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Intellectual property law

The International Trademark and the New Members of the Madrid Protocol

Written by sacha.tuillier@dreyfus.fr20/11/2024

The Madrid System, administered by the World Intellectual Property Organization (WIPO), offers businesses a simplified way to protect their trademarks internationally. With the regular addition of new member countries, such as Qatar, in May 2024, the system continues to expand, providing companies with new business opportunities in strategic territories. But how do these new memberships affect the landscape of international trademarks?

The International Trademark and Its Benefits

The Madrid System is based on two international treaties: the Madrid Agreement of 1891 and the Madrid Protocol of 1989. These two instruments allow businesses to file a single international trademark application, designating the countries where they wish to protect their mark.

However, before a company can file such an application, it must first register its mark at the national level in the country where it is established. Following the registration of the international trademark, a dependency link is created with the national mark for a period of five years. Consequently, the loss of rights on the national mark automatically results in the same loss for the international mark in all designated countries.

Through the Madrid System, businesses can benefit from uniform protection of their mark in multiple countries while reducing costs and administrative steps. A single application also simplifies the management of trademark renewals, which are valid for a period of ten years and can be renewed indefinitely.

Qatar’s Accession and Its Implications for International Companies

Qatar became the 115th member of the Madrid Protocol on May 3, 2024, marking a new phase for the Gulf region. It is the fourth country out of six Gulf Cooperation Council (GCC) members to join. This accession allows Qatari companies to register their trademarks internationally through a single procedure while facilitating access to foreign markets. Conversely, foreign businesses can now more easily protect their trademarks in Qatar by designating the country directly in their international trademark application.

For international businesses, the accession of new countries like Qatar to the Madrid Protocol opens up unprecedented commercial opportunities in markets that were previously less accessible. It enables the extension of trademark protection in strategic geographical areas, particularly given the rapid economic growth in the Middle East.

Challenges to Anticipate with New Members

Although the Madrid Protocol offers a centralized filing process, each member country retains its own national trademark laws. This means that even if a trademark is accepted at the international level, it may face challenges in some newly acceded countries. National offices may, for example, reject a trademark based on their specific criteria or extend the processing times, especially in cases of opposition.

Furthermore, companies must be prepared to face opposition in the designated countries. These oppositions may be based on pre-existing rights, leading to prolonged disputes or partial refusals of protection in certain countries. Opposition procedures may vary across jurisdictions, and the timelines can differ significantly.

Conclusion

The ongoing expansion of the Madrid System, with new accessions such as Qatar’s, strengthens the system’s global reach, facilitating access to new business markets. However, these advantages come with legal and administrative challenges, particularly linked to the national specificities of member countries. A proactive risk management approach, particularly regarding oppositions and variations in protection criteria, is essential for companies seeking to optimize their international trademark strategy.

Dreyfus Law Firm provides expert support at every international trademark registration and management stage. Our deep understanding of legal subtleties and our experience in global markets ensure optimal protection tailored to your specific needs.

Dreyfus Law Firm works in close collaboration with a global network of specialized intellectual property lawyers.

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Case Study on Trademark Fraud Allegations in France: Hot Couture’s Pierre Cadault from Netflix Hit Series “Emily in Paris”

Written by Dreyfus18/11/2024

Breaking Down INPI’s Landmark Decision: A Tale of Two Industries

 The French National Institute of Industrial Property (INPI) recently addressed an intriguing trademark dispute that caught the entertainment industry’s attention. The case, involving a character name from the popular Netflix series “Emily in Paris,” has illuminated crucial aspects of bad faith trademark registration claims in the entertainment sector. The dispute centered on a trademark registration filed for cosmetics under Class 3, strategically positioned two months after the series premiere. The contested trademark is related to a fictional character portrayed as an extravagant couturier in the series, creating an unexpected intersection between beauty, fashion, and trademark law.

 

The INPI’s investigation delved deep into the chronology of events. Their analysis revealed “insufficient evidence” to establish the trademark holder’s awareness of prior use at the filing date. Despite the character “Pierre Cadault” prominently featured in the series as a renowned fashion designer, the evidence failed to demonstrate that the name “Cadault” alone had achieved meaningful recognition in France during the crucial initial months following the show’s release.

 

The art of proving bad faith: Beyond surface-level analysis

 A pivotal element in the INPI’s decision rested on the distinction between industries. While acknowledging the subtle connection between high fashion and cosmetics, the INPI determined that cosmetics operate in a separate commercial sphere from haute couture. This industry differentiation substantially weakened any presumed connection between the character’s name and the registered trademark category.

 

The INPI emphasized a fundamental principle: “mere awareness” of prior use does not constitute fraudulent intent. The burden of proving bad faith registration demands concrete evidence that the filing was specifically calculated to prevent a third party from utilizing a necessary business identifier. The timing of the registration, occurring two and a half months post-series launch, combined with the absence of communication between parties, significantly influenced the final determination.

 

The INPI’s reasoning revealed a subtle understanding of practical trademark enforcement. The notable absence of any legal action by the trademark holder to prevent the character’s name use in the series substantially undermined claims of malicious intent. This passive approach contrasted sharply with typical bad-faith scenarios, where trademark holders actively pursue cease-and-desist measures or legal proceedings.

 

A framework precision for evaluating bad faith

 The decision carried significant implications for the intersection of entertainment properties and trademark rights. The INPI acknowledged that while obtaining an injunction to prevent character name use would be legally challenging, potential conflicts could arise if Viacom pursued character-based cosmetic products. This nuanced observation highlights the complex relationship between entertainment content and commercial trademark rights.

 

This decision clarifies the framework for assessing bad faith in entertainment-related trademark registrations. The ruling emphasizes the critical importance of substantial evidence, industry context, and practical commercial implications. Future disputes will likely reference this decision’s “balanced approach” to evaluating trademark validity in the entertainment sector.

 

Conclusion

 The INPI’s thorough analysis offers valuable guidance for navigating the complex landscape of entertainment property rights and trademark protection. The decision underscores the necessity of considering both immediate and potential future commercial applications when evaluating trademark registration intent. This forward-looking perspective ensures that trademark protection serves its intended purpose without unduly restricting creative expression in the entertainment industry.

 

The ruling’s subtle approach to analyzing bad faith claims provides a robust framework that balances the legitimate interests of trademark applicants with those of entertainment property rights holders. As the entertainment industry continues to evolve, this decision will serve as a crucial reference point for resolving similar disputes, ensuring fair and practical outcomes in the dynamic intersection of entertainment and trademark law.

 

 At Dreyfus Law Firm, we recognize that the entertainment and media landscape present unique challenges for trademark protection, as evidenced by the recent “Emily in Paris” case. Our expertise lies in navigating these complex intersections between creative content and trademark rights. We guide entrepreneurs and companies through the intricate process of establishing and defending their trademark rights, particularly when industries overlap, as we saw with the fashion and cosmetics sectors in this case. “Bad faith claims” require sophisticated analysis and compelling evidence, but they are insufficient to demonstrate prior use or knowledge. Dreyfus Law Firm excels at building comprehensive strategies that consider both immediate concerns and future commercial implications. Our team prides itself on helping clients understand the practical aspects of trademark enforcement while ensuring their intellectual property assets are properly protected across multiple industries and jurisdictions.

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Securing Creations: The Blueprint to French Intellectual Property Dispute Resolution

Written by Dreyfus05/11/2024

French intellectual property (IP) law, deeply rooted in civil law tradition, is designed to ensure robust protection and enforcement of IP rights. The French legal framework for intellectual property disputes encompasses civil and criminal remedies, specialized courts, and a highly structured procedural system. This article delves into the intricacies of IP dispute resolution in France, focusing on trademark enforcement, litigation procedures, available remedies, and alternative dispute resolution (ADR) mechanisms while highlighting the essential balance between civil and criminal liabilities in IP infringement cases.

Trademark Enforcement in French Law

Trademark protection in France is governed by the Intellectual Property Code, which outlines the legal avenues available to trademark owners in cases of infringement. The law offers a dual approach whereby acts of infringement can be classified as both criminal and civil offenses. In most cases, trademark disputes are handled by civil courts. However, certain violations may lead to criminal prosecution.

 

For criminal liability, the stakes are high. Trademark infringement can result in substantial penalties, with fines reaching up to 400,000 euros and imprisonment for up to four years for individuals. Legal entities may face fines of up to 2 million euros. While these penalties underline the seriousness with which France views IP violations, the majority of trademark disputes remain within the civil court system, with ten designated courts spread across France, including key jurisdictions like Paris, Marseille, and Lyon.

 

Procedural Pathways in IP Disputes

A trademark infringement lawsuit in France typically begins with a writ of summons, a procedural document laying out the nature of the dispute, legal arguments, and remedies sought. The summons must also contain evidence of the claimant’s attempt to resolve the issue amicably before resorting to litigation. Once filed, both parties are required to be represented by legal counsel throughout the proceedings.

 

The civil litigation process is notably distinct in France due to the absence of a discovery phase. Instead, a claimant can request a search and seizure procedure commonly referred to as “saisie-contrefaçon.” This powerful mechanism enables the claimant, with the assistance of a bailiff, to collect evidence of infringement, including seizing goods and related documents. To initiate this procedure, the claimant must first obtain court authorization, which is granted upon showing a reasonable suspicion of IP infringement. Once the “saisie-contrefaçon” is completed, the claimant has a strict timeline, typically 20 business days or 31 calendar days, to file the main proceedings, failing which the evidence seized may become inadmissible.

 

French courts also adhere to a stringent timeline for rendering decisions in first-instance proceedings, with judgments typically issued within 24 months. This relatively predictable timeframe particularly appeals to right holders seeking timely enforcement of their rights.

 

Burden of Proof and Remedies

As in most civil legal systems, the burden of proof in French IP law lies with the claimant. This responsibility extends to establishing both the occurrence of the infringing act and the likelihood of continued or imminent infringement. In some cases, particularly when seeking provisional relief, such as a preliminary injunction, the claimant must demonstrate that the trademark violation appears likely or is about to occur.

 

French courts offer both provisional and permanent remedies. Provisional remedies can be awarded during injunctive proceedings and may include an order prohibiting further infringement, the seizure of suspect goods, or a requirement for the infringer to provide financial guarantees. Permanent remedies are granted once the court rules on the merits of the case, which may involve the destruction or recall of infringing goods, as well as orders to cease all infringing activities. Additionally, monetary remedies are calculated based on the economic harm caused to the trademark owner, the profits made by the infringer, and any moral damages. However, French law does not provide for punitive damages, and courts retain discretion when determining the final award.

 

Alternative Dispute Resolution: A Growing Trend

While litigation remains the primary method for resolving IP disputes in France, alternative dispute resolution (ADR) techniques, such as mediation and conciliation, are slowly gaining traction. The French government and courts are actively encouraging the use of ADR as a cost-effective, confidential, and flexible means of resolving IP conflicts. One of the key advantages of ADR lies in its ability to preserve business relationships while offering swift resolution, as parties can enter into ADR before or after litigation has commenced.

 

That said, ADR, in the context of intellectual property disputes, carries certain limitations. For instance, rights holders seeking immediate relief, such as a preliminary injunction or seizure order, must rely on the courts, as ADR mechanisms do not provide such enforceable interim measures. Despite these limitations, the growth of ADR signals a shift toward more collaborative methods of resolving trademark and other IP disputes in France.

 

Conclusion

French intellectual property dispute resolution offers a comprehensive, well-structured system that balances civil and criminal liabilities, provides robust enforcement mechanisms, and promotes alternative means of conflict resolution. Trademark owners benefit from clearly defined procedural rules, access to specialized courts, and a range of both provisional and permanent remedies. As the role of ADR continues to grow, the flexibility of the French system ensures that right holders can tailor their enforcement strategies to the unique demands of each case. Through a combination of litigation, administrative enforcement, and ADR, France remains a key jurisdiction for the protection of intellectual property rights.

 

With our team’s mastery of French Intellectual Property Law Dispute Resolution, trademark enforcement, civil and criminal litigation, procedural efficiency, and the nuanced application of search and seizure procedures “saisie-contrefaçon”, Dreyfus Law Firm provides clients with a decisive edge in safeguarding their intellectual property rights. The firm’s intimate understanding of the French legal landscape and its strategic use of provisional and permanent remedies ensure swift and effective resolution of IP disputes. Companies seeking to protect their valuable assets can trust Dreyfus Law Firm to deliver robust defense strategies, minimize litigation costs, and, where appropriate, navigate alternative dispute resolution methods to achieve favorable outcomes. Their expertise in this complex area of law makes them the optimal choice for businesses aiming to secure their intellectual property in the competitive French market.

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