Nathalie Dreyfus has been admitted as panelist and arbitrator in the CIRA Panel

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.

Conflict between trademark and plant variety

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.

Social networks and online reviews: how to defend against unfair competition

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.

The importance of registering a rectification affecting an intellectual property right

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.

UK : a new IP law

Written by Dreyfus18/01/2018

Like every “wash-up period” preceeding the dissolution of the British Parliament and the election of a new one, this latest period witnessed the rushed adoption of a new intellectual property Act, which received Royal Assent on April 27, 2017.

The Intellectual Property (Unjustified Threats) Act

As its name implies, the Act is specific to threats issued by intellectual property rights owners. It devotes a chapter for each right, namely patents, trademarks, and designs. It therefore harmonizes the status of the threats communicated by rghts holders, leaving copyright aside.

First, the Act defines a threat of legal action for infringement. Accordingly, communications contain such a threat if a reasonable person in the position of a recipient understands that an intellectual property right (patent, trademark or design) exists, and that the holder of these rights intends to bring legal action.

The Act focuses on the possibility for intellectual property rights holders to address their threat of legal action for infringement to the primary actors (i.e. manufacturers or importers) directly, without risk of liability for unjustified threats. The rights’ owners will also be able to require these actors to cease secondary acts such as product sale.

Furthermore, the Act describes the actor’s defence once he has been threatened, namely declaring that the threat is unjustified, seeking an injunction to cease the threat, or requesting damages for the harm suffered. This defense does not hold if the owner demonstrates his right along with the measures taken and communicated to the perpetratof of the infringement.

Finally, the Act introduces a new provision preventing the owner from addressing threats to professional advisers who act upon instructions and who identify their clients in the communication.

This new “Intellectual Property (Unjustified Threats) Act” is perceived as a positive step towards harmonizing the British legal system with regards to intellectual property. The owner must nevertheless remain vigilant before bringing a threat against a potential infringer so as not to suffer the consequences of qualification of an unjustified threat.

Dreyfus & associés is specialized in the field of intellectual property. The Dreyfus team closely follows new legal developments in Europe. We can help and advise you regarding all intellectual property rights within Europe.

Singapore 2011 : Icann launches the new gTLDs

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.

Click here to download the pdf version of this document

Google AdWords – Evolution of the trademark protection policy in the countries of the European Union and EFTA as from September 14, 2010

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.

Internet