When a company wants to export its activity to the American market, it is essential that it think about protecting its brand. Indeed, the protection of a trademark being territorial, the registration of a trademark in France will have no value in another country. There are several ways to protect your trademark in the United States.
National registration
The registration of a trademark in the United States is done at the national trademark office: the USPTO (United States Patent and Trademark Office).
Types of registration
There are two types of registrations: the registration on the “Principal register” and the registration on the “Supplemental register“.
Registration in the principal register
A trademark registered in the principal register provides maximum protection because its owner is presumed to be the sole owner, which gives him the possibility to sue any person using an identical or a similar trademark.
Furthermore, registration in the principal register provides the owner with the advantage of benefiting, in the event of a dispute, from a presumption of validity of his trademark.
To register a trademark with the USPTO on the principal register, several conditions must be met, the most important being the criterion of distinctiveness.
Registration in the supplemental register
Registration on the supplemental register is available when a trademark is not considered sufficiently distinctive. Such a registration does not provide as much protection as a registration the principal register.
Modes of registration
There are also two modes of registration: filing based on Intent-to-Use and filing based on Prior Use
Intent-to-Use Application
This registration is made when the trademark has not yet been used on the US market. However, at the time the trademark is filed, the owner must start using the trademark in the United States within six months.
The protection of the trademark extends over a period of 10 years, renewable indefinitely.
Use in Commerce Application
This system makes it possible to register a trademark whose use is already effective. However, the applicant must provide proof of use of the trademark at the date of filing. This proof can nevertheless be difficult to provide.
The USPTO allows proof of use of a trademark when :
– the mark is inscribed on the goods or the packaging of the articles, or is related to the goods and services;
– and the goods and services to which the mark is affixed are sold in at least two states in the United States.
Protecting your trademark in the United States: is the Madrid System the best option?
The Madrid System allows a national trademark to apply for protection in a maximum of 122 member countries of the Madrid Union by paying a single set of fees, based on a single application. It is a single procedure that results in a bundle of national trademarks. This registration system is managed by the World Intellectual Property Organization (WIPO).
The use of this international trademark system has several advantages for the owner of a trademark: it is necessary to prepare only one file, to be submitted to a single office, in a single language and to pay a global fee. It is a simplified and centralized procedure, which generally leads to a reduction in costs. It also makes it possible at any time to extend the scope of protection to other member countries of the Madrid Union that were not initially designated in the application. It is particularly interesting when one wishes to extend the protection of a trademark in different countries.
The United States became party to the Madrid Protocol on November 2, 2003. It is therefore part of the Madrid Union.
When a company exports internationally and wishes to protect its trademark in different countries, it can choose, often rightly since it has many advantages, to use the Madrid System. However, this is not necessarily the best option to protect a trademark in the United States.
However, it should be remembered that the Madrid System does not bypass local laws, objections may be raised by national offices as well as third parties within each country concerned and no application is guaranteed to succeed.
International applications cannot be entered in the Supplementary Register.
In addition, for a period of five years, the international trademark is obligatorily attached to a national trademark, for example a French trademark. If the latter is cancelled, all designations in the different countries of the Madrid Union are cancelled with it.
Several options are therefore available to a trademark owner who would like to protect its trademark the United States. Depending on the level of its international exploitation and the characteristics of the trademark, the possibilities, costs and conditions of each system will have to be studied and the one that is most suited to the project will be selected.
Operators of online hosting platforms will soon know exactly what responsibility to assume for illegal or hateful content published on these platforms. The current climate seems to be very conducive to clarifying the nature and extent of their liability.
In this respect, two schools of thought clash: for some, it is necessary to impose obligations to control the content published on these platforms, but for others, this would reflect the attribution of a new role to these operators, which has not been given to them on a basic level.
“There would be a risk that platform operators would become judges of online legality and a risk of ‘over-withdrawing’ content stored by them at the request of users of their platforms, to the extent that they also remove legal content,” said Advocate General Henrik Saugmandsgaard Øe, who presented his conclusionsbefore the Court of Justice of the European Union (CJEU) on July 20, referring to request for preliminary ruling a preliminary ruling made by the Bundesgerichtshof, the German Federal Court of Justice, on two disputes brought before the German national courts.
The first dispute (1) was between Frank Peterson, a music producer, and the video-sharing platform YouTube and its parent company Google over the users posting , of several phonograms without Mr. Peterson’s permission, to which he claims to hold rights.
In the second (2), Elsevier Inc, an editorial group, sued Cyando AG, in connection with its operation of the Uploadedhosting and file-sharing platform, over the uploading, again by users without its authorization, of various works to which Elsevier holds exclusive rights.
In said requests for preliminary ruling, it is a question of knowing whether the operator of content platforms such as YouTube, performs acts of communication to the public pursuant to Article 3(1) of Directive 2001/29 of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, a directive that was invoked against YouTube.
The answer is negative, according to the Advocate General, who invites the CJEU to bear in mind that the legislator of the Union has specified that the “mere provision of facilities intended to enable or carry out a communication does not in itself constitute a communication within the meaning of [this directive]”. According to the Advocate General, it is, therefore, important to distinguish a person performing the act of “communication to the public”, within the meaning of the Article 3(1) of the Directive 2001/29, from service providers, such as YouTube and Cyando, who, by providing the “facilities” enabling this transmission to take place, act as intermediaries between that person and the public. On the other hand, a service provider goes beyond the role of intermediary when it actively intervenes in the communication to the public – if it selects the content transmitted, or presents it to the public in a different way from that envisaged by the author.
Such a conclusion would lead to the non-application of the Article 3(1) of the Directive 2001/29 to those people facilitating the performance, of unlawful acts of “communication to the public”, by third parties.
Moreover, it is a question of knowing whether the safe harbour – in the case of “provision of an information society service consisting in storing information provided by a recipient of the service” – provided for in the Article 14 of the the Directive on electronic commerce n°2000/31 is in principle accessible to these platforms (according to the Advocate General, it is).
This provision provides that the provider of such a service cannot be held liable for the information that it stores at the request of its users, unless the provider, after becoming aware or conscious of the illicit nature of this information, has not immediately removed or blocked it.
However, according to the Attorney General, by limiting itself to a processing of this information that is neutral with respect to its content without acquiring intellectual control over this content, the provider such as YouTube, cannot be aware of the information it stores at the request of the users of its service.
The CJEU will, therefore, have to rule on these issues in the coming months.
Furthermore, it should be noted that in 2019, the Union legislator adopted the Directive No. 2019/790, not applicable to the facts, on copyright and related rights in the single digital market, modifying in particular the previous Directive of 2001. A new liability regime was introduced in Article 17 for operators of online hosting platforms.
Plant varieties offer many advantages to plant breeders, including a return on investment to cover research costs. Indeed, long years of work are generally required to develop new plant varieties (between 10 and 15 years for a large number of plant species).
Many breeders also wish to export internationally, but protecting plant varieties abroad is often complex.
European but also international legislations are harmonized by the application of the UPOV Convention (International Union for the Protection of New Varieties of Plants) which has 76 members.
Under this Convention, the breeder’s right is granted when the variety meets several conditions: novelty, distinctiveness, uniformity and stability. Finally, the variety must be designated by an appropriate denomination.
Protection in the European Union :
Filing of the application :
Since 1995 there has been a unitary Community title: the Community plant variety certificate. This title produces the same effects as a national title in each Member State.
However, this certificate cannot be cumulated with national plant variety certificate. Before applying, the breeder will therefore have to make a choice to protect his new variety.
The application for protection must be filed with the Community Plant Variety Office (CPVO). The French breeder can file his application directly with the CPVO but also with the INOV(National Plant Variety Office) which will forward the application to the CPVO.
In addition, there are certain requirements regarding the content of the application. For example, the following must be included:
– The names of the breeder and the representative of the procedure if any,
– Information concerning the botanical taxon (group of organisms),
– The provisional designation given to the variety,
– Information on the previous marketing of the variety,
– Information on previous applications for the variety,
– The deadlines relating to the priority,
– Proof of payment.
It is also necessary to complete a technical questionnaire and a form for the appointment of a procedural representative (if the applicant is not a within the European Union).
The criterion of novelty :
In order to meet the criterion of novelty, the varieties must not have been marketed for more than one year within the European Union and for more than 4 to 6 years (depending on the variety) outside the European Union. Beyond this period (known as the “grace period”), the variety will no longer be considered as new.
Protection during the Brexit :
The French holder of a Community plant variety right will not cease to be protected in the United Kingdom because of the Brexit. Indeed, the United Kingdom has announced the automatic creation of British plant variety titles which will be equivalent for all Community titles registered before the date of Brexit.
Extent of protection :
The extent of protection in the European Union is similar to that of the French legislation. Thus, the following will be subject to the holder’s authorization: production and reproduction, packaging for the purpose of propagation, offering for sale, sale or other marketing, export from the European Union, import into the European Union and storage for any of the above purposes.
The protection is also applicable to harvested products obtained without the consent of the breeder unless the breeder has had a reasonable opportunity to exercise his right and finally, it also applies to essentially derived varieties.
Protection during the provisional period:
During the provisional period (period between the filing of the application and the grant of the right) the breeder can assert his exclusive rights against all acts that would have required his authorization after the grant of the right.
However, the breeder will only be entitled to an “equitable remuneration”.
Counterfeit Prevention :
Finally, regarding customs surveillance to protect against counterfeiting, plant variety rights are included in the intellectual property rights subject to European Regulation 608/2013 of June 12, 2013 on the control by customs authorities of the enforcement of intellectual property rights.
International protection :
At the international level, legislation is largely unified by the UPOV Convention.
However, the Convention does allow national legislators to take into account national circumstances. The breeder must therefore inform himself in advance of any national specificities in order to ensure the protection of his titles in the best conditions.
Beware, that some countries are not members of UPOV !
The filing of the application :
During the filing of the application, the breeder has two possibilities:
– The filing of his application in each of the national offices;
– The filing of his application using the multilateral priority filing system UPOV PRISMA. This online system allows the breeder to file, through a single system, all his applications with the participating plant variety protection offices. However, one must be careful because some countries are not part of this UPOV PRISMA system such as South Korea, Japan or China (only for lettuce).
The breeder will also have to take into account the delays of the examination procedure which are on average 1 to 2 years. However, these periods can be much longer in some countries (sometimes more than 5 years for Japan or Russia for some fruit trees).
Protection during the provisional period :
During this provisional period, the breeder will also be protected, as in the case of the Community title, against acts requiring his authorization and will have the right to claim an equitable remuneration.
The criterion of novelty :
In the UPOV Convention, the grace period for the criterion of novelty, as for Community titles, will be one year within the country in which protection is sought, and 4 to 6 years outside that country. However, it is important to check the grace period in each of the countries concerned.
The extent of the protection :
Finally, the extent of the protection of plant variety titles is the same as that of the Community title in UPOV member countries due to the application of the Convention; provided that certain national particularities are taken into account.
If the UPOV Convention has allowed since 1961 to harmonize and establish a legislation protecting plant varieties in many countries, the breeder, wishing to develop internationally, will have to remain attentive to national legislations and their specificities.
Uncle Ben’s, Eskimo Pie, Quaker Oats… Apart from the fact that they belong to the food sector, these brands have one thing in common: for a long time they did not seem to be a problem but current events, the #BlackLivesMatter movement and the evolution of society have rightly highlighted the racist side of their name, logo or slogan. These companies have made the decision to change their image and the brands they operate.
In order to be registered with the French office (INPI), a trademark must meet a lawfulness condition : it must not be contrary to public order and morality. Therefore, an obscene design, a Nazi insignia or a racist slogan will obviously be declared inadmissible at the time of their examination by the INPI services following their filings.
Independent assessment of the specialty
In trademark law, it is the sign itself that is taken into consideration. Thus, the lawfulness of the goods or services it covers is not relevant for assessing the conformity of a sign with the public policy. When assessing the conformity with the public policy and morality of the sign, the nature of the goods to which the mark is affixed or of the service which it designates is not relevant.
On the other hand, a mark deemed racist remains racist regardless of the nature of the goods or services it designates. The packaging mark “Paki” could have escaped the qualification of “contrary to public policy” with respect to the goods it designates. Indeed, the name of the mark is probably not intended to claim a racist idea, since it is a derivative of the verb “To Pack” meaning “to pack”. However, since the term “Paki” is also used to pejoratively refer to Pakistanis, the registration of this trademark would have contravened the principle of respect for public order and morality because of the racist reference implied by the trademark.
Assessment in regard to the relevant public
A trademark’s conformity to the public policy, and by extension its racist character, is determined by its potential to shock the public with which it will be exposed to. By “public”, we obviously mean the targeted consumers but also other people who, without being concerned by the said goods and services, will be exposed to this sign in an incidental manner in their daily lives. In this respect, the “Paki” trademark refused in the United Kingdom, where the racist term is very common, would probably not have caused the same unease in a country where this racist insult is not used.
It might also explain why trademarks such as Uncle Ben’s or Quaker Oats have not been considered racist at the time of their registration and for years to come. Intended for a predominantly Western audience and distributed in countries where “ordinary racism” has long been normalized, the public they were aimed at was not “shocked” by their image.
This situation is similar to the one of the Banania brand with the slogan “Y’a bon Banania”, vocalized by a Senegalese skirmisher. The slogan, meaning “It’s good” (C’est bon) in broken French, perpetuated, according to anti-racism associations such as the Movement against racism and for friendship between people (MRAP – Mouvement contre le racisme et pour l’amitié entre les peuples), the racist and denigrating stereotype that a black person was not capable of speaking French correctly. Until the 1970s, the slogan was commonly used by the brand. On May 19, 2011, the Versailles Court of Appeal ruled in favour of MRAP in a decision in which it required Nutrimaine, the company that owns the Banania trademark, to stop selling any product bearing that slogan.
Companies owning the Uncle Ben’s, Quaker’s Oats and Eskimo pie brands have announced that they will remove or change their visual identities that perpetuate racial stereotypes. When it comes to trademark law, the assessment of the racist character by trademark offices is becoming more meticulous.
Usually, when a legal action is brought in the margins of the UDRP proceeding, the experts refrain from any decision on the merits and invite the Parties to settle their dispute before the court. However, whether or not to make a decision on the merits is left to the discretion of the expert.
Here, the dispute is between Associated Newspapers Limited from the United Kingdom on the one hand, and a natural person from Pakistan, Mr Makhdoom Babar, on the other. Associated Newspapers, the applicant, publishes the Daily Mail and The Mail newspapers. The Applicant claims that in November 2019, each issue of the Daily Mail sold more than one million copies.
The Respondent, Mr. Babar reserved the domain name <dailymailpk.com> on February 22, 2019.
The latter has repeatedly requested an extension of the time limit to file a response to the complaint, referring to the Covid-19pandemic as a justification for this request. Finally, the Respondent did not file a submission on the merits but indicated that it had filed a lawsuit in Pakistan to block the UDRP proceeding. He provided a document mentioning the complaint and indicated that the next hearing would take place on May 22, 2020.
The expert points out that they has the power to either stop the UDRP proceeding or not, when there exists a legal action in relation to the domain name at stake. The expert mentioned that many Panels in this situation refuse to suspend or terminate the procedure to avoid an indefinite delay in the decision. Especially when the legal action was introduced after the UDRP procedure, with the aim of disturbing it.
Following these preliminary remarks, the expert notes that there is no guarantee that the legal action will resolve the domain name issue. In fact, there is nothing in the file to show that the defendants in the legal action have been served with it or that they have agreed to submit to the jurisdiction in question. Furthermore, the court has not taken any action following the alleged hearing on May 22, 2020.
In addition, the action has not been brought to court in Massachusetts, United States, where the Registry Office is located. Thus, the Registrar may not enforce the decision in Pakistan.
Therefore, the expert decides to rule on the complaint and orders the transfer of the domain name to the applicant. To do so, he takes several elements into account. Firstly, the Complainant and the Respondent have already crossed paths in the past, since the Complainant had filed a complaint against them, concerning the domain name <dailymailnews.com>.
Secondly, the site set up by the Respondent on the name <dailymailpk.com> bears strong resemblances to that of the Complainant, to the extent that it cannot be a matter of coincidence alone, but rather of a desire to attract Internet users to its site by suggesting an affiliation with that of the Complainant. Thirdly, no articles have been published on the site since February 24, 2020, the date when the applicant was notified of the complaint. Finally, the expert notes that, in view of the circumstances, the defendant could not have been unaware of the existence of the “DAILY MAIL” trademark, which enjoys a great reputation.
Thus, the legal action does not per se obstruct the UDRP procedure. Nevertheless, it should be noted that in this case the defendant was a proven cybersquatter, at the origin of the legal action, initiated after the filing of the UDRP Complaint and in order to obstruct this procedure. Experts tend to react differently when the legal action precedes the UDRP action and especially when the dispute is between former trading partners. It is therefore necessary to remain vigilant before opting for the UDRP course of action.
On April 1, 2020, a new trademark invalidity procedure came into force with the French “PACTE” legislation. This law transposes the European Directive 2015/2436, commonly known as the “Trademark Package”, and establishes a new administrative action for nullity before the French National Institute of Industrial Property (“INPI“).
Previously, only the French court of first instance in civil, criminal and commercial matters (“le tribunal judiciaire”) was competent in trademark nullity actions. From now on, this competence is shared with the INPI.
This administrative procedure before the INPI makes it possible to obtain a decision within a shorter period of time (between 6 and 10 months) and at a lower cost.
Which trademark can be contested ?
An action for nullity may be filed against a registered French trademark or an international trademark designating France.
On what grounds can you file an action for nullity of trademark ?
A trademark may be declared invalid if it is vitiated by a defect which corresponds to a ground for invalidity. For instance, this is the case if it is:
– It is devoid of a distinctive character,
– It describes the designated products and/or services;
– It misleads the public,
-It is contrary to public order or morality.
If the trademark infringes a third party right, it forms a relative ground for invalidity.
Who can form an action for nullity or revocation of trademark?
In the past it was necessary to justify before the courts an interest in forming such action (is it a French procedural requirement in taking legal action) . This “interest to act” (“intérêt à agir”) could even be strictly assessed by judges.
With regard to the new procedure, when the action is based on an absolute ground for nullity, it is no longer necessary to prove an interest in bringing the proceedings.
The absolute ground for invalidity is one relating to the intrinsic value of the trademark. For example, if the trademark is descriptive of the goods it designates (such as “White chocolate” for … white chocolate), then any one may form an action for nullity without having to justify any harm.
When is the INPI competent?
The distribution of actions between the judge and the INPI is determined by articles L716-2and L716-5 of the Intellectual Property Code.
Henceforth, the INPI has exclusive jurisdiction in certain claims, including for instance :
— nullity actions based on earlier trade marks (Community or French Trademark, International Trademark designating France or the EU, well-known trade mark)
– invalidity actions based on a domain name, only if its scope is not only local and there is a risk of confusion, or
– actions for invalidity of trademarks filed by the agent or representative of the trademark owner without his consent
This is the case for actions mainly concerning nullity based on one or more absolute grounds (such as misleading nature), but also for actions mainly concerning nullity based on relative grounds (such as infringement of prior rights of a trademark or a corporate name). However, French courts remain competent in regards to invalidity actions based on copyright or rights resulting from a protected design.
What about applications before the wrong authority (INPI instead of the judge and vice versa)?
When the plaintiff files an action before the wrong court, the action will simply be declared inadmissible.
How does the procedure at the INPI work? (Art. R. 716-1 from R.716-8 of the Intellectual Property Code)
The procedure begins with a one-month pre-instruction phase. During this admissibility examination, the INPI checks that the application contains all the required documents and information (statement of grounds on which each claim is based).
Afterwards will occur an investigation phase, which may last six months, and during which written exchanges will take place between the Parties : each Parties will set out their arguments and respect each other’s’ possibility of responding to accusations (the French procedural “principe du contradictoire”).
At the end of this investigation phase, the decision-making phase will take place, over a period of three months. It will be possible to limit the action in the course of the proceedings, by limiting it to either certain goods and services covered by the contested trademark, or to only some of the contested trademarks.
If the INPI confirms the trademark’s nullity the nullity shall be pronounced within three months, by decision of the General Director of the INPI and shall take effect on the date of filing. Nullity, therefore, has retroactive and absolute effect. The decision shall be entered in the National Trademarks Register and published in the Official Bulletin of Industrial Property (BOPI).
What remedies are available against the INPI’s decision?
The INPI’s decision, like every court decision, may be appealed against before the French Court of Appealwhere the applicant is domiciled.
The Parties will have one month to appeal, by electronic means, upon notification of the INPI’s decision. The compulsory details of the appeal will be required, otherwise the appeal will be inadmissible. It is important to note that this action has a suspensive, but also devolutive effect, which means that judges will be obliged to retry the case in its entirety. During the procedure of appeal, the Parties have a three months deadline to submit their conclusions, including all their claims on the merits. If necessary, a claim can be brought against the decision of the Court of Appeal : it is called a “pourvoi en cassation” in French legislation. Either the Director of INPI or the Parties can form such a claim.
Ultimately, the new nullity action procedure before the INPI, relieves the courts (the “tribunal judiciaire”) by its simplicity and speed. Hence, decisions will be rendered relatively quickly and, above all, more actions will be brought thanks to the limited costs of an administrative procedure.
If the Internet did not exist, you or your company would remain safe from public criticism, except for the one’s coming from journalists’ pen, or from economic actors revolving around your activity. The absence of online media, Twitter, Facebook, Instagram, and search engines, excludes the possibility of gathering people around networks to discuss your business.
Nowadays it is essential to know how to deal with these criticisms, and sometimes, even slander.
However, “on the other hand, the Internet might adversely affect other rights, freedoms and values, such as the respect for private life and secrecy of correspondence, as well asthe dignity of human beings.”(Pravoye Delo and Shtekel v. Ukraine, no. 33014/05 ECHR 2011).
Nonetheless, although there are many actions to defend oneself when discovering “unlawful” content, such as defamation, libel, denigration or any form of abuse of freedom of expression, what actions should we take against dissemination of online content that is not unlawful, but is, nevertheless, damaging to our reputation, such as negative opinions or online newspaper articles relating to various facts about your experiences, arises?
Clarification of personal data, the right of opposition and the right to be forgotten
Therefore, your name and surname are personal data, and with regard to the processing of this data, you have certain rights, such as the right to object or the right to erasure (also the right to be forgotteen).
The right to object
You may object at any time, for instance because of your specific situation, to the processing of personal data, while explaining your reasons, based on legitimate grounds.
In the event of an unsatisfactory response or failure to respond to your request, you may refer the matter to the CNIL.
You have the right to obtain the erasure of your personal data as soon as possible from the person, public authority, company or body processing your data (more commonly known as the “data controller“) in particular where there is no overriding legitimate reason for their processing . This includes in particular the right to dereferencing of links contained on search engines.
The operator of a search engine is in principle obliged, subject to the exceptions provided, to comply with requests for dereferencing of links to web pages containing personal data relating to criminal proceedings or convictions.
Requests for dereferencing from search engines can be made directly online via a corresponding tool. However, it is often necessary to send an official letter to the operators of websites containing harmful articles.
It will then be necessary to argue, for example by demonstrating the prejudice you suffer because of these articles – the cancellation of a professional appointment following the search of your name and surname could be one of them! – or by explaining that a web page mentions a step in a legal procedure that no longer corresponds to your current legal situation.
However, this right to be forgotten is weighed against the necessity of the processing, especially when it pursues a legitimate interest, such as the exercise of the right to freedom of expression and information.
Your request may, therefore, be refused if access to such information concerning you is considered strictly necessary for the information of the public. Indeed, according to Article 17 of the GDPR, there are certain situations which prevent the implementation of the right to freedom of expression and information.
In this respect, the controller or the authority seized must in particular take account of various criteria, including the nature of the data in question, their content, their accuracy, the repercussions which their listing is likely to have for the data subject, the notoriety of that person, etc.
In case of refusal of dereferencing or lack of response from the search engine, judicial solutions may be considered.
In sum, possible actions require complete mastering of the legal grounds and to cement your arguments when requesting dereferencing from the data controllers.
Thus, in order to obtain trademark rights to a colour, the colour must reflect the trademark in the mind of the consumers, i.e., when they see that colour, they think specifically of that trademark.
Despite numerous registrations of colours as trademarks, the French Trademark Office, the INPI rarely accepts those registrations.
The question then arises as to when such marks are admissible.
To do this, let us look at the case law that have marked this colourful saga!
Case law from the Court of Justice of the European Union
In a judgment dated 22 November 2018, the Court stated that “this sign must be distinctive, i.e. it must enable a consumer to identify the commercial origin of the goods or services covered by it in relation to those of competitors. However, a colour is generally perceived by the public as a decorative element, not necessarily as a sign identifying the commercial origin of goods or services. “(CJEU, 22 November 2018, C-578/17).
The judges further specify that one cannot register a colour but a shade or combination of shades which must be recognizable and identified according to a Pantone code, which is an internationally recognized colour code.
Louboutinhas obtained trademark protection for its famous red sole. It is specified in the application that the right relates to a certain shade of red connected to a sole.
However, “colour trademark” should not be confused with the use of a colour in a logo. Indeed, in this particular case, one can resort to the registration of a coloured logo without having to resort to the Pantone.
Colour and unfair competition
A distinction must be made between colours that are protected as trademarks and those that are assimilated to the identity of the company. Thus, in the case of a color protected as a trademark, the company will be able to sue the competitor for infringement by demonstrating that there is a risk of confusion for the consumer. In the case of a color assimilated to the identity of the company, there may be a risk of parasitism or unfair competition if a competitor voluntarily decides to use the same colours in order to use them to mislead the consumers.
It is necessary to recall that the notion of “colour trademark” relates to the fact that in order to “be a trademark, colour must be assimilated to a combination of colours or a single colour, filed without shapes and contours”. This principle was laid down by the Court of Justice of the European Union in the Libertel judgment of 6 May 2003and the Heidelberger Bauchemie judgment of 24 June 2004. Thus, a distinction must be made between colour trademarks and figurative trademarks that claim a specific colour shape without a verbal element.
This principle has been taken up in Article 4 of the European Trade Mark Regulation: “Any sign, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, may constitute trade marks of the European Union, provided that such signs are distinctive …”:
a) to distinguish the goods or services of one undertaking from those of other undertakings ;
b) to be represented in the Register of Trademarks of the Union in a manner which enables the competent authorities and the public to determine precisely and clearly the subject matter for which protection is granted to their owners. »
This principle was also taken up by the Singapore Treaty in 2006, which states that “it is possible to register trademarks consisting of non-visible signs and thus color or scent marks. “».
The Distinctiveness Criteria
In order to be distinctive, the colour sign must must comply with the principles laid down by the Court, and in particular in its Libertel ruling of 6 May 2003:
(a) it is graphically represented in a clear, accurate, complete, lasting, objective, accessible and intelligible manner. For this purpose, it must be possible to convert this colour by means of an internationally recognised identification code ;
(b) the color sign must make it possible to distinguish the origin of the goods or services which it designates and it must be distinguishable from competing undertakings;
(c) it must be taken into consideration the public interest prevailing in the sector of activity for which the registration of the sign is requested ;
This assessment is made by the judge on the basis of the facts but also on the use that has been made of it.
Cases of counterfeiting
As an example, the infringement by imitation of a monochrome sign was admitted for the colour shade of pink pantone 212 by the High Court of Paris (Tribunal de Grande Instance de Paris) in a dispute concerning the two fuschia pink bands underlining the edges of the decoration of infant milk products between Candia and Blédina.
Similarly, the French Supreme Court upheld the infringement of a red label champagne trademark in a decision opposing Charles Laffitte Société and Pieper Heidsik Company on the grounds that the Court of Appeal, in a reasoned decision, examined the overall impression produced by these trademarks, and characterized the infringement by imitation as provided for in Article L. 713-3 of the French Intellectual Property Code.
But in a judgment of 27 April 2006, the Versailles Court of Appeal ruled that the shade of a primary colour, frequently used in the stationery supplies field, is not of a serious nature (Court of Appeal of Versailles, 12th Chamber 1st Section, 27 April 2006).
Conclusion
Thus, it is clear that, while trademark offices and judges accept the possibility of registering a colour as a trade mark and assuming legal protection for it, the validity of such signs remains subject to strict conditions arising from both national and European legislation. This makes it difficult to recognise the validity of such signs. However, the protection of colour as an identity and therefore as a logo is widely accepted. One can thus speak of royal blue for Ikea, or turquoise blue for Tiffany.
It is therefore almost impossible to consider the protection of a colour shade or combination of colours without prior use. The applicant will therefore have to limit the protection sought to specific products or services to increase his chances of protection. The application must expressly indicate the colour reference indicated using an internationally recognized colour code (the Pantone code).
In particular, the applicant must precisely determine the position of the colours.
The protection of a trademark also requires proof of a distinctive character acquired through use. This requirement limits the registration of colours already present on the market and enjoying strong recognition among a relevant public.
The whole difficulty is therefore based on proof of distinctiveness acquired through use.
Start-ups’ executives, having difficulty obtaining loans to raise funds, may benefit from promoting their intellectual property assets, which can be used as loan guaranties or other credits. Indeed, intangible assets are among the preferred asset classes for investors seeking strong guarantees. As such, investment funds are offering more and more original solutions to fund start-ups.
Beyond the traditional tools of funding through intellectual property such as licenses, new ways of raising funds using intangible assets are emerging: auctions (by auction houses specializing in this field), online tradings, trusts, mortgages, etc.
On which assets should you base your collateral?
Patents
The patent portfolio of research companies is a valuable asset, provided it is kept under control. Under a mortgage, or a trust, the source of income, in order to be certain, requires the patent to be licensed.
Trademarks, designs
If the trademarks are licensed, they can give rise to a certain and regular income. They offer a valuable guarantee if the business is successful. For instance, in the late 1990s DreamWorks and the Tussauds Group both granted security guarantee over their IP covering both existing and future IP[1].
Moreover, designs have the advantage of having a value independent from the company’s status. Therefore, they can be a guarantee of value for investors.
Copyrights
Copyrights lasts up to 70 years after the author’s death : as such, once ownership and value are proven, they provide a valuable guarantee for the investor. Thereupon, the World Intellectual Property Organization (WIPO) has demonstrated that the taking of guarantees over copyright in the film and music industries is widespread and increasing in the biotechnology and software industries[2].
The forerunner of this financial innovation in intellectual property, David Bowie, will be remembered when he sold the “Bowie Bonds” which provided him with a regular income of over $1 million per year earned on the 25 albums he recorded before 1990.
It is therefore important to think of your intellectual property rights as real assets, and to reconsider the way they can be used: they can become effective security interests, especially for SMEsor start-ups that are launching their business.
This is true all over the world. For example, in India the government has introduced loan guarantee schemes through the possibility of mortgaging your trademarks or patents in order to encourage start-ups and cover the risk of real commercialization failures based on assets mortgaged by intellectual property rights.
To be continued!
It now appears possible to raise funds through your intellectual property assets. Dreyfus, an expert in legal issues related to intellectual property since 2004, helps you protect and enhance your rights and advises you on how to best manage your assets.
[1] [1]« Taking security over IP » Fieldfisher – February 2015
[2] « The Challenge of IP Financing » WIPO – September 2008
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