Data protection : what are today’s real issues?

Written by Dreyfus28/08/2020

Consumers are now demanding more privacy and security in t he processing of their personal data.

What are the challenges for the data controller?

There are several challenges for the data controll

er – i.e. the legal or natural person who determines the purposes and means of a processing operation – to overcome at different scales:

– information management: reducing the data collected by establishing a precise commercial context, and reducing the risks by taking care of the contracts;

– communication with suppliers: being able to find solutions and evaluate each other;

– monitoring of data processing: setting up mechanisms for reporting data breaches or threats concerning suppliers (for example, if Easyjet has had a data breach, the data controller, operating in the same business sector as the airline, if notified, can redirect its decisions.

What are the risk management methods?

A more effective risk management includes precise identification of suppliers, prior audits when integrating new suppliers, automation of evaluation and control processes, and risk prevention to protect data.

What about cookies?

They are used to collect data. Their presence is materialized by the banners you find on websites that ask for your consent to collect certain data.

In summary, there are 3 types of cookies:

– cookies strictly necessary for the operation of the site;

– cookies intended to improve the performance and functionality of the site;

– advertising cookies (which will soon disappear, Firefox has already put an end to them, and Google has announced that Chrome will no longer use them in 2021).

How do I collect online consent?

Remember that in France, consent must be free, specific, informed and unambiguous (GDPR).

Nevertheless, in order to collect consent, the user must understand what he is consenting to. He must receive clear information (purpose and duration of the use of cookies, list of third parties with whom the information is shared etc…) and the data controller must be particularly attentive to the layout of his banner.

What should be the role of the DPO (Data Protection Officer) in a modern company?

If the company promotes ethics, innovation, data, then the DPO has a key role: they shed light on data collection, and bring their vision on risks from an individual’s point of view.

In the past, their role was purely administrative, but today it is different, the DPO accompanies the company on a permanent basis, but they cannot guarantee compliance on their own: they have to expand a web within the organization (with the digital or marketing departments in particular) in order to promote the essential principles.

What changes are taking place within companies, in terms of GDPR awareness?

When GDPR came into force, programs were launc

hed to raise awareness of it, , and it was necessary to mobilize the entities and ensure they had good skills (setting up e-learning internally, for example).

Despite the existing similarities in legislation, what differences persist and what are the challenges that companies have to face in this respect?

There are technical differences (in terms of data retention time, each country has its obligations) and very important cultural differences, the way in which people in different countries deal with these subjects depends on their history. Consequently, it is difficult to find “golden rules” (= harmonized rules).

How can organizations benefit from their compliance efforts?

One way to recognize that companies have done their job properly is through certifications, such as HDS certification.

Dreyfus helps you to comply with these new legislations.

Bringing a lawsuit does not necessarily preclude the UDRP procedure.

Written by Dreyfus05/08/2020

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.

E-reputation: what you need to know about your possible actions

Written by Dreyfus31/07/2020

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.

It has already been eight years since the European Court of Human Rights (“ECHR”) stated that “websites contribute greatly to improving the public access to news and, in general, to facilitating the communication of information” (Ahmet Yıldırım v. Turkey, no. 3111/10, ECHR 2012).

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).

The Court recently reminded that “the right to protection of reputation is a right which, as part of the right to respect for private life, falls within the scope of Article 8 of the Convention”, echoing previous cases concerning defamatory statements in the press (Pfeifer v. Austria, no. 12556/03, 15 November 2007, and Polanco Torres and Movilla Polanco v. Spain, no. 34147/06, 21 September 2010).

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

According to the french National Commission for Information Technology and Individual liberties (Commission Nationale de l’Informatique et des Libertés (CNIL)), an administrative authority whose role is to ensure respect for personal data, personal data is defined as “any information relating to an identified or identifiable natural person (…)”

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.

The right to be forgotten

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.

Trademark revocation action now possible before the French Trademark Office

Written by Dreyfus28/07/2020

Since April 1, 2020, it has been possible to bring trademark revocation actions directly before the French Trademark Office following the transposition of European Directive 2015/2436 commonly known as the “Trademark Package”. This transposition gives rise to an overhaul of French intellectual property law and grants new powers to the French Trademark Office.

This new competence offered to the French Trademark Office is likely to lead to a consequent increase in forfeiture actions.

Previously, only the courts of law had jurisdiction in forfeiture actions. Jurisdiction is now shared between the judicial courts and the French Trademark Office, the aim being to facilitate access to this procedure and to reduce the number of courts.

Thus, according to article L716-5 of the Intellectual Property Code, the French Trademark Office has exclusive jurisdiction for forfeiture actions when they are brought as a principal claim and the court has jurisdiction for counterclaims.

What are the grounds for action in case of revocation?

It is possible to act on several bases:

Failure to use the trademark for 5 years
Trademark that has become the usual designation of the product or service
Brand that has become misleading

How does the forfeiture procedure work?

First of all, the parties have to resort to a dematerialized written instruction phase.

This forfeiture procedure complies with the adversarial principle. Two months after the filing of a forfeiture action, the holder will be able to present his observations.

Once the applicant has submitted his observations, the proprietor of the contested mark will be granted a period of one month to rebut them.

The duration of the forfeiture action varies according to the number of exchanges between the parties during the investigation phase. Thus, the procedure can vary between six months and one year, with the parties having up to three contradictory exchanges to present their observations.

The French Trademark Office has three months to rule from the end of the investigation phase. This decision may be appealed to the Court of Appeal.

Who can bring a forfeiture action?

The plaintiff does not have to show any interest before the French Trademark Office, unlike the case of an action brought before the court.

Therefore, the application may be made before the French Trademark Office by any natural or legal person and may relate to all the goods and services targeted by the trademark.

What about the proof of use of the trademark?

The burden of proof shall lie with the proprietor of the trademark whose rights are liable to lapse. The criterion of use is selected on the basis of the evidence given by the proprietor to prove that the trademark has been seriously exploited.

Thus, in order to prove genuine use of a trademark, the owner must keep and present to the French Trademark Office or to the judges, documents such as brochures, printouts of the website page, order forms, invoices or written statements, that provide evidence of use This is not an all-encompassing list.

Consequences of the French Trademark Office decision

The forfeiture will take place, in accordance with Article L. 714-4 of the French Intellectual Property Code, by a court decision or by a decision pronounced by the Director General of the French Trademark Office and will take effect on the date of the request or on the date on which a reason for forfeiture arose.

The decision shall be recorded in the National Register of Trademarks and published in the Official Bulletin of Industrial Property (BOPI).

Conclusion

The forfeiture procedure at the French Trademark Office will certainly lead to a greater number of actions, offering the possibility to act quickly and at lower cost

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.

ABOUT THIS TOPIC…

– How to bring an action for invalidity or revocation of a trademark before the French Trademark Office INPI?

Sale of the domain name extensions: .cars, .car and .auto at auction

Written by Dreyfus23/07/2020

The domain name extensions (gTLDs) “.cars”, “.car” and “.auto” are about to be auctioned on July 13, 2020. Launched in 2015, these extensions have been at the forefront of innovation in the domain name and automotive marketing. They have been used around the world by dealerships, startups and major automotive technology companies.

After a five-year partnership, and more than $11 million raised, XYZ, a company offering new domain name options, and Uniregistry, both a registrar and a domain name registry, have jointly decided to divest this investment.

The auction will be conducted by Innovative Auctions, an independent auction consulting firm, and all assets to be auctioned will include the extensions in question, as well as all intellectual property rights, trademarks, social network accounts and high-value domain names such as <electric.car> and <rental.car>, which are currently reserved by Uniregistry.

It should be noted that this is the first gTLD auction in which anyone can participate. Interested parties can contact cars@innovativeauctions.com for more information.

Invalidity action: assessment of the likelihood of confusion between a trademark and an earlier company name when the companies maintain economic links at the time of filing

Written by Dreyfus20/07/2020

In a decision of the Court of Justice of the European Union from April entretiennent, 2020 Gugler France SA v Gugler GmbH (Case No 736/18), the Tenth Chamber held, in the context of an invalidity action, that there is no likelihood of confusion between a trade mark and an earlier corporate name if, at the time of filing, the companies do in fact maintain economic links, and provided that there is no likelihood of error among the public as to the origin of the designated goods.

As a reminder, the Article L711-4 of the Intellectual Property Code states that it is not possible to register a trademark that could infringe prior rights, and in particular, if there is a likelihood of confusion, distinctive signs such as the company name or corporate name.

Thus, a conflict may arise when a company files as a trademark a sign that is identical to the corporate name of a company operating in the same sector of activity, creating in consequence a likelihood of confusion. The owner of the previous corporate name will then be entitled to act to cancel the trademark.

While the coexistence of a company name with a subsequently registered trademark had already been admitted (decision of the Paris Court of Appeal from February 24, 1999), it had also been affirmed that, if the use of the prior rights infringed their trademark right, the owner could request that the use be limited or prohibited (Commercial Chamber of the Court of Cassation of November 12, 1992). Therefore, the trademark right could defeat the prior right.

Thus, in case law, there is a certain prevalence of trademark rights over other distinctive signs.

In its decision from April 23 ,2020 Gugler France SA v. Gugler GmbH, the ECJ clarified the assessment of the likelihood of confusion between a trademark and an earlier company name.

The German company Gugler GmbH registered the semi-figurative Community trade mark “GUGLER” on August 25, 2003.

On November 17, 2010, Gugler France filed an application for a declaration of invalidity of the trade mark, in respect of all the goods and services designated, on the basis of its earlier company name.

The CJEU, seized after an application filed with the Cancellation Division of EUIPO and the filing of an appeal before the General Court of the European Union, confirmed the latter’s decision and dismissed Gugler France’s application for a declaration of invalidity.

In fact, on the day the trademark was registered, there were commercial relations between the parties, Gugler France being the distributor in France of the products manufactured by Gugler GmbH. In addition, Gugler GmbH held shares in the capital of Gugler France.

The Court held that the fact that consumers may believe that the goods and services in question come from companies which are economically linked does not constitute an error as to their origin.

The Court therefore rejects the argument of Gugler France that, in order to avoid the likelihood of confusion, the economic link must exist in a particular sense, namely from the holder of the earlier rights (Gugler France) to the holder of the later rights (Gugler GmbH).

According to the Court, the mere existence of a single point of control within a group in respect of products manufactured by one of them and distributed by another may be sufficient to exclude any likelihood of confusion as to the commercial origin of those products.

By this solution of the Court, the essential function of a trade mark right, which is the function of guaranteeing the identity of origin of the marked goods or services, is also indirectly recalled. The trade mark thus serves to distinguish the goods or services of one company from those offered by another company. Therefore, in this case, the commercial links between the two parties made it possible to consider that the goods had the same commercial origin.

Figurative trademarks: be aware of the extent of your protection

Written by Dreyfus17/07/2020

The judges of the Paris Court of Appeal, ruling on a referral from the Court of Cassation, adopted a strict approach to similarities between a figurative trademark and a later , semi-figurative trademark in a dispute between two companies specialized in ready-to-wear clothing.

The company Compagnie Financière de Californie (“Compagnie de Californie”), which specializes in street wear chic clothing, is the owner of the trademarks on the sign, in particular for clothing products.

In 2013, the company noted that International Sport Fashion, also active in the fashion industry, had registered and used a trademark that it believes to be similar to its own:

The signs in question have the shape of an eagle’s head, without detail, reproduced in black and white within a circle.

In order to obtain compensation for the damage it considers to have suffered, Compagnie de Californie brought an action for infringement.

After having been dismissed at first instance and on appeal, the company turned to the Court of Cassation, which referred the case back to the trial judges after partial cassation.

The referring Court of Appeal first compared the trademarks in question. Its analysis is rigorous, particularly from a conceptual standpoint: it considers that the trademark of Compagnie de Californie refers to “the dark side of the bird of prey while the other refers to the image of a much less aggressive bird” (certainly due to the presence of a closed beak).

The court points out, among other things, that visually, these birds’ heads are not facing the same direction and that one has the beak closed and the other open.

On the phonetic level, the court notes, unsurprisingly, that the mark at issue will be pronounced “Eagle Square” in reference to the verbal element it contains, which will not be the case for the earlier mark.

The court, therefore, considers that there is no likelihood of confusion between the marks.

Next, it examines the question of the exploitation by International Sport Fashion of its mark for clothing products. The Court takes into account all possible elements such as the packaging which contains the goods. The name “EAGLE SQUARE” is affixed to the packaging; it, therefore, considers that there is no likelihood of confusion in the minds of consumers.

It also states that the contested sign which appears by itself on some of the articles is each time bicoloured, “inducing a caesura in the sign”, which gives an overall impression, very different from the earlier mark.

The court, therefore, did not grant the applications of Compagnie de Californie.

Thus, with respect to figurative marks, it is necessary to meticulously estimate the chances of success of an infringement action, since great similarities are generally required to recognize the likelihood of confusion.

This case shows that even marks with a comparable style (presence of a bird in a circle, with only the head entirely painted black) can coexist in the market.

It is questionable whether the Court of Appeal would have taken a different approach had International Sport Fashion affixed the only black and white eagle head to its products. The question also arises as to whether the outcome might have been partially different had California Company also registered, as a trademark, its coloured eagle (which can be found in red on its official website https://www.compagniedecalifornie.com/).

Therefore, in addition to a detailed analysis of the chances of success before bringing an action, it is also necessary to protect the trademark as exploited, taking into account its variants, so as to benefit from the widest possible scope of protection.

All concerned: works generated by artificial intelligence

Written by Dreyfus09/07/2020

Legal issues relating to the ownership of inventions and works created using artificial intelligence (or “AI”) are at the forefront for a variety of businesses.

The first step is to define what artificial intelligence is.

Artificial intelligence is the implementation of a number of techniques aimed at enabling machines to imitate a form of real intelligence. Artificial intelligence is present in a large number of fields of application. It is now used in some cases to create works through algorithmic processing. Such is, for example, the case of the robot painter named E-David, developed by a German university, whose calculation algorithms allow it to paint canvases that are very similar to those painted by humans.

Positive law: the importance of human beings

Intellectual property law was primarily designed to protect the fruits of human intellectual labor, therefore it has had difficulty adapting to the new tools that have emerged as a result of digital evolution.

AI has further blurred the distinction between creator, tools and creation. For some, it is only a tool, for others it has a fundamentally innovative character to which the law should adapt.

In France, the Intellectual Property Code imposes a condition of originality for the works to be protected by copyright. In addition, the works must reflect the expression of the author’s personality. These criteria imply that a work can only be created by a human, possibly assisted by a machine which then serves as a tool in the creation of the work.

Thus, if the work is only created by an AI, the qualification of work cannot be used and copyright protection is not applicable. The same will be true for an invention generated by a machine that cannot be patented.

European law requires the copyright to reflect the “author’s own intellectual creation”. However, in European countries there is no universal approach to the requirement of a human author. The United Kingdom, for example, provides protection for computer-generated works and the author is the person who arranges for the creation of the work, so the authorship is attributed to the programmer.

Thus the inventor cannot be a company or a machine. There is therefore a discrepancy between the obligation to identify the real inventor and the person supposed to be the inventor. It is thus affirmed that decisions regarding the dissemination of the invention will be made by “the owner of the AI machine”.

American copyright law is still strict regarding works made with AI. For example, it has been stated that “the Office will not register works produced by a machine or simple mechanical process that operates randomly or automatically without any creative contribution or intervention by a human author” (Compendium of US Copyright Office Practices of 2014).

Additionally, in a decision of April 22, 2020 concerning an application mentioning an AI tool, DABUS, as the sole inventor, the USPTO recalled that the inventor must be a human.

Are we heading towards an evolution of law, more in line with technological developments?

The question is whether it would be appropriate to modify the intellectual property system in the light of technological developments or to create a sui generis right of AI.

A WIPO meeting on law reform in this area, which will provide an opportunity to discuss the above-mentioned issues will take place in July 2020,

In addition, the European Commission published a White Paper on February 19, 2020 after presenting the ethical guidelines for trustworthy AI on 8 April, 2019. It defined AI, as well asits global guidelines in the regulation of artificial intelligence.

It had already adopted the “Civil Law Rules on Robotics – European Parliament Resolution of 16 February 2017”.

The latter stressed that “considering that, now that humanity is at the dawn of an era in which increasingly sophisticated robots, intelligent algorithms, androids and other forms of artificial intelligence appear to be on the verge of triggering a new industrial revolution which is likely to affect all strata of society, it is of fundamental importance for legislators to examine the legal and ethical consequences and effects of such a revolution, without stifling innovation”.

In addition, a legal personality for machines (electronic personality) could be recognized which would amend the copyright.

Let us recall that currently the only solution, in innovative fields, is to refer to industrial secrecy to preserve the innovations made by AI.

Thus, a reform or clarification of the law to respond to new issues in a more secure manner would be welcome.

To be continued!

The lovelinesss of the European Union: to obtain in one Member State a declaration of counterfeiting for acts committed in another Member State

Written by Dreyfus06/07/2020

CJEU – September 5, 2019

AMS Neve Ltd, Barnett Waddingham Trustees, Mark Crabtree c/. Heritage Audio SL, Pedro Rodríguez Arriba,

It is possible to bring an actionbefore a national court with the purpose proving an infringement of the EU trademark in that Member State, even if the third party has advertised and marketed his goods in another Member State.

That is the answer given by the Court of Justice of the European Union to the preliminary ruling question concerning the interpretation of Article 97(5) of Council Regulation (EC) No 207/2009 of February 26, 2009 on the European Union trade mark.

That reference was made in the context of a dispute between the parties:

– The applicants : AMS Neve, a company founded in the United Kingdom, for manufacturing and marketing audio equipment, represented by its director Mr Crabtree. Barnett Waddingham Trustees “BW Trustees” is the trustee;

versus

– The defendants : Heritage Audio, a Spanish company also marketing audio equipment, represented by Mr Rodríguez Arribas

concerning an infringement action for alleged infringement of rights conferred, inter alia, by an European Union trade mark.

The applicants are the owners of the European Union trademark and of two trademarks registered in the United Kingdom.

Having discovered that Heritage Audio was marketing imitations of AMS Neve products bearing or referring to a sign identical or similar to the said EU and national trademarks and was advertising those products, they brought an action for infringement of an EU trade mark before the Intellectual Property and Enterprise Court in the United Kingdom.

In order to prove the infringement in the United Kingdom, the applicants provided the documents in support of their action, including in particular the contents of Heritage Audio’s website and its Facebook and Twitter accounts, an invoice issued by Heritage Audio to an individual, resident in the United Kingdom.

Then, in order to prove the infringement in the European Union, they provided screen shots from that website showing offers for the sale of audio equipment bearing a sign identical or similar to the European Union trademark. They underlined the fact that these offers are in English and that a section entitled “where to buy” is available on the website, listing distributors in various countries. In addition, they argued that Heritage Audio accepts orders from any Member State of the European Union.

While the Court agreed to rule on the protection of national intellectual property rights, it found that it lacked jurisdiction to rule on the infringement of the EU trade mark at issue.

The appellants appealed against that judgment to the United Kingdom Court of Appeal, which decided to enforce a stay on proceedings and to refer the following questions to the Court for a preliminary ruling:

– Does a national court of a Member State A have jurisdiction to rule on an action for infringement of the EU trademark on account of its advertising and marketing of goods carried out in Member State B?

– If so, what criteria should be taken into account in determining whether the company has taken active measures regarding the infringement?

The answers given by the CJEU are as follows:

– the plaintiff, depending on whether he chooses to bring the infringement action before the EU trademark court of the defendant’s domicile or before that of the territory in which the act of infringement was committed or threatened to be committed, determines the extent of the territorial jurisdiction of the court seized ;

o when the infringement action is based on Article 97(1), it shall cover acts of infringement committed on the territory of the Union (where the action is brought before the court of the defendant’s domicile or, if the defendant is not domiciled in the European Union, in the State in which he is professionally established);

o when it is based on paragraph 5 of the same Article, it shall be limited to acts of infringement committed or threatening to be committed within the territory of a single Member State, namely the Member State of the court seized ;

– in order to ensure that the acts of which the defendant is accused were committed in the EU , it is necessary to determine where the commercial content was actually made accessible to consumers and professionals for whom it was intended. Whether such advertising and offers subsequently had the effect of purchasing the defendant’s goods, is on the other hand, irrelevant.

In the present case, the advertisements and offers referred to by the applicants were aimed at consumers and/or professionals, in particular in the United Kingdom.

In those circumstances, the Court considers that the applicants have the right to bring an infringement action against that third party before a EU trademark court of the Member State within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display.

This possibility of bringing an infringement action before any competent national court to rule on acts of infringement committed in any Member State is very useful in particular to optimise the costs of proceedings, depending on the national regulations. France, for example, offers irrefutable methods of collecting evidence, such as a bailiff’s report, to establish facts of infringement, at attractive prices.

UDRP Procedure: proof of claimed trademark rights must be accurate

Written by Dreyfus02/07/2020

WIPO, Arbitration and Mediation Center, March 5, 2020, No. D2019-2887, SYMPHONY HOLDINGS LIMITED V. JAIMIE FULLER, FULLER CONSULTANCY F.Z.E.

The first criterion of the UDRP – which generally does not pose any difficulty – consists in the applicant demonstrating that a trademark in which he has rights is recognizable in the disputed domain name.

The text of the UDRP Guidelines, available on the ICANN website, is as follows: “Your domain name is identical to, or confusingly similar (note: potentially confusingly similar) to, a trademark or service mark in which the complainant has rights. It is not clear whether the applicant must simply be the owner of the mark, or whether he must also be the registered owner of that mark.

This point must be considered when reading the case of a Bermudan company Symphony Holdings Limited, against the Swiss defendant Jaimie Fuller of Fuller Consultancy concerningthe domain name <skins.net>

The applicant, Symphony Holdings Limited, claimed rights in the Australian trademark’SKINS.NET’, which is identical to the domain name. However, the Experts noted that the Symphony Holdings Limited did not appear as the owner of the mark in the databases of the Australian Office.

The applicant had submitted a copy of an agreement by which it had acquired a list of assets belonging to SKINS International Trading AG (“SITAG”), the registered owner of the mark.

However, this agreement was found to be insufficient, as the precise list of acquired rights was not provided. It was, therefore, not possible to verify that the trademark in question was part of it. All the more so since the contract specifies that all assets are transferred except for those already transferred in 2012 to a Japanese company.

This might lead to the conclusion that if the applicant had provided the list of the transferred trademarks, then the claimed trademark would have been accepted by the experts. The experts stated that they could have issued a “panel order”, i.e. a request for additional documentation. However, they did not do so because the dispute seemed too complex to be resolved via the UDRP procedure. In fact, at the time of the auction of SITAG’s assets, the defendant was one of the applicant’s competitors.

It should be noted that the Respondent had itself acquired the domain name in question, which belonged to SITAG, through an agreement.

On the one hand, this decision may help to recall a fundamental principle of trade mark law: registrations relating to trade marks should be done, in particular in assignment or licensing cases, in order to avoid being harmed subsequently, in the event of a court action, for example.

On the other hand, the decision also emphasizes that the UDRP procedure is not appropriate for all domain name disputes. It is tailored for disputes between a right holder and a cybersquatter. Commercial disputes between companies have no place here.

Thus, it is necessary to be vigilant with regard to all aspects of the procedure. The question of rights, which may seem elementary, must be perfectly taken care of in that the absence of valid proof of the trademark right will necessarily lead to the failure of the complaint, even if the case is more obvious than the one currently under discussion.

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