average level of attention and that they will distinguish the origin and the source of each sign. Moreover, the relevant public will perceive the sign as a whole, in particular by the addition of the terms “LOVES” and “VITTORIO” as well as the letters “L” and “N”, and will not limit itself to the same stylisation.

However, it must be noted that there is a visual similarity that could lead the relevant public not to perceive the difference between the letters “LV” and “LN” in a clear and precise manner, especially since the added term is “VITTORIO”.

Moreover, in view of the identical goods covered by the two signs, it seems somewhat surprising that the judges did not take this into account, given that according to the “Canon Kabushiki Kaisha and Metro-Goldwyn-Mayer Inc.” judgment handed down on September 29, 1998 by the Court of Justice of the European Communities, a low degree of similarity between the signs can be compensated by a high degree of similarity between the designated goods or services.

 

2. The unfortunate exclusion of the reputation of the earlier mark

 

At first glance, this decision may seem surprising in the sense that the earlier mark “LV” is a mark that supposedly enjoys a strong reputation.

Indeed, this reputation could probably have led the judges to grant the opposition request to the application for the registration of the contested mark, if the latter ” unduly [took] advantage of the distinctive character”; “or the reputation of the earlier mark”; “or [was] detrimental to them”.

However, this exclusion of the reputation of the mark is fully justified insofar as the Office renders its decision by limiting itself to the evidence and arguments provided by the opponent. However, the opponent did not provide evidence of the mark’s reputation, in accordance with Article 7(2)(f) of the European Trade Mark Delegated Regulation

 

It is therefore essential before the filing of any opposition to analyse the similarity between the signs and the goods and services between your trademark and the disputed trademark application, and particularly to provide all relevant evidence demonstrating the intensive use of the trademark or its reputation.

This decision highlights the importance of the evidence provided during a procedure relating to the relative grounds for refusal of registration of a trademark application, evidence that could undoubtedly have allowed a different turn of events.

 

 

See also…

 

♦The current reputation of the trademark is not sufficient to prove bad faith registration of an old domain name

♦Why is the well-knownness of an earlier trademark not enough to qualify bad faith?

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Legal Watch : THE UDRP PROCEDURE

Written by Dreyfus22/03/2022

CYBERSQUATTINGThe UDRP PROCEDURE is designed to deal with cases of abusive cybersquatting.

Since the implementation of the General Data Protection Regulation and, more generally, when domain names are registered anonymously, it is often difficult to identify the enemy that we intend to strike.

The issue can be solved through filing a UDRP complaint. This is what happened to the US company Capital Distribution Consulting Inc. As the owner of the semi-figurative trademark Royal dragon superior vodka 5X distilled, the company filed a complaint against the anonymously registered domain name <royaldragonvodka.com>.

Once the procedure was initiated, the identity of the registrant was revealed. The latter was a certain Mr. X, who was an officer of Horizons Group (London) in the United Kingdom and the owner of the UK trademark Royal dragon vodka.

 

 

In fact, it turned out that both parties obtained their trademarks through a transfer carried out by Dragon Spirits Limited in Hong Kong, of which Mr. Bharwani was one of the shareholders.
This information gave rise to further exchanges between the parties, each accusing the other of having obtained the trademark unlawfully. In particular, the complainant argued that the transfer to the defendant had taken place after the liquidation of the transferee.

The facts reported in this decision are particularly complex and all-encompassing, which indicates that the UDRP is not the appropriate forum for this kind of litigation.
The expert reported that the complainant filed an additional response, which is not provided for in the Regulation, after the defendant’s response and then a second response 9 days later. This response contained 15 annexes, including a sales agreement, court orders, share transfers, a declaration relating to the liquidation procedure, etc.

The expert decided not to accept this response and consequently not to consider the defendant’s request to reply in case these submissions were accepted.
The expert pointed out that this case does not concern a simple case of cybersquatting but rather a competition matter, involving trademarks being registered around the world.

He noted that trademark rectification proceedings based on competition grounds have been granted or are still pending in different jurisdictions. Therefore, the domain name in question is fully in line with this broader dispute. The expert recalled that the Guiding Principles of the UDRP are not designed to settle all kinds of disputes that would have any link with domain names. On the contrary, the Guidelines establish an inexpensive and streamlined administrative procedure being limited to ‘abusive cybersquatting’ cases.
This decision serves as a reminder that it is essential to obtain as much information as possible about the disputed domain name that forms the subject of a procedure. For relatively old names such as <royaldragonvodka.com> being registered in 2011, valuable information can be found through consulting the Whois history of the domain name.

 

 

WIPO, Arbitration and Mediation Center, Case No. D2021-2871, Nov. 24, 2021, Capital Distribution Holding Inc. v. Hiro Bharwani, Horizons Group (London) Ltd.

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Can the French public be advertised for the sale of non-prescription drugs on the Internet?

Written by Dreyfus21/03/2022

Stockage médicaments pour préparation de commande en ligneIn France, the online sale of non-prescription drugs is strictly regulated, for public health considerations. Thus, some advertisements are prohibited, including paid referencing on the Internet.

In a dispute opposing a Dutch company to French pharmacists and e-pharmacists, the Paris Court of Appeal ruled, on September 17, 2021, that the Holland based seller who advertised his products on French soil, as well as on the Internet did not, in doing so, carry out acts of unfair competition.

 

In 2015, shop-pharmacie.fr, an online sales site for non-prescription drugs administered by a Dutch company, launched a large-scale advertising campaign on French soil. Millions of flyers were thus included in postal packages sent by major e-commerce players such as Zalando and La Redoute. The Dutch company also carried out a paid referencing strategy on the Internet, targeting the French audience.

This campaign, which French companies could not in any case have carried out, appeared excessive and even unfair for some of the associations representing the profession. The Union des groupements de pharmaciens (the Union of pharmacists’ consortium) and the Association française des pharmaciens en ligne (the online pharmacists Association) thus sought to have this campaign qualified as an act of unfair competition, basing their request on legal provisions of the French Public Health Code.

The Paris Commercial Court granted this request but the Dutch company appealed this ruling. The Paris Court of Appeal then referred the matter to the Court of Justice of the European Union. The question raised was whether France could apply to e-pharmacies established in another EU Member State the same limitations it imposed on French e-pharmacists in regards with the promotion of their business and products on its territory.

 

Greater interests of the Internal Market and rejection of the French protectionism

Can European regulations, in particular Article 34 TFEU and the provisions of Directive 2001/83, allow an EU Member State to impose on pharmacists, who are nationals of another EU Member State, rules derived from Articles R.4235-22 and R.4235-64 of the Public Health and good practices Code issued by the public authority of the Member State?

The Court of Justice of the European Union answered this question in its October 1st 2020 decision C-649/18 by the negative. This legal and political decision relied namely on the fundamental notion of the European internal market.

This decision brought the protectionism of the French provisions to a standstill but it was initiated in 2016 by the French Competition Authority which at the time stated that the French legislation introduced “additional constraints that appear to be disproportionate for the intended purpose of public health protection” (French Competition Authority, 20th April 2016, notice n°16-A-09 §91). In 2019, another notice further supported this opinion and stated that online sale was “obstructed in its development by excessive constraints that limit the development of players established in France compared to their European counterparts” (French Competition Authority, 4th April 2019, notice n°19-A-08).

Thus, the European justice system decided to mitigate the implementation of the French legal limitations in order to protect the Internal Market.

 

Possibility of limiting advertising on French territory through targeted legal provisions

The Court of Justice of the European Union has established a first principle whereby a Member State can impose limitations on advertising if its legislation is strictly circumscribed. The Paris Court of Appeal followed this clarification in the dispute between French pharmacists and the Dutch e-pharmacy and ruled that the provisions invoked from the French Public Health Code were not specific enough. More precisely, they did not solely target drugs, but referred to the general term of “pharmaceutical products”.

The door is therefore left open for the French legislator to specify its legal provisions relating to the framework of pharmaceutical drugs online advertising.

 

Paid referencing on the Internet in principle possible for companies established in another Member State of the European Union

In order to prevent the over-consumption of pharmaceutical drugs, French law prohibits French e-pharmacies from carrying out paid referencing campaigns in the digital space, particularly on search engines and price comparators.

In this case, the Court of Justice of the European Union stated that such referencing is in principle possible, unless it is limited by a measure that is necessary and proportionate to the purpose of safeguarding public health. Therefore, the general rule is that referencing is possible, unless the opposing Member State provides a targeted, proportionate and necessary legal rule.

Yet, such legislation does not exist in France. Moreover, the provisions of the Public Health Code that have been included in the debate seem inadequate for e-commerce. Indeed, e-commerce has its own constraints, namely its universal, instantaneous and continuous access via the Internet. Consequently, it seems very difficult to provide a sufficiently concrete and specific framework for the practice of paid referencing on the Internet for this type of activity.

 

To sum up, French e-pharmacists and e-pharmacists located in other EU Member States are not on an equal footing regarding advertisements carried out in France.

This case provided the Paris Court of Appeal the opportunity to reaffirm the right to paid referencing by stating that the decree of December 1st 2016 “relating to the technical rules applicable to e-commerce websites for pharmaceutical drugs ” and relating in particular to the prohibition on referencing in search engines or price comparators in return for payment, was unenforceable. Furthermore, the French Council of State had annulled this decree on March 17, 2021.

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LEGAL WATCH : THE NAME PARISTECH.ORG

Written by Dreyfus18/03/2022

The name < PARISTECH.ORG >, operated by Parisian entrepreneurs, would not infringe Paritech’s rights.

At the end of the year 2021, a surprising UDRP decision was issued. It concerned a complaint filed against the domain name < paristech.org > that was registered by an anonymous registrant in 2017. The complaint was filed by the French ParisTech Foundation («ParisTech») who is known for its higher education services primarily in the fields of science and technology,

ParisTech notably owns two French Paristech trademarks, registered in 1999 and 2010 and subsequently renewed, as well as the international trademark “Paris Institute of science and technology Paristech” registered in 2010 and renewed in 2020. It also owns the <paristech.fr> domain name, registered in 2004.
The disputed domain name was used to disseminate French articles on a variety of topics, most of which related to technology and innovation. Before filing a complaint, the complainant attempted to contact the registrant at the address mentioned on its website, but without success.

 

After the complaint had been filed, the defendant indicated that he was open to find an amicable agreement with the complainant. Although it led to the suspension of the proceedings, the negotiations – whereof the content has not been reported – were not successful. Consequently, the proceedings resumed. The defendant submitted a late response to the complaint, which the expert decided not to accept, based on the consideration that it would not have changed the outcome of the case anyway.
In his analysis, the expert acknowledges that the domain name is identical to the complainant’s prior Paristech trademarks.

However, as far as the legitimate interest is concerned, his position may seem unexpected since he decided not to rule on the matter.

He noted that the website included articles on various topics that mostly related to technology and innovation. The site incorporates a «Paris Tech» logo at the top of the page and at the bottom, a reference to the city of Paris and a postal code.

He noted that the «Paristech» website is managed by two Parisian entrepreneurs who want to keep track of technological developments.

The only method of contact is an email address. Nonetheless, the complainant demonstrated that this email address does not work.

The expert further noted that the legal notices only contained the contact details of the OVH host and that the contact details did not correspond to those provided by the registration office.
However, he noted that there is no evidence to suggest that the purpose of the defendant was to target the complainant’s trademark. The “Paris Tech” logo on the site is different from that of the complainant. In addition, the expert stated that the content presented on <paristech.org> and <paristech.fr> are different.

He explained that «Paristech» can easily be understood as “Paris Technology” referring to the content of the site.

Based on these facts, the expert considered that the complainant failed to prove the defendant’s bad faith and referred to his comments on this point.

He considered that the defendant could have known about the Paristech trademark when he registered the domain name since the complainant’s trademark appears to be known in France in connection with its research education services and that the website is operated by Parisian entrepreneurs, where the complainant is based.

Nevertheless, he noted that the site was non-commercial, relating to technology and innovation, and did not refer to the complainant’s field of activity, namely education.

Moreover, the expert noted that the complainant did not provide proof that the registrant had proposed the domain name for sale before the start of the proceedings, nor that he would have obtained a financial gain by making use of this domain name through taking advantage of the risk of confusion. Hence, the domain name registration does not constitute an abusive reproduction of third-party trademarks.

He therefore rejected the complaint, stating that the choice to hide his contact information on the Whois file and to provide on his website a contact email address that does not work is not sufficient to conclude bad faith registration.
This decision may seem surprising given the complainant’s reputation among the French speaking and international public.

The domain name is strictly identical to the earlier trademark and reproduces part of the complainant’s legal name. The website is operated in French. However, the complainant is located in France where it enjoys a certain reputation.

The legitimacy of the site may seem questionable since no legal notice is inserted and the contact address is false. The defendant does not claim trademark rights or a legal name «Paristech».
The website’s topics are similar to those covered by ParisTech. The fact of not drawing active income or not actively proposing the sale of the domain name does not mean that the defendant did not intend to target the complainant’s trademark. We note that as of December 30, 2021, the site is inactive.

By consulting the history of the Whois of the disputed domain name, we can see that on February 12, 2017, the name was held by Mr. X, ParisTech company. According to our research, the latter was the general manager of ParisTech. Subsequently, the name became anonymous. Therefore, there appears to be a very clear link between the complainant and this domain name.

Finally, although the articles promoted on the site do not focus on education, it could be argued that the dissemination of informative articles can be related to it.

It appears that the expert based his decision primarily on the lack of commercial intent in the use of the disputed domain name.

However, the expert noted that if the content of the website were to change in order to infringe the complainant’ rights, then the complainant would be free to pursue legal action.

 

WIPO, Arbitration and Mediation Center, Case No. D2021-2417, October 28, 2021, Paristech Foundation v. Domain Administrator d/b/a privacy.cloudns.net

 

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Legal Watch: Two people file a complaint regarding the same domain name

Written by Dreyfus17/03/2022

When two people file a complaint regarding the same domain name, the domain name’s transfer isn’t necessarily granted to the trademark rights’ owner

The Uniform Domain Name Dispute Resolution Policy specifies in point 4) a) that the relevant disputes involve those where a domain name is “identical or confusingly similar to a trademark in which the complainant has rights”.

This is the case when the domain name has been registered and used in bad faith, when the registrant has no rights or legitimate interests and when the domain name registered by the domain name registrant is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Recently, the WIPO Arbitration and Mediation Center considered that, although the applicant had previous trademark rights, the transfer of the disputed domain name shall happen on behalf of the other complainants.

 

 

 

The complainants in this case were Victoria and David Beckham.

The first complainant, Victoria Beckham, a former member of the Spice Girls, is specialized in haute couture and commercialises clothes under her name on the website “www.victoriabeckham.com”. The trademark “VICTORIA BECKHAM” is notorious, especially in the United-Kingdom: it was designated as Designer Brand of the Year in 2011.

The second complainant is David Beckham, renowned for his soccer career, as well as for his professional collaborations with major brands.

He owns several trademarks, invoked in support of the complaint and in particular some registered in the United States “BECKHAM” No. 3342223, dated 20 November 2007, renewed, relating inter alia to clothing products and the trademark “BECKHAM” No. 4208454, dated 18 September 2021 in class 3, which includes perfumes. Thus, the trademarks cited in support of the complaint belong solely to him.

The Beckhams discovered the domain name <usbeckham.com> registered on 8 July 2020, after the registration of Mr Beckham’s trademarks. This domain name linked to a page selling clothing, handbags, shoes and accessories. The site was titled “BECKHAM® Official Online Boutique” and featured the header “BECKHAM” in a font similar to Victoria Beckham’s site. It also had a “Perfume” tab, which redirected to the <genewus.com> website, selling perfumes but also a range of swimwear bearing the name “Victoria Beck”.

Firstly, the expert observed that both complainants shared the same name BECKHAM, for which David Beckham had acquired trademark protection for perfumes and clothing. Hereby, the expert considered the consolidation of the complainants well-founded.
According to the expert the disputed domain name may generate a risk of confusion with the earlier trademarks as it incorporates the word BECKHAM.
Concerning the legitimate interest and the potential rights of the defendant, the complainants argue that they have not given any authorization to the defendant to use their name and that the latter held no rights on the sign “BECKHAM”.
The use of the domain name is confusing for products in competition with those of the complainants and have a title with the symbol ® implying that the respondent is the owner of the trademark “BECKHAM”. The term “Official” also suggests that the website is official. This demonstrates the respondent’s lack of good faith: the expert therefore considers that she has no right nor legitimate interest in the domain name.
Furthermore, with regard to the registration and use in bad faith, the expert considers that the applicants are very famous and that the defendant could not have been unaware of the applicants’ trademarks “BECKHAM”, given that she lived in London and in view of her interest in “high fashion” as mentioned on her website. Moreover, her name is not “Beckham”. However, this name has some significance in the world of high fashion through the applicants’ trademarks. The expert therefore considers that the defendant necessarily registered and used the domain name in bad faith.
Therefore, the complaint was accepted and the domain name was transferred to the first complainant, Victoria Beckham.

 

This ruling is interesting since most of the decision’s reasoning is based on Mr. Beckham’s trademarks. The trademarks in question were protected in particular for “clothing” and “perfumes”. Those same products are found on the disputed website.

A research reveals that there are several “VICTORIA BECKHAM” trademarks, but at first sight, they do not belong to Mrs. Beckham herself, but to her company. Although the company bears the same name, it was not a complainant in this litigation.

The consolidation of complainants makes it possible to consider that “2 become 1″ for the purposes of the complaint. Anyone of the complainants can obtain the disputed domain name whereas it is not decisive which one of them is mentioned as the actual trademark owner in the complaint.

Perhaps Victoria Beckham could have argued that she has common law rights regarding the name “BECKHAM”. However, these rights would have been in competition with those of her company.

(WIPO Arbitration and Mediation Center, Case n°D2021-1841, Victoria Beckham, David Beckham v. Contact Privacy Inc. Customer 1247653581/ Cynthia Panford)

 

See also…

♦Domain names

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

Written by Dreyfus11/03/2022

*Image generated by DALL-E 3, Microsoft Version

The metaverse -a parallel virtual world which is booming in the Web 3.0 era- has become an unavoidable topic. This fictional world will combine prospectively and simultaneously virtual reality (VR), augmented reality (AR), blockchain, crypto-currencies, social networks, etc. Many companies are already planning to do business in this world following the company’s digital transition.

As a result, trademark applications covering products and services related to “digital virtual objects” have been multiplying since the end of 2021.

But how to effectively protect this new activity that calls for a whole new lexicon?

 

 

 

1.The metaverse, a new world for new ambitions?

In a few words, the metaverse can be defined as a fabricated virtual universe -mixing the words “meta” and “universe”, to designate a meta-universe in which social interactions would be extended and digitized. It seems to be directly inspired by the 1992 novel “Snow Crash” (“Le Samourai virtuel” in French) by Neal Stephenson.

This parallel digital environment embodies a new way to explore innovative and ambitious projects from a different perspective, before they take concrete shape in the actual world.

As an example, Aglet created its own range of sneakers, the “TELGAs”, after launching it as a digital collection for online games. The collection is also available on the OpenSea platform, alongside brands such as Nike and Adidas, who have stepped up to virtual collections in the form of Non-Fungible Tokens (NFTs).

NFTs, whose transactions are mostly hosted on the Ethereum blockchain, are essential components of the metaverse. This digital asset category, which is distinct from crypto-currencies such as Bitcoin and Ether, allows for authentic and unforgeable certification of the ownership of one of these virtual digital objects offered for sale in the metaverse.

The metaverse follows on from social networks and will undoubtedly allow companies to establish a strong online presence, beyond the operation of a traditional website.

Whether the metaverse is a trend that will last and become anchored in our culture is uncertain, though many large companies have already taken the plunge.

Before venturing into the metaverse, it is necessary to register specific trademarks, adapted to the goods and services of the metaverse. This will ensure efficient protection against infringement and will enhance the value of the company’s brand assets.  In this respect, it is important to draft an appropriate wording for the trademark.

 

2.How to design an adequate and optimal protection?

When launching an activity into the metaverse, the definition of the goods and services should be careful considered as the crucial element of a trademark is its wording above all. The filing process for a trademark application with the INPI, EUIPO, or any other national industrial property office, will indeed guarantee, to some extent, a monopoly on goods and services determined. This will confer also a commercial value to the trademark, once it is registered by an industrial property office.

As a reminder, once a trademark application has been filed, it is impossible to add classes of goods and services and to add any additional good or service, nor to add goods or services. Only a modification in the sense of a restriction of the wording will be considered.

The most relevant classes, which will contribute to the wording, are classes 9 and 41.

Class 9 allows for NFT coverage, although the product may not be accepted as such. More explanatory wording will be required. For example, one can target “downloadable digital products, i.e. digital objects created using blockchain technology”. These goods can be of all kinds: clothing, works of art, etc.

Class 41 covers the components of entertainment. In this respect, MMORPGs, which are defined as interactive games, which by their nature and concordance are closely associated with the metaverse, could be covered in class 41.

When a virtual trademark is to be exploited through points of sale, services class 35 seems unavoidable in order to include, among other things, “retail store services for virtual goods”.

In a complementary vision, it will then be necessary to think of designating the corresponding goods in the classes that classically cover them.

 

3.Virtual trademarks registered in various sectors

In early February 2022, Pumpernickel Associates, LLC filed a trademark application for “PANERAVERSE” No. 97251535 with the USPTO. This filing, initiated for virtual food and beverage products, NFTs and the ability to purchase real products in the virtual world, demonstrates a definite willingness by the American company to deploy these outlets in the metaverse.

McDonald’s has also filed trademark applications (No. 97253179; No. 97253170; No. 97253159) for “the operation of a virtual restaurant offering real and virtual products” and for “the operating a virtual restaurant online featuring home delivery”. In addition, the U.S. fast food chain also plans to obtain a trademark for “on-line actual and virtual concerts and other virtual events” and other entertainment services for a virtual McCafe (No. 97253767; No. 97253361; No. 97253336).

These are not the only trademark applications filed at this time; Facebook and Nike pioneered this trend, followed by luxury, textile, cosmetics and perfume brands. L’Oréal, for example, has filed several registration applications for perfume brands from its portfolio, in their digital version, with the French National Institute of Industrial Property (INPI)

 

4.Conceptual considerations

In light of this unprecedented craze around the metaverse, one might wonder whether these immaterial goods, whose projected use is exclusively intended for virtual exploitation, should not come under a new particular category of products, not defined to date under the Nice Classification.

The addition of an ad hoc class dedicated to these virtual goods and services seems complex insofar as many of them could overlap with already existing products and services. The list could be very long.

In any case, drafting a trademark for the metaverse requires a meticulous definition of the goods and services concerned.

The Nice Classification, despite the successive trademark filings made since November 2021, does not include for the moment, in its explanatory notes or product suggestions, any reference to goods and/or services closely related to the metaverse or NFTs. Perhaps it will do so shortly in view of the developments encountered.

What will be the boundaries between the metaverse and the actual world? The question is a structuring one for trademark law and competition law. The European Commissioner Margrethe Vestager and the president of the US antitrust authority, Lina Khan, are wondering about “the right time to put in place competition rules in this emerging sector”.

Dreyfus accompany you in the protection of your brands in the metaverse era and to draft with you a wording of goods and services adapted to your activity.

 

 

See also…

 

♦How to protect your brands in the digital era?

♦Why is it necessary to register a trademark?

♦United States: what are the options to protect a trademark?

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Is it possible to invoke a trademark that is not protected in the defendant’s country?

Written by Dreyfus08/03/2022

The trademark invoked by the applicant does not necessarily have to be protected in the country of the respondent

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISIONVente-privee.com v. 郑碧莲 (Zheng Bi Lian)Case No. DCN2021-0004

In order for a UDRP complaint to succeed, it is necessary to prove a trademark right similar or identical to the domain name, generating a risk of confusion. Then, it must be established that the respondent has no rights or legitimate interests, and finally, it must be shown that the respondent has registered and used the name in bad faith.

 

 

 

In order to establish this bad faith, it is essential to show that the respondent has prior knowledge of the applicant’s rights and that the disputed registration is aimed at these rights. Being the owner of a trademark protected in the country where the defendant is established is therefore a considerable asset. However, it is not a requirement.
Vente-privee.com is a French e-commerce company that has been operating for 20 years in the organization of event-based sales of all kinds of products and services at reduced prices, including major trademarks.
At the beginning of 2019, Vente-privee.com began a process of unifying its trademarks under a single new name: VEEPEE. This rebranding was widely promoted internationally. It had previously secured trademark rights to the “VEEPEE” sign via a filing an EUTM in November 2017 and via an international trademark filed the same day covering Mexico, Monaco, Norway and Switzerland. Vente-privee.com also owns numerous domain names matching “VEEPEE” such as <veepee.es>, <veepee.it>, <veepee.de> and <veepee.com>.

Having detected the registration of the <veepee.cn> domain name reserved in 2018 by a China-based registrant, the company filed a complaint with the WIPO Arbitration and Mediation Center seeking the transfer of the name.
The likelihood of confusion was easily admitted by the expert, who considered the domain name to be identical to the applicant’s earlier trademarks. On this occasion, he recalls that the trademark does not need to be registered in a specific country for the assessment of the likelihood of confusion.

This is in line with the assessment of WIPO’s Overview 3.0, which specifies in its section 1.1.2, quoted by the expert, that in view of the international nature of domain names and the Internet, the jurisdiction in which the trademark is protected is not relevant for the analysis of the first criterion. Bearing in mind, however, that this factor may be important for the examination of the other criteria.

the Panel notes that the Respondent has no business relationship with the Complainant and has not received any authorization from it to reserve the disputed domain name. As the Respondent did not respond to the Complaint, the Panel finds that Vente-privee.com has established that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally, on the issue of bad faith, the expert insists on the arbitrary nature of the name VEEPEE: “VEEPEE is a made-up word with no particular meaning in Chinese or English”. He also highlights the fact that the domain name has not been actively used, but on the contrary refers to a website in English, accessible to all, on which it is for sale.

Therefore, the expert orders that the disputed domain name <veepee.cn> be transferred to the Complainant.

This decision is a reminder that it is important to choose the right trademarks to be used in a UDRP complaint. Ideally, it is necessary to prove a registration in the country of the registrant, if possible prior to the domain name. In the absence of a registration in the relevant jurisdiction, it is important to demonstrate that the trademark is used and known outside the boundaries of its registration.

In this instance, we note that the disputed domain name is indeed subsequent to the applicant’s trademarks, but prior to the Vente-privee.com rebranding operation by almost a year. This information might have required analysis had the Respondent responded to the Complaint. Information that could have been counterbalanced, however, with the registration date of the name <veepee.com> (the <.com> targeting the international), which is very old: December 6, 1999.

 

SEE ALSO…

♦Domain names

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Online Trademark Protection

Written by Dreyfus07/03/2022

Monitoring, protecting and promoting your trademarks online: these are the core business activities of the Dreyfus law firm.

Our team assists you to anticipate, secure and optimize your trademarks, allowing you to enhance your business.

A successful trademark registration does not mean that your trademark is automatically protected. Nonetheless, your trademark has an undeniable business value and as such warrants to be monitored and defended. One of the important issues is that public entities such as the INPI, EUIPO or WIPO are not required to notify prior trademark owners when a third-party applicant files an application for a similar or identical trademark. Since these organisms do not assess whether trademark applications are likely to infringe earlier trademarks, it is up to the applicants to perform a prior art search. In other words, careful trademark monitoring is very important for an optimal and durable protection of your trademark. However, identifying risks and responding accurately, effectively and timely to potential harms is not always obvious.

That is why the Dreyfus team helps you monitor and protect your trademarks online. First, we detect potential infringements, then we inform you in due time when a (strongly) similar or identical trademark is filed.

Thanks to our innovative Dreyfus IPweb® solution, we are able to monitor and automatically detect trademark filings that are identical or similar to yours and to take steps against any potential infringement before a similar trademark enters the market. IPweb® provides direct access to a company’s domain name monitoring services. It covers all social media networks such as Facebook, Twitter, Instagram, and LinkedIn, as well as advertising platforms such as Google AdWords. Your trademarks are constantly monitored and you will be swiftly alerted in the event of a breach.

After assessing the similarity of the signs and the products and services in question as well as your chances of success, we will inform you immediately and, if necessary, advise you on the steps that should be followed. As it is better to be safe rather than sorry, it is important to act as quickly as possible and to contact the third-party applicant at an early stage, by sending him a warning, a letter of formal notice or even by filing an opposition against the trademark application to ensure that the said applicant uses an alternative name for his/her products and/or services.

 

Detecting potential trademark infringements and securing your trademarks online

 

We report potential trademark infringements on the Internet and social networks and we provide you with personalized advice regarding your portfolio management strategy, including weaknesses that could hinder the development of your (digital) business and give rise to possible litigation.

In this regard, we offer you appropriate and personalized strategies to anticipate dangers, such as online fraud (i.e. phishing, fake websites, identity theft, forged emails, etc.) which requires immediate action as it can be significantly damaging to the image and reputation of your trademark and may generate a financial loss.

For compliance purposes, we can help you put in place a strategy to prevent any breach caused by domain names. This includes – in addition to monitoring your trademark among Internet domain names – monitoring of your trademark on other social networks (such as Facebook, Twitter, LinkedIn, Instagram, YouTube, Snapchat) to detect and respond appropriately to any new breach.
With our intuitive platform, Dreyfus IPWeb®, we allow our clients to have access to – and closely follow their trademark files online. Moreover, our clients have access to the results of the performed surveillance on trademarks, domain names, corporate names or social networks. With these trace and control tools, we help you restructure the management of your trademark portfolio in an easy and accessible way.

 

 Online trademark audits

 

The next step consists of performing a trademark audit. It is a crucial step to get a global and transversal view of the potential value of your trademarks and to anticipate risks such as conflicts regarding ownership, the loss of rights on an unused trademark or the expiration of your trademark rights. With thorough online trademark evaluations, we will bring to light potential harmful situations and assess the risks and opportunities in relation with your trademark. Besides, trademark audits become important assets when negotiating licensing or assignment agreements.

Furthermore, the Dreyfus team offers you personalized recommendations to strengthen your trademark rights. The online assessment and promotion services offered by the Dreyfus team will allow you to have an accurate and global overview of your situation, from a legal, commercial and technological perspective.

 

(Pre)litigation

 

The Dreyfus law firm assists you with the defense and enhancement of your rights and helps you resolve your disputes efficiently, quickly and amicably. With its detailed knowledge of trademarks in the digital environment, our team helps you settle your disputes online, out-of-court and in a confidential, strategic and efficient manner. Thanks to its know-how and its many clients, the Dreyfus team follows continuously and closely ongoing issues and has an increased vision of current and future risks.

The Dreyfus team will help you successfully defend and enhance your trademark rights and will assist you with the resolution of disputes, infringement actions, problems relating to domain names, as well as during mediation and arbitration procedures. Have you discovered a website that infringes on your trademark? Do you have a French or European Union trademark or an international trademark having effect in France or in the European Union and would you like to file an opposition to an application for registration of a French trademark or an international trademark having effect in France?

Dreyfus & Associates assists you in effectively and rapidly defending your rights. In this regard, we help you introduce an opposition procedure before the INPI to prevent the registration of a trademark that infringes on your prior rights. We also assist you in initiating an out-of-court settlement procedure before the WIPO Arbitration and Mediation Centre, including the resolution of national and international domain name disputes.

 

SEE ALSO…

♦Trademarks, other distinctive signs and franchise

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