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

Written by Dreyfus23/03/2021

domain name registration Source: WIPO, Arbitration and Mediation Center, Nov. 24, 2020, case DRO2020-0007, NAOS c/ Bioderm Medical Center

The Bioderma brand has a world-wide reputation but was this reputation already established in Romania at the beginning of the years 2000? The Bioderm Medical Center, a clinic based in Romania, answers no to this question.

NAOS, owner of the Bioderma trademark, has detected the registration by the Centre Médical Bioderm of a domain name reproducing its trademark, namely <bioderma.ro>. However, said domain name is quite old as it has been registered on February 24, 2005.

On September 4, 2020, NAOS filed a complaint with the WIPO Arbitration and Mediation Center to obtain the transfer of this domain name. This complaint is based on an International trademark Bioderma, protected in Romania since 1997.

Nonetheless, the defendant claims to have used the sign Bioderma as its business name for several years, hence the registration of the domain name <bioderma.ro> and the subsequent change of its coporate name.
The expert in charge of the case is particularly thorough in its assessing whether the defendant has the legitimate interest and rights in the disputed domain name or not.
He considers that even if the latter produced a Kbis extract showing that its commercial name, in 2003, was indeed Bioderma, it is insufficient to prove a legitimate interest or rights on the domain name. The defendant should have brought evidence that it was commonly known by the Bioderma name.

The expert also notes that the disputed domain name resolves to an inactive web page and therefore concludes that there was nobona fide use of the name in connection with an offer of goods and services and no legitimate non-commercial use of the name.
It is however on the ground of bad faith that the expert finally decides in favour of Bioderm Medical Center.
The latter notes that the International registration of the applicant’s Bioderma trademark is several years older than the disputed domain name and that this trademark is currently renowned. However, the evidence brought by the applicant are deemed insufficient to demonstrate the possible or actual knowledge of this trademark by the defendant in 2005, at the time of registration of the disputed domain name.

Indeed, although the earlier mark was established in the 70’s in France and was first registered in Romania in 1997, the first subsidiary of the applicant, established in Italy, only opened in 2001: the true starting point of the brand’s internationalization.
Yet, the defendant founded the company in 2003 and carried on its business under the name Bioderma until 2008.

From there, it is not possible to establish that it had targeted the company or its trademark to mislead or confuse Internet users. Moreover, the defendant did not conceal its identity and responded to the complaint, which shows good faith.

This decision is a reminder that it is essential to place oneself at the time of domain name registration in order to assess the aim of the registrant. Even if the prior trademark enjoys a world-wide reputation on the day of the complaint, the dive into the past is inevitable: it must be determined whether the defendant, located in a certain country, had knowledge of the rights or reputation of the trademark. In this case, the expert took into account, among other things, that the defendant used the commercial name “Bioderma” in 2005. Therefore, it is essential to investigate on the registrant and their situation at the time of registration of the domain name, here particularly old. To that end, seeking legal advice from an IP lawyer specialized in UDRP procedures is strongly recommended.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.

Unfair competition: a doomed market place

Written by Dreyfus24/02/2021

On November 20, 2020, the Court of Appeal of Paris, condemned Webedia, a company specialised in the management of Internet sites, for unfair competition towards the Bonpoint company.

Bonpoint is specialized in the manufacture and sale of high-end children’s clothing, marketing its discontinued products through online retailers of multi-brand clothing, including Yoox.com.

The Webedia company, for its part, run the marketplace shopoon.fr which is a guide for buying fashion and decoration items online putting Internet users in touch with e-commerce merchant sites. In particular, it offers products appearing on the site yoox.com.

So far so good. However, the Bonpoint company has found that 93% of the products of its brand displayed on the site shopoon.fr are unavailable for sale, and when the user clicks on these unavailable products, he is redirected to similar and competing products belonging to other brands.

The Court of Appeal of Paris considered that the presentation of products on the site shopoon.fr allowed the consumer to clearly distinguish available items from unavailable items. Consequently, this presentation was not likely to substantially alter the economic behavior of the normally informed and reasonably attentive consumer who, in case of unavailability of the desired branded product, would turn to articles of another brand.

Therefore, the Court ruled that Webedia had not committed deceptive marketing practices.

However, the Court reminds that if the Webedia company does not sell directly the articles which it presents on its site, it is nevertheless remunerated as soon as it puts forward the products of different sites and brands, in the event of unavailability of the initially sought-after product. It thus draws a financial advantage from the redirection of web users to these products.

Consequently, the judges held on this point that the Webedia company was guilty of unfair competition, by presenting on the site shopoon.fr 93% of articles of the Bonpoint company which it knew unavailable, and by “referring the web user to the possibility of seeing similar competing products“. They considered that the Webedia company had thus used the attraction force of the Bonpoint brand to generate traffic of web users oriented towards other products.

The Court thus ordered Webedia to pay Bonpoint the sum of 22,043 euros in damages, including 20,000 euros in compensation for moral prejudice and 2,043 euros for misappropriation of customers.

Filing a trademark on behalf of a company in the process of creation: who may bring a trademark infringement action?

Written by Dreyfus22/02/2021

It is common for trademarks to be filed by individuals acting on behalf of a company in the process of creation.

The founder of the company is then the regular owner of the trademark until the company in question takes over the filing. Therefore, the founder may initiate proceedings, in the meantime, in case of trademark infringement.

But what happens if the company that was supposed to be created and, therefore, become the owner of the trademark, is never formed?

The French Supreme Court expressed its view in a decision dated October 14, 2020. Ms. T, who had registered the trademark “Dousè Péyi” in the name of the company in the process of being created Dousè Péyi, filed a lawsuit against the company Sérénade des saveurs (Cass. Comm. 14 Oct. 2020, No. 18-23-965 T.c/ Sté Sérénade des saveurs).

The dispute concerned the filing of the trademark “Doucè Péyi”, almost identical to the earlier trademark.

Following this application, Ms. T sued Sérénade des saveurs for trademark infringement and unfair competition. The applicant raised a motion to dismiss the action, based on the lack of interest of the founder of the company to act in defence of a trademark registered on behalf of a company which was not yet created (see Article 31 of the French Code of Civil Procedure).

The company Sérénade des Saveurs claimed that Ms. T did not personally own the trademark. According to the defendant, since the company had never been created, Mrs. T should have recorded the change of ownership of the trademark at the INPI.

The first judges declared Ms. T’s action for infringement inadmissible for lack of interest in acting. The Court of Appeal confirmed this decision and stated that Ms. T “cannot claim ownership of this trademark in a personal capacity without having [recorded the change of ownership] on the National Trademark Register before initiating any action reserved to the owner of the trademark”. Otherwise, the change is unenforceable and any action in defence of the mark is therefore inadmissible.

Ms. T appealed to the Supreme Court and, rightly so, since the Commercial Chamber of the Court of Cassation ruled that the Court of Appeal had violated Article L210-6, paragraph 2, of the French Commercial Code, which establishes a system of taking over acts performed on behalf of a company in the process of creation: “every person who acted on behalf of a company in the process of creation before it acquired legal personality shall be held jointly and indefinitely liable for the acts thus performed, unless the company, after having been duly formed and registered, takes over the commitments entered into. Such commitments are then deemed to have been entered into from the outset by the company”.

The Supreme Court overturned the appeal decision and affirmed that in the absence of legal personality, the founder of the company, who registered the trademark, is the owner of the trademark and therefore Ms. T could rightly file a trademark infringement suit.

This solution guarantees the legal security of project leaders. The creation of a company can, in fact, take time. During this time, several acts must be accomplished and the law acknowledges their retroactive effect.

Filing a trademark in the name of a company in the process of creation is an interesting practice to enhance the value of the trademark assets and protect them against third parties that may file a similar or identical trademark while the company is not yet formed.

However, case law in this area is not consistent and requires to be attentive to details when filing a trademark.

In order for the company to automatically become the owner of the trademark at the time of its registration, a statement of the acts performed on behalf of the company while it being created should be made, which will be annexed to the articles of association, and should mention the filing of the trademark, indicating that the company takes over the legal act of filing on its behalf.

Dreyfus can assist you with the management of your trademarks portfolios in all countries around the world. Please feel free to contact us.

Council conclusions on intellectual property policy and the revision of the industrial design system in the European Union

Written by Dreyfus28/01/2021

The Council of the European Union makes observations and specific proposals in four areas: biotechnology, geographical indications, control of intellectual property policy and design rights enforcement. It welcomes (pt 8) the opinion G 3/19 issued on 14 May 2020 by the Enlarged Board of Appeal of the European Patent Office, in which it was concluded that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products obtained exclusively by means of such processes. It further welcomes (pt. 9) the fruitful discussions between the European Commission and the Member States on Directive 98/44/EC of the European Parliament and of the Council on the patentability of essentially biological processes for the production of plants or animals and of the products obtained by such processes, which have been conducted with the aim of achieving a deeper understanding of the Directive and the corresponding provisions of the European Patent Convention.

The creation of a data access system Whois by ICANN

Written by Dreyfus27/01/2021

Since the advent of the General Data Protection Regulations (GDPR), it has become really difficult to obtain information about the registrant of a domain name. This obviously complicates the dialogue between trademark and domain name holders.

ICANN has proposed a project to create a System for Standardized Access/Disclosure (SSAD), which would allow standardized access to non-public data on domain name registrations.
The objective of the SSAD is to provide a predictable, transparent, efficient and accountable framework for access to non-public registration data. It must also be consistent with the GDPR.
However, the decision whether or not to grant requests would still belong to the registrars, as legal constraints on personal data may vary from country to country.

This project accelerated in August during Stage 2 of the policy development process, during which a final report was presented that provides 22 recommendations for the system.
The creation of this SSAD could, in the coming years, facilitate the fight against cybersquatting, which has been strongly impacted by the GDPR and WhoIs anonymization processes. It should be remembered that the next round of requests for domain name extensions should take place in 2023, bringing a whole new set of challenges in the fight against Internet attacks.

Source: LexisNexis, N°1 (January 2021)

Domain names in <.suck> : between attack to brand image and freedom of expression

Written by Dreyfus26/01/2021

Sources: Domain Incite, Free speech, or bad faith? UDRP panels split on Everything.sucks domains, Oct. 22, 2020:

Free speech, or bad faith? UDRP panels split on Everything.sucks domains

Mirapex.sucks, Case n° 103141, 2020-06-29 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103141
Bioderma.sucks, Case n° 103142, 2020-07-01 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103142DNS News No. 270, Oct. 2020

The top-level domain name extension <.sucks> was open for registration by ICANN in 2015. At the time, some brands were already concerned about the risk of cybersquatting on these extensions, and the possible damage to the brand image that this could generate. In fact, many domain names that use trademarks known and ending in <.sucks> were born. Very often, these domain names refer to pages where Internet users can complain about the brand in question, whether they are consumers or former employees.

During the past months, the phenomenon has intensified with a lot of reservation numbers, clearly done by the same registrar of the domain name in <.sucks>. Suddenly, new online pages have emerged, with the same structure and bad comments about renowned brands. A system of resale at prices between $199 and $599 is also in place.
The question of the dispute resolution about the <.suck> is complex, since the situation raises issues relating to freedom of expression.

Two recent cases with two opposite outcomes illustrate this complexity. The domain names <mirapex.sucks> and <bioderma.sucks> were both registered by the same registrar and are both the subject of UDRP complaints. In response to these two complaints, the defendant based his argument on freedom of expression. For <mirapex.sucks>, the complaint was unsuccessful, on the contrary, for <bioderma.sucks>, the name transfer was ordered.

In the case of <bioderma.sucks>, the expert had taken into consideration the fact that the registrar didn’t use the domain name for bad comments on the trademark in question but was simply a third party who registered the domain name seeking to resell it. The reseller was a company located in the Turks and Caicos Islands whose activity is the purchase and resale of names in <.sucks>. The latter had no way of verifying if the bad comments were authentic. Especially because those comments seemed to have been added only after the complaint was filed.

On the other hand, in the decision on <mirapex.sucks>, reserved by the same company, the transfer was refused. The expert gave special attention to the nature of the <.sucks> and to the freedom of expression, while underlining the insufficiency of the argumentation of the applicant.
One thing is sure: prevention is better than cure, therefore it would preferable to register a brand in the extension <.sucks>, on a purely defensive basis.

The impact of counterfeiting on consumers and businesses

Written by Dreyfus23/12/2020

Published in June 2020, EUIPO’s “2020 Status on IPR Infringement” report shows that e-commerce has fostered the phenomenon of counterfeiting. The majority of counterfeit products come from Asia. These products are reconditionned in smaller boxes in countries such as Albania, Ukraine or Morocco.

The Covid-19 pandemic has not diminished this trend. On the contrary, the online shopping has increased the trend as stated in the “2020 Consumer Buying Behavior Report” of the company Intelligence Node tracing consumer’s behaviour.

Due to the forced closure of stores, consumers increased their online purchases. Thus, the counterfeiting phenomenon expanded, as well. According to this report, most consumers are attracted by a cheaper price, but they are completely unaware that they are buying a counterfeit product.

The report shows that:

– More than 50% of internet buyers search Google, Amazon and other marketplaces before buying. They look for the product description, features, price and possible discounts.

This is what can lead them to choose websites promoting counterfeit products, since:

– 70% of buyers opt for counterfeiting for price reasons.

– 82% of the buyers had indicated that they would continue to buy online even when the stores reopen.

In addition, a survey published by the French consumer association UFC- Que Choisir, on October 22nd, 2020, showed that online frauds, on an online purchase, are not always reimbursed by banks. Only one out of three frauds per year was reimbursed last year. The bank generally blamed the consumer for negligence.

The new DSP2 Directive (European Payment Services Directive 2nd version) requires that the transaction must be confirmed by the bank through a “strong authentication” system, when making an online purchase. The French authorities have given a deadline for the first quarter of 2021 for all the banks to be compliant.

In light of these elements, companies must actively protect their intellectual property rights, including property on the Internet, to avoid the drop in sales and the loss of customers. Indeed, it is known that consumers who are victims of a scam will tend to turn away from the company whose products or services have been counterfeited.

An effective defence of the brand on the Internet is carried out through a strategy that includes prior searches and surveillance. The prior search provides a snapshot of the current situation of the trademark on the Internet (existing infringements, potential prior art in certain countries, etc.). The surveillance allows the detection of all domain name registrations reproducing or imitating the trademark, from the moment the surveillance is set up. It keeps in check any potential infringement as soon as it is detected.

“Le Frenchy”, a sign considered distinctive for cosmetic and perfumery goods

Written by Dreyfus03/12/2020

The French National Institute of Industrial Property (INPI) issued a decision on March 23, 2019, rejecting Guerlain’s application for the trademark “Le Frenchy”, covering cosmetic and perfumery goods. The refusal was based on the grounds that the sign was unsuitable to guarantee the commercial origin of the goods in question, as it could indicate a characteristic of said goods, in particular a French origin.

Guerlain filed a successful appeal before the Paris Court of Appeal. The court rendered its decision on September 22, 2020, ruling in its favour: the sign “Le Frenchy” is sufficiently distinctive and is not descriptive, for the concerned goods.

In the contested decision, the Director of the INPI had considered that English is predominant in everyday language and that many expressions including the term “French”, such as “French manicure” or “French tech”, are commonly used in commerce. He added that the addition of the vowel “y” to the adjective “French” does not change the nature of this slang Anglicism.

Guerlain states that the term “Le Frenchy” evokes a “little Frenchman” in slang and that this reference to the French spirit alone is not enough to deprive the sign of distinctiveness.

The Court of Appeal agreed with Guerlain’s arguments, holding that “Le Frenchy” evokes “a person representing a style, a French way of life, a spirit” and not directly the origin of the good.

The combination of the article “le” and of the term “Frenchy” is unusual and arbitrary in relation to the goods in question. Therefore, the sign does not lack of intrinsic distinctiveness within the meaning of Article L.711-1 of the Intellectual Property Code. Similarly, it is not descriptive, within the meaning of Article L.711-2 b), of the goods concerned, as this trademark does not designate a characteristic of the goods, but rather aims to qualify the person who might consume the goods.

It might be assumed that the trademark was saved because the sign “Le Frenchy” includes a form of slang which is not directly related to the goods in question.

The decision might have been different if the sign at stake mainly comprised the word “French”.

For example, the European Union Intellectual Property Office (EUIPO) rejected the trademark ‘LIVE THE FRENCH WAY’ on December 9, 2019 for lack of distinctive character in relation to the services covered in classes 35, 39 and 43, as it would be perceived as a “laudatory promotional slogan”.

In any event, in case of doubt as to the validity of a sign, it is advised to file the projected trademark in semi-figurative form, if it is intended to be used in a stylised manner. Graphic elements increase the distinctiveness of a sign.

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

THE NECESSITY OF PROMOTING THE TRADEMARK ON WHICH THE COMPLAINT IS BASED ON

Written by Dreyfus25/11/2020

(WIPO Arbitration and Mediation Center Natixis Intertitres v. Super Privacy Service LTD c/o Dynadot / Fredrik Lindgrent Case No. D2020-1383)

Being the owner of a trademark that is identical to the disputed domain name is a real advantage in the UDRP procedure. Nevertheless, it is necessary to prove that the respondent was aware of said trademark rights, which is quite complicated when the trademark at issue hasn’t been widely advertised.

Natixis Intertitres, the subsidiary of Natixis, a French internationally known corporate company, holds the registered trademark “INTERTITRES”. This subsidiary filed a complaint before the WIPO Arbitration and Mediation Center in order to obtain the transfer of the disputed domain name <intretitres.fr> registered by a third party without authorization.

During the procedure, the identity of the registrant was disclosed, revealing a Swedish owner.

The Complainant sustained that the domain name was registered in reference to its trademark without any relation to the generic definition of the term “intertitres” especially considering that, in the French language, as in the French dictionary, the term is generally used in the singular form.

Moreover, the complainant finds the configuration of mail servers on a domain name that doesn’t refer to any website “suspicious”. Natixis Intertitres sustained that the Respondent’s intention was to take undue advantage of the Complainant and its trademark’s reputation.

The Respondent didn’t submit a formal response to the complaint but stated that he had reserved the domain name in order to create a site related to literature.

The expert in charge of this dispute acknowledges the likelihood of confusion between the trademark and the subsequent domain name, as well as the lack of proof of legitimate interest by the Respondent, who didn’t really explain the choice of this domain name.

However, the expert is not convinced by the Complainant’s arguments as regards the bad faith criterion. In this respect, he highlights two important points.

Firstly, there is no evidence that the Swedish-based registrant was aware of the trademark “INTERTITRES”. Natixis is certainly internationally known as a company, but this is not the case for its “INTERTITRES” trademark, which designates lunch vouchers mainly available in France. These vouchers are rather known under the names of “CHEQUE DE TABLE” or “APETIZ”. Therefore, it is unlikely that the Respondent was aware of this trademark.

Secondly, “INTERTITRES” is mainly a generic term. The fact that dictionary definitions are given in the singular form does not mean that the term does not exist in its plural form.

The complaint is therefore rejected.

In view of the above, it is essential for right holders to be aware of the scope of protection that their trademark can enjoy. Is the trademark sufficiently well known in the registrant’s country so that it is reasonable to assume that they had it in mind when they reserved the name? This question must be carefully considered, especially when the trademark has also an everyday language meaning and the disputed domain name is not used for an activity similar to the one for which the prior trademark is used. In this regard, the expert rightly pointed out that using a domain name primarily for having a letterbox is not prohibited (referring to the presence of e-mail servers on the disputed domain name).

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

An e-mail or IP address is not an address within the meaning of EU law

Written by Dreyfus20/10/2020

In its decision of July 9, 2020 (case C-264/19), the Court of Justice of the European Union stated that neither an IP address nor an e-mail address are “addresses” under Article 8 of the European Union Directive on the enforcement of intellectual property rights.

Un litige opposant une société de distribution à YouTube

A dispute between a distribution company and YouTube

Constantin Film, a German film distribution company, noticed that some of the films it distributed were uploaded on YouTube without its consent. Therefore, the company turned to YouTube to obtain the e-mail and IP addresses of the users who had put this content online.
As YouTube and Google (Google owns YouTube) refused to share such data, the case went to German courts.

Article 8 of the European Union Directive on the enforcement of intellectual property rights provides for the possibility for right holders to request information from infringers and/or persons who have provided services to them, here YouTube, about “the origin and distribution networks of goods or services which infringe an intellectual property right”, including the “names and addresses” of the persons involved.

The German Federal Court has questioned whether e-mail and IP addresses should be considered “addresses” within the meaning of the Directive. The German Court decided to stay the proceedings and referred to the European Court of Justice for a preliminary ruling on whether such information falls within the meaning of the term “address” in the Directive 2004/48.

2. A definition of “address” that does not include IP and e-mail addresses

The answer of the CJEU is clear: EU law does not assimilate IP addresses and e-mail addresses with addresses.
The notion of address in the above-mentioned article must be understood in the sense of a postal address.

In its press release No.88/20 of July 9, 2020, the Court states that: “as regards the usual meaning of the term ‘address’, it refers only to the postal address, that is to say, the place of a given person’s permanent address or habitual residence” when used without any further clarification.
Nevertheless, the CJEU indicates that Member States may grant holders of intellectual property rights a more extensive right to information.
In the above-mentioned press release, the Court specifically mentions, regarding Article 8 of the 2004/48 directive, that “the aim of that provision is to reconcile compliance with various rights, inter alia the right of holders to information and the right of users to protection of personal data”.

This decision limits the range of action of right holders, for whom it is increasingly difficult to identify persons infringing on their assets. In addition to this issue of IP addresses and e-mails that do not fall within the scope of what is understood by “address”, The Data Protection Regulation, known as the GDPR, of April 27, 2016, has also complexifed the defence of rights on the Internet, as privacy has been increased and information on the holders of domain names redacted.

Intellectual Property

Unfair competition: a doomed market place

Filing a trademark on behalf of a company in the process of creation: who may bring a trademark infringement action?

Council conclusions on intellectual property policy and the revision of the industrial design system in the European Union

The creation of a data access system Whois by ICANN

Domain names in <.suck> : between attack to brand image and freedom of expression

The impact of counterfeiting on consumers and businesses

“Le Frenchy”, a sign considered distinctive for cosmetic and perfumery goods

THE NECESSITY OF PROMOTING THE TRADEMARK ON WHICH THE COMPLAINT IS BASED ON

An e-mail or IP address is not an address within the meaning of EU law

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