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Latest developments in generative AI and copyright: An in-depth analysis

Written by Nathalie Dreyfus09/04/2025

The rapid evolution of generative artificial intelligence (AI) has transformed the creation and use of content, raising complex questions regarding copyright. This article provides a comprehensive overview of recent legal actions and legislative initiatives related to generative AI and copyright, highlighting the challenges and opportunities that emerge in this dynamic landscape.

Recent legal actions in the United States

In the United States, several lawsuits have been initiated concerning the use of copyrighted works in training generative AI models.

Case of Kadrey v. Meta

In this class action lawsuit, authors Richard Kadrey, Sarah Silverman, and Christopher Golden allege that Meta Platforms Inc. infringed their copyrights by using their books to train its AI model, LLaMA (Large Language Model Meta AI). On November 20, 2023, the U.S. District Court for the Northern District of California dismissed several claims, including those for direct copyright infringement based on the derivative work theory and vicarious copyright infringement. However, the court allowed the plaintiffs’ claims related to the removal of copyright management information under the Digital Millennium Copyright Act (DMCA) to proceed, acknowledging that the plaintiffs had alleged sufficient injury for Article III standing. Subsequently, on March 10, 2025, the plaintiffs filed a motion for partial summary judgment on direct copyright infringement, arguing that Meta cannot rely on a fair use defense concerning its alleged acquisition of “millions of pirated works” used to train its model.

Legal proceedings against OpenAI and Microsoft

In December 2023, The New York Times filed a lawsuit against OpenAI and Microsoft, alleging that their AI models were trained using the newspaper’s articles without authorization, constituting copyright infringement. This case underscores the growing tensions between content creators and AI developers regarding the use of protected works in AI training. As of March 2025, a federal judge has allowed the lawsuit to proceed, dismissing some claims but permitting the core allegations of copyright infringement to move forward.

International legal developments

Legal actions related to generative AI and copyright are also increasing internationally.

Legal action in France against Meta

In France, three associations representing authors and publishers—the Syndicat National de l’Édition (SNE), the Société des Gens de Lettres (SGDL), and the Syndicat National des Auteurs et des Compositeurs (SNAC)—have initiated proceedings against Meta. They allege that Meta used copyrighted works without authorization to train its generative AI model. This is the first action of its kind in France, demanding copyright enforcement and the complete removal of data repositories used for AI training.

Legislative and regulatory initiatives

In response to these challenges, several legislative and regulatory initiatives have been proposed or implemented.

United States: Generative AI Copyright Disclosure Act

In April 2024, U.S. Representative Adam Schiff introduced the Generative AI Copyright Disclosure Act. This bill requires companies to disclose the copyrighted works used to train their generative AI systems by submitting a notice to the Register of Copyrights at least 30 days before the public release of a new or updated AI model. Penalties for non-compliance start at $5,000, with no maximum penalty specified.

European Union: AI Act

In the European Union, the proposed Artificial Intelligence Act (AI Act), which was formally adopted on 13 March 2024, includes specific provisions designed to address intellectual property concerns related to generative AI.

Among its key requirements, the AI Act mandates that developers of general-purpose AI models, including generative AI systems, must provide detailed documentation on the content used for training, including information on whether the datasets contain copyright-protected material. This transparency obligation is aimed at ensuring that rights holders are aware of how their works may have been used.

Additionally, the Act introduces a duty to clearly label AI-generated content, enabling consumers and rightsholders to identify content created without direct human authorship.

These measures reflect the EU’s broader objective to strike a balance between fostering AI innovation and safeguarding intellectual property rights, especially as tensions grow between creators and developers of large-scale AI systems.

Conclusion

The intersection of generative AI and copyright law is a rapidly evolving field, marked by significant legal actions and legislative efforts worldwide. As AI technology continues to advance, it is imperative for stakeholders—including developers, content creators, and legal professionals—to stay informed and engaged with these developments to navigate the complex landscape effectively.

FAQs

What is generative AI?
Generative AI refers to artificial intelligence systems capable of creating content, such as text, images, or music, based on patterns learned from existing data.

Why is generative AI raising copyright concerns?
Generative AI models are often trained on large datasets that include copyrighted works, leading to concerns about unauthorized use and potential infringement.

What is the Generative AI Copyright Disclosure Act?
It is a proposed U.S. legislation requiring companies to disclose the copyrighted materials used to train their generative AI systems, aiming to increase transparency and protect creators’ rights.

How is the European Union addressing AI and copyright issues?
The EU’s proposed Artificial Intelligence Act includes provisions for transparency in the use of copyrighted materials for AI training and mandates labeling of AI-generated content.

What should companies developing generative AI models consider regarding copyright?
Companies should ensure they have the necessary rights or licenses for the data used in training their models and stay informed about evolving legal and regulatory requirements to mitigate infringement risks.

At Dreyfus Law Firm, we specialize in intellectual property law and are committed to assisting clients in navigating the complex intersection of AI and copyright. Our firm collaborates with a global network of attorneys specializing in intellectual property to provide comprehensive support.

Dreyfus Law Firm is in partnership with a global network of Intellectual Property attorneys, ensuring comprehensive assistance for businesses worldwide.

Written by Dreyfus01/02/2023

As a new technology of the future digital world, the metaverse has become important to society and to such an extent and rapid pace, that many companies are entering this new world and making their goods available there.

There is no official definition of what metaverse is. The vision of the Metaverse is to allow us to build a digital representation of anything in the physical world. Furthermore, this technology can be defined as a virtual world where individuals interact through the use of Avatars.

Although full of opportunities and promises, the metaverse raises some legal questions, especially when it comes to trademark law. And because the metaverse is a combination of new digital technologies , few answers are given by National or European courts.

On September 13, 2022, in the webinar “Trademarks and Designs in the metaverse: legal aspects/EUIPO practice” trademarks and designs in the metaverse was discussed.

Lots of companies and individuals have decided to take a step forward by entering the metaverse. The metaverse can be considered an extension of the physical world. Consequently, some companies decide to put their products or services into this new world.

What about trademark protection in the metaverse?

Trademark protection in the metaverse begins with the filing of a trademark. To explain this simply, it is at the actual time of filing that protection of a trademark begins.

The choice of wording is therefore essential for the protection of one’s trademark in the metaverse. In fact, the protection goes hand in hand with the list of goods and/or services covered. In this regard, article L.713-1 of the French Intellectual Property Code states that the registration of the trademark confers to its owner a property right in the trademark for the goods and services designated.

However, it can be complicated to register a trademark for the metaverse. In practice, it is indeed difficult to classify goods or services in order to provide proper protection in this new world. The EUIPO, for example, only accepts the registration of goods or services in the metaverse under certain specific classes.

The EUIPO has set out the classes in which individuals/companies can register trademarks in the metaverse. In this respect, an individual wishing to register a trademark for the metaverse will only be able to do so if the registration covers certain classes.
A few examples are outlined here:

For example: class 9 (downloadable virtual goods, i.e., computer programs presenting footwear and clothing for use online in online virtual worlds or collectibles in the form of non-fungible tokens), class 35 (providing an online environment for the exchange of virtual art and virtual tokens), class 36 (financial services including digital tokens) and class 41 (entertainment services, i.e., the provision of virtual environments in which users can interact for recreational, leisure, or entertainment purposes).

In the context of trademark licensing, it is important to ensure that use is authorized or adapted to the virtual world, or, failing that, to ensure future contracts can be adapted accordingly.

One may also wonder what territorial pAll Postsrotection is needed or required in order to protect a trademark in the metaverse. The Internet is by definition free of all borders.

Is a French trademark enough to obtain protection in the metaverse?

No answer has been given by the courts at the moment. However, it can be assumed that the criteria, for determining when a metaverse area/service is directed to a certain audience, would remain the same as for any Web 2 website, such as the proposed language (as an example).

Finally, in order to secure an optimal protection, registering the trademark among decentralized domain names, such as .ETH, has to be foreseen.

National, European and international jurisdictions have understood the importance of the metaverse. As a result, by extending classes, the jurisdictions are allowing the protection of trademarks in this new world.

♦ Afin d’offrir à nos clients une expertise unique, nécessaire à l’exploitation des actifs immatériels, nous vous tenons informés des enjeux actuels de la propriété intellectuelle et de l’économie numérique à travers les articles rédigés par l’équipe juridique du Cabinet Dreyfus & associés.

♦ This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

Written by Dreyfus13/12/2022

When changing Facebook to Meta, Mark Zuckerberg tried to justify Meta as the future. The metaverse is indeed a reality for millions of online players, a place to meet, interact, and create in this new world.

There is no sole definition of what metaverse is. However, it can generally be defined as a 3D immersive world, in which individuals can interact through the use of Avatars.

Metaverse is a promising technology with a possibly bright future. In fact, as an immersive world, users can do everything they do in the real world. Since this new technology is winning over millions of users, scores of industries, and companies are beginning to enter this world where they can extend and offer their products and services.

One of the industries that has benefited the most from this new technology is the luxury industry. During the Covid 19 pandemic businesses were severely disrupted.

The metaverse began to appear as a very attractive alternative for companies to continue to exist and have a presence in the marketplace. Many luxury houses have adopted a presence and entered the metaverse where they are able to offer a full immersion of styles, clothes, accessories and peripherals to Avatars. The industry has even started to conduct fashion shows with this new environment. A Metaverse Fashion Week was even created. Besides, the perk of digital fashion is that it allows to create designs which could not exist in the real world, due to technical constraints.

These digital clothes can be sold as NFTs and they can broaden the public of a luxury house, which until now could only touch the masses through more affordable goods such as perfumes and cosmetics. These houses are able – from now on – to attract them with virtual clothes.

With this change, and with the potential in this new world, there are legal issues arising. In fact, we can confirm that there is most definitely a grey area when it comes to this virtual world, especially due to the fact that rules and legal frameworks have not yet been fully developed and adapted to this world. One could even wonder whether specific legal rules should apply to the metaverse.

These questions are all the more relevant for companies to consider seriously considering that Offices have not yet brought clear and precise responses. The metaverse therefore, remains a grey legal world, where enforcing intellectual property rights is an uphill struggle.

Here, we will focus on the questions connected to protection of designs in the metaverse.

The European Intellectual Property Office (EUIPO) has been looking at the metaverse and the issues it raises. In its webinar of September 13, 2022 “Trademarks and Designs in the metaverse”, the EUIPO raises some legal issues that trademarks and designs are facing in the midst of the metaverse.

1. The use of designs in the metaverse

Registering the feature of a product is all the more important for some individuals or companies. When an individual or company is granted design protection, it obtains a monopoly on the exploitation of the design.

This is explained in Article 19 of the Council Regulation (EC) on Community designs which concludes “a registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes”.

The EUIPO noted that the term “use” is understood in a broad sense. Therefore, it can include the use of a product on the Internet and thus, in the metaverse. This makes sense since the metaverse is a new “market” for business.

2. The availability of unregistered designs in the metaverse

For a design to be protected, it is essential that it meets the condition of novelty.

Under both European and French law, a design is considered to be new if, at the date of filing of the application for registration or at the date of ownership claimed, no design has been disclosed. According to article 11 (2) of the Council Regulation (EC) on Community designs “a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialized in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality”.

When a luxury house suggests new designs on the metaverse, is it disclosure ?

From a certain perspective, metaverse is a world without any borders where individuals can have access to a bunch of different goods or services.

Consequently, when a company or an individual publishes or exposes a design in the metaverse, the notion of novelty is undermined. So far, there has been no clear answer concerning this question. This question also induces another one: does the uploading of new creations in the metaverse give rise to unregistered design rights in certain territories, such as the United Kingdom?

3. Protection of designs in the virtual world

The last issue raised by the EUIPO concerns the protection of designs in the virtual world.

In fact, one of issues that may be considered is whether products in the metaverse meet the same definition as a product in the real world.

Article 3 of the Council Regulation (EC) on Community designs enounces that a “product means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs”.

A handicraft item is a product made in one-off pieces or in a small series of pieces. It requires the knowledge and skill of one or more craftsmen.

Therefore, some will argue that a product in the metaverse cannot be considered as a handicraft or industrial product.

The EUIPO’s response on this issue does not provide any clear answer due to the lack of case law on the matter. As a matter of fact, it is difficult to say that digital designs are industrial or handicraft items. Nonetheless, the EUIPO accepts digital designs, which are generally classified in class 14-04 of the Locarno classification (such as “icons (for computers)”). Hence, we could completely envision the extension of this class or alternatively, the possibility to add the virtual version of goods in their traditional class (such as class 2 for clothing).

The metaverse is the technology of the moment. However, it raises numerous questions, particularly in relation to designs as to the use of products, their availability and protection within the metaverse. Although the EUIPO gave us some answers as to the use of a product within the metaverse, most of the answers will come with case law.

What are the new provisions of the Directive?

The Directive aims at modernizing the European Union copyright law, taking into account the increase in digital and cross-border uses of protected content. This directive mainly provides:

1) measures to adapt certain exceptions and limitations to the digital and cross-border environment, among which are exceptions concerning:

– text and data mining (TDM exception),

– the use of works in digital and cross-border teaching activities, in particular the accessibility needs of people with disabilities, and

– conservation of cultural heritage;

2) measures to improve licensing practices and ensure more extensive access to content, which consist of harmonized rules facilitating:

– the exploitation of works that are not commercially available,

– the extension of collective licensing contracts by collective management organizations to rightsholders who have neither authorized nor excluded the application of these mechanisms to their works,

– the negotiation of agreements to make works available on video-on-demand platforms (VoD platforms), and

– entry into the public domain reproduction of works of visual art at the end of the initial term of protection; and

3) measures to ensure fair market practices with respect to copyright, liability of content sharing platforms, and contracts for the remuneration of authors and performers.

Similarly, Article 15 of the said Directive creates a new neighbouring right for press publishers. Remember, neighbouring rights are exclusive rights, more recent than copyright, and are exercised independently of the latter. They were born from the need to make the auxiliaries of creation benefit from making their works available to the public. Finally, article 17 (ex-article 13) created a liability regime adapted for internet content sharing platforms, while establishing a new exception for the monopoly of rightsholders.

What are the new obligations of content-sharing platforms?

The targeted main players (Title IV of the Directive) are platforms for mass sharing of copyright and related rights protected content – such as such as Google, YouTube, Dailymotion, or Facebook. The Directive more precisely defines it as:

“The provider of an information-focused service, whose main objective or one of its main objectives is to store and give the public access to a significant quantity of copyrighted works or other protected subject matter that has been uploaded by its users, which it organizes and promotes for profit.”

There are cumulative criteria that determine their obligations. Platforms that have been active for less than three years and have an annual turnover of fewer than 10 million euros will be subject to reduced obligations. On the other hand, platforms exceeding this limit will be subject to a proactive obligation provided for by the Directive regarding works distributed without authorization. The Directive excludes from the liability regime non-profit online encyclopedias such as Wikipedia, non-profit educational and scientific directories, open-source software platforms, online marketplaces like Amazon, Cdiscount or eBay, and individual cloud storage services with no direct access to the public. With regard to the regime applicable to content sharing platforms falling within the above-mentioned scope, the most important thing is to have the rightsholders’ authorization, which allows copyrighted work to be available to the public through, for example, a license agreement.

Can platforms be exonerated from liability?

Platforms may be exonerated from liability if it meets the following three cumulative conditions:

– That it has “made its best efforts” to obtain permission from the rightsholder to release the work to the public,

– That it has “made its best efforts” “in accordance with high industry standards of professional diligence” to ensure the unavailability of the copyrighted work once the unauthorized communication of it has been reported by the rightsholder by means of “relevant and necessary information,“

– That it acted promptly to withdraw or block access to the work upon receipt of “sufficiently motivated” notification from the rightsholder.

Finally, the platforms must be transparent towards rightsholders about the measures taken within their area of responsibility. This Directive gives certain platforms greater responsibility for the content they publish. Meanwhile, the liability system for online selling platforms, where counterfeits abound, will not change. Their status as host or publisher will always determine their liability regime.

In France, in addition to the debates surrounding compliance with the Intellectual Property Code, it will be interesting to see to the court’s decisions in the months to come.

We are a law firm with a unique expertise in the exploitation of intangible assets. We keep you updated on issues related to intellectual property and the digital economy through articles written by the Dreyfus legal team.

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♦ Webinar – Maîtrisez vos marques, noms de domaine, droits d’auteur, logiciels

♦ The « Copyright in the Digital Single Market » Directive: transposition is on the way!

Written by Dreyfus29/07/2021

Directive (EU) No. 2018/1808 of the European Parliament and of the Council, adopted on November 14, 2018 and amending Directive 2010/13/EU (AVMS Directive), has (finally) been transposed into French law, via the Order of December 21, 2020. This directive is part of a context of international competition on the one hand and profound transformation of the audio-visual and the evolution of demand on the other hand.

Redefinition of the essential concepts of the 2010 European Directive

The Order deals with essential concepts that one needs to fathom to understand the issues at stake. First of all, what are audio-visual media services (AVMS)? There are two types:

Linear television services (traditional services);
Non-linear services, e.audio-visual content-on-demand services or media-on-demand services (MOS). These SMAD services allow the customer to choose both when and what they wish to watch.

The Order also calls into question certain principles, such as the old principle of media chronology resulting from a 1960 legislation. This legislation coordinated the diffusion of films, after their release in cinemas, to optimise their profitability.

Modernisation and adaptation of the rules to the transformation of audiovisual services

The Order transposing the Directive has implemented several measures aiming to ensure the effective contribution by market players and to protect both the minors and the public.

The system of financing national cinematographic and audio-visual creations has indeed been completely revised by the Directive. From now on, the country of origin principle applies: each EU Member State may exercise its production contribution regime to foreign VOD (Video On Demand) channels and platforms offering a service on the territory of that Member State.

While this principle is a leading point of the reform, the AVMS Directive also acknowledges the profound changes in multimedia by extending audio-visual regulation to video-sharing platforms, social networks and live video platforms. This way, Brussels wishes to protect minors against certain harmful content and harmonise the legal framework of the European audio-visual sector.

Reform of the 1986 Act and safeguarding the French cultural exception

France wanted to implement the directive and collaborate in the European project while defending the French cultural exception. The Order is mainly concerned with reinforcing the rules of transparency for service publishers and with establishing more complete objectives, such as the inclusion of the system of funding for production (particularly independent production) over time, but also the guarantee that French broadcasters and global platforms are on an equal footing.

Article 19 of the Order, therefore, now requires “publishers of television services and on-demand audio-visual media services aimed at French territory” “when they are not established in France and do not fall under the jurisdiction of France”, to financially contribute in the same way as French publishers do.

Article 28 substantially reforms the principle of media chronology and now allows the industry players to negotiate an agreement with the professional organisations within six months to reduce broadcasting delays.

Extension of the powers of the CSA and protection of minors

As platforms are now part of the regulatory landscape, the CSA has seen its competencies and powers broadened and, in particular, has been assigned two new essential missions: the accessibility of AVMS programmes, and the protection, in particular of minors, against content that is violent, incites hatred or constitutes a criminal offence. The CSA will then have jurisdiction if the head office or a subsidiary of the platform is established in France.

Furthermore, the CSA is also in charge of ensuring that publishers have issued guidelines of best practice (particularly regarding food advertising to which minors could be exposed) and highlighting audio-visual services of general interest on new audio-visual platforms.

In addition, the Order completes Article 15 of the 1986 Act by prohibiting in programmes not only incitement to hatred and violence but also a provocation to commit acts of terrorism, while entrusting the CSA with the task of ensuring that these provisions are respected.

If the Oder is already a significant step forward, the implementing decrees are just as important. In particular, on June 23, 2021, the audio-visual media services on-demand decree (or SMAD decree n°2010-1379 of November 12, 2010) was published in the French Journal Officiel, which probably represents the most valuable step in the project to modernise the financing of French and European audio-visual services. Among other things, SMADs will have to devote at least 20% of their turnover in France to finance the production of European or original French cinematographic and audio-visual works.

Finally, negotiations are underway between TV channels and producers’ representatives about reviewing a second decree known as “DTT” (Digital Terrestrian Television decree No. 2010-747 of July 2, 2020), which defines the production obligations of TV channels. The points discussed concern particularly the sharing of copyright on works between producers and TV channels and the lasting of these rights.

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♦ How will the Digital Services Act change the legal framework for Internet services?

Written by Dreyfus26/05/2021

Digital Services Act : For the first time, a common set of rules on the obligations and liability of intermediary services within the single market will open up new possibilities to provide digital services on the Internet across borders, while ensuring a high level of protection to all users, wherever they live in the European Union.

On December 15, 2020, the European Commission published the Digital Services Act (DSA) and Digital Market Act (DMA) draft regulations, which should allow the implementation of a new regulatory framework, to put an end to the lack of responsability of digital giants.

Said regulations should come into force at the beginning of 2022.

The legal framework relating to digital services on the Internet remained mainly governed by the so-called “Electronic Commerce” directive of June 8, 2000, which for several years has already been met with numerous criticisms on the grounds that it has become obsolete and no longer allows to respond effectively to the new digital challenges and the difficulties posed by the emergence of Web giants, often referred to by the acronym “GAFAM” (for Google, Apple, Facebook, Amazon and Microsoft).

It is in this context that the European Commission officially announced its desire to modernize the regulatory landscape relating to digital platforms on the Internet.

As part of its strategy for a digital single market and alongside the Digital Market Act, the European Commission is proposing a regulation on digital services which will be subject to the ordinary legislative procedure of the European Union.

For Margrethe Vestager, executive vice-president for a Europe adapted to the digital age, “the two proposals serve the same purpose: to ensure that we, as users, have access to a wide choice of products and services online, securely. And that businesses operating in Europe can compete freely and fairly online just as they do offline. They are two sides of the same world. We should be able to shop safely and trust the information we read. Because what is illegal offline is also illegal online”.

According to the press release from the European Commission, the rules provided for by this regulation aim to better protect consumers and their fundamental rights on the Internet, to put in place a solid framework for the transparency of online platforms and clear rules with regard to their responsibility, and finally to foster innovation, growth and competitiveness within the single market.

For the first time, a common set of rules on the obligations and liability of intermediaries within the Single Market will open up new possibilities to provide digital services across borders on the Internet, while ensuring a high level of protection for all users, wherever they live in the European Union.

In order to protect Internet users against the proliferation of illegal content and to adapt the existing legal framework to the emergence of new players on the Internet, public authorities have considered various regulatory strategies.

What is illegal content?

Illegal content is defined as any content that does not comply with European Union law or the national law of a Member State (Article 2, g). In other words, the proposed regulation does not define what is illegal, but refers to European and national laws and regulations.

The directive of June 8, 2000 did not define the concept of illegal content either.

Who will be affected by the new rules?

The proposed regulation aims to apply to any provider of intermediary services, whether established in the EU or not, as long as the recipients of such services are established or reside in the EU.

As for intermediary service providers, the proposal maintains the qualifications as provided for in the directive of 8 June 2000, namely network access and data transmission providers, caching operators and hosting providers.

Tthe proposal introduces a new qualification: online platforms. These are defined as hosting service providers who, at the request of the recipient of the service, store and distribute content to a potentially unlimited number of third parties (Article 2, h). Thus, unlike hosting providers, these players also allow content to be distributed.

Note that the proposed regulation makes a distinction between platforms and “very large” platforms. The latter are those that exceed the threshold of 45 million users per month. Said threshold will be reassessed every six months. Indeed, in addition to a set of common rules applicable to any platform, the proposal provides for a reinforced legal framework for “very large” platforms.

Under the directive of June 8, 2000, the platforms were qualified as hosts on several occasions by the courts. Consequently, they currently benefit from a reduced liability regime provided for in that directive.

Thus, these actors are only responsible with regard to the published content if they have effective knowledge of its illegal nature or if, once they have become aware of it, they have not acted promptly to remove it or to make its access impossible.

Is a new liability regime planned?

The proposed regulation does not introduce a new liability regime. Like hosting providers, the platforms will remain subject to the reduced liability regime provided for by the directive of 8 June 2000. The principle of the prohibition of imposing a general surveillance obligation on hosting providers, including the platforms, is also maintained.

However, compared to hosting providers, platforms will have additional obligations which may vary depending on their size.

In addition, unlike the directive of June 8, 2000, the proposal clarifies that content moderation systems voluntarily put in place by intermediary service providers (hosts, platforms, etc.) do not call into question the benefit of the lightened liability regime provided for in the proposal.

The DSA will thus set up control and monitoring mechanisms. At European level, this will be done through a new, fully independent body: the “European Digital Services Committee” (Art. 47-49) in charge of the committee’s advice and national coordinators.

At the level of the Member States, each will have to designate one or more authorities to ensure the application of the future regulation, including one responsible for the coordination of digital services (Articles 39 to 45). The entire framework will be supplemented by soft law: standards, code of conduct, in particular with regard to online advertising (art. 36).

The DSA is thus presented as an ambitious overhaul of the European legislative framework for digital services on the Internet.

A major project in Brussels, the Digital Services Act (DSA) tends to govern digital technology on the old continent for the years to come. In preparation for many months, the text was officially presented in mid-December 2020 and should enter into force in the next 18 to 24 months after agreement of the Member States and vote of the European Parliament.

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 with our articles written by the Dreyfus’ legal team.

Written by Dreyfus18/05/2021

(OMPI, Centre d’arbitrage et de médiation, 23 février 2021, affaire n° D2020-3322, Netflix Inc. c. WhoisGuard, Inc. / Siddharth Sethi)

Avons-nous encore besoin d’introduire Netflix ? Cette plateforme proposant des services de streaming vidéo compte 195 millions de membres dans plus de 190 pays et semble être connue dans le monde entier. Pourtant, certaines personnes tentent de se soustraire à cette notoriété pour tenter de se construire une légitimité artificielle et justifier l’enregistrement d’un nom de domaine .

En effet, alors que la société Netflix détient de nombreux enregistrements dans le monde pour le signe « NETFLIX » en tant que marque , la société a détecté l’enregistrement du nom de domaine <netflix.store> . En conséquence, elle a déposé une plainte auprès du Centre d’arbitrage et de médiation de l’OMPI pour obtenir son transfert.

Le nom de domaine, enregistré le 3 septembre 2017, pointe vers une page qui présente une animation composée d’un effet d’éclatement de couleur et se termine par un écran de couleur vierge.
Le titulaire soutient que le nom de domaine ne reproduit pas la marque NETFLIX mais est plutôt composé de deux termes , “net” et “flix”. Or, comme prévu, l’expert considère que la marque NETFLIX est reproduite à l’identique dans le nom de domaine.
L’expert considère que si l’utilisation du nom de domaine n’est pas commerciale, son enregistrement ne serait pas non plus considéré comme légitime. En effet, le site mis en place vise à légitimer l’enregistrement afin de dissimuler l’intention de vendre le nom de domaine au Plaignant. Ni la reproduction de la marque NETFLIX dans le nom de domaine litigieux, ni l’extension <.store> n’ont de sens si le projet devait effectivement être non commercial.

En conséquence, il estime que l’intimé n’a aucun droit ou intérêt légitime sur le nom de domaine .
Par ailleurs, l’expert constate que le Défendeur connaissait le Plaignant et son activité et prévoyait qu’en achetant le nom de domaine, il serait en mesure de le revendre au Plaignant avec un bénéfice significatif. Cette stratégie a été partiellement couronnée de succès, car Netflix a fait une offre que l’intimée a refusée, essayant d’obtenir une somme considérablement plus élevée.

Or, l’enregistrement d’un nom de domaine qui correspond à la marque d’un Plaignant avec l’intention de le vendre au Plaignant lui-même , établit la mauvaise foi. L’expert précise que le titulaire « [n’aurait pu] raisonnablement penser qu’un tiers serait en mesure d’utiliser commercialement le Nom de domaine litigieux ». Il convient également de noter que l’intimé a tenté de faire croire à la personne qui l’a contacté qu’il avait reçu d’autres offres plus élevées. En effet, le représentant de Netflix, qui n’avait pas indiqué qu’il agissait pour Netflix, ce qui était un secret de polichinelle, avait proposé la somme de 2 000 USD, que le déclarant jugeait trop faible.

L’expert commente ce comportement récurrent de certains cybersquatteurs : « Peu importe que le Défendeur n’ait pas proposé activement à la vente le Nom de domaine litigieux. Il n’est pas rare que des déclarants opportunistes de noms de domaine incluant une marque tierce attendent d’être approchés, réalisant qu’une offre active de vente du nom de domaine peut faciliter un procès UDRP à leur encontre ».

En conséquence, l’expert conclut que le nom de domaine litigieux a été enregistré et est utilisé de mauvaise foi et ordonne ainsi son transfert au Plaignant.

Sauf dans les cas où un nom de domaine reproduisant une marque notoire telle que NETFLIX est utilisé à des fins de critique sans usage commercial, ou pour un usage commercial minimal, il est quasiment inconcevable d’imaginer qu’un tel nom de domaine ait pu être enregistré de bonne foi . Netflix savait évidemment qu’elle gagnerait le procès, mais a visiblement choisi d’essayer de négocier un rachat à l’amiable pour un budget légèrement inférieur à celui d’une procédure UDRP, si l’on compte les 1 500 USD d’honoraires et les honoraires d’avocat. Cette approche, si elle réussissait, aurait permis d’économiser du temps et de l’argent, mais la simple offre de rachat a pour effet d’encourager le cybersquattage.

Written by Dreyfus29/04/2021

UDRP While one generally refers to the “three criteria” of the UDRP (a trademark similar to the domain name; the absence of rights or legitimate interests of the defendant in the disputed domain name; and the bad faith of the registrant), it should be kept in mind that bad faith in UDRP matters has two aspects: the first is bad faith registration and the second is bad faith usage. Therefore, proving only one of these elements is insufficient even though it may be considered “fair” that a name used in bad faith should be transferred to the applicant.
In the present case, Great American Hotel Group, Inc. complained that its former vice-president retained the domain name <greatamericanhg.com> and changed the password of the account used to manage this name with the registrar.

It all started in 2011 when the applicant decided to adopt the name Great American Hotel Group. Its president at the time asked Mr. Greene, then vice-president of the company, to reserve the domain name <greatamericanhg.group>.
The latter did so, but – apparently without notifying his superior – reserved the domain name in his name instead of that of the company. He did, however, record the company’s postal address, and pay with the company card. In 2012, he hired an anonymity service to hide his data.

Since its registration, the name had been used for the company and Mr. Greene had always treated the domain name as part of the company’s assets.

However, following disagreements, Mr. Greene was suspended from office in 2015 and dismissed in 2016. In 2017, the name was renewed by the company’s technical teams even though Mr. Greene was no longer present. However, the latter subsequently changed the password so that the name could no longer be renewed by the company. The applicant’s counsel proceeded to send Mr. Greene a letter of formal notice, which remained unanswered, leading to the filing of a UDRP complaint.

The panellist acknowledged that the applicant had common law trademark rights through the use of the sign “Great American” and that the registrant did not have any legitimate rights or interest in the name as it was created for the applicant company.
He also acknowledged that the domain name was used by Mr. Greene in bad faith.

Nevertheless, the panellist was more sceptical regarding the issue of bad faith registration. Indeed, the name had been reserved by Mr. Greene at the request of the president of the applicant company, which, in principle, had, in fact, been a registration in good faith.

In order for registration by an employee to qualify as having been done in bad faith, the panellist specified that the employee must have, from the beginning, had “an intention to cause harm”. Therefore, the evaluation must be factual and done on a case-by-case basis.

In this case, Mr. Greene had registered the domain name in his own name. The panellist found that “this may be subject to questioning, and the fact that he did not mention the company does not constitute a good domain name management practice”, however, the president and the company seemed to be equally as uninterested in formalizing the reservation of the name.

For four years, until he was suspended from his functions, the registrant had always displayed conduct that demonstrated that he understood that the name belonged to the company. Thus, there is no reason to suppose that by reserving the name four years earlier, he had intended to compete with the applicant or to benefit from some type of tactical advantage against him.

Consequently, the plaintiff’s complaint was dismissed as the registration in bad faith had not been established. Nevertheless, the panellist specified that the applicant could turn to other avenues to try to obtain relief.

The significance of this decision, in addition to highlighting the dual condition of bad faith, is that it reiterates the need to set up an internal naming charter to avoid any dispersion of assets, both in terms of trademarks and domain names.

Written by Dreyfus26/04/2021

“Intellectual property was viewed with passion – and in a style steeped in pre-Romanticism! – as “the most sacred, the most legitimate, the most unassailable […], the most personal of properties”; “The least likely to be contested, the one whose increase can neither hurt republican equality, nor overshadow freedom,” said Patrick Tafforeau in his book Intellectual Property Law published in 2017.

It should be borne in mind that intellectual property is protected by law. This protection is notably achieved through patents, copyright and trademark registrations. These intellectual property rights allow creators to obtain a certain form of recognition or even a financial advantage from their inventions, plant varieties or creations.

In this sense, paragraph 1 of article L111-1 of the Intellectual Property Code provides that: “The author of a work of the mind enjoys on this work, by the sole fact of his creation, of an exclusive and intangible property right enforceable against all”.

In fact, the Internet has created tremendous opportunities for companies in terms of communicating their brand message. However, its global reach, openness, versatility and the fact that it is largely unregulated are all elements that have created fertile ground for trademark infringement such as counterfeiting.

For a long time, real world activity and Internet activity were separated. Today, the two worlds undeniably tend to come together. Trademark law is therefore very useful in defending yourself in the digital era. By appropriately balancing the interests of innovators with those of the general public, the intellectual property system aims to foster an environment conducive to the flourishing of creativity and innovation.

When you create a company or launch a product, know that it is recommended to protect your trademark (which can be the name of your company, a logo, numbers, letters, etc. …). This registration will protect your company from counterfeiting.

Once registered, the trademark is an industrial property title which gives you a monopoly of exploitation for a period of ten years, renewable indefinitely.

Registering your trademark gives you an exclusive right to a sign that distinguishes the products or services you offer from those of your competitors, which is a significant competitive advantage ! As such, your sign is protected for the categories of goods and services referred to in your trademark registration and in the territory for which said registration is accepted.

In this perspective, it is necessary to put in place a strategy for the protection of your brand as soon as possible. Before filing a trademark, it is important to make sure that it is available and that there is no owner of an earlier right to that trademark. You must therefore be the first to register this mark.

The reasons why trademark registration is becoming a necessity are multiplying in the face of the phenomenon of cybersquatting. Thus, owners of registered trademarks benefit from new advantages in the defense of their rights on the Internet.

First, it has become increasingly important to protect your brand on social media. Since 2009, Facebook has allowed its members to create usernames, easily accessible, but which can include brands. Prior to 2009, Facebook allowed registered trademark owners to identify their trademarks and prevent their use by other members.

Most social networks register user names on a “first come, first served” basis. In order to defend your rights, it is preferable to have a registered trademark in order to report a violation of trademark rights, according to the general conditions of use of social networks.

Secondly, the presence of a mark on the Internet also imposes its protection in referencing on search engines and in particular paid referencing. Through the AdWords system, Google allows advertisers to select keywords so that their ads will appear to Internet users after entering those words into a search. Conflicts arise when advertisers buy keywords that contain brands, but do not have rights to them.

Owning a trademark right then also becomes extremely useful in the fight against unfair practices.

Thirdly, the proliferation of new gTLD domain name extensions must also attract the attention of trademark owners. To date, more than 300 new gTLDs have been delegated, and gradually hundreds more will follow. Faced with the risk of conflicts with protected trademarks, a new tool is made available to trademark rights holders: The Trademark Clearinghouse. It is a centralized declarative database of registered trademarks. Once the trademark is registered, the holder benefits from the priority registration period for new gTLDs – Sunrise Period – and is notified when a third party wishes to register a domain name identical or similar to its trademark. The registrant of the disputed domain name is also informed that he may infringe trademark rights.

Finally, if a domain name reproducing or containing a trademark is registered, the trademark rights holder has the possibility of taking action against cybersquatters using dedicated extrajudicial procedures such as the Uniform Rapid Suspension (URS) and the Uniform Domain Resolution Policy (UDRP). These dedicated procedures are only open to trademark holders.

It should be remembered that the business landscape has changed with the rise of the Internet and, in order to thwart the risks of intellectual property infringements on online markets, it is important that companies adapt their management of industrial property rights portfolio accordingly.

Nathalie Dreyfus – Industrial Property Attorney, Expert at the Paris Court of Appeal, Founder & Director of Cabinet Dreyfus in Paris – Dreyfus.fr

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

Written by Dreyfus14/04/2021

Next applications for new <.mark> extensions will finally be expected towards the end of the year 2022. Unlike the last application period in 2011, this period gives the opportunity for companies to evaluate the economic and strategic opportunity that the <.mark> represents and prepare their file carefully. An effective application process is divided into three phases: in the first phase, companies must assess the practicality of having their own extension.

Then, the application, which includes a business plan, can be prepared.
Finally, the third phase is the submission of the application. ICANN’s applications processing includes other stages that can slow down the process, such as an assessment of the wholeness of the application and a verification of fees of presentation. For this reason, companies must submit their complete applications as soon as possible.

Written by Dreyfus14/04/2021

The DNS NEWS report No. 271 highlights the overall criticism of ICANN solution for not intervening as much as its powers allow in Internet security issues, even though the DNS breaches do not decrease the number of hits. A sort of criticism derives from this observation: should ICANN become a kind of Internet welfare state or should it remain in the background, which would be recommended by the defenders of Internet neutrality.

It should be noted that in 2018, ICANN solution had already undertaken measures to make the Internet a little more secure, by changing the cryptographic key used to protect the Internet’s address book, the DNS (Domain Name System). However, further efforts are expected.
Domain Name System. – V. ICANN, 16 sept. 2018, Approved Board Resolutions [ R]egular Meeting of the ICANN Board).

Source: Dns-news.fr, date, rapp. n° 271,

To discover…

♦ ICANN Summit: the fight against DNS abuse, a GAC priority

Written by Dreyfus14/04/2021

Google With more than 91% of market share, Google is the most used search engine in France. Knowing that it is rare to consult results other than those of the first page, optimizing its ranking is a key issue. Natural results can therefore be negatively impacted: a well optimized site can be better referenced than a more relevant site.

However, Google has not said its last word on the subject yet and has announced the change of its algorithm, in May 2021, in order to favour the catch of the Essential Web Signals and more specifically, the time it takes for a site to load, its interactivity and the stability of the content while it loads. Google already gives advice on this subject on its Google Search Central platform.
One of the objectives of this approach is to counter cases where domain names that were previously exploited and well placed on the podium of search engine results have fallen back into the public domain and have been retrieved by domainers to resolve to parking pages. These names that no longer present attractive content for Internet users should not be the first to appear in the list of results.

Sources:
Emarketerz.fr, 20 mai 2020, Parts de marchés & classement des moteurs de recherche les plus utilisés en 2020, S. Fakir
Google Search Central, SEO pour les utilisateurs expérimentés, Comprendre la convivialité des pages dans les résultats de recherche Google
Domain Name Wire, 10 nov. 2020, « Page experience » to impact Google search rankings starting in May, A. Allemann

Written by Dreyfus23/03/2021

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

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

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

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

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

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

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

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

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

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

Written by Dreyfus27/01/2021

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

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

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

Source: LexisNexis, N°1 (January 2021)

Written by Dreyfus26/01/2021

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

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

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

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

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

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

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

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

Written by Dreyfus21/01/2021

Domain Privacy Service FBO Registrant / Cobra Jet, Cobrajetaviation Cobrajet, Inc. located in the United States, has filed an UDRP complaint to obtain the transfer of the domain name <cobrajetaviation.com>, reserved by the Egyptian company Cobra Jet, Cobrajetaviation which would harm its Egyptian trademark Cobrajet.

In February 2020, the applicant allegedly asked one of its employees to proceed with the registration of the name <cobrajetaviation.com> on his behalf. The latter would thus have reserved the name using his personal credit card first, and being reimbursed by the applicant later. When the job contract ended, he would have refused to transfer to the applicant the information she needed in order to take control over the domain name and its related website. This is a very common dispute and, once again, it give us the chance to recall the importance of establishing naming charter within the company and the importance of assuring the respect of good practices: each domain name must be reserved by the company and with a generic e-mail address of type nomsdedomaine@entreprise.com.

Moreover, since this dispute involves a contractual dispute rather than a dispute over the on a classic case of cybersquatting, the expert rejects the complaint believing that it is for the courts to deal with this matter which “generates questions of contractual breaches, breaches of contract, breaches of fiduciary duties and potentially questions related to local labor laws”. The expert also said and pointed out that even if he could have known about the case on the merits, he would certainly have rejected the complaint, for two major reasons.

On the one hand, in order to prove its right on the trademark, the applicant has submitted the certified translation of a trademark application in Egypt, filed on January 26, 2020 and not yet registered. The expert also notes that a certified translation is not enough to determine who is the true owner of the trademark and that the copy of the original document was missing as wall.

On the other hand, the expert believes that the applicant’s arguments are insufficient to demonstrate the defendant’s bad faith. He did not gave proof of the instructions addressed to the employee; therefore, it is not possible to determine whether he or she has complied with them. However, the UDRP procedure involves proving both the registration and the use of the name in bad faith.

Therefore, it is necessary to ensure that the complaint has a chance to succeed within the framework of the UDRP action, that it does not go beyond its scope and prepare the argument and the most important thing is to provide evident proof of its trademark right; presenting the request for a trademark that does not confer any protection. It should be also noted that the applicant gave an insufficient presentation of herself within the complaint, at the point that the expert indicates that they “presume” that the applicant is active in the aviation sector.

Source: WIPO, Arbitration and Mediation Center, Nov. 5, 2020, aff. No. D2020-2024 Cobrajet, Inc. v. The Endurance International Group, Inc,

Written by Dreyfus03/12/2020

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

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

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

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

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

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

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

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

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

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

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

Written by Dreyfus01/10/2020

Webinar September 10, 2020 :

Intellectual property questions for a successful digital transition

How to secure and optimize your website? What precautions to take? How to defend your intellectual property rights on the Internet?

When you want to succeed in your digital transition, you have to ask yourself certain questions.

Whether you are thinking of selling online or strengthening your e-commerce, intellectual property is a key element.

Webinar replay

Written by Dreyfus31/08/2020

Operators of online hosting platforms will soon know exactly what responsibility to assume for illegal or hateful content published on these platforms. The current climate seems to be very conducive to clarifying the nature and extent of their liability.

In this respect, two schools of thought clash: for some, it is necessary to impose obligations to control the content published on these platforms, but for others, this would reflect the attribution of a new role to these operators, which has not been given to them on a basic level.

“There would be a risk that platform operators would become judges of online legality and a risk of ‘over-withdrawing’ content stored by them at the request of users of their platforms, to the extent that they also remove legal content,” said Advocate General Henrik Saugmandsgaard Øe, who presented his conclusions before the Court of Justice of the European Union (CJEU) on July 20, referring to request for preliminary ruling a preliminary ruling made by the Bundesgerichtshof, the German Federal Court of Justice, on two disputes brought before the German national courts.

The first dispute (1) was between Frank Peterson, a music producer, and the video-sharing platform YouTube and its parent company Google over the users posting , of several phonograms without Mr. Peterson’s permission, to which he claims to hold rights.

In the second (2), Elsevier Inc, an editorial group, sued Cyando AG, in connection with its operation of the Uploaded hosting and file-sharing platform, over the uploading, again by users without its authorization, of various works to which Elsevier holds exclusive rights.

In said requests for preliminary ruling, it is a question of knowing whether the operator of content platforms such as YouTube, performs acts of communication to the public pursuant to Article 3(1) of Directive 2001/29 of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, a directive that was invoked against YouTube.

The answer is negative, according to the Advocate General, who invites the CJEU to bear in mind that the legislator of the Union has specified that the “mere provision of facilities intended to enable or carry out a communication does not in itself constitute a communication within the meaning of [this directive]”. According to the Advocate General, it is, therefore, important to distinguish a person performing the act of “communication to the public”, within the meaning of the Article 3(1) of the Directive 2001/29, from service providers, such as YouTube and Cyando, who, by providing the “facilities” enabling this transmission to take place, act as intermediaries between that person and the public. On the other hand, a service provider goes beyond the role of intermediary when it actively intervenes in the communication to the public – if it selects the content transmitted, or presents it to the public in a different way from that envisaged by the author.

Such a conclusion would lead to the non-application of the Article 3(1) of the Directive 2001/29 to those people facilitating the performance, of unlawful acts of “communication to the public”, by third parties.

Moreover, it is a question of knowing whether the safe harbour – in the case of “provision of an information society service consisting in storing information provided by a recipient of the service” – provided for in the Article 14 of the the Directive on electronic commerce n°2000/31 is in principle accessible to these platforms (according to the Advocate General, it is).

This provision provides that the provider of such a service cannot be held liable for the information that it stores at the request of its users, unless the provider, after becoming aware or conscious of the illicit nature of this information, has not immediately removed or blocked it.

However, according to the Attorney General, by limiting itself to a processing of this information that is neutral with respect to its content without acquiring intellectual control over this content, the provider such as YouTube, cannot be aware of the information it stores at the request of the users of its service.

The CJEU will, therefore, have to rule on these issues in the coming months.

Furthermore, it should be noted that in 2019, the Union legislator adopted the Directive No. 2019/790, not applicable to the facts, on copyright and related rights in the single digital market, modifying in particular the previous Directive of 2001. A new liability regime was introduced in Article 17 for operators of online hosting platforms.

Sources :

https://curia.europa.eu/jcms/upload/docs/application/pdf/2020-07/cp200096fr.pdf

C-682/18 Frank Peterson v Google LLC, YouTube LLC, YouTube Inc., Google Germany GmbH

C-683/18 Elsevier Inc. v Cyando AG

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.

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.

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.

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?

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.

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.

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.

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!

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.

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.

Written by Dreyfus18/06/2020

With the development of social networks, creativity on Internet expanded to a point that it became almost imposible for an artist or a brandto not have their Instagram or Facebook page. The presence on social networks has become an almost essential prerequisite for the reputation of an artist.

The Terms of use of Instagram, especially popular with photographers for exhibiting their work, provide that users remain as owners of the content they post on the network. However, in several recent cases, photographers have noted their work shared or reposted without being able to oppose.

Therefore, an essential question arises :Do we keep the ownership of the photos we post on social networks ?This question seems to animate the debate between different countries.Inthe US the answer looks negative, while, on the other hand, France seems to be more protective.

Precedents on Instagram : The Richard Prince Case

In 2015, Richard Prince, stylist, painter and photographer chose to expose screenshots of the social network Instagram with different pictures without obteining the author’s agreement. He earned more than 100 000 dollars from the sale of these artworks, and the authors of the original pictures didn’t receive any money for this commercial exploitation.

In the United States, this practice falls under the so-called « Fair use » exceptions which alllow an artist to work from an existing picture and to transform it without infringing the copyrights.

A circumvention of the law: the Mashable case

More recently, the american information website Mashable wanted to publish an article related to the work of ten women photographers. One of them, Stephanie Sinclair, denied Mashable the right of using her artwork. The site therefore bypassed this refusal by using the Instagram network function “embed”, allowing to share content without having to download it. Thus, the image used is only stored on the social network and not on the server of the Mashable website, directly.

The New York Southern District Court, in a judgment given on April 13, 2020, declared that the author of the photographs posted on a public Instagram account could not oppose that an online media integrates them in his articles. In addition, the judge based his decision on the Terms of use of the social network which provide that users grant for each posted image “a non-exclusive right, free of rights, transferable, sublicensable and worldwide“. According to the judge, the integration of an image on a third-party site therefore constitutes a sub-license right.

It is considerated that when a user posts a photo on a public Instagram account, they give their agreement for all use via the « embed » function.

Following this decision, the photographer Stephanie Sinclair said she would appeal.

What about French law on social networks ?

In France, this statement may be attenuated by articles L.131-1and L.131-3of the Intellectual Property Codewhich prohibit the “global transfer of future works” and provide that “the transmission of the rights of the author is subject to the condition that each of the rights transferred is the subject of a separate mention in the deed of transfer and that the area of exploitation of the rights transferred is defined as to its extent and destination, as to the place and as to the duration”.

Based on this, the Paris Tribunal de Grande Instance (High Court of Paris) has already judged unfair, in the Twitter (2018) and Facebook (2019) cases, clauses similar to that invoked by the American judge concerning Instagram.

In short, while the struggle of artists in the United States to assert their rights on social networks and particularly on Instagram, seems laborious, it should be noted that French law is more protective of authors and artists. To be continued

Dreyfus can assist you in the protection of your rights on social networks in all countries of the world. Do not hesitate to contact us.

Written by Dreyfus12/06/2020

Due to the current health situation, the majority of companies have reduced their activity. This suspension or reduction of activity will have an impact on all intellectual property and may in particular result in the non-use of the trademark by the owner, leading to its forfeiture.

In fact, in accordance with the French law, and more specifically Article L714-5 of the Intellectual Property Code, if a trademark is not used for an uninterrupted period of five years for the goods and services covered by the registration, the court may, order the revocation of the trademark and the cancellation of its registration, at the request of an interested third party

The holder must therefore ensure that there is genuine use during this five-year period, i.e. real exploitation.

Thus, owners of trademarks that had not been exploited before the health crisis and quarantine could not start or resume exploitation. This unprecedented period could therefore lead to a period of non-use of more than five years.

However, the trademark owner may invoke a valid reason justifying the absence of serious use. According to established case law, this just reason must have a direct link with the trademark, be a circumstance outside the control of the trademark owner which has made the use of the trademark impossible or excessively difficult.

Therefore, it seems that the court may consider the restrictions imposed by the Government because of the pandemic as a valid excuse for the non-use of the trademark by the owner. Indeed, this obstacle, which is external to the owner’s will and which has made the use of the trademark extremely difficult, may be qualified as a just cause which will prevent or should lessen the delay of a possible revocation of the trademark.

Written by Dreyfus10/06/2020

In honor of the 22nd World Anti-Counterfeiting Day, Dreyfus Law Firm attended a Webinar organized by INDICAM(Istituto di Centromarca per la lotta alla contraffazione) involving directors of various anti-counterfeiting organizations: GACG, EUIPO, UNIFAB, INDICAM, ANDEMAand ACG.

Anti-counterfeiting issues are always of paramount importance. In fact, approximately 5% of imports into the European Union are counterfeit products. The counterfeiting market is very lucrative for counterfeiters: it requires a very low investment for a very high profit. In addition, the risks associated with it are lower.

During the health crisis linked to the Covid19, the sale of counterfeit products increased significantly: masks, hydro-alcoholic gel, medical equipment; and all this to the detriment of the population’s health. This phenomenon was particularly observed on Marketplace platforms, which were forced to invest impressive means to suppress fraudulent advertisements.

Consequently, the question arises: if the platforms are capable of actively combating the sale of counterfeit medical products in times of crisis, why cannot the same be said of other acts of counterfeiting? Cooperation with the platforms should therefore be initiated to this end. European associations are closely following the progress of the Digital Single Act, which should represent an additional opportunity in the protection of rights.

Moreover, during the health crisis, the fight against counterfeiting has mainly been focused on medical products and devices. As a result, many infringements went undetected. For example, only products arriving by air were checked during this period and not products imported via cargo ships. To make things worse, in Belgium, for example, all the police officers whose mission was usually to combat counterfeiting were requisitioned in order to enforce anti-Covid-19 measures.

With the coronavirus, the fight against counterfeiting must therefore be stepped up. One of the challenges for the years to come is to provide consumers with the best possible information. Delphine Safarti-Sobreira, Director of UNIFAB (Union des Fabricants), said that awareness campaigns were already being launched through various media, including television broadcasts and YouTube. The next step will be to convince the government to introduce compulsory education in schools on this subject.

Three elements are essential in order to fight effectively against counterfeiting: an effective law, more information for consumers and an unwavering determination to continue the fight.

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

Written by Dreyfus08/06/2020

Individuals, entrepreneurs, professional url brokers… all are trying to buy and resell domain names with keywords related to the virus. The prices go up to several thousand euros. For example “corona-vaccination.fr” was bought on March 16 by a German developer, who is now offering it for sale for 9,000 euros.

The DomainTools search team began monitoring the terms related to Covid-19 in February 2019. From a slight increase in domain names using the terms “Coronavirus” and “COVID-19” at the begining, to registrations with a significant spike in recent weeks, it is clear that many of them are scams!

Among them, there is a site developed by a private individual offering the user to install an Android application called “CovidLock”, claiming to have a tool for monitoring the epidemic in real time. In reality, it is a ransomware that asks for of $100 Bitcoins. Thanks to a proactive “hunt”, DomainTools detected it within hours of its creation, before it claimed any victims, and was able to obtain the scammer’s Bitcoin wallet.

Many domain names that should be watched closely at the height of the epidemic, are paving the way for resale at hefty prices or for cyber attacks!

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

Source: https://www.domaintools.com/resources/blog/covidlock-mobile-coronavirus-tracking-app-coughs-up-ransomware

Written by Dreyfus11/05/2020

Source: WIPO, Arbitration and Mediation Center, Jan. 30, 2020, No. D2019-2937, Scalpers Fashion, S.L. c/ Dreamissary Hostmaster

The Spanish company Scalpers Fashion is active in the fashion industry. It is the owner of numerous trademarks incorporating the “Scalpers” sign, including the European Union trademark “Scalpers” No. 6748578, registered on September 29, 2008. The company has filed a UDRP complaint before the WIPO Arbitration and Mediation Center against the domain name <scalpers.com>, claiming that it infringes its rights. The domain name was registered on September 15, 1997, by the Respondent Dreamissary Hostmaster, who is in fact a natural person, a U.S. citizen and the holder of a substantial number of domain names featuring dictionary words. The domain name at issue was exploited to generate pay-per-click revenues by leading to sponsored links referring to the sale of tickets. At the time the complaint was filed, the domain name in question resolved to a parking page.

The Complainant submits that the Respondent intends to take undue advantage of its reputation in fashion and to disrupt its business. In addition, the Complainant submits that the large sums proposed by the Respondent in various attempts t negotiate are evidence of his bad faith. Indeed, the Respondent allegedly offered initially $150,000 and then $195,000. Finally, the Complainant considers that the Respondent’s bad faith is manifested by the registration of more than 100 domain names, for him to be able to resell them for a profit.

The Respondent contends that he registered and used the domain name <scalpers.com> because of the definition of the word “scalper”: a person who buys tickets at the normal price and then resells them at a high price when demand is high and available seats are scarce. In addition, the latter requires the expert to conclude to reverse domain name hijacking.

The Complainant’s position was not followed by the expert. The expert considers that the domain name was neither registered nor used in bad faith. Indeed, the Respondent had registered the domain name more than 10 years before the Complainant’s alleged date of first use of the “Scalpers” trademark. In such circumstances, there was no basis to conclude that the Respondent targeted the Complainant’s mark, which was not in existence at the time the Respondent registered the disputed domain name. As regards the use of ???, the expert also concluded that there was no bad faith, since the Respondent had used the domain name for the meaning of the word “scalpers”. The expert ruling on the case indicates that the complaint should be dismissed. In addition, he stated that the complaint was filed in bad faith by the Complainant, and was intended to deprive the Respondent of ownership of his domain name. Indeed, several facts contribute to the expert’s position: the domain name was registered by the Respondent long before the Complainant owned a trademark right in the Scalpers sign; the UDRP Complaint was filed after two unsuccessful attempts to purchase the domain name from the Respondent; and the Respondent’s counsel notified the Complainant that the complaint should be withdrawn due to the manifest impossibility of establishing bad faith.

The Complainant clearly should have known that the complaint could not succeed. Thus, it should be borne in mind that the UDRP procedure is not a one-way tool. The aggrieved Respondent may attempt to reverse the proceedings to obtain a decision against the Complainant. Here, the lack of chance of success was particularly blatant, as the domain name predates the trademark rights of Scalpers Fashion.

Written by Dreyfus07/05/2020

Source: Bank Info Security, Feb. 11, 2020

The global health crisis caused by the coronavirus is a favorable context for phishing techniques. Indeed, many organized gangs of cybercriminals are pretending to be health organizations by using fake domain names. As a result, they send an e-mail pretending to be a health-related entity, in which they ask the recipient to click on a link and enter or confirm a login and password. For example, cybercriminals therefore send phishing e-mails containing domain names similar to those used by the Centers for Disease Control and Prevention. For example, cybersquatters have incorporated the domain name “cdc-gov.org” which is similar to the official domain name “cdc.gov”.
Thus, these malicious e-mails encourage users to click on a link that looks like it contains information related to the issues related to the coronavirus. In fact, Internet users are redirected to a fake website where they have to enter a username and password. In other cases, cybercriminals send phishing e-mails looking like they originate from the World Health Organization, inviting users to a link to download a document on security measures against the spread of the virus. Of course, this is not the case and users are redirected to a pop-up screen asking for a username and a password. It should be noted that some cybercriminals adopt a different tactic by posing as entities linked to the world of economics, such as shipping companies or manufacturing industries. The coronavirus crisis can have an impact that extends beyond health concerns. Hence, it is necessary to be doubly careful about the extension of these phishing campaigns, alert may be raised for example by e-mails containing numerous spelling mistakes.

Written by Dreyfus04/05/2020

The gTLD <.com> apparently occupies more than 40% of the domain name market share, according to statistics provided by the site www.domainnamestat.com. These results confirm that it is an unavoidable extension, especially because the <.com>, which addresses the whole world, is a strong rallying sign.

However, the negotiations in progress between ICANN and the <.com> registry, VeriSign, could lead to a modification of the approval on this extension, so that the <.com>’s price would increase by possibly 7% per year, from 2021 to 2024. In return for this right, VeriSign would pay $4 million to ICANN.

This negotiation is notably allowed by an amendment accepted by the American Department of Commerce, datedOctober 26, 2018, by which it was indicated that “in view of the more dynamic market of domain names, the Department considers it advisable to modify the cooperation agreement in order to provide flexibility in the prices related to the registration and renewal of domain names of the .com registry”.

If the price of <.com> increases, it will be relevant to see whether other TLDs recover some of its market shares, especially among the new gTLDs. If it seems unlikely that companies will abandon the names in <.com> that they already hold, newcomers to the market could possibly prefer other extensions.

Written by Dreyfus24/04/2020

Domain names appear to be a fertile ground for innovators related to blockchain technology.

Domain names and blockchain meet around the launch of the new extension “.luxe”, which contrary to what one might think was not created for the luxury industry (which already has its extension “.luxury” launched in 2014). The Ethereum foundation, whose aim is to promote blockchain technology, has entered into a partnership with the Minds + Machines (MMX) registry to create a new use for domain names, making “.luxe” the equivalent for cryptocurrency of what a classic extension represents for the IP address.

This association thus makes the IP addresses for the “.luxe” extension more intelligible.

Indeed, holders can link their domain name composed of the “.luxe” extension to their Ethereum account to replace their 40 characters identification number and make it easier to remember and use.

Written by Dreyfus20/04/2020

With the publication of Decree No. 2020-15 adopted for the application of the PACTE law, it is now possible to file provisional patent applications as of July 1, 2020.

What is a Provisional Patent Application ?

A provisional application is a patent application whose registration procedure is simplified since certain filing requirements may be deferred in time. It is a procedure which permits the setting of an earlier filing date.

What is the Objective of a Provisional Application ?

This procedure is intended to allow companies to file patent applications before the French National Institute of Intellectual Property (“INPI”) in a simpler and less costly way. Therefore, it aims to facilitate access to IP protection, especially for start-ups and SMEs. The main objective is to provide a more flexible procedure for registration of patents.

How to File a Provisional Application?

With this Decree, it is possible to file a provisional patent application and defer the submission of the claims, the technical content of the invention and a copy of the prior filings.

On the other hand, the applicant is obliged, when filing the application, to indicate explicitly that this is a provisional application.

After Filing the Provisional Application

Within twelve months of the filing date of the provisional application, the applicant may request that his provisional application be transformed into a “normal” patent application (by completing the above-mentioned requirements that he had previously deferred) or that his application be converted into a utility certificate.

At the end of this period, the provisional patent application is withdrawn. Ultimately, this procedure allows applicants to gain additional time before deciding on the future of their applications.

Payment of the Filing Fees

The applicant must pay the filing fee within one month of the filing date. However, the applicant may pay the fee for the search report within one month of making a request to turn the patent application into a normal one.

This less stringent registration procedure will allow applicants to apply for patents in a more flexible way, under certain conditions. It will render it possible to fix the date of creation of an invention and then to determine what action will be taken later on with regard to its protection.

Written by Dreyfus17/04/2020

The 2019 Finance Act harmonizes French and European tax rules in order to best promote the investment of patentable creations and inventions. We are talking about the French IP Box.

Thus, the taxation regime for the products of patents and similar industrial property rights is brought into line with OECD provisions.

While Irelandwas the first country to set up this system (1973), other countries followed suit, such as Belgium, China and, more recently, the United Kingdom (2013).

The principle allows companies to benefit from a tax advantage on their intellectual property assets with a tax rate that amount to 10% instead of 33% previously.

Eligible assets

The assets that are eligible for this plan are:

Patents and patentable inventions
Certificates of utility
Plant variety certificates
Copyrighted software

To be eligible, inventions must have been filed. Taking into account that the regime is open to software protected by copyright. It should also be added that this plan is applicable to annual net income calculated after deducting research and development expenses. The aim is to encourage research and development efforts in relation to the overall effect, i.e. in relation to all the investments that the company can make.

To be eligible for the reduction rate, the company will have to provide several elementsto establish its file such as:

Eligible assets
The rule for determining the protection of the proportion of net income taxable at a reduced rate
The method for allocating research and development expenses.

This makes it possible to monitor the company’s expenses and, above all, to justify the request for a reduction in the tax rate. It will be necessary to submit this file to the tax authorities under penalty of a 5% penalty.

The tax rate

The regime consists in deducting first the proceeds of sale and concession as well as research and development expenses and then, in a second step, calculating from this deduction the net result in order to obtain the net result of the assets on the basis of the Nexus ratio.

What is the Nexus ratio?

The idea is to limit “the preferential regime in proportion to the part of the expenditure relating to intellectual property. »

This is how the OECD defines this ratio. This is intended to sanction patents acquired and research and development costs subcontracted to affiliated companies. It should be noted that research and development costs in third party companies will not penalize the Nexus ratio. This ratio will be calculated on a cumulative expenditure basis.

Some consider this ratio a “not irrefutable presumption.”

Conclusion

The advantage of this regime is that it will encourage companies to their research and development in France and produce quality intellectual property assets that generate income.

Written by Dreyfus15/04/2020

Webinar : Internet and Compliance (part 1)

The rules of the game have changed,

strategies to protect the company and its leaders.

The legal, regulatory and fiscal constraints (resulting in particular from the Sapin 2 Law, the LCEN or the EU
Directive of 23 October 2019 on the protection of whistleblowers) that weigh on companies are increasingly rigorous. Companies must implement a governance policy capable of minimizing their responsibility and exposure to their customers, shareholders and the competent authorities.

Among the aspects to be considered in the context of this compliance are domain names. While they are an undeniable corporate asset, they are also vectors of risk: phishing, fraud against the president, fake sites, identity theft, forged e-mails, and so on.

In the event of a breach, they can also damage the reputation of the company and its managers, resulting in a loss of customers. It is therefore imperative to put in place the appropriate strategies to anticipate the dangers, react effectively in the event of an attack and ultimately protect the company.

The current situation linked to the coronavirus epidemic is increasing the risks, with the number of frauds increasing considerably while companies are disorganized and vulnerable.

We propose to analyse these issues with you, sharing our experience. In particular, we will be able to answer the following questions:

– What are the obligations of companies with regard to compliance?

– What are the risks to be anticipated?

– What strategies should be implemented to do so?

– What are the control points?

– What levers should be implemented to react effectively in the event of a proven breach?

Written by Dreyfus14/04/2020

As of April 1, 2020, it is now possible to bring actions for cancellation on grounds of invalidity and revocation on grounds of nonuse of trademarks at the French trademark Office –INPI.

Among the new developments resulting from the implementation of European Directive 2015/2436 of December 16, 2015, (known as the “Trademark reform Package”) into French law, the new procedures for the cancellation on grounds of invalidity and revocation on grounds of nonuse of trademarks are those that will undoubtedly change the landscape of intellectual property law in France.

The European directive placed an obligation on member states to create an administrative procedure to bring invalidity and revocation proceedings. The aim of this measure being to facilitate challenges to registrations in order to declutter the trademark register.

In France, since April 1, 2020, these actions can be brought before the French Trademark Office INPI, bringing French trademark law increasingly closer to European law. Until now, only the Court was able to hear these cases. From now on, the competence is shared between some specialized courts and the INPI.

How is this to be done?

The division of competences is set out in Article L.716-5 of the French Intellectual Property Code. With the exception of applications for invalidity based on a prior Copyright, Design right or Personality right (which must be brought before a competent judicial Court), INPI has exclusive jurisdiction for applications for invalidity where no other legal issue arises based on an absolute ground, and applications for invalidity (again where no other legal issue arises) based on the following relative grounds :

– A trademark right

– A corporate name

– An appellation of origin or geographical indication

– The name of a local authority or public entity.

The judicial court has exclusive jurisdiction over counterclaims for invalidity or revocation of rights, applications for invalidity or revocation of rights on any grounds whatsoever where the application is connected with another action falling within its jurisdiction and, finally, applications for invalidity of rights brought as a principal claim on the following relative grounds:

– Copyright

– Design

– Personality rights.

In order to avoid any delaying measures, it is provided that the principle of “res judicata” will apply to such decisions of the Director of INPI and of the judicial court.

The French legislator has gone beyond the provisions of the European Directive, which only requires Member States to confer jurisdiction on the Trademark Offices with respect to certain grounds of invalidity (invalidity based on absolute grounds or on an earlier similar or identical trademark).

Which trademark registration can be challenged?

An application for invalidity or revocation may be filed against a registered French trademark or on the French part of an international trademark.

What is the procedure before the INPI?

Like the new trademark opposition procedure, the invalidity or revocation procedure follows the principle of a fair hearing. Following the examination phase, which starts from the day on which the action was filed, and as soon as the action is considered admissible, the owner has a period of 2 months to submit his observations in the case of an invalidity action or to provide proof of use in a revocation action.

The applicant has then one month to file a response. The parties may make up to three contradictory written exchanges at the end of which, and where appropriate, an oral presentation of the observations may be requested by either party but also requested by the INPI.

Depending on the number of exchanges carried out, this investigation phase may last between two and six months. The INPI then has a maximum period of three months to render its decision.

Thus, the total duration of the procedure should last a maximum of nine months from the date of notification of the action to the adverse party, which is much faster than the legal action hitherto open to the applicant.

A stay of proceedings may be requested jointly by the parties for a period of four months, renewable twice. It may also be suspended at the initiative of the INPI, in particular pending the receipt of information and elements likely to have an impact on the outcome of the dispute or the situation of the parties.

Finally, unlike court proceedings, the applicant need not demonstrate a specific legal interest. This will therefore allow a greater number of actions and give rise to new strategies for the release of rights.

In conclusion, the introduction of these new administrative procedures by the implementation of the “Trademark reform Package” in France provides a fast and inexpensive procedure, against a registered nuisance trademark avoiding the much more restrictive judicial process.

Written by Dreyfus09/04/2020

Advice Group is an Italian company founded in 2006 and specialized in marketing. It is based in Turin but has offices in Rome, Bari and subsidiaries in Bulgaria, Kosovo, Portugal, Colombia and Peru.

Having noted the registration of the domain name <advicegroup.com> by a third party, the company turns to the WIPO Arbitration and Mediation Center for its transfer. The domain name was reserved in 2014 by Michele Dionia of Macrosten LTD, located in Cyprus. The domain name resolves to a page of commercial links and suggests that the name may be for sale (Internet users can make an offer).

The Respondent did not respond to the complaint.

The expert acknowledges the likelihood of confusion between the disputed domain name and the applicant’s Italian semi-figurative trademark, “A Advice Progressive Marketing Thinking”.

However, he decides not to rule on the issue of legitimate interest, referring to his observations on the issue of bad faith. Nevertheless, he makes several observations on the legitimate interest, in favor of the Respondent: the terms that make up the domain name are generic and the Respondent did not make active use of the name, he simply let the registrar promote its services and included a message advising Internet users to contact the registrant for the purchase of the name.

The expert also obviously did some research on his part, which he is not bound to do, since he notes that there are many companies called Advice Group throughout the world.

Concerning bad faith, the expert insists on the fact that at the time of the registration of the name, the applicant had not yet registered a trademark. The filing took place nine months after the reservation of the name in question and the obtaining of rights, two years later! Nothing suggests that the Respondent had the Complainant in mind when registering this domain name consisting of dictionary terms. Moreover, the fact that Internet users could propose the purchase of the name does not mean that the aim of Macrosten LTD was to resell it at a high price to Advice Group.

Thus, not only is the complaint rejected, but the expert also decides to qualify the complaint as a case of “reverse domain name hijacking”, i.e. it is considered that the complaint was filed with the sole purpose of depriving the domain name holder of the domain name. Here, the Complainant accused the Respondent of cybersquatting even though no evidence to that effect was provided and the name, consisting of generic terms, predates the Complainant’s trademark registration.

It should be remembered that proving the bad faith of a registrant when the domain name consists of generic terms is difficult. It is essential to show that the registrant had the applicant’s trademark in mind. In the present case, it can be assumed that even if the Complainant’s trademark had been older, this would not have been sufficient to ensure the success of the complaint. The setting up of a site similar to that of the Complainant or for the same activities, or contact made by the registrant are elements that make possible to constitute a relevant case . Here, the Complainant had no evidence to justify his position.

Dreyfus firm, an expert in trademark law, can help you by offering you unique online trademark management services.

Written by Dreyfus08/04/2020

The Swiss company Blockwords AG, formerly known as Swiss Future Project AG, operates an encryption exchange under the sign SCX, which was registered as a Swiss trademark on December 19, 2017.

The company has filed a UDRP complaint with the WIPO Arbitration and Mediation Center for the transfer of the domain name <scx.ch>, alleging, among other things, that it infringes its trademark rights.

This domain name was registered on April 23, 2001 and acquired by the Swiss company in March 2018. In March 2019, the name was transferred to the company SwissClass Trade AG, which subsequently sold it to the Respondent in the same month for more than EUR 60,000.

The Swiss company claims that a fraud was committed when the domain name <scx.ch> was transferred to SwissClass Trade AG due to the absence of two signatures from Blockworks AG which would have made the transfer legal.

In addition, it considers that the transfer of the domain name is the result of a mismanagement on the part of a former member of the board of directors. Ultimately, the complainant fears misuse of the domain name by the Respondent although the latter has not changed the services offered on the website in question, which remain those of the Complainant.

The Respondent explains that it is incomprehensible that the Complainant would want to recover the domain name. Indeed, the Complainant sold the domain name to SwissClass Trade AG, which was free to resell it to the Respondent at a later date. Therefore, the Respondent believes that it was not at fault and that the issue is between the Complainant’s management and SwissClass Trade AG and not between the Complainant and the Respondent.

The Complainant’s position is not supported by the expert who believes that there was no fraud in the sale and transfer of the domain name to SwissClass Trade AG since the sale was signed by two legal representatives of the Complainant’s company. Therefore, the applicant cannot both sell its domain name and subsequently request its transfer. Furthermore, the expert did not accept the argument of mismanagement by one of the former members of the company’s board of directors, due to insufficient evidence.

The expert acknowledges, however, that the situation raises some questions: why did the Respondent purchase this domain name for more than 60,000 euros and what was its intention, even though it could immediately see that the name referred to a third party’s site?

The expert concludes that the complaint should be rejected. Due to the complex facts of the case, he is of the opinion that a judicial procedure would be more appropriate to gather the various pieces of evidence and to rule on them.

This scenario once again illustrates two problems. The first concerns the internal management of domain names: optimal security must always be ensured so that there is no risk of losing control of the names. The second issue related to the fact that UDRP is not an appropriate forum for all disputes. In the present case, it seemed clearly impossible to resolve the dispute between the parties without ruling both on the relationship between Blockwords AG and SwissClasse Trade AG and between Swiss Classe Trade AG and the Respondent.

Written by Dreyfus07/04/2020

The CJEU rendered a crucial decision in its recent Intas caseon the maintenance of Intellectual Property rights. According to the Court, it is not imperative that a European Union (EU) trademark be used in a substantial part of the EU. On the contrary, its use in a single Member State could be enough to prove genuine use.

In the matter before the CJEU for the mentioned decision, the claimant filed a trademark application before the EUIPOconsisting of the sign “INTAS” and designating goods in classes 5 and 10.

The defendant subsequently filed an opposition to this application claiming that it was similar to two of its earlier trademark registrations which both consist of the sign “INDAS” and cover goods in the same classes.

The claimant requested proof of use of the earlier trademarks. The defendant duly submitted this evidence and its opposition was accepted by the EUIPO on this basis. The claimant proceeded to appeal the decision before the EUIPO, but its appeal was dismissed. Finally, the matter was brought before the CJEU.

The territorial scope for genuine use

The CJEU examined the question of whether proof of use submitted for only one Member State for the use of an EU trademark was sufficient to support its genuine use pursuant to Article 47(2) of the EU TM Regulation.

Interestingly, the CJEU rejectedthe argument that the territorial scope of the use of an EU trademark cannot be limitedto the territory of a single Member State. The Court also rejected the argument that the genuine use of an EU trademark necessitates that the trademark be used in a substantial part of the EU.

Yet, the CJEU still admits that it is reasonable to expect that an EU trademark shall be put to use in a wider area than the territory of one Member State to show its genuine use. However, the Court underlines that it is not always imperativethat the trademark be put to use in an extensive geographic area because evaluation of genuine use is an overall assessment. It depends on all the characteristics of the related goods or service, and not only on the geographical scope of the use.

The CJEU accepts that, in certain cases, the market for the goods or services in the scope of an EU trademark can be restricted to the territory of only one Member State. In such a case, proving serious use of the EU trademark within that State may satisfy the conditions for genuine use.

Assessment of genuine use

The CJEU holds that it is impossible to determine, a priori, a certain territorial scope when assessing if the use of an EU trademark is genuine or not. Rather, an EU trademark is deemed to be genuinely usedwhere it is used in accordance with :

– its essential function of designating origin for the related goods or services ;

– the objective of maintaining or creating market sharesin the EU.

When evaluating genuine use, the following factors should be taken into account: the characteristics of the relevant market; the nature of the goods or services within the scope of the trademark; and the scale, territorial extent, regularity and frequency of use.

Impact of the Decision

This is an important interpretation made by the CJEU affecting the burden of proof when it comes to showing the genuine use of an EU trademark. The CJEU clearly sets forth that the territorial scope is only one of several factors to consider when assessing whether the trademark is put to genuine use or not.

This does not mean that the territorial extension of the trademark’s use is not important at all. However, the CJEU affirms that the geographical extension of the trademark’s use is not the only factorto take into account. This assessment depends on all the facts and circumstances relevant in determining if the commercial use of the trademark creates or maintains market sharesfor the concerned goods or services.

Consequently, the CJEU held that the assessment of whether the use of a trademark is genuine or not is an overall assessment. The territorial scope of the use is only one factor in this assessment, amongst the other factors mentioned in this article. This interpretation will probably lead to changes in the strict perception that the genuine useof an EU trademark cannot be proven with showing its use in one single Member State. It will soften the burden of proof on the trademark owners.

Written by Dreyfus06/04/2020

Dreyfus & associés, in association with INTA, had the pleasure of organizing a breakfast debate last February.

The theme of the breakfast debate was the following:

“Resolving IP disputes through Mediation in France“.

Mediation is an alternative dispute resolution on the rise in different fields of law, notably in intellectual property law. This alternative dispute resolution is an efficient mechanism to settle disputes. In the long term, resorting to mediation in intellectual property law might encourage parties to maintain or create business relationships (licensing, distribution contract, etc).

We had the opportunity to debate on:

– What are the pros and cons of mediation relating to intellectual property disputes?

– What are the obstacles to mediation for IP disputes?

– What is the process for mediation?

– Who is the mediator?

– How much does it cost?

– Future of mediation in intellectual property law

The event featured Rémi Garros-Quinn, a Legal Case Manager at the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center, and Berengère Clady, Case Manager – Head of ADR Department, at the Centre for Mediation and Arbitration of Paris (CMAP). It was hosted by local IP law firm Dreyfus & Associés.

Find here the note published in INTA Bulletin.

Written by Dreyfus19/03/2020

While one generally refers to the “three criteria” of the UDRP (a trademark similar to the domain name; the absence of rights or legitimate interests of the defendant in the disputed domain name; and the bad faith of the registrant), it should be kept in mind that bad faith in UDRP matters has two aspects: the first is bad faith registration and the second is bad faith usage. Therefore, proving only one of these elements is insufficient even though it may be considered “fair” that a name used in bad faith should be transferred to the applicant.
In the present case, Great American Hotel Group, Inc. complained that its former vice-president retained the domain name <greatamericanhg.com> and changed the password of the account used to manage this name with the registrar.

It all started in 2011 when the applicant decided to adopt the name Great American Hotel Group. Its president at the time asked Mr. Greene, then vice-president of the company, to reserve the domain name <greatamericanhg.group>.
The latter did so, but – apparently without notifying his superior – reserved the domain name in his name instead of that of the company. He did, however, record the company’s postal address, and pay with the company card. In 2012, he hired an anonymity service to hide his data.

Since its registration, the name had been used for the company and Mr. Greene had always treated the domain name as part of the company’s assets.

However, following disagreements, Mr. Greene was suspended from office in 2015 and dismissed in 2016. In 2017, the name was renewed by the company’s technical teams even though Mr. Greene was no longer present. However, the latter subsequently changed the password so that the name could no longer be renewed by the company. The applicant’s counsel proceeded to send Mr. Greene a letter of formal notice, which remained unanswered, leading to the filing of a UDRP complaint.

Nevertheless, the panellist was more sceptical regarding the issue of bad faith registration. Indeed, the name had been reserved by Mr. Greene at the request of the president of the applicant company, which, in principle, had, in fact, been a registration in good faith.

In this case, Mr. Greene had registered the domain name in his own name. The panellist found that “this may be subject to questioning, and the fact that he did not mention the company does not constitute a good domain name management practice”, however, the president and the company seemed to be equally as uninterested in formalizing the reservation of the name.

WIPO, Arbitration and Mediation Center, Sept. 2, 2019, No. D2019-1638, Great American Hotel Group c/ Domains By Proxy, LLC / R Greene

Written by Dreyfus10/03/2020

Written by Dreyfus07/10/2019

With the appearance of the blockchain, monitoring the life cycle of the creation of your Intellectual Property by setting a specific registration date and ensuring the traceability of its evolution is a lot simpler. Opening the account is easy, as is backing up and viewing the data embedded in it.

What is a blockchain ?

The Blockchain is a database (a growing list of records, called ‘blocks’) that are linked using cryptography. Each block contains a cryptographic hash of the previous block, a timestamp and transaction data.

It is a reliable and transparent registry which everyone can access and contains the history of exchanges between users. However, once recorded, the data in any given block cannot be altered retroactively without alteration of all subsequent blocks, which requires consensus of the network operators. Material can be saved on this decentralized and secure system for an unlimited period of time.

Easy monitoring of the registration cycle

The blockchain is of great practical use in the traceability of intellectual property rights.

On the one hand, it is low cost and speedy. The decrease in costs can be explained by the fact of intermediaries are bypassed. As for its speed, all you need to do is open an account and download the document that includes the data concerning creation of your Intellectual Property.

On the other hand, all the steps concerning the creation of your Intellectual Property should be recorded ; whether it is the date of the first application for registration, of the first use in trade or an assignment etc. Similarly, operations such as mergers or acquisitions are more easily recorded via the database.

Confidentiality of data

The document containing information about your creation of the Intellectual Property is not stored in the blockchain, only its digital footprint. Accordingly, it is impossible for third parties to access its content, you are the only one having access to it. You can therefore be confident that your data will be safe.

A revolution in evidence

Thanks to the blockchain, proof of creation is made easier and the procedure made faster, the Blockchain giving certainty of the time and date. It also makes it possible to trace the exploitation of digital works on the web.

Nevertheless, to acquire incontestable force of proof, it is necessary to have the evidence concerned established by a bailiff. The bailiff is able to establish an indisputable proof of origin and anteriority before a judge.

Fight against counterfeiting

The blockchain is a register which cannot be falsified, providing proof of the authenticity of the creation of your Intellectual Property and thus limiting the possibilities of counterfeiting. This system indicates who is the author of the creation and therefore is a significant piece of evidence to establish the actual date of the creation.

Fight against counterfeiting

The blockchain has many advantages with regard to intellectual property rights. Whether it is security, transparency, lower cost, speed, ease of proof, confidentiality or even the certainty of authenticity : it has multiple strengths which are favourable to the protection of your creations.

With the service of the DreyfusBlockchain , we offer simple, effective and secure protection for your creations.

Written by Dreyfus04/10/2019

Meet Nathalie Dreyfus at the World Intellectual Property Forum in Grand Hyatt Taipei, Taiwan, from November 6 to 8, 2019.

This year’s conference will be on the following theme: “IP as a Powerhouse for Innovation and Economic Growth“. This three-day forum will focus on recent developments in intellectual property and their synchronization with business objectives.

Nathalie Dreyfus will be speaking on November 8 from 1:30 pm to 3 pm on the following panel “How can emerging technologies be adopted in the current intellectual property law system? ».

As a reminder, the World Intellectual Property Forum is an opportunity to hear from intellectual property experts who will share the latest trends, ideas and strategies in patenting, litigation, trademarks and other current issues related to intellectual property. This forum also offers participants many opportunities to meet visionary entrepreneurs and industry experts from around the world.

More information: https://www.worldipforum.com/

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

Written by Dreyfus01/10/2019

The Federal Bar Association, in collaboration with the French American Bar Association, is organizing the 2019 Fashion Law and Innovation Conference. This event will take place on Friday, October 4 at 8:30am at the Maison du Barreau in Paris.

Programming will feature a notable group of law experts and industry representatives who will discuss recent developments and current challenges from both the French and US perspective.

Nathalie Dreyfus will speak at 9am for a conference about The Five Senses: The growth of non-traditional brands in the fashion industry.

For more information and registration, please click here.

*Note that this conference is organized in collaboration with the French American Bar Association so it will be in English.

Information

Where: Maison du Barreau, 2 Rue de Harlay, 75001 Paris

When: October 4th, 8 :30am – 12 :30pm

Written by Dreyfus20/09/2019

On April 23^rd 2019, the Russian Supreme Court adopted Resolution No. 10/2019, which clarified the provisions of Part 4 of the Russian Civil Code relating to intellectual property rights, and therefore to domain names, which are the subject of this article.

Among the clarifications provided, the Russian Supreme Court decided in particular that the commercial courts had jurisdiction to rule on disputes relating to distinctive signs (with the exception of appellations of origin, however), whether the party concerned is an individual person, a private entrepreneur or a company. Previously, the commercial courts and the general courts had jurisdiction based on the identity of the holders of intellectual property rights.

Furthermore, it is increasingly difficult to obtain information on the identity of Russian domain name registrants.

Indeed, although it is possible to make a request to registrars to disclose the identity of domain name registrants, obtaining this information has become increasingly complicated without legal action since many registrars refuse to disclose this information by taking refuge behind applicable legislation or requesting additional documents.

Resolution No. 10/2019 specifies that this information may be obtained through a court by filing a request for disclosure of personal data in legal proceedings. However, this is complicated when the identity of the domain name registrants is unknown. One solution would be to take legal action against registrars and then file a request for disclosure of personal data. It would be then possible to substitute the defendant.

In addition, with regard to infringement of a trademark by registration and use of a domain name, the Russian Supreme Court ruled that trademark infringement is characterized by the use of a domain name for goods and services similar to those designated by the trademark in question, and in some cases still, by registering the domain name only. Consideration should be given to the purpose behind registering the domain name to judge whether there is trademark infringement.

Finally, the Russian Supreme Court provides various additional clarifications. For example, a monetary claim may be filed against the current user of a domain name. In addition, it is possible to request provisional measures in respect of domain names. Finally, in cases concerning domain names, evidence consisting of printed screenshots of websites clearly showing i) the address of the websites in question, ii) the time at which the screenshots were taken and iii) whether they have been verified by the parties to the proceedings is admissible.

These clarifications are welcome. We will keep you informed of any further developments in this regard. Dreyfus is a specialist in domain name protection and defense strategy and can find solutions adapted to your needs. Do not hesitate to contact us.

Written by Dreyfus11/09/2019

The WHOIS protocol now appears to be outdated due to the evolution of technical requirements in the digital era. Indeed, this tool, provided by registrars, is inter alia not capable of working with either encoding or with non-latin characters. Consequently, since 2015, ICANN in collaboration with the Internet Engineering Task Force (IEFT) has been working on the replacement of WHOIS through the RDAP (Registration Data Access Protocol), in compliance with the Temporary Specifications and the GDPR.

Like WHOIS, the RDAP provides registration data, although its implementation is different since it allows standardization, security data access and enquire response formats. As a result, it will be possible to search all the registration data available from various registrars, unlike WHOIS that is limited to the database being searched. It also takes into account the internationalisation of domain names.

The possibility of granting different accesses to the registration data is being considered. For instance, access for anonymous users could be limited whereas authenticated users could have full access to all data.

While some elements still have to be worked out, registrars are required to implement the RDAP service prior to August 26, 2019.

This brief was published in the July-August 2019 issue of the French magazine “Propriété industrielle”.

Written by Dreyfus02/09/2019

Companies which specialise in the audiovisual sector often require protection for their program titles through trademark law. If granted, this protection obviously offers considerable advantages for the company, but it is necessary to take into consideration some limits to it.

The advantages of trademark protection

First, the term of protection of a title by trademark law. Trademark law initially grants protection for 10 years, but this term is renewable indefinitely (Art L712-1 CPI). Thus, provided the owner submits a renewal application within the time limit, the trademark can be protected indefinitely. Copyright, on the other hand, can grant protection up to 70 years after the death of the author of the work, but the ‘guarantees’ of protection may be less obvious than trademark law because there is no register of copyright.

On the other hand, while copyright imposes a condition of originality (Art.L711-2 CPI), trademark law requires a distinctive character (Art L711-2 CPI). Thus, if the title of TV show or audiovisual program is distinctive and acts as an indicator of origin, it may be protected. In contrast, for copyright, it is necessary to prove originality, which is more difficult to prove. Since copyright is not subject to registration, the condition of originality must always be demonstrated in the course of a dispute. Thus, copyright protection is never certain.

A title may be protected by trademark law if it does not directly designate the goods and services for which registration is sought. Thus, if the title is arbitrary, there is nothing to prevent the title from benefiting from this protection. Finally, it should be borne in mind that trademark protection is not an impediment to copyright protection; it is thus possible to combine both protections.

The limits of trademark protection

Some limitations to the protection of audiovisual programs’ titles by trademark law should nevertheless be noted. The protection conferred by trademark law grants a monopoly on the use of the registered terms (Art L-713-1 CPI) and therefore the right to oppose use by third parties. However, in order to do so, it is necessary to prove :

The use of the sign by a third party “as a trademark”

First, it must be proven that the use of the title by a third party was “as a trademark”. To illustrate this concept, we can refer to the judgment rendered about the series “Le Bureau des Légendes”. In this case, the Paris Court of First Instance (TGI) dismissed the infringement action brought against a book, using the title, devoted to the study of the series. The purpose here was not to offer goods and services designated in the registration, but simply to refer to the series as such (TGI Paris, réf., April 16, 2018, n°18/53176). Use as a trademark would have been in the context of the sale of derivative products in connection with the series.

A commercial use of the sign

Secondly, in order to oppose the use of a sign, the owner must provide proof of commercial use. This means that it is not sufficient to prove merely a reference to the title. The use must take place in the course of business and not only for illustrative purposes. There must be a genuine commercial link between the sign and the use made by a third party.

A risk of confusion in the mind of the public

Finally, the risk of confusion in the public mind must be shown. The use of the sign must raise doubts as to the origin of the goods and services offered. A trademark is intended to guarantee in particular the origin of the goods and service. Thus, the use of the sign by a third party must infringe this guarantee of origin, severing the direct link between the sign and its owner.

For instance, the judges considered that there was no likelihood of confusion between Canal+’s trademark “LE ZAPPING” and the trademark “LE Z#PPING DE LA TELE”. In view of the evidence provided, and the overall impression, there was no likelihood of confusion. The phonetic and visual differences of the two signs were sufficient to eliminate this risk (CA Versailles, 12th ch., July 3, 2018, n°18/02091).

However, the principle of speciality of the trademark may be used against the owner of a trademark. Since a trademark is registered for specific categories of goods or services, the owner can only oppose the use of the sign for identical or similar goods or services. Thus, if a sign is used for a completely different area of activities, the owner will not be able to oppose this use of the sign. This was the case for Canal +, concerning its mark “LE ZAPPING”. The notoriety of this brand was certainly recognized by the Court, but only in the field of television broadcasts. Thus, it was not possible for Canal + to oppose the filing of a similar trademark for other categories of goods and services than those designated in registration of the trademark “LE ZAPPING”.

Conclusion

Trademark law grants additional protection to a title of an audiovisual program. It complements the protection that copyright can grant, in a more certain way through the requirement of registration. The point of filing a sign representing the title of an audiovisual work is therefore to acquire double protection, on both grounds. Admittedly, the conditions to be met in order to be able to bring an infringement action under trademark law may be difficult to achieve. Nevertheless, trademark law offers more means of action, and therefore of compensation for damage in the event of unjustified use by third parties.

Dreyfus law firm, expert in trademark law, will assist you in the management of your trademark portfolio.

Written by Dreyfus30/08/2019

Cyber-attacks are on the rise, and they are becoming more sophisticated. Our current business model is globally interconnected; commercial transactions and even social life transcend national borders. Consequently, our vulnerability to cyber-attacks has been increased, however, the competences of the cyber security and police authorities, as well as political responses, are predominantly national.

This situation has made European authorities aware of the need to deal with these threats in an effective and coordinated way, relying their actions on policies dealing specifically with cybersecurity within the European Union. By means, the aim is thus to improve cooperation, exchange of information and coordination between the Member States and the institutions, bodies, offices and agencies of the Union.

The European Commission, as part of the Digital Single Market Strategy, has approved Regulation No. (EU) 2019/881, on ENISA (the European Union Agency for Cybersecurity) and on certification of information and communications technology cybersecurity, which came into force on June 27, 2019.

This new regulation has two main objectives. On the one hand, to give ENISA (the European Agency for Cybersecurity, now named the European Union Agency for Cybersecurity) a greater role in the field of cybersecurity, establishing a series of objectives and tasks. On the other hand, the creation of a common certification framework at European level, with the aim of guaranteeing an adequate level of cybersecurity of ICT products, services and processes in the EU, avoiding the fragmentation of the internal market.

Concerning the first objective, the first substantive point of the Regulation is to give more powers to the European Union Agency for Cybersecurity (ENISA). It will now have a permanent mandate facilitating the exercise of the new functions assumed, one of which is to increase cooperation on cybersecurity within the Union, for example in cases of large-scale cyberattacks or cross-border crises. This strengthening is also reflected in the economic resources for ENISA, increasing from 11 to 23 million euros over a period of five years.

It is noteworthy that European regulation focuses on users by addressing concepts such as users’ awareness, and the application of good practices online. Both public bodies and private stakeholders will receive recommendations on safe configurations and maintenance of their devices, and the availability and duration of updates, as well as the perceived risks.

With regard to the second objective, the regulation creates a framework for European Cybersecurity Certificates for products, processes and services that will be valid throughout the EU. It is the first EU legislation on the internal market to take up the challenge of enhancing the security of connected products, Internet of Things devices and critical infrastructure through such certificates.

The creation of the cybersecurity certification framework incorporates security features in the early stages of their technical design and development (security by design). It also enables their users to ascertain the level of security assurance, and ensures that these security features are independently verified.

As to the second objective of the regulation, the certification framework will provide EU-wide certification schemes as a comprehensive set of rules, technical requirements, standards and procedures. This will be based on agreement at EU level for the evaluation of the security properties of a specific ICT-based product or service, for instance, smart cards. This will certify that ICT products and services which have been certified in accordance with such a scheme comply with specified requirements. In particular, each European scheme should specify: a) the categories of products and services covered, b) the cybersecurity requirements, for example by reference to standards or technical specifications, c) the type of evaluation such as self-assessment or third party evaluation, and d) the intended level of assurance for instance, basic, substantial and/or high.

ENISA’s mandate is immediate from the entry into force of the Regulation, whereas the cybersecurity certification framework will have to be developed. In this respect, the Commission’s agenda has already included the submission of proposals to ENISA for the preparation of certification projects, as well as the creation of expert groups on cybersecurity.

Finally, this European regulation not only seeks to increase users’ confidence in the use of connected devices, but also to strengthen the European cybersecurity industry and the European Single Market, positioning it as a global benchmark, in line with other markets such as the United States or China.

With significant expertise in protecting innovative products and designs, and in defending intellectual property rights on the Internet, Dreyfus is well positioned to assist you in enhancing your assets on the web.

Written by Dreyfus28/08/2019

Protecting authors’ rights is a necessity in the digital age, as information flows more and more easily. That is why the European Commission reported in September 2017 that it was necessary to tackle illegal online content, while the French legislature has already transposed several European directives and has modified its literary and artistic property law.

In this respect, a great deal has been written by the Directive 2019/790 (EU), adopted on 26 March 2019 by the European Parliament. Among its 30 articles, we count in particular the establishment of a related right for press publishers (Article 15) and an obligation for platforms to control hosted content (Article 17). These provisions have been fiercely debated, and have led to multiple lobbying campaigns by authors and performers, newspaper publishers, and web giants (Google, Facebook and YouTube). In the present article, we will examine the changes made by the Directive.

New exceptions to copyright

There are currently many exceptions to copyright. In that respect, the Directive introduces three new exceptions to author rights and related rights in the digital environment. These exceptions and limitations are:

– Text and data mining for the purpose of scientific research when carried out by research organisations and cultural heritage institutions. However, rightholders are allowed to put in place technical measures aimed at ensuring the security and integrity of the networks and databases where their works are hosted. They may also expressly reserve their rights “in an appropriate manner”, for instance by machine-readable means, such as a digital watermark (Articles 3 and 4);

– The use of works in digital learning activities including distance learning. States may, however, provide a fair compensation for rightholders (Article 5);

– The copying by cultural institutions, for conservation purposes, of works which are part of their permanent collections (Article 6).

French law already provides similar exceptions in the article L. 122-53°) e) 8°) and 10°) of the French Intellectual Property Code, but this is not necessarily the case for all member States.

Under both French law and the Directive, these exceptions must be strictly interpreted and require that the work has been lawfully published.. All the conditions required by law must be met in order to benefit from these exceptions without having to obtain the author’s prior consent..

Furthermore, these new dispositions do not modify existing limitations and exceptions, such as parody or short quotation, which are retained (Article 17 (7) of the Directive). However, Member States will now have to specify that reproductions of visual works of art in the public domain cannot be protected by copyright unless the reproduction itself is original enough to be protected (Article 14). In France, this clarification is a mere application of copyright: a work in the public domain is no longer protected by author rights. Consequently, it can be freely reproduced without authorization. By contrast, if the production is original, it becomes a work on its own right and, as such, can be protected.

Licenses: out-of-commerce works, audiovisual video-on-demand works and collective management

The article 8 of the Directive authorizes collective management organisations to conclude non-exclusive licenses for non-commercial purposes with cultural heritage institutions for exploiting (reproducing, distributing, etc.) out-of-commerce work which are in their permanent collections.

According to Article 8 (5) of the Directive, a work is out-of-commerce: “(…) when it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public.”

Such licenses do not require prior mandate from the rightholder, but the collective management organization must be sufficiently representative of rightholders. The owner may, however, exclude at any time his works from this licensing mechanism, whether this exclusion is general or specific. In addition, the moral right to authorship of the work must be respected by indicating the author’s name, “unless this turns out to be impossible” (Article 8(2)).

Therefore, there is a switch from a prior authorization regime to an implied consent regime, and this will require greater vigilance on the part of authors and rightholders.

In France, article L. 134-4 of the French Intellectual Property Code already gives authors of out-of-commerce books the right to oppose to their exploitation.

Article 12 of the Directive provides that States may authorize collective management organizations to extend collective licenses to rightholders who have not authorized the organization to represent them.

Here again, the organization must be sufficiently representative of rightholders, and they in turn may exclude their works at any time from this licensing mechanism.

Furthermore, article 13 of the Directive provides for a negotiation mechanism in which “an impartial body or of mediators” will be in charge, in order to assist in the conclusion of licensing agreements “making available audiovisual works on video-on-demand services”.

The related right of press publishers

Article 15 of the Directive creates a related right for newspaper publishers established in a Member State. They can now be remunerated for use of their content by information service providers, in particular news aggregators. This right is subject to strict conditions of application and does not apply to :

– Private and non-commercial uses;

– Hyperlinks;

– Use of isolated words or very short extracts of a press publication;

– Works published for the first time before the Directive’s entry into force.

Moreover, this right is only granted for two years from January 1st of the year following the date on which that press publication is published.

This related right is a right of its own, and thus publishers no longer have to demonstrate they indeed own the economic rights transferred to them by the author of the work.

Part of the remuneration paid by service providers to newspaper publishers must be paid to the authors. However, the Directive does not specify how this payment must be carried out. In addition, authors can exploit their works independently of press publication.

Online content-sharing service are fully responsible (Article 17)

In France, platform operators enjoy the protective status of article 6-I-2 of the law “for confidence in the digital economy” n° 2004-575 of 21 June 2004. They are not

liable if they “promptly” remove the content at stake.

Platforms will now be liable if they communicate to the public without authorization works protected by copyright. However, they will be exempt from liability if they have:

– “Made best efforts to obtain an authorization” from rightholders;

– “Made best efforts” to ensure the unavailability of the work and

– Acted “ expeditiously” to disable access to the work or remove it from their websites after receiving a « sufficiently substantiated notice” of the rightholders.

Compliance with these requirements will be examined with regard to the type, audience, and size of the service, as well as the type of works downloaded. Article 17 (8) specifies that platforms are not subject to any general monitoring obligation, but its paragraph 4 (b) requires that they provide their “best efforts”, “in accordance with high industry standards of professional diligence”, to ensure the unavailability of protected works, which seems to be a sneaky way to require automatic content filtering.

Platforms that have been in service for less than three years, and which have an annual turnover of less than €10 million, will benefit from a less restrictive liability regime, as they will only have to make their best efforts to obtain an authorization and will have to act promptly upon receipt of a “sufficiently substantiated notice” from a right holder.

Furthermore, all platforms will be required to put in place an “effective and expeditious complaint and redress mechanism” so that users can challenge blocking or removal of a work posted online. States must also provide for alternative dispute resolution procedures.

Finally, it should be noted that authors and performers will now have to be remunerated in an “appropriate and proportionate” manner (Article 18). They must receive, at least once a year, information on the exploitation of their works (transparency obligation provided for in article 19). Contracts which are already concluded should be adapted to provide for an “additional, appropriate and fair remuneration” (article 20). Article 22 of the Directive also gives authors a right to revoke a license or a transfer of rights. These measures already exist in French law, but the Directive will harmonize European law.

The next step is the transposition of these provisions, which must be done by 21 June 2021 at the latest. France, which supports this text, should proceed with this transposition next summer. A proposal for a law on related rights with regard to press articles is already under consideration.

These developments are to be monitored…

Written by Dreyfus23/08/2019

On March 29, 2019, the registry in charge of <.eu> domain names (EURid) announced the extension of its contract with the European Commission until October 12, 2022 under the Regulation (EU) 2019/517 of March 19, 2019 (“the 2019 Regulation”).

With one exception, the provisions of the 2019 Regulation will apply starting October 13, 2022, and repeal the Regulations (CE) 733/2002 and (CE) 874/2004. The exception is that the provision concerning eligibility criteria under Article 20 of the 2019 Regulation will apply from October 19, 2019. This provision allows any person holding European Union citizenship, regardless of country of residence, to register a <.eu> domain name.

The purpose of this new regulation is to adapt the rules governing the <.eu> ccTLD to the expansion of the domain names sector. In this regard, the EURid’s annual report shows a steady increase in registrations in six countries including Portugal, Ireland and Norway. Nevertheless, the uncertainty caused by Brexit led to a loss of 130,000 domain names for the 2018 period. This decrease is mainly due to the anticipation of registrants who face the impossibility of registering or renewing their <.eu> domain names in the near future.

This brief was published in the July-August 2019 issue of the French magazine “Propriété industrielle”.

Written by Nathalie Dreyfus09/08/2019

The China Internet Network Information Center (CNNIC), registry of the <.CN> and <.中国> ccTLDs, has designated WIPO to provide dispute resolution services under the China ccTLD Dispute Resolution Policy. Disputes in relation to these ccTLDs may be filed with WIPO from August 1, 2019.

The <.CN> Policy is ONLY applicable to <.CN> and <.中国> domain names that have been registered for less than three years.

This Policy applies to <.CN> and <.中国>domain names that are identical or confusingly similar, not only to a mark, but to any “name” in which the complainant has civil rights or interests (.CN Policy, article 8(a)), whereas the UDRP is limited to the protection of trademark rights.

It is sufficient for the complainant to prove that either registration or use of the disputed domain name is in bad faith, whereas the UDRP requires the complainant to prove both elements.

The appeal jurisdiction belongs to the Courts of China or the arbitration Chinese institution, and the proceedings language will be Chinese (unless otherwise agreed by the parties or determined by the Panel).

This adds to the over 75 other ccTLDs for which trademark owners can rely on WIPO’s dispute resolution services.

Written by Dreyfus07/08/2019

The 65th international meeting of the ICANN took place in Marrakech, from the 24th to the 27th of June 2019. Several topics have been discussed such as the new gTLDs issues, the compliance between ICANN procedures and the GDPR provisions and the review of the rights protection mechanisms.

Future new gTLDs issues

Recently, ICANN faced an increase in the number of applications for top-level domains (gTLDs). In 2012, almost 2000 applications for new gTLDs were submitted to ICANN. At the end of this first round, more than 1000 gTLDs were created, for instance the <.brands>. ICANN awaits similar applications for the next round, which should take place in 2022.

Thus, new strategies have to be implemented to handle with those requests. At first ICANN foresees establishing priorities, based on the new gTLDs applications, to make the process more efficient. This process could be opened every year for a period of 4 months. However, ICANN could seek to limit the number of applications to 1000 per year.

Furthermore, TLDs with 2 characters will be permitted under the new process if these are composed by one letter and one number. Nevertheless, singular and plural versions of the same extensions are likely to be banned as coexisting gTLDs in the future.

On the other hand, ICANN’s Governmental Advisory Committee (GAC), specifically mentioned the <.amazon> issue in its report dated on 27 June 2019.

The ICANN Board had authorized the use of this gTLDs whereas several GAC members had expressed their concerns about the risk of the Amazon case becoming a precedent and expressed concern that a mutually acceptable solution had not been achieved. The GAC has requested ICANN Board to formulate its grounds for its approval. In addition, several South American governments object to its use.

GDPR and EPDP

The Expedited Policy Development Process Working Group (EPDP) implemented a compliance policy in regard to the GDPR, on March 2019. In our article about ICANN 63, we explained that when the GDPR came into force, it would produce several effects on the Whois protocol. For instance, personal data will no longer be accessible to the public. The EPDP has now to develop a unified access system centralizing protected data, based on the legitimate interests of IP owners.

Furthermore, some details about the Registration Data Access Protocol (RDAP) were given in the ICANN 65. This protocol has been created to eventually replace the Whois protocol. In fact, it performs the same functions as Whois, but its aim is to standardize data access. It shall be implemented by Registries and Registrars by the 26^th of August 2019.

Review of protection mechanisms provided by ICANN

The Rights Protection Mechanism (RPM) Working group is reviewing several ICANN procedures concerning gTLDs. It has developed preliminary recommendations about Sunrise and Claims periods. In the same way, some proposals have been developed to allow trademark owners to acquire a priority right to register their trademark as a domain name. In the absence of such a registration, third parties could register terms corresponding to the trademark.

Up to now, the first phase of the working group scheme consists in reviewing Uniform Rapid Suspension (URS) and the Trademark Clearinghouse (TMCH) mechanisms. Similarly, the UDRP procedure remains on the horizon, and the Group is expected to begin work on that in mid-2020. This will be the second phase of its work.

Meantime, as their work is not yet completed, we will have more information once their report is completed, which is expected to be in April 2020.

On the other hand, another working group was also formed to study Subsequent Procedures (SubPro) for new gTLDs. This working group confirmed its support of a User Guide, under the assumption that it becomes more precise, to make it easier to understand what gTLDs are.

Similarly, the SubPro working group expects to better communicate with trademark owners in order to limit the risk of counterfeiting, and to show how those new gTLDs could have a good effect on their activity.

Thus, ICANN 65 provided an opportunity to evaluate the work done thus far by the working groups. However, if clarifications have been made, few concrete changes have been put in place. The projects should take shape at the next meetings organized by ICANN.

The next ICANN meeting will take place in November 2019, in Montreal. We will continue to follow this matter closely.

Written by Dreyfus07/08/2019

According to the judgment « Adidas AG / EUIPO », T-307/17, of the 19th of June 2019, the General Court (ninth chamber) of the European Union dismissed an appeal by Adidas against the decision of the EUIPO to declare the famous « three-stripes » figurative trademark invalid on the grounds it lacked distinctive character.

This began when Adidas opposed the registration of the 2 stripes trademark of its competitor, Shoe Branding, who counterclaimed to have the Adidas “three-stripes” registration declared invalid on the grounds it lacked distinctive character. By a decision of 30^th June 2016, the cancellation division of the EUIPO declared the Adidas registration invalid, and by decision dated 7^th March 2017, the second Board of Appeal of the EUIPO upheld the original decision to cancel the Adidas trademark.

Therefore, Adidas appealed that decision to the General Court arguing that the challenged trademark had acquired distinctiveness through use. However, the Court ruled that there was a lack of inherit distinctiveness and also refused to recognise the acquisition of distinctiveness through use. In doing so, the Court said that Adidas did not provide sufficient evidence of distinctive character. According to the Court, Adidas had proved only that the necessary distinctiveness had been proved in only 5 of the EU member states.

It is important to remember that the distinctiveness is not established by providing evidence of sales and marketing figures for the products and services, but is judged by reference to the relevant public’s perception of the trademark. The Court said that distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception which the relevant public has of those goods or services. This meant that the Court considered the relevant public consists of all potential consumers of those goods in the European Union, and on the evidence filed said they would not make an obvious link between the « three-stripes » and the owner (Adidas). Although the « three-stripes » became the symbol of Adidas a long time ago the evidence filed by Adidas did not demonstrate an obvious link between the sign as registered and the products for which it is registered. There was no direct evidence the “three-stripes” as registered were actually used on the products covered in the registration. Therefore, the trademark’s distinctive character, and so its validity, could not be upheld.

The Court already accepted that a repetition of signs for a figurative trademark could be a valid trademark (TUE, 9th of november 2016, Birkenstock Sales/EUIPO, T-579-14 Representation of a pattern of wavy, crisscrossing lines). Nevertheless, in this case, the Court thought the trademark is composed of obvious non-distinctive elements.

Distinctive character can be acquired through use after registration (Com. 6th Déc. 2016, n°15-19048), but under the Directive 2008/95/CE of the 22nd of October 2008, evidence that the registration has acquired distinctive character has to be shown in each country of the European Union, (CJUE, 3rd chamber, 25th of July 2018, Nestlé SA c/ Mondelez UK Holdings & Services Ltd). Adidas was criticised for not having provided evidence covering every state of the EU. According to established case law, it is necessary to prove distinctiveness in all the states of the Union. On the other hand case law makes it clear that it may be sufficient to prove distinctive character in a substantial part of the EU dependant on the geographic importance of the states where distinctive character has been proved (CJUE, 24 of May 2012, Chocoladefabriken Lindt & Sprüngli AG c/ OHMI, C-98/11 P). Adidas could benefit from this case law.

Arguably, according to the Council Regulation n°207/2009, the European Court is going against the past judgments, but the decision is a necessary reminder of the need to prove distinctiveness acquired through use, in each country of the Union.

In the circumstances of this case, an appeal to the Court of Justice of the European Union is to be expected because of the effect of this decision on Adidas, which has registered several figurative trademarks of this kind. It may also have an effect on many other trademark owners. This judgement relates only to the specific trademark registration challenged and does not directly affect the other trademarks of Adidas, nor of any other owners.

Written by Dreyfus07/08/2019

Nathalie Dreyfus has been admitted as panelist and arbitrator in the CIRA Panel (Canadian Internet Registration Authority).

The CIRA Panel is a new Alternative Dispute Resolution Centre which belongs to the British Columbia International Commercial Arbitration Centre (BCICAC).

The main aim of CIRA is to settle disputes concerning domain names through a quick and relatively low cost mechanism, led by out-of-court arbitrators who meet certain requirements according to CIRA’s Canadian Presence.

The process is initiated by a complaint received in the CIRA Complaint Center which locks the disputed domain. A copy of the complaint is redirected to the Registrant who has twenty days to deliver a response. If so, a Panel of experts is appointed, whereas if there is no response the complainant may elect a single panelist. In both cases, a decision is given within twenty one days.

This decision is directly implemented by the CIRA.Since BCICAC was founded more than hundred cases have been solved by this institution.

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

Written by Dreyfus07/08/2019

In the decision of June 18, 2019, the General Court of Justice of the European Union applied Article 7, paragraph 1, m) of Regulation No. 2017/1001, which prohibits the registration of trademarks that consist of “an earlier plant variety denomination registered in accordance with Union legislation” or “or reproduce in their essential elements, an earlier plant variety denomination”.

In this case, the German company Kordes filed an application for the European trademark “KORDES’ ROSE MONIQUE” in Class 31 for the following description of goods: “Roses and rose bushes as well as products facilitating the multiplication of roses”. However, the European Union Intellectual Property Office (EUIPO) refused the registration of the trademark in question because it is composed of the term “MONIQUE”, corresponding the variety denomination “MONIQUE” registered in the Dutch register of plant variety protection.

To do so, the EUIPO must rely on the fact that the plant variety denomination “MONIQUE” is reproduced in the same way in the trademark applied for, and also the fact that this term is an essential element of the trademark.

Kordes appealed to the General Court of the European Union to reverse the EUIPO’s decision. In this respect, the company argued that the term “MONIQUE” cannot be considered as an “essential element”. In addition, the company argued that the public would perceive the trademark as an indicator of roses of the “Monique” variety commercialized by the company Kordes.

The Court held that the distinctive and dominant element of the mark KORDES’ ROSE MONIQUE is the element “KORDES”, placed at the beginning, this word is the essential element and the indicator of the source of origin. Accordingly, the Court considered that the variety denomination “Monique” cannot constitute an “essential element” of the trademark.

Consequently, the Court reversed the decision of the EUIPO refusing the registration of the trade mark KORDES’ ROSE MONIQUE.

Written by Dreyfus05/08/2019

In a short time, networking sites have become one of the main channels for companies’ communication. eBay, Tripadvisors, Amazon or even the more conventional social networks such as Facebook or Twitter have, in fact, become preferential showcases for advertising. They do undoubtedly represent an opportunity for making a company visible, but they nonetheless pose a real threat to reputation. Companies are now faced with a new, major challenge in terms of unfair competition, that is to say “fake customer reviews”, that, although false, have a great influence on the consumption of the products and services they target.

The French Directorate-general for competition, consumer affairs and prevention of fraud (DGCCRF) revealed that 74% of surfers have already changed their minds about buying a product because of negative comments or reviews.

Faced with this hefty problem, companies endow themselves with legal instruments with the intention of stamping out such practices.

Disparagement and deceptive marketing practices

The case law has already determined in the past, that defamation cannot be a valid foundation for “judgements, even excessive, concerning the products or services of an industrial or commercial undertaking”.[1]

Concerning unfavourable reviews regarding a commercial activity, undertakings must base their case in the domain of unfair competition, particularly by referring to an act of disparagement. This practice consists in a person or an undertaking discrediting the goods or services of an undertaking with the intent to harm reputation. Like any act of unfair competition, the author of disparagement can be held liable on the basis of article 1140 of the Civil Code.

For instance, on this basis, the Court of Appeal of Paris ruled against a company selling food supplements which had strongly criticised the products of their rival on their site in the “product reviews” section, describing them as “crap” among other things.[2]

The Court had, in the case in point, also based its decision on article 121-1 of the Code of Consumption which sanctions deceitful marketing practices to the extent that such comments corrupt the natural behaviour of the consumers.

Similarly, sanctions had been pronounced concerning negative opinions of a restaurant which had not yet even opened when they were posted.[3]

New sanctions for false online reviews

Although disparagement and deceitful practices had been the traditional foundations concerning these exaggeratedly negative remarks, the legislator specifically intended to control and thereby punish these fake reviews.

In the light of this, three implementing decrees of the law for a Digital Republic entered into force on 1^st January 2018. Introducing the new article L111-7-II of the Code of Consumption, they oblige undertakings and individuals whose activity consists in collecting, moderating or disseminating online reviews from customers, to provide fair, clear and transparent information on their processing and publication. This must be presented alongside said reviews, their date of publication as well as that of the consumer experience concerned and whether or not they underwent a control procedure. These decrees replace individual platforms’ voluntary compliance with the Afnor standard, which is supposed to ensure the fairness of the comments. It remains to be seen how the platforms will comply with such requirements.

This new obligation which imposes increased monitoring of such reviews on undertakings, shows that, although unfair competition was a convenient tool, case law has shown that these extensive large scale practices represented a real challenge for companies and should be framed by specific texts.

[1] https://www.legalis.net/jurisprudences/tribunal-de-grande-instance-de-paris-17eme-chambre-correctionnelle-jugement-du-13-fevrier-2014/

[2] https://www.legifrance.gouv.fr/affichJuriJudi.do?idTexte=JURITEXT000018909511

[3] http://www.lemonde.fr/societe/article/2015/10/27/2-500-euros-d-amende-pour-avoir-denigre-un-restaurant-sur-internet_4798047_3224.html

The firm Dreyfus & associés specialises in the field of intellectual property. Their team is up to date on the new developments in European legislation. They will be able to provide you with all the help and guidance you require concerning your intellectual property rights in Europe.

Written by Dreyfus09/02/2018

After the filing of an intellectual property right, several types of changes are likely to occur, such as the owner’s move, the change of his name in a legal way or the assignment of his rights. Such corrections must be recorded in the relevant register, as this could have very damaging consequences for the holder.

Appropriateness of registration by the rights holder

By definition, registration is an approach made with the National Register of Trademarks, Designs and Patents by means of a paper or electronically, allowing the owner to notify changes in his intellectual property rights. This is important because it enables third parties to be informed of the ownership of trademarks, patents, designs and models as well as of the operations carried out on them.

Registries are national

In France, the National Registry of Trademarks only accepts registrations of trademarks whose effects are effective in France. Registrations concerning international trademarks are also impossible except in cases where they cannot be effected at the International Office (OMPI). This is particularly the case for the license, which must be registered directly with the National Registry in accordance with its own legislation. This is because the legislation of certain states such as Germany, Australia or New Zealand does not provide for the registration of trademark licenses, thus rendering their registration in the international register ineffective.

Changes affecting ownership or enjoyment of the trademark

According to Article L. 714-7 of the Intellectual Property Code, “any transmission or modification of the rights attached to a trademark must be registered in the National Register of Trademarks in order to be effective against third parties”. This article shows that if the assignee fails to register its assignment or trademark license, the assignee may not oppose these acts against third parties. On the one hand, this will prevent him/her from taking opposition action against a subsequent filing or in the context of a legal action and on the other hand, he/she may be held liable in the event of a mistake committed by the beneficiary of a trademark license, as stated in a judgment handed down by the European Court of Justice on 4 February 2016.

On the other hand, other more rare deeds such as mortgages, pledges or guarantees also deserve to be registered with the Registry, otherwise these deeds will not be enforceable against third parties.

Thus, licenses and assignments are not the only amendments requiring registration by the rights holder. The latter may indeed be affected by other operations although they are not expressly covered by Article L. 714-7 of the Intellectual Property Code.

These transactions include the following:

–Total or partial withdrawal of trademark rights: where the trademark has not been registered, it is possible to withdraw or specify some goods and/or services, or to withdraw the entire trademark. You may find yourself in this situation if the proprietor of an earlier trademark believes, for example, that this new application infringes his rights and requires the withdrawal of certain goods or services or, more significantly, the withdrawal of the trademark.

–The total or partial renunciation of the trademark: even if it is less common, these are cases in which modifications are requested after the registration of your trademark.

From a practical point of view, the right holder must also register in the Trademark Register:

–The change of address explained by the fact that if the INPI is not informed and the owner of the rights is not represented by an agent, he may never receive a reminder letter to renew his trademarks.

–The change of legal form (a SAS becomes an SA for example) because if the INPI is not informed of this change, it will refuse the renewal of the trademarks with the new data without justification.

–The change of name as illustrated by the harsh decision of the European Court of Justice of September 8th, 2016 confirming that the holder must register his change of name in order to avoid being deprived of his rights.

Limits of registration by the owner of the trademark right

The corrections that the holder may enter are limited, and are limited to the possibility of limiting the protection of his rights. Therefore, it is impossible to modify your sign, name or logo, nor is it possible to extend the protection of your right by adding products and/or services through registration.

Registration: the solution against the loss of rights

Failure to register the above-mentioned changes can have very damaging consequences such as forfeiture of rights. Moreover, the positions adopted by the courts continue to be increasingly rigorous, prompting companies to systematically register events affecting all intellectual property rights or their holders in order to avoid all types of damage.

Registering changes affecting your intellectual property rights is an essential step in terms of protection. Dreyfus & Associés has experts in trademark law, as well as in national, European and international trademark registrations. Dreyfus & Associés is the ideal partner to support you in this process of securing and updating your intellectual property rights.

Written by Dreyfus20/06/2011

On 20 June 2011 at the Singapore conference, Icann’s Board of Directors voted at a large majority in favour of the launch of the new gTLDs. After heated exchanges between government representatives the day before, and in spite of persistent disagreements, the Board decided to move forward and approve the current Applicant Guidebook. The Board nevertheless indicated that modifications would be made in the forthcoming weeks and months.

The principal stumbling blocks related to the protection of trade marks during the Sunrise periods and to concerns raised by the competition authorities in the EU and the US in relation to the separation of the duties of the Registry (organisation in charge of the management of the extensions) and of the Registrar (company in charge of selling the domain names). The measures contested are the following:

– Obligation to provide proof for marks to be protected during the Sunrise periods (TLD launch period) and under the Uniform Rapid Suspension System (the URS), an expedited procedure for resolving disputes in clear-cut cases of cyber-squatting. It should be noted that all registered trade marks may be recorded in the Trademark Clearinghouse, without it being necessary to provide proof of use;

– End of vertical integation (separation of registry and registrar functions), whereby one company will be able to propose both services under certain conditions.

New gTLDs: the dates to be retained

12 January 2012: launch of the application submission period

12 April 2012: end of the application submission period

End of April 2012: publication of applications

November 2012: publication of the first results of the initial evaluations

What strategies should brand owners adopt?

The programme is now launched and it is necessary for trade mark owners to take a position quickly on the possibility of applying for an extension such as .brand or .company.

Indeed, the application submission period commences in less than 7 months and will only last 3 months.

The decision making processes and work involved in preparing the applications will necessarily take time. It is therefore advisable for brand owners to start examining the opportunity of applying for such an extension straightaway.

What about the future?

Icann has specified that the next cycle of applications will only be launched once the majority of applications from the first cycle have been processed and the stability of the DNS has been verified to ensure that it is not compromised by the new extensions granted. Depending on the number of applications submitted during the first cycle (expected to total between several hundreds to several thousands), it is probable that the next cycle will not be launched for several years.

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Written by Dreyfus23/09/2010

Google has decided to change its AdWords policy in the countries of the European Union and EFTA so that it is close to the one already in place in most other countries. This change took place as from September 14, 2010.

This decision is in line with the Google decision of the Court of Justice of the European Union ( hereafter “CJEU”) dated March 23, 2010, Louis Vuitton vs Google, in which it was held that ” [a]n Internetreferencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword” is not liable of trademark infringement.

This change of policy is not without consequences for trademark holders.

GOOGLE ADWORDS: ADVERTISING AT THE CLOSEST OF INTERNET USERS!

The Google AdWords program allows to display contextual and targeted advertisements corresponding to the Internetusers’ interest.

The program is based on two principles: keywords and geolocation, which, when combined, allow a fine selection of the public targeted by the ad.

Various types of AdWords

There are three options for targeting keywords that determine how Google search triggers the ads:

•   The broad match that allows an ad to appear in the context of searches on
similar expressions and relevant variations. For example, the purchase of the keyword “Television” will trigger the display of an ad if a user does a search on “Samsung TV”;
•   The exact expression that allows the ad to appear in the context of a search corresponding to the exact expression even if it is associated with other terms. For example, buying the keyword “Samsung Television” will trigger the display of an ad if the user does a search on the phrase “flat screen Samsung television”;
•   The exact keyword that allows the ad to show up in the context of a search corresponding only to the exact expression.

The best known and most widely used (probably because it is the default choice) is the broad match. The broad match allows the display of an ad when the user enters one of the terms of the keyword, even when inverted or interspersed with other words.
The ads will show up for all requests regardless of the order in which the key words are entered by the Internet user, even if the request contains other terms.

Today, an ad may be displayed with:

•   the plural or singular forms of the keyword;
•   the synonyms of the keyword,
•   other “relevant alternatives” to the keyword.

Geolocation

The advertising campaigns using Google AdWords take two kinds of geolocation into account:

• The countries targeted by the campaign (at the discretion of the advertiser);
• The countries where the ads are viewed (the physical location of the user,
materialized by the IP address of his computer). It should be noted that this factor is paramount since a Google request on the same term does provide different results depending on the viewing area. For example, a French Internet user making a search on Google Germany (google.de) will not obtain the same results as a German Internet user making the exact same search. Indeed, the geolocation system determines where the Internet user is localized. For example, a search for a restaurant could provide a list of restaurants located at the corner of the street!

The triggering of ads is finally linked to the policy of trademark protection put in place by Google in the concerned countries.

THE EVOLUTION OF THE TRADEMARK PROTECTION POLICY

So far, in the countries of the European Union and in the EFTA countries, except the United Kingdom and Ireland, when a trademark owner sent a complaint to Google, citing unauthorized use of its trademarks in a keyword or in the text of an ad, Google could at its discretion take the decision to disable the keyword and / or withdraw the infringing ad. In prevention, Google could also blacklist trademarks on request of right holders so as to prevent their use in the AdWords system.

What are the consequences for trademark holders as from September 14, 2010?

•   Someone who advertises on Google in Europe may select brands
as keywords to trigger ads. Advertisers have been allowed by Google to use third-party trademarks as keywords in the United States and Canada since 2004, in the UK and Ireland since 2008 and in many other countries since May 2009.
•   Google will no longer blacklists keywords in prevention.
•   The trademarks that had been blacklisted as a preventive measure will be removed from Google’s list and will again be available for registration as keywords.
•   The advertisings based on the principle of broad match (which allows an ad to appear in the context of searches on similar expressions and relevant variations) will be displayed after searches on competing brands.
•   Google will only remove the text ads that may mislead Internet users on the origin of products and services presented in the ads:
– on request of a right holder and after an investigation from Google confirming the infringement;
– on request of a judicial decision.

Furthermore, so as to limit the risk of conflict, the advertisers are simply invited to fulfil a list of “negative keywords”, corresponding to protected trademarks. In case said keywords are used, the ads will not appear. The responsibility is then transferred to the advertiser.

RECENT CASE LAW

The responsibility of advertisers has been reminded and specified in the decision of the CJEU of July 8, 2010, Portakabin vs Primakabin, notably in case of a used goods reseller.

The advertiser can be punished only if the ad creates a likelihood of confusion related to the origin indicator function of the concerned mark. [The owner of a trademark has the right to prohibit someone to advertise with a keyword identical to its mark only if the ad generates confusion: “where that advertising does not enable average Internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or from an undertaking economically linked to it or, on the contrary, originate from a third party”.]

CJUE also specifies that ” a trade mark proprietor is not entitled to prohibit an advertiser from advertising – on the basis of a sign identical with, or similar to, that trade mark, which that advertiser chose as a keyword for an Internet referencing service without the consent of that proprietor – the resale of goods manufactured and placed on the market in the European Economic Area by that proprietor or with his consent, unless there is a legitimate reason, within the meaning of Article 7(2), which justifies him opposing that advertising, such as use of that sign which gives the impression that the reseller and the trade mark proprietor are economically linked or use which is seriously detrimental to the reputation of the mark ” The use of a trademark as a keyword by a reseller can therefore be prohibited only if the use of keyword gives the impression that the reseller and the trademark holder are economically tied or if such use is seriously detrimental to the reputation of the trademark.

These elements will be appreciated at the discretion of the various national courts.

In France, the French Supreme Court in the France vs. Gifam decision dated July 13, 2010 has confirmed the case law of the CJEU including the fact that by offering advertisers the use of third parties trademarks as keywords, Google has not committed any counterfeiting act.

The Court of Appeals also confirmed in the Multipass / Smart & Co decision dated 19 May 2010 that the advertiser makes a mistake when failing to register the protected trademarks as “negative terms” whereas it had been aware of the situation for several months. However, this case concerned a dispute about the broad match and took place in a highly competitive context. The decision should therefore be regarded as being closely related to the facts at issue.

WHAT STRATEGY TO ADOPT?

Taking into account the recent developments in case law and the new policy to protect trademarks implemented by Google, right holders must exercise greater vigilance regarding the use of their trademarks as keywords to identify potential abusive behaviour and take appropriate provisions against advertisers.

Monitoring the use of trademarks as keywords

With the end of the blacklisting of trademarks in the AdWords program, trademark holders have to put in place a specific trademark watch to detect the use made of their marks as keywords by third parties, including their competitors. One major difficulty of this watch is the principle of geolocation advertising, which requires a local presence in each country of interest and an analysis of the detected ads whatever the language of the ad.

Since late June 2010, our law firm has offered a watching system suited to the geolocation principle. Don’t hesitate to contact us.

Recent legal actions in the United States

International legal developments

Legal action in France against Meta

Legislative and regulatory initiatives

United States: Generative AI Copyright Disclosure Act

European Union: AI Act

Conclusion

FAQs

What about trademark protection in the metaverse?

Is a French trademark enough to obtain protection in the metaverse?

See also…

♦ This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

1. The use of designs in the metaverse

2. The availability of unregistered designs in the metaverse

3. Protection of designs in the virtual world

SEE ALSO …

What are the new provisions of the Directive?

What are the new obligations of content-sharing platforms?

Can platforms be exonerated from liability?

About this topic…

Redefinition of the essential concepts of the 2010 European Directive

Modernisation and adaptation of the rules to the transformation of audiovisual services

Reform of the 1986 Act and safeguarding the French cultural exception

Extension of the powers of the CSA and protection of minors

About This Topic…

What is illegal content?

Who will be affected by the new rules?

Is a new liability regime planned?

To discover…

What are the grounds for action in case of revocation?

How does the forfeiture procedure work?

Who can bring a forfeiture action?

What about the proof of use of the trademark?

Consequences of the French Trademark Office decision

Conclusion

ABOUT THIS TOPIC…

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