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Intellectual property law

Featured in the Press: Dreyfus in the Spotlight in the Expert Guide 2025

Written by Antony17/02/2025

When an intellectual property (IP) firm is mentioned and approached by specialized media outlets, it speaks not only to its credibility but also to its ability to innovate and offer concrete solutions to today’s legal challenges. That is precisely the case with Dreyfus, whose expertise in design law—as well as broader IP protection—was recently highlighted in the Expert Guide 2025 – Intellectual Property, published by Corporate LiveWire.

In this article, we take a closer look at that publication, outlining the key points covered in the interview with Nathalie Dreyfus, the firm’s founder, and showing how this recognition by the specialized press reinforces Dreyfus’s status as a leading authority in Europe on the modernization of design law. We also discuss the main issues raised in the Expert Guide 2025 article and explain how the firm puts this knowledge into practice to support its clients.

Dreyfus Intellectual Property Expert Guide 2025

Dreyfus in the Spotlight in the Expert Guide 2025

The Expert Guide 2025 – Intellectual Property Publication

Expert Guide 2025, dedicated to intellectual property, is published by Corporate LiveWire, an international media outlet that regularly provides in-depth analyses and resources on legal and economic trends. In this edition, various renowned experts and specialized firms address critical topics such as:

  • The Unified Patent Court (UPC) regime.
  • Changes to trademark protection rules in certain African countries.
  • Developments in copyright law for utilitarian objects.
  • New digital regulations affecting trade secret protection and the rise of 3D printing.

In this context, a special focus is placed on the modernization of design law in Europe, a topic at the heart of current debates and set to gain new momentum with the phased implementation of revised legislative provisions starting in 2025.

The Article “The Modernisation of EU Design Protection: A New Era for European Creativity”

Written by Nathalie Dreyfus, founder of Dreyfus, this article—featured in Expert Guide 2025—explains the key aspects of the European reform on designs, including:

  • The shift from “Community Designs” to “European Union Designs” (EUD), symbolized by the adoption of the Ⓓ icon to align branding with ® for trademarks and © for copyright.
  • An expanded definition of “designs” and “products” to include virtual or animated objects, as well as user interface elements.
  • A more flexible application process, allowing up to 50 designs to be grouped in a single filing, regardless of their classification under the Locarno Classification.
  • Strengthened rights for owners, now clearly covering 3D reproductions and the unauthorized use of digital files intended for additive manufacturing.

Thanks to this article, which you can find on Corporate LiveWire’s website, readers can appreciate the full scope of the reform and the opportunities it creates, while also understanding the associated risks and challenges.

The Expertise of Dreyfus, an IP Specialist, Recognized by the Specialized Press

A Track Record Built in the Field

From its inception, Dreyfus has stood out thanks to a multidisciplinary approach that combines legal, technical, and strategic capabilities. This versatility allows the firm to:

  • Anticipate market and legislative changes, especially in rapidly evolving areas (digital, AI, 3D printing).
  • Advise a wide range of clients—major corporations, SMEs, startups, and independent creators—on building and defending their portfolios of designs, trademarks, and patents.
  • Play an active role in European discussions through conferences, in-depth articles, and broader initiatives (experience-sharing, public consultations).

Moreover, Nathalie Dreyfus’s direct involvement in leading publications demonstrates the firm’s high-level recognition. Being invited to publish an analysis in a resource such as Expert Guide 2025 not only affirms Dreyfus’s professional legitimacy but also highlights concrete and pragmatic solutions to the challenges of design law.

Concrete Commitments in Response to the Modernization of Design Law

In her article, Nathalie Dreyfus highlights several crucial points on which the firm already assists its clients:

  1. Adapting to the Ⓓ Symbol: educating companies about the importance of clearly indicating the protection of their creations and advising them on strategies for using the symbol (logo, packaging, marketing).
  2. Managing a Design’s Life Cycle: from the conceptual stage to market launch, including potential renewals and defense against counterfeiting.
  3. Addressing New Digital Formats: supporting the development of technical documentation that includes 3D renderings, animations, or screenshots.

These areas of expertise illustrate Dreyfus’s proactive approach and its capacity to provide businesses with ways to capitalize on their creations.

Challenges Raised by the Reform and Practical Solutions

Why Is This Reform Crucial?

  • Uniformity: One of the main objectives of the reform is to further harmonize rules across the European Union, taking into account national specificities and the need to adapt to the digital era.
  • New Forms of Piracy: 3D printing, sharing of STL files, and the rise of the metaverse require rethinking the rights granted to designers and businesses.
  • Strengthening Competitiveness: Better protection boosts investment in design and encourages creativity, two crucial levers for international competitiveness.

The Contributions of Dreyfus, an IP Expert

To address these developments:

  • Portfolio Audits: the firm offers a full audit of existing designs to identify gaps, filing opportunities, or renewal strategies best suited to new fee structures and updated protection durations.
  • Litigation Support: if counterfeiting is detected, Dreyfus has extensive experience in proceedings before the EUIPO, French courts, and other European jurisdictions.
  • Training and Awareness: Nathalie Dreyfus and her team regularly conduct webinars and seminars to demystify legislative developments and enhance the in-house expertise of their clients’ teams.

External Links and Additional Resources

To help you delve deeper into the issues discussed in this article, here are some useful links:

  1. Expert Guide 2025 – Intellectual Property (Corporate LiveWire): you’ll find the full article entitled “The Modernisation of EU Design Protection: A New Era for European Creativity” by Nathalie Dreyfus.
  2. EUIPO – European Union Intellectual Property Office: the EU’s official body for registering trademarks and designs, and the key organization behind the reform.

These resources allow you to gain a clearer understanding of the challenges and opportunities arising from the new European design legislation, as well as to consider potential strategies available to companies and creators.

Conclusion: Dreyfus, a Trusted Partner for the New Era of European Design

Specialized press, through the Expert Guide 2025 published by Corporate LiveWire, emphasizes the relevance of Dreyfus’s work in the intellectual property sphere. The modernization of design law in Europe—and the heightened focus on digital creations—marks a major turning point for both businesses and creators.

By being recognized and cited as an expert, Dreyfus solidifies its position as a leader in providing strategic, legal, and technical support to major corporations, SMEs, and individuals seeking to secure and capitalize on their intangible assets. The firm is at your disposal for further information, personalized case studies, or custom support.

Need Support Protecting Your Designs?

Contact Dreyfus:

Benefit from the expertise of Nathalie Dreyfus and her team to anticipate the effects of the reform and implement the best practices to safeguard your creativity and maintain your competitiveness in the European market.

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AI and Copyright: Understanding the U.S. Copyright Office’s Second Report on Copyrightability

Written by Dreyfus10/02/2025

The evolution of AI and Copyright

The United States Copyright Office has released the second part of its comprehensive study on artificial intelligence and copyrightability. This latest report, dated January 29th 2025, titled “Copyright and Artificial Intelligence, Part 2: Copyrightability“, delves into one of the most contentious legal questions of the modern digital era: Can AI-generated content receive copyright protection?

As AI tools like ChatGPT, MidJourney, and DALL·E continue to evolve, artists, musicians, and content creators are leveraging these technologies to assist in their creative processes. However, where does the boundary between human creativity and AI automation lie? This report provides critical insights into how the U.S. Copyright Office currently addresses AI-generated works and their copyrightability.

Background: A recap of Part 1 – Digital Replicas

Before discussing AI-generated works, it is essential to recall the findings from the first part of the U.S. Copyright Office’s AI report, which focused on digital replicas (e.g., deepfakes and AI-generated voices). Key takeaways from Part 1:

  • Digital replicas (AI-generated likenesses of individuals) raise significant legal and ethical concerns.
  • The report emphasized the lack of clear legal frameworks to address the unauthorized replication of an individual’s image or voice.
  • The Copyright Office recommended further legislative action to protect against AI-generated deepfakes and potential misuse of identity rights.

With Part 2, the focus has now shifted to an equally pressing issue: the copyrightability of AI-generated content.

AI-Generated works and copyrightability

The fundamental question addressed in Part 2 of the report is: To what extent can AI-generated content be considered copyrightable under U.S. law?

1 – Human authorship requirement

According to the U.S. Copyright Act, only works created by a human author qualify for copyright protection. The Copyright Office reaffirms this principle, stating that:

  • Copyright protection does not extend to material generated wholly by AI.
  • AI-assisted works may qualify for copyright protection if there is sufficient human involvement in the creative process.
  • The determination of copyrightability will be handled on a case-by-case basis.

There is a key precedent: Thaler v. Perlmutter (2023) – The U.S. courts upheld that AI-generated works cannot be copyrighted, reinforcing the human authorship requirement.

2 – The role of AI in creativity

The Copyright Office differentiates between AI as a tool and AI as an autonomous creator.

  • AI as an assistive tool meaning that if AI is used to enhance human creativity, the final work may be eligible for copyright protection.
  • AI as an autonomous creator meaning that if AI produces a work without human creative input, it cannot be copyrighted.

For example: a human artist using Photoshop, AI-based filters, or generative AI as part of their creative workflow can still claim copyright. However, a fully AI-generated artwork created without human selection, arrangement, or modification is not copyrightable.

3 – The significance of prompts

One of the most controversial topics covered in the Copyrightability Report is whether AI-generated content based on human prompts qualifies for copyright protection.

The Copyright Office’s stance:

  • Writing a prompt alone is not sufficient for copyright protection.
  • Prompts must involve “sufficient creative expression” and “substantive human input” to be considered authorship.
  • A person modifying, arranging, or selecting elements of AI-generated content may qualify for partial copyright protection.

Therefore, an AI-generated images or texts created using a prompt may not belong to the user unless they demonstrate clear human creativity in the final output.

4 – Legal analysis and international approaches

Different countries are addressing AI and copyright in varying ways:

  • United States: AI-generated content is not eligible for copyright protection unless there is substantial human involvement.
  • United Kingdom: AI-generated works may receive limited protection under existing copyright laws.
  • European Union: The EU AI Act mentions the obligation for AI systems to comply with intellectual property rights.
  • China: AI-generated works can be copyrighted, but liability and authorship rules remain ambiguous.

The lack of global harmonization in AI and copyright laws could create significant legal uncertainties for creators using AI worldwide.

Implications and potential legal changes

The Copyright Office recognizes the complexity of AI copyrightability and explores potential legal reforms, including:

  • Clarification of “substantial human involvement” in AI-assisted works.
  • New guidelines for AI-generated content registration.
  • Possible introduction of a sui generis (unique) legal framework for AI-generated creative works.

However, the report does not recommend legislative changes at this time, instead emphasizing case-by-case assessments.

Conclusion: The Future of AI and Copyright

The U.S. Copyright Office’s second report on AI and copyrightability establishes that:

  • AI-generated works are not independently copyrightable unless there is clear human authorship.
  • Prompts alone do not establish copyright ownership.
  • The legal framework remains flexible but requires further clarification.

As AI technology continues to evolve, creators, businesses, and policymakers must navigate an uncertain legal landscape.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters. Our experts stay ahead of AI and copyright developments!

Dreyfus Law Firm collaborates with a global network of IP attorneys to provide tailored legal solutions in the evolving field of AI and copyright.

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French Trademark Office INPI Decision of September 13, 2024: Bad Faith Trademark Filing and Its Implications

Written by Dreyfus10/02/2025

The INPI’s decision of September 13, 2024, in case NL 23-0183, addresses the critical issue of bad faith in trademark law. The cancellation of the “POMPON” trademark, which was registered to monopolize a name linked to the renowned sculptor François Pompon, underscores the misuse of intellectual property rights for undue commercial advantage. This article dissects the legal reasoning, evidence, and implications of this decision for businesses operating in intellectual property and cultural heritage sectors.

Case Summary

Background

The trademark “POMPON,” registered by a museum boutique operator, faced cancellation proceedings initiated by Dixit Arte SAS. The latter argued that the registration aimed to monopolize the name “Pompon,” associated with the renowned sculptor François Pompon, whose works are part of the public domain.

Key Arguments

At the heart of the case were allegations of bad faith. The plaintiff contended that the trademark holder sought to exploit the public domain status of François Pompon’s name by imposing licensing fees on other legitimate users. This was seen as an attempt to gain undue control over a name that should remain accessible to all stakeholders within the art and heritage sector. The registrant countered that the trademark was filed to protect the integrity of Pompon’s legacy and ensure high-quality reproductions.

Legal Framework

Establishing Bad Faith

The INPI based its decision on Article L.714-3 of the French Intellectual Property Code, which allows for the cancellation of trademarks filed in bad faith. It requires a comprehensive assessment of the registrant’s intent at the time of filing, as established by European case law. Factors such as knowledge of prior use by third parties and the broader context of the registration play a decisive role in determining bad faith.

The Role of Evidence in Establishing Intent

Key factors included the registrant’s activity as the manager of museum boutiques in Dijon, which gave him direct exposure to Dixit Arte’s products. Additionally, email correspondence proposing royalty-bearing licenses substantiated the claim that the registration was a deliberate attempt to monetize a name integral to the public domain. The registrant’s argument of safeguarding the artist’s legacy was found to lack credibility given the financial motivations reflected in the evidence.

Decision and Implications

Cancellation of the Trademark

The INPI concluded that the “POMPON” trademark was filed with the intent of creating an undue monopoly on a public domain name. By restricting access to a term essential for the reproduction and sale of François Pompon’s works, the registrant sought to exploit the trademark system in a manner inconsistent with its intended purpose.

Implications for Future Trademark Applications

This decision underscores the necessity of ensuring good faith in trademark applications, particularly in cases involving public domain elements. Businesses must exercise due diligence to confirm that their filings align with the principles of fairness and do not obstruct legitimate commercial practices. This ruling also highlights the importance of preserving access to cultural heritage symbols for all stakeholders.

Broader Lessons from the Decision

Safeguarding Public Domain Names

The decision underscores that names linked to public domain works, such as those of François Pompon, should remain freely available to stakeholders. Attempts to impose exclusivity through trademark registration risk contravening the principles of intellectual property law.

Ethical Licensing Practices

The case serves as a reminder of the importance of transparency and fairness in licensing agreements. Leveraging trademarks to extract royalties on public domain names undermines the spirit of free competition and innovation.

Conclusion

The cancellation of the “POMPON” trademark by the INPI sets a precedent against bad faith filings, emphasizing the need for ethical practices in intellectual property management. Businesses must align trademark strategies with the principles of fairness and competition.

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Our firm specializes in trademark protection, ensuring compliance with legal frameworks while maximizing commercial value. Contact us to discuss tailored strategies for your business needs.

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FAQ

What is bad faith in trademark?

Bad faith in trademark law refers to a situation where an applicant files for a trademark with dishonest intentions. This may include registering a mark solely to block competitors, exploit the reputation of an existing brand, or prevent others from using a term that should remain available in the public domain.

What is bad faith EU trademark?

In the EU, bad faith is defined under Article 59(1)(b) of the EU Trademark Regulation. It applies when a trademark application is filed with the intention of misleading, obstructing competitors, or unfairly benefiting from another party’s reputation. The European courts assess factors such as prior knowledge of third-party use, the applicant’s commercial strategy, and any attempt to abuse trademark law.

How do you cancel a trademark?

A trademark can be canceled through invalidity or revocation proceedings:

  • Invalidity: If the mark was registered in bad faith, lacks distinctiveness, or infringes prior rights.
  • Revocation: If the trademark has not been used for a continuous period of five years or has become misleading to consumers.
    Proceedings can be initiated before the relevant intellectual property office (e.g., EUIPO, INPI) or in court, depending on the jurisdiction.

How to withdraw a trademark?

A trademark can be withdrawn voluntarily by submitting a request to the relevant trademark office. The applicant or owner may request total or partial withdrawal, meaning it may apply to all goods/services or just specific ones.

How do you protect your domain name?

To protect a domain name:

  1. Register it promptly to prevent third-party claims.
  2. Monitor for potential cybersquatting using watch services.
  3. Secure trademarks corresponding to the domain name, strengthening enforcement rights.
  4. Enforce rights through legal actions, such as Uniform Domain-Name Dispute-Resolution Policy (UDRP) or national court procedures.

What are the conflicts of trademarks with domain names?

Conflicts arise when a domain name incorporates a registered trademark without authorization. Key issues include:

  • Cybersquatting: A third party registers a domain with the intent to profit from the trademark owner.
  • Trademark infringement: If a domain creates confusion among consumers, misleading them into thinking it is affiliated with the trademark owner.
  • Reverse domain name hijacking: When a company tries to obtain a domain name illegitimately by claiming false trademark rights.

Resolving such conflicts may involve legal action under UDRP, court proceedings, or negotiations with the domain holder.

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Unlocking Financial Support: The EUIPO SME Fund Relaunches

Written by Dreyfus29/01/2025

In today’s increasing competitive market, safeguarding intellectual property is crucial for small and medium-sized enterprises (SMEs). Recognizing this need, the European Union Intellectual Property Office (EUIPO) is set to relaunch the SME Fund on February 3, 2025, offering financial assistance to SMEs seeking IP protection. This initiative program allows businesses to claim reimbursements of up to €1,000 for IP applications, reducing the financial barriers to securing vital protections.

Overview of the EUIPO SME Fund

The SME Fund is a well-established reimbursement initiative designed to support European SMEs in protecting their intellectual property rights. By offering financial aid, the fund encourages businesses to register trademarks, designs, and patents, thereby securing their innovations and enhancing market position. The 2025 relaunch continues the success of previous years, reflecting the EUIPO’s commitment to fostering a robust IP framework within the SME community.

Eligibility Criteria for SMEs

To qualify for the SME Fund, enterprises must meet the European Union’s definition of an SME, which includes:

  • Employing fewer than 250 persons.
  • Having an annual turnover not exceeding €50 million or a balance sheet total not exceeding €43 million.

Eligible SMEs can apply for vouchers covering up to 75% of certain IP service fees, including trademark and design applications. It’s important to note that specific eligibility criteria and services covered may vary; reviewing the EUIPO’s official guidelines is essential for clarity.

Application Process

Applying for the SME Fund is a streamlined process that involves several key steps:

  1. Preparation: Evaluate your current IP assets to identify which require protection, ensuring the application aligns with business priorities.
  2. Registration: Create an account on the EUIPO’s SME Fund portal to access application forms and resources.
  3. Voucher Application: Submit an application specifying the IP services and attach necessary documentation.
  4. Service Utilization: Upon approval, use the voucher to cover eligible IP service fees within the stipulated timeframe.
  5. Reimbursement Claim: After completing the IP service, submit proof of payment to claim reimbursement up to the voucher’s value.

Benefits of Protecting Intellectual Property

Securing IP rights offers numerous advantages for SMEs:

  • Market Exclusivity: Protects products and services from unauthorized use by competitors.
  • Enhanced Brand Recognition: Enhances brand value and consumer trust through trademark registration.
  • Revenue Opportunities: Enables licensing opportunities and potential revenue streams.
  • Increased Business Valuation: Increases overall business valuation by safeguarding intangible assets.

By leveraging the SME Fund, businesses can overcome cost barriersassociated with IP protection, thereby fostering innovation and long-term growth.

Conclusion

The relaunch of the EUIPO SME Fund on February 3, 2025, presents a valuable opportunity for SMEs to secure financial support for intellectual property protection. By understanding the eligibility criteria and following the application process, businesses can obtain reimbursements of up to €1,000, ensuring their innovative assets remain safeguarded.

At Dreyfus Law Firm, we specialize in intellectual property law and are dedicated to assisting clients in navigating the complexities of IP protection. Our expertise guarantees that your business innovations are secure and legally protected. Dreyfus Law Firm is in partnership with a global network of attorneys specializing in Intellectual Property.

Contact us today for personalized support in accessing the SME Fund or securing your IP rights.

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Dreyfus: A Unique Expertise in Intellectual Property and Trademarks in France

Written by Dreyfus28/01/2025

The Dreyfus firm is a key player in the French intellectual property landscape. Specializing in trademark management, it supports its clients in all stages of protection, from registration to defense against counterfeiting. This article outlines the essential elements of French trademark regulations while highlighting Dreyfus’s role in this field.

A Strong Legal Framework for Trademarks

Legislative Foundations

In France, trademark protection is based on Law No. 91-7 of January 4, 1991, updated by Ordinance No. 2019-1169 and Decree No. 2019-1316. These reforms ensure alignment with European standards, facilitating trademark registration and management procedures.

An International Dimension

France is a party to several international conventions, including the 1883 Paris Convention and the 1994 TRIPS Agreement. It also participates in the Madrid systems for international trademark registration, ensuring protection beyond national borders.

Role of the INPI

The National Institute of Industrial Property (INPI) plays a central role by managing filings, oppositions, and invalidity actions. This institution ensures rigorous enforcement of trademark regulations, supporting innovation and brand integrity.

Trademark Registration and Management Process

Eligibility Requirements

Distinctiveness remains a cornerstone of trademark registrability. Recent case law highlights evolving consumer perception standards, particularly concerning basic English terms used in France (e.g., MySunbed, INPI, 27 May 2024). Meanwhile, decisions on deceptiveness emphasized the need for claimants to demonstrate misleading potential at the time of filing, rather than relying on post-registration evidence (INPI, 3 April 2024, NL 22-0199).

Non-traditional trademarks, such as holograms or sounds, are also accepted under specific technical conditions.

Unregistered Trademarks

French law does not recognize unregistered trademarks. However, well-known trademarks enjoy protection against misappropriation based on principles of unfair competition. Proving renown remains challenging, as it requires robust evidence such as prior judicial recognition or extensive consumer exposure (INPI, 12 July 2024, Immo Angels). Meanwhile, allegations of parasitic intent require clear links between the litgious trademark and a recognizable external reference, as demonstrated in the Cadault case (INPI, 29 April 2024).

Administrative Procedures

Trademark applications are submitted via the INPI’s online platform. While a prior search is not mandatory, it is highly recommended to prevent conflicts with existing rights.

Benefits of a Registered Trademark

  1. Legal Protection: A registered trademark provides a presumption of validity and enables legal action in cases of infringement.
  2. Ease of Management: Registration simplifies oppositions and cancellations while allowing the blocking of counterfeit product imports.
  3. Strengthened Identity: A well-protected trademark enhances brand recognition and competitive advantage.

Validity Period and Renewal

A trademark is valid for 10 years and can be renewed indefinitely. Failure to use a trademark for five consecutive years risks cancellation, but the INPI provides solutions to justify its use.

Recent decisions reflect the broad evidentiary approach adopted by the INPI. Undated documents such as marketing materials and screenshots, when evaluated collectively with dated items, have been deemed admissible (e.g., INPI, 2 May 2024, Bob dépannage!). This flexibility underscores the importance of maintaining detailed usage records.

Opposition and Litigation

Opposition

Any interested party can oppose a trademark application within two months of its publication. This procedure is crucial to protect pre-existing rights.

Cancellation Actions

Trademarks can be canceled on various grounds, such as lack of distinctiveness or bad faith registration. These mechanisms remain vital tools for preserving registry integrity.

New Perspectives: NFTs and Artificial Intelligence

With the emergence of NFTs and AI, new trademark challenges are arising. Businesses must adapt their trademark portfolios to cover these new technologies and anticipate the legal challenges they entail.

Dreyfus’s International Recognition of Excellence

Dreyfus law has earned widespread acclaim for its outstanding expertise in intellectual property law, consistently ranking among the best in the field:

  • WTR1000 2024: Nathalie Dreyfus has been ranked among the top professionals in intellectual property law, reflecting her unparalleled expertise and commitment to client success.
  • Legal 500: Nathalie Dreyfus was referenced in the 2023 edition for her innovative approach to trademark management and strategic advice.
  • Who’s Who Legal Thought Leaders France 2024: Nathalie Dreyfus was distinguished in this prestigious report, highlighting her thought leadership and significant contributions to the field.

These prestigious accolades highlight the Dreyfus firm’s unwavering dedication to excellence, its commitment to delivering exceptional legal services, and its reputation as a trusted partner in protecting intellectual property rights.

Dreyfus’s Judicial and International Expertise

Founding and managing partner of Dreyfus Law Firm, Nathalie Dreyfus is an officially accredited judicial expert with the Paris Court of Appeal in trademark and design law, as well as with the Court of Cassation in trademark matters. Her recognized expertise extends internationally, as she is also an accredited expert with WIPO (World Intellectual Property Organization) in Geneva, where she issued 17 decisions in 2024, and with the Forum (USA). Her unique combination of judicial and international experience positions her as a leading authority in the field, providing unparalleled insights and solutions to complex intellectual property issues.

Conclusion

By combining local expertise with an international vision, Dreyfus law firm offers an innovative approach to protecting trademarks in a constantly evolving world. Whether through advisory services, management, or litigation, Dreyfus remains a trusted partner for companies looking to enhance their intangible assets.

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Intellectual Property Law in the Wine Sector: Protecting heritage and innovation

Written by Dreyfus27/01/2025

The wine industry represents a unique confluence of tradition, innovation, and commerce. Intellectual property (IP) law plays a pivotal role in preserving this delicate balance by safeguarding trademark identities, regional heritage, and innovative practices. This article delves into the intricacies of IP law in the wine sector, examining the role of trademarks, geographical indications, and other IP tools in protecting the interests of stakeholders while fostering innovation.

The pillars of intellectual property in the wine industry

I – Trademarks: Securing brand identity

Trademarks are vital for distinguishing one producer’s products from another. In a competitive market, a strong trademark ensures brand recognition, consumer loyalty, and legal protection against imitation.

There are challenges in trademark registration :

  • Similarity of Products: Many wine trademarks fall under Class 33 (alcoholic beverages excluding beers). The dense registration landscape often leads to disputes regarding the similarity of products and signs.
    • Example: Opposition cases where trademarks like “MARQUIS DELATRE” and “MARQUÈS DEL ATRIO” were scrutinized for phonetic and visual resemblance.
  • Distinctiveness: Terms such as “Château” or “Domaine”, often used descriptively, require additional elements for registration.

Recent rulings from bodies like the French INPI and the EUIPO emphasize the need for trademarks to exhibit clear distinctiveness and avoid consumer confusion. For instance, rulings on marks like “LOUIS DE LA ROCHE” and “DOMAINE DE LA ROCHE” underline the importance of evaluating the overall impression of signs.

II- Geographical Indications: Preserving regional heritage

Geographical indications protect the names of regions associated with specific qualities or reputations, ensuring authenticity and preserving cultural heritage. Examples include Champagne, Bordeaux, and Chianti.

The EU’s comprehensive framework, such as the recent Regulation (EU) No. 2024/1143, governs the use and protection of GIs.

Some case studies :

  • Evocation and Misuse: Attempts to register terms evocative of protected geographical indication, such as “TIZZANO” for Corsican wines, often lead to legal challenges. Courts examine whether such terms might mislead consumers.
  • Modification of Specifications: Changes to PDO (Protected Designation of Origin) rules, such as permitting new grape varieties, must align with preserving the essence of the GI.

III – Innovation and patents in viticulture

Innovations in vineyard management and winemaking—from advanced irrigation systems to fermentation techniques—can be patented. Such protection incentivizes R&D while allowing producers to capitalize on their ingenuity.

While patents foster innovation, the wine sector’s reliance on tradition necessitates careful consideration of cultural impacts. For example, patents related to non-traditional production methods, like de-alcoholized wines, must respect established GI rules.

IV – Design Protection: Packaging and presentation

The aesthetic appeal of wine packaging often influences consumer choice. Design rights protect elements like bottle shapes, labels, and closures, ensuring that unique presentations remain exclusive to their creators.

Innovative designs, such as eco-friendly packaging, have gained traction. Protecting these designs reinforces a producer’s commitment to sustainability and brand differentiation.

Enforcement and Dispute Resolution

Infringement Challenges

The wine industry’s premium products are frequent targets of counterfeiting. IP enforcement mechanisms, such as customs interventions and litigation, are essential for combating this issue.

Domain Name Disputes

Cybersquatting cases, such as those involving domain names mimicking famous wine brands, highlight the need for vigilance in digital spaces. The UDRP (Uniform Domain-Name Dispute-Resolution Policy) provides an effective resolution mechanism.

Arbitration and Mediation

Given the international nature of the wine trade, alternative dispute resolution methods like WIPO arbitration offer efficient solutions to cross-border IP conflicts.

Navigating the Future of IP in the Wine Sector

Sustainability and IP

As sustainability becomes a market priority, producers are leveraging IP to protect eco-friendly innovations and branding strategies.

Digital Marketing and E-commerce

With the rise of e-commerce, protecting trademarks and designs in digital marketplaces is increasingly critical.

Strengthening International Cooperation

Harmonizing IP standards through international agreements, such as the Lisbon Agreement and TRIPS, is essential for ensuring robust protection across jurisdictions.

Conclusion

The wine industry’s reliance on intellectual property law underscores its commitment to preserving heritage while embracing innovation. By navigating the complexities of trademarks, geographical indications, patents, and design rights, stakeholders can protect their assets and ensure a thriving future for viticulture worldwide. Effective enforcement and adaptation to emerging trends will further solidify the role of IP as a cornerstone of the wine sector’s success.

Dreyfus Law Firm excels in protecting and promoting wine trademarks, as well as managing appellations of origin (AOC/AOP) and geographical indications (GI). With our deep expertise in intellectual property and wine law, we support producers, trade unions, and other stakeholders in safeguarding and enhancing their products.

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Contestation procedures for designs: Understanding the legal framework

Written by Dreyfus20/01/2025

Table of contents

  1. Key differences between besigns and trademarks
  2. Legal framework in France
    • Judicial nature of contestation
    • Grounds for contestation
  3. Legal framework in the european union
    • Administrative options at EUIPO
    • Grounds for contestation in the EU
  4. Procedural differences
  5. The impact of the EU design package
  6. Practical tips for protecting and contesting designs
  7. Recent case studies and emerging trends
  8. Industry-specific considerations in design contestation
  9. Economic impact of design protection
  10. The future of design law: Trends and innovations
  11. Integrating sustainability into design protection
  12. Collaboration between legal and creative teams
  13. Cultural and geographic influences in design protection

In the field of intellectual property, contesting designs is a highly specialized area requiring legal precision and strategic insight. Unlike trademarks, designs lack specific administrative procedures, such as opposition or invalidity actions, making judicial procedures the primary route for contestation. In this article, we explore the legal framework, grounds, and procedures involved in contesting designs, providing actionable insights for businesses and legal professionals alike.

  1. Key differences between designs and trademarks

Designs, protected under the French Intellectual Property Code (CPI), serve to safeguard the appearance of a product. Unlike trademarks, which benefit from administrative opposition processes, designs can only be contested through judicial actions.

Key distinctions include:

  • No opposition mechanism: Designs do not benefit from an EUIPO-like opposition procedure.
  • Broader protection scope: While trademarks protect distinctive signs, designs focus on the aesthetic and functional aspects of a product.

Example: A French company attempted to register a design for furniture that closely resembled an existing trademark-protected logo. The court ruled in favor of the trademark holder, demonstrating the broader implications of aesthetic overlaps.

  1. Legal framework in France

Judicial nature of contestation

In France, designs are governed by the French Intellectual Property Code (CPI). Unlike trademarks, there are no administrative opposition procedures for designs. Contestation is only possible via judicial routes, such as:

  • Actions for nullity before national courts.
  • Defensive exceptions in infringement litigation.

Grounds for contestation in France

Two primary categories of grounds apply:

  1. Relative grounds: Conflicts with prior rights (e.g., earlier designs, copyrights, trademarks).
  2. Absolute grounds: Lack of compliance with statutory criteria such as novelty or individual character.

A notable feature: French law includes no statute of limitations for nullity actions (PACTE Law, L 521-362 CPI), ensuring long-term contestability. This makes France particularly favorable for rights holders.

Case Study: A French fashion house successfully contested a competitor’s design by demonstrating lack of novelty, leveraging the flexibility of the French judicial system.

  1. Legal framework in the European Union

Administrative options at EUIPO

In the EU, Registered European Union Designs (REUDs) are governed by Council Regulation (EC) No 6/2002. Unlike France, the EU offers a dual-track system for contesting designs:

  1. Administrative invalidity proceedings: Handled by the EUIPO, offering a streamlined and cost-effective option.
  2. Judicial actions: Available before national courts, typically for Unregistered European Union Designs (UEUDs).

Grounds for contestation in the EU

The EUIPO allows invalidation requests based on:

  • Lack of novelty: The design must be entirely new.
  • Individual character: The design must produce a distinct overall impression on informed users.
  • Functional necessity: Designs dictated solely by technical function are excluded from protection.

Administrative invalidity proceedings at the EUIPO are subject to specific procedural timelines, ensuring swift resolution compared to French judicial processes.

Statistical Insight: EUIPO reports indicate that approximately 40% of invalidity requests are upheld, emphasizing the need for comprehensive pre-registration checks.

  1. Procedural differences

Filing mechanisms

  • France: Nullity actions must be filed directly before a national court.
  • EU: Administrative invalidity requests can be submitted to the EUIPO, bypassing courts initially.

Cost and time efficiency

  • France: Judicial proceedings can be time-consuming and costly due to the need for legal representation and court fees.
  • EU: Administrative procedures at the EUIPO are faster and less expensive, making them more accessible for businesses.

Appeal processes

  • France: Appeals follow the hierarchical court system, culminating in the French Supreme Court.
  • EU: EUIPO decisions can be appealed to the Board of Appeal, then to the General Court, and finally to the CJEU.

  1. The impact of the EU design package

The new EU design regulation significantly enhances the framework for protecting and enforcing designs by introducing alternative procedures, such as opposition and cancellation mechanisms. These changes promote harmonization between national and European systems, aligning national procedures with the EUIPO’s approach for trademarks. This ensures consistency and accessibility across the EU.

Key benefits of the EU design package:

  • Administrative invalidity mechanisms: Faster and less expensive alternatives to judicial proceedings.
  • Harmonized opposition procedures: Allow third parties to raise objections at an earlier stage, during the registration process.
  • Increased accessibility: By 2027, all Member States must adopt these procedures, ensuring uniformity across jurisdictions.

Example: A German technology firm utilized the EUIPO’s administrative invalidity procedure to challenge a competitor’s design, saving significant legal fees compared to a traditional court case.

  1. Practical tips for protecting and contesting designs

  1. Conduct comprehensive searches: Before filing a design, ensure its originality through thorough market and database research.
  2. Maintain detailed documentation: Keep records of creation processes to establish proof of novelty.
  3. Collaborate with legal experts: Engage with intellectual property specialists to navigate the complex legal requirements effectively.
  4. Leverage cross-jurisdictional strategies: Coordinate with international partners to challenge designs that infringe upon global rights.

Additional Tip: Utilize tools like the EUIPO’s DesignView database to assess potential conflicts prior to registration.

  1. Recent case studies and emerging trends

Case study: A major fashion brand vs. Fast fashion retailer

In 2022, a well-known luxury brand contested the design of a fast fashion retailer’s handbag. The court found that the retailer’s design lacked individual character, ruling in favor of the luxury brand. This case underscores the importance of robust design documentation.

Emerging trend: Blockchain for design authentication

Blockchain technology is increasingly being used to authenticate design originality and protect against counterfeiting. By creating immutable digital records, businesses can enhance the traceability and security of their designs.

  1. International perspectives on design contestation

Design contestation varies significantly across jurisdictions, reflecting differences in legal traditions, economic priorities, and enforcement mechanisms. For example:

  • United States: Designs are primarily protected under design patents, with the United States Patent and Trademark Office (USPTO) managing applications. Contestation often revolves around patent validity and infringement disputes in federal courts. The U.S. system places a higher emphasis on technical functionality compared to aesthetic originality.
  • China: As the world’s largest manufacturer, China has faced challenges with design piracy. However, recent reforms to its intellectual property laws have introduced stricter protections and improved enforcement mechanisms, including specialized IP courts.
  • Japan: The Japanese design system emphasizes harmony and functionality, and the country has streamlined its administrative opposition mechanisms. This ensures a faster resolution compared to judicial processes in Europe or the U.S.

These international variations underline the importance of tailoring strategies for contestation and registration to the target jurisdiction.

  1. The role of technology in protecting designs

The advent of new technologies has transformed how designs are created, registered, and contested:

  • Blockchain for design authentication: Blockchain provides immutable records of design creation, ensuring proof of originality. This technology is particularly effective in combatting counterfeiting and unauthorized duplication.
  • AI-assisted design analysis: Artificial intelligence tools can assess similarities between designs, helping to identify potential conflicts or infringements during the registration phase.
  • Digital marketplaces and IP enforcement: Platforms like Amazon and Alibaba have implemented IP protection programs, allowing rights holders to file complaints against counterfeit designs. These platforms also use machine learning to detect and remove infringing products automatically.

By leveraging these tools, businesses can enhance the security and enforcement of their design rights while streamlining dispute resolution processes.

  1. Ethical considerations in design protection and contestation

Ethics play a crucial role in the field of intellectual property. Key considerations include:

  • Fair use vs. infringement: Striking a balance between protecting designs and allowing creative inspiration is vital. Overly aggressive enforcement can stifle innovation, particularly in fields like fashion and technology where trends evolve rapidly.
  • Access to justice: Small businesses and independent designers often face barriers to contesting designs due to the high costs of litigation. Policymakers must ensure that administrative mechanisms remain accessible and equitable.
  • Cultural appropriation: Protecting designs inspired by indigenous or cultural heritage raises complex questions about ownership and exploitation. International treaties, such as the Nagoya Protocol, are beginning to address these issues, but gaps remain.

  1. Integrating sustainability into design protection

Sustainability is becoming a critical factor in design protection. As businesses adopt eco-friendly practices, there is a growing need to protect innovative designs that align with sustainability goals.

  • Eco-friendly packaging: Protecting designs for reusable or biodegradable packaging.
  • Green technology: Ensuring that designs for energy-efficient products are safeguarded.

Tip for Businesses: Highlight the sustainable aspects of your design during registration to align with emerging consumer and regulatory priorities.

  1. Collaboration between legal and creative teams

A successful design protection strategy often involves close collaboration between legal experts and creative professionals. This ensures that the design not only meets aesthetic goals but is also defensible from a legal perspective.

  • Workshops and training: Educating design teams on the basics of intellectual property.
  • Early involvement: Engaging legal teams during the design ideation phase to avoid potential conflicts.

  1. Cultural and geographic influences in design protection

Cultural heritage and geographic factors can play a significant role in design protection. The influence of local aesthetics often leads to unique designs, but it also requires careful navigation of regional laws.

  • Traditional craftsmanship: Protecting designs inspired by cultural heritage.
  • Global strategies: Adapting to the specific requirements of different jurisdictions.

Example: The protection of traditional motifs used in luxury goods to prevent unauthorized commercialization.

Safeguard your intellectual property with expert legal guidance. Contact Dreyfus Law Firm for personalized strategies to protect and contest your designs. Contact Us today to schedule a consultation!

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The French SREN Law: Safeguarding the Digital Space and Enhancing Cybersecurity

Written by Dreyfus20/01/2025

The digital landscape has undergone significant transformations, necessitating robust regulatory frameworks to ensure user safety and fair competition. In response, France enacted the SREN Law on May 21, 2024, aiming to secure and regulate the digital space. This legislation introduces measures to protect citizens, particularly minors, combat online fraud, and enhance digital sovereignty.

Protection of Minors

A primary focus of the SREN Law is safeguarding minors from harmful online content. It mandates stringent age verification mechanisms for platforms hosting adult content, ensuring that minors are effectively restricted from access. The law also empowers regulatory bodies to enforce compliance, with non-adherent platforms facing potential sanctions.

Combating Online Fraud

To address the surge in digital scams, the SREN Law introduces a cybersecurity “anti-scam” filter designed to protect users from fraudulent communications, such as phishing emails and deceptive SMS messages. This proactive measure aims to bolster user confidence in digital interactions by mitigating the risks associated with online fraud.

Enhancing Digital Sovereignty

The legislation seeks to reduce dependency on major cloud service providers by promoting interoperability and fair competition within the digital market. By prohibiting restrictive practices that hinder software interoperability, the SREN Law encourages a more competitive environment, fostering innovation and providing businesses with greater flexibility in their digital operations.

Implications for businesses and digital platforms

The enactment of the SREN Law imposes new compliance requirements on digital platforms and businesses operating within France. Entities must implement robust age verification systems, enhance cybersecurity measures to detect and prevent fraud, and ensure their services adhere to interoperability standards. Non-compliance may result in significant penalties, including fines and operational restrictions.

Conclusion

The SREN Law represents a pivotal advancement in France’s approach to digital regulation, emphasizing user protection, particularly for vulnerable populations, and promoting a secure and competitive digital ecosystem. Businesses and digital platforms are advised to thoroughly assess the law’s provisions and undertake necessary measures to ensure compliance, thereby contributing to a safer and more equitable digital environment.

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Tesla and the EUIPO Halt Trade Mark “Trolling”

Written by Dreyfus06/01/2025

In a recent decision, the EUIPO Cancellation Division declared the European trade mark “TESLA,” held since 2022 by Capella Eood, invalid on the grounds of bad faith. This ruling marks a significant victory for car manufacturer Tesla in its fight against abusive trade mark practices, often referred to as “trade mark trolling.” Here, we examine the key aspects of this landmark case.

Background and Stakes of the Case

In 2022, Tesla filed for the cancellation of the trade mark “TESLA” registered with the EUIPO by Capella Eood, a company linked to an individual notorious for “trade mark trolling” practices. The cancellation request was based on Article 59(1)(b) of the EU Trade Mark Regulation (EUTMR), which allows invalidation of a trade mark filed in bad faith.

Tesla argued that Capella Eood engaged in speculative strategies to register trade marks with the aim of blocking other businesses’ operations and extorting financial settlements. Evidence presented included examples of shell companies, delays in opposition proceedings, and strategic transfers of trade mark rights.

For its part, the trade mark holder denied the accusations of bad faith, calling Tesla’s claims defamatory and asserting that the mark was inspired by independent and unrelated sources.

Criteria Analyzed by the EUIPO to Establish Bad Faith

Under Article 59(1)(b) EUTMR, bad faith is assessed based on the applicant’s intent at the time of filing, considering honest commercial practices. The EUIPO examined this intent using several key criteria, informed by cases such as Sky and Others (C-371/18) and Koton (C-104/18 P).

  1. Motives and Context of the Filing

The contested trade mark was filed shortly after Tesla achieved international recognition, particularly following the success of the Tesla Roadster. This timing indicated that the trade mark holder was aware of Tesla’s growing reputation. Claims that the mark was inspired by a newspaper article or a CD were deemed implausible, especially since the targeted products—vehicles and accessories—matched Tesla’s offerings.

  1. History of Speculative Practices

Evidence revealed that the trade mark holder had a history of systematic filings through shell companies across different jurisdictions. These trade marks were often abandoned or withdrawn, reflecting a deliberate strategy to exploit the EU trade mark system for financial gain by creating blocking positions.

  1. Dilatory Tactics and Lack of Genuine Use

The EUIPO identified procedural delays, such as inconsistent modifications to descriptions of goods and services, aimed at stalling opposition proceedings for nearly 15 years. The holder failed to provide any evidence of genuine commercial activity linked to the mark, reinforcing the perception of a purely obstructive strategy.

  1. Awareness of Tesla’s Operations

Tesla’s products were already widely covered by the media in Austria and beyond before the filing of the contested mark. This media coverage, combined with other evidence, demonstrated that the trade mark holder was aware of Tesla’s operations and sought to capitalize on its anticipated success in the European market.

  1. Violation of Fair Practices

The EUIPO concluded that the trade mark was filed without any genuine intent to use it and with the purpose of obstructing legitimate filings. This conduct was deemed contrary to principles of good faith and fair commercial practices.

Implications of the Decision

This decision aligns with a growing body of case law aimed at curbing trade mark trolling and safeguarding fair competition. It also reinforces principles established by the Sky and Others and Koton rulings, which define bad faith as intent contrary to honest practices at the time of filing.

For businesses, this case highlights the importance of monitoring trade mark filings that could impede their operations and acting swiftly to contest abusive registrations. It also underscores the critical role of evidence—such as filing histories and dilatory tactics—in proving bad faith.

Conclusion

The EUIPO’s decision in the TESLA case is a significant step in combating systemic abuse in the trade mark domain. It underscores that commercial practices must remain fair and honest, and that the trade mark system should not be exploited for speculative purposes. For companies like Tesla, such rulings help protect their investments and reputation in the European market. Trade mark law professionals, such as Dreyfus Law Firm, remain committed to assisting clients in addressing such challenges effectively.

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2024 Retrospective: Intellectual Property and Innovation at Dreyfus

Written by Dreyfus31/12/2024

The year 2024 was marked by significant legislative developments, strategic innovations, and impactful initiatives for Dreyfus, a firm specializing in intellectual property. This retrospective highlights the key milestones, in-depth analyses, and tools developed to support businesses in a constantly evolving legal environment.

Key Articles and Legislative Developments

The firm analyzed several major developments in 2024, including:

  1. New European Measures for Sustainable Packaging: Adopted by the European Parliament, these measures aim to reduce packaging waste and promote eco-friendly alternatives. Practical recommendations were shared to help businesses comply with these new requirements.
  2. Modernization of the Designs and Models Regime: The “Designs and Models Package”, effective May 1, 2025, introduces significant adjustments to enhance the protection of creative works within the European Union. The firm’s articles explained these changes and their impact on creative businesses.
  3. Monitoring Brands on Social Media: A critical topic in the digital age. The firm explored advanced strategies to counter online intellectual property infringements and introduced new services for monitoring domain names and company branding.

Modernized Services and Tools

To address clients’ growing needs, the firm expanded its services in:

  1. Monitoring of Brands, Domain Names, Social Media, and Designs & Models: Enhanced vigilance to protect your intangible assets in an increasingly complex environment.
  2. Tailored Support: The firm developed customized solutions for startups and emerging businesses, offering tools suited to their limited resources.

Events and Internationalization

The firm actively participated in international conferences and organized webinars on various topics, consolidating its leadership role in intellectual property.

Looking Ahead to 2025

For 2025, the firm plans to continue exploring new technologies, introduce training tailored to clients’ specific needs, and strengthen its international collaborations.

We wish all our clients, partners, and collaborators an excellent year 2025, filled with success and serenity. May this new year be marked by positive achievements and lasting peace worldwide.

Dreyfus Law firm partners with a global network of intellectual property lawyers.

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