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Introduction

The Uniform Rapid Suspension (URS) procedure is particularly effective when the primary goal is to stop a clear trademark infringement quickly through a domain name, without initiating a heavier procedure aimed at transferring the domain. It complements the UDRP by offering a faster and generally less expensive route, but with a deliberately limited remedy: suspension (not recovery) of the domain name.

URS: what the procedure can do (and what it cannot)

The promise: fast suspension, no transfer

URS allows a trademark owner to file a complaint for infringement of its rights, leading to the temporary suspension of the disputed domain name without any transfer of ownership. The suspension remains in place until the end of the registration period, after which the domain name is expected to become available again.

Strategic implication: URS is ideal when the priority is to stop a fraud or abusive use, rather than to recover a digital asset.

The standard: a procedure reserved for “clear-cut” cases

URS is designed for the most obvious infringements. It is not comfortable territory where the file involves a serious factual or legal dispute (plausible competing rights, potentially descriptive use, broader commercial dispute). This approach is expressly supported by ICANN: URS is intended as a fast-track mechanism for clear cases.

The three elements to prove (the “three-part test”)

To succeed in an URS complaint, the complainant must establish three cumulative elements:

• The domain name is identical or confusingly similar to a word trademark or figurative trademark owned by the complainant (a valid national/regional registration in current use, or judicially validated), and the complainant must be able to prove both the registration and the use;
• The domain name holder has no legitimate right or interest;
• The domain name was registered and is being used in bad faith.

Which Top-Level Domains (TLDs) are eligible for URS?

Before recommending URS, it is essential to verify the eligibility of the relevant extension, as URS is not intended to apply indiscriminately to all TLDs. As a rule, URS was designed for the new gTLDs introduced under the ICANN program, meaning it primarily applies to domain names registered under those new extensions. Conversely, for legacy gTLDs (for example, .com, .net, or .org), URS is not automatically available and the “standard” route generally remains the UDRP.

There are, however, specific cases: certain so-called “legacy” extensions have incorporated URS following amendments or renewals of their Registry Agreement, so that an extension historically “outside URS” may become eligible depending on the applicable framework. In practice, the most robust approach is therefore to confirm, on a TLD-by-TLD basis, whether URS is available, and then to choose between URS and UDRP depending on the objective pursued (rapid neutralization or transfer).

When URS is strategically better than the UDRP

1) Phishing, fake shop, impersonation: neutralization comes first

When the domain name is used for fraud (phishing, payment pages, a fake store replicating the trademark, misleading redirects), the economic priority is often to stop the abuse before anything else. In this context, URS is strategic because it specifically targets obvious abuse and can lead to rapid suspension.

2) Short-window campaigns: sales, launches, events

Where infringement is opportunistic (Black Friday, holiday season, product launches, influencer-driven campaigns), the key issue is not the ownership of the domain name but the loss of revenue and consumer confusion over a short time frame. URS is then a proportionate response: fast, tailored to obvious cases, and compatible with a multi-channel enforcement strategy.

3) Volume: “cloned” series of registrations (same pattern, same actor)

URS is also relevant where multiple domains follow the same abusive pattern: trademark + generic term, typos, geographic variants, or multiple extensions. Providers offer fee schedules adapted to volume, which can make URS economically rational in “anti-raid” operations.

4) When transfer offers no immediate value

If the domain name has no real portfolio value (no marketing value, no “clean” traffic, no portfolio coherence), pursuing a transfer under the UDRP may be disproportionate. URS allows us to cut the abuse and let the domain expire, with a possible one-year extension if needed.

Limitations: when URS is not the right tool

1) Where recovering the domain name is a business issue

URS does not transfer ownership. If the domain name is strategic (trademark + core business term, product name, recurring campaign name), the UDRP (or a national procedure) is more suitable, as it can result in a transfer.

2) Where there is a serious dispute

URS is designed to exclude “debatable” situations. If a potentially legitimate use exists (criticism site, parody, descriptive use, plausible prior rights, contractual dispute), the URS complaint may be denied, as the examiner must reject the complaint whenever a substantial factual dispute arises.

3) Where evidence of trademark use is weak

URS requires a clean file (rights, use, bad faith, lack of legitimate interest). Operationally, the procedure is strict and leaves little room to “fix” weaknesses afterwards: an incomplete or poorly structured filing can significantly undermine the case.

Conclusion

URS is a strategic route when a rapid response is required, focused on neutralizing a clear infringement, on an eligible TLD, with an evidentiary record capable of meeting the clear and convincing evidence standard. Conversely, as soon as the goal is to recover the domain name, or where a serious dispute is foreseeable, the UDRP (or a targeted court action) becomes the natural option again.

It is also advisable to strengthen your upstream framework through an integrated strategy combining targeted filings for key signs, continuous monitoring of risky registrations and content, and a graduated response depending on urgency (notice, takedown requests to intermediaries, then URS or UDRP where suspension or transfer is required).

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. What is the deadline to respond to an URS complaint?

In principle, the respondent has 14 calendar days to file a response.

2. What level of proof does URS require?

The complainant must prove its case by clear and convincing evidence and show that there is no substantial factual dispute.

3. How much does an URS proceeding cost?

Costs depend on the provider and the number of domain names involved. By way of indication, centers such as Forum, ADNDRC, and MFSD publish fee schedules: for a straightforward case (1 domain), fees usually start at a few hundred, then increase by tiers or with an additional per-domain fee.

4. Is there an appeal mechanism under URS?

Review/appeal mechanisms exist under the URS rules and the provider’s supplemental rules (deadlines, fees, conditions).

5. In which cases is URS not recommended?

Where the objective is transfer, or where the case raises serious factual or legal issues (potentially legitimate use, credible competing rights).

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

The decision delivered by the Court of Justice of the European Union on September 2, 2025 (Case C-426/24 P) marks a decisive turning point in the management of Community Plant Variety Rights (CPVRs). By confirming the definitive cancellation of a right for non-payment of an annual fee, the CJEU forcefully reiterates that the protection of plant innovations depends as much on the legal robustness of the title as on the administrative discipline of its holder.

This ruling, with major practical implications for breeders, seed companies, and agri-industrial groups, calls for a strategic and operational reading of plant variety protection law in the era of dematerialisation.

The legal framework governing the payment of fees in plant variety protection

The fundamental principle of maintaining the right

Regulation (EC) No 2100/94, which establishes the Community system for the protection of plant varieties, is based on a clear balance: in return for an exclusive right of exploitation, the holder must pay an annual maintenance fee.

In principle, failure to pay this annual fee within the prescribed time limits results in the definitive forfeiture of the plant variety right, save for limited circumstances in which the holder demonstrates, pursuant to Article 80 of Regulation (EC) No 2100/94, that an involuntary, exceptional, and duly justified impediment prevented compliance with the deadline.

A logic comparable to other intellectual property rights

Like patents or trademarks, a plant variety right is a living right, dependent on continuous vigilance. However, the specific feature of the CPVO system lies in its European centralisation and the growing use of digital tools dedicated to relations with right holders, in particular the MyPVR electronic platform, used for the notification of official acts, deadline management, payment of annual fees, and procedural exchanges with holders.

The Melrose case: a landmark dispute before the CJEU

The facts giving rise to the dispute

Romagnoli Fratelli SpA, the holder of a Community plant variety right for the potato variety Melrose, failed to pay the annual fee within the prescribed time limits.

The CPVO (Community Plant Variety Office) had nevertheless issued a debit note and several reminders, all made available via the MyPVR platform, with notifications sent by email.

The attempted restitutio in integrum

The holder applied for restitutio in integrum under Article 80 of Regulation (EC) No 2100/94, arguing that it had been prevented from meeting the payment deadline due to the lack of effective receipt of the notifications and contesting the validity of MyPVR as an official means of communication.

These arguments were rejected successively by the CPVO, the General Court of the European Union, and ultimately by the Court of Justice of the European Union, which held that failure to consult electronic notifications does not constitute an involuntary impediment within the meaning of Article 80.

Validation of electronic communications via MyPVR

An explicitly recognised legal basis

The CJEU confirms that the President of the CPVO is empowered, under Regulation 2100/94, to determine the modalities of electronic notification. Accordingly, the MyPVR system is recognised as an official and legally valid channel for the service of acts.

The importance of the holder’s consent

A decisive factor lies in the fact that the holder had opted for electronic communication. This choice entails clear legal consequences: failure to consult the platform cannot invalidate the notification.

Burden of proof and the holder’s heightened responsibility

A firm position of the CJEU

The Court unequivocally states that the burden of proof lies with the holder. It was for the holder to demonstrate that the documents had not been made available in its MyPVR space or that the notification emails had not been sent. Failing such proof, the notification is presumed valid.

A heightened duty of diligence

This approach enshrines a logic of proactive responsibility: not seeing a notification does not mean it does not exist.

The CJEU thus elevates the administrative management of a CPVR portfolio to a strategic obligation, inseparable from legal protection.

Essential best practices for holders of plant variety rights

To avoid irreversible losses, we notably recommend:

• Regular monitoring of MyPVR;
• Continuous updating of electronic contact details;
• The implementation of redundant internal alerts;
• The use of a professional representative for portfolio management.

Conclusion

The CJEU decision of September 2, 2025 starkly illustrates the cost of administrative negligence in plant variety protection law. Failure to pay an annual fee, even in the absence of bad faith, may result in the definitive loss of a right of significant economic value. In a digital environment fully embraced by European institutions, vigilance is no longer optional; it is the very condition for the sustainability of rights.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Can a cancelled plant variety right be refiled at a later stage?

In practice, refiling a plant variety right is very limited, as any new protection remains subject to novelty within the meaning of Regulation (EC) No 2100/94, as well as the DUS criteria, conditions that are rarely met after prior exploitation of the variety.

2. Is appointing a professional representative mandatory?

No, but it is strongly recommended to secure effective portfolio management.

3. Can the loss of a plant variety right affect a company’s valuation?

Absolutely. Plant variety rights are often strategic intangible assets. Their cancellation may impact financial valuation, acquisition audits, fundraising operations, or mergers and acquisitions.

4. Can failure to pay a CPVO fee trigger internal liability within a company?

Yes. In structured groups, forfeiture resulting from non-payment may give rise to contractual or disciplinary liability of the department or service provider responsible for portfolio management, particularly where economic harm can be demonstrated.

5. Does forfeiture of a plant variety right affect ongoing licence agreements?

Yes. Cancellation of the right generally removes the legal basis for licences, with potentially significant contractual consequences, particularly regarding royalties, warranties, and liability vis-à-vis licensees.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific situations nor to constitute legal advice.

Introduction

In trademark law, the protection granted to a well-known earlier trademark requires, in the context of an opposition or an appeal, a dual assessment:

• First, the likelihood of confusion under Article L. 713-2 of the French Intellectual Property Code (CPI);
• Second, damage to reputation, as provided for in Article L. 713-3 CPI.

The decision delivered by the Versailles Court of Appeal on October 22, 2025 in opposition proceedings initiated by Chanel against the trademark application “COCO SHAOUA” provides a landmark illustration of how these two concepts are assessed when a famous earlier trademark invokes both confusion and dilution.

We provide below a detailed analysis of the procedure, the Court’s reasoning, and the key takeaways for intellectual property professionals.

Opposition strategy: key elements to strengthen upstream

To maximise the chances of success in an opposition based on confusion or reputation, it is essential to:

• Document the reputation of the earlier trademark: association studies, surveys, turnover figures, market share data
• Demonstrate similarity between the signs (visual, phonetic, conceptual)
• Prove proximity or similarity of the goods and services
• Establish the existence of a mental link with the earlier trademark when invoking damage to reputation

Where one of these elements is missing or weakened, the opponent’s position is significantly undermined, as illustrated in the Versailles Court of Appeal decision of October 22, 2025.

Facts and procedural background of the October 22, 2025 decision

The earlier trademark: “COCO”

Chanel owns the verbal trademark “COCO,” covering soaps, perfumery and cosmetics in Class 3. The trademark enjoys significant public recognition as a direct reference to the Chanel universe and forms the basis of the opposition.

The contested trademark: “COCO SHAOUA” (classes 3 and 4)

A trademark application for the verbal sign “COCO SHAOUA” was filed for goods in Class 3 (cosmetics) and Class 4 (candles). Chanel contested the application on two grounds:

• A likelihood of confusion regarding Class 3 goods
• Damage to the reputation of the earlier trademark “COCO,” particularly in relation to Class 3 goods.

Opposition Before the INPI and the Director General’s Decision

Chanel filed an opposition before the French IP Office (INPI) against “COCO SHAOUA.”
The INPI Director General, while acknowledging the reputation of the earlier “COCO” trademark, rejected the opposition. He found that the signs were insufficiently similar to give rise to a likelihood of confusion and thus allowed the registration of “COCO SHAOUA.”

Chanel’s appeal before the Court of Appeal

Following the rejection, Chanel lodged a cancellation action before the Versailles Court of Appeal. The company argued that “COCO” was highly distinctive visually, phonetically and conceptually, and that “COCO SHAOUA” created both a likelihood of confusion and damage to reputation.

The Court delivered its decision on October 22, 2025.

The Court of Appeal’s assessment of likelihood of confusion

Similarity of the signs

Chanel argued that “COCO SHAOUA” incorporated the sequence “COCO” in its attack position, leading consumers to associate it instantly with the earlier trademark. The company also contended that the syllable “SHA” could phonetically evoke “CHANEL,” reinforcing a conceptual association.

The Court held otherwise. It noted that the word “coco,” when used as a common noun (e.g., as an ingredient or scent), does not function exclusively as a distinctive sign for Chanel in the mind of consumers. It further considered that the fantasy term “shaoua” was equally prominent within the sign “COCO SHAOUA,” such that the trademark would be perceived globally.

The Court therefore concluded that the visual differences (one word vs. two words), phonetic differences (two syllables vs. four), and conceptual differences between the signs were sufficient to exclude similarity.

Proximity of the goods

The Court acknowledged that the goods in Classes 3 and 4 were similar or closely related to those covered by the earlier trademark, which could, in principle, reinforce the likelihood of confusion. However, the lack of similarity between the signs prevailed: product proximity alone was insufficient to create confusion.

Conclusion: no likelihood of confusion

The Court rejected Chanel’s claim on likelihood of confusion, holding that the company had not demonstrated that “COCO SHAOUA” would be perceived as originating from, or linked to, Chanel by the relevant public.

The Court of Appeal’s assessment of damage to reputation

Recognition of the reputation of “COCO”

The Court confirmed that “COCO” benefits from recognised reputation, as acknowledged by the INPI. This reputation gives rise to autonomous protection under Article L. 713-3 CPI, allowing action even without confusion, where the contested sign creates dilution or parasitism.

Low intrinsic distinctiveness of the term “COCO”

However, the Court emphasised that the term “coco” is a common, polysemous noun (e.g., coconut, ingredient, scent), resulting in limited intrinsic distinctiveness. Reputation alone cannot compensate entirely for this weakness.

Assessment of “COCO SHAOUA” and lack of mental link

The Court found that the combination of “coco” with the fantasy term “shaoua” did not create a mental link with the earlier trademark “COCO.”

As the existence of such a link is a prerequisite under Article L. 713-3 CPI, the claim for damage to reputation could not succeed.

Conclusion: no damage to reputation

The Court therefore dismissed Chanel’s claim, finding no confusion and no dilution of the earlier reputed trademark.

To learn more about the scope of protection for a trademark’s reputation, please see our previously published article.

Conclusion

The Versailles Court of Appeal decision of October 22, 2025 demonstrates that the protection of a well-known earlier trademark does not dispense with a thorough assessment of sign similarity and the overall perception of the contested trademark. Despite Chanel’s reputation, the Court held that “COCO SHAOUA” was sufficiently distinct from “COCO” to exclude both confusion and dilution.

For trademark owners, this decision underscores the need for vigilance and meticulous preparation when engaging in opposition proceedings.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can an opposition be based solely on damage to reputation without likelihood of confusion?

Yes. Article L. 713-3 CPI allows action against a sign that damages the reputation of an earlier trademark even where no likelihood of confusion exists, provided that the earlier trademark’s reputation is proven and that a mental link is established.

2. Does a trademark consisting of a first name or nickname automatically benefit from enhanced protection?

No. Even a famous first name does not necessarily acquire strong distinctiveness. Courts evaluate its intrinsic character: a common first name, even if associated with a public figure, may remain weakly distinctive. Reputation does not convert a common word into a strongly distinctive trademark.

3. Does the presence of a generic term within a composite sign always prevent a likelihood of confusion?

No. A generic term may remain dominant if the rest of the sign is descriptive or secondary. It depends on the overall impression. In this case, the fantasy element “shaoua” neutralised the impact of “coco,” but other cases have found confusion despite a generic term where the dominant attack remained preponderant.

4. What types of evidence best support the existence of a mental link in reputation-based actions?

The most persuasive evidence includes recent market studies, association surveys, media exposure analytics and demonstrations of likely marketing free-riding. Judges accord significant weight to robust, recent and verifiable data.

5. Can a weakly distinctive trademark still be protected effectively?

Yes, provided the owner demonstrates either extensive use leading to acquired distinctiveness, or an arbitrary character in the relevant market.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not designed to apply to specific situations, nor does it constitute legal advice.

Introduction

The evolution of trademark law in Europe has enabled the emergence of new forms of distinctive signs, adapted to companies’ visual strategies. Among these, the position mark stands out as a still relatively uncommon category, though one whose use and recognition are steadily increasing before European offices and courts.

This type of trademark, which lies at the intersection of design and traditional trademarks, protects the specific way in which a sign is affixed to a product. The European Union has regulated this concept through the European Union Trademark Regulation (EUTMR) and the EUIPO guidelines, in order to define its limits and guarantee legal certainty for economic operators.

Definition and characteristics of position marks

According to the EUIPO, a position mark is defined as a sign “consisting of the specific manner in which the mark is placed or affixed to the product.”

The graphic representation must clearly identify the position, size, and proportion of the sign in relation to the product concerned.

To be admissible, the graphic representation of the trademark application must:

• Be precise, intelligible, and objective.
• Include, where applicable, dotted lines to distinguish unprotected elements.
• Avoid any vague descriptions suggesting that the position of the sign could vary depending on the products.

Thus, protection covers not only the sign itself, but also the combination of that sign and its particular positioning on the product.

Conditions of validity before the EUIPO

To be registered, a position mark must meet the conditions of validity set out in Article 7(1)(a) and (b) of the EUTMR, namely:

• Be clearly defined and identifiable.
• Have distinctive character, enable consumers to identify the commercial origin of the goods.

The EUIPO ensures that the representation filed allows any economic operator to understand the scope of protection without ambiguity. A sign that is purely decorative, generic, or inseparable from the usual appearance of the product may be refused. Case law thus reminds us that a position mark must not be confused with a simple design or aesthetic element.

The Airwair International Limited case

In a decision handed down on August 12, 2025, the EUIPO Cancellation Division ruled in the case Mtng Europe Experience, S.L.U. v. Airwair International Limited, regarding the famous yellow heel loop on Dr. Martens shoes.

Mtng Europe Experience, challenged the validity of the position mark registered by Airwair, described as a black and yellow buckle affixed to the back of the shoe, accompanied by contrasting yellow stitching.

The EUIPO reiterated that the representation of a trademark must be clear, precise, and durable, allowing for unambiguous identification of the protection conferred.

In this case, the Cancellation Division ruled that the trademark met these criteria and rejected the request for cancellation, considering that the visual element and its position gave the product a strong distinctive character.

This decision confirms the possibility of protecting an iconic visual positioning when it serves as an indication of commercial origin.

Practical issues for rights holders

For businesses, position marks offer valuable protection against the imitation of distinctive visual elements. They extend the protection afforded by the design or shape of the product by specifically targeting the location of a distinctive sign.

However, their success depends on a rigorous filing strategy:

• Describe the position of the sign precisely;
• Avoid any confusion between aesthetic function and function of origin;
• Ideally, secure the trademark application with proof of use and public recognition.

Trademark owners must therefore work hand in hand with specialized IP counsels to secure the scope of their applications and avoid any cancellation based on lack of clarity or distinctiveness.

Conclusion

Position marks represent a major evolution in trademark law, adapted to contemporary visual and marketing realities.

The Airwair case illustrates the importance of rigorous and consistent representation to ensure the validity of such a registration.

By combining visual innovation and legal rigor, position marks enable companies to protect not only their identity, but also the way they present it to the public.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. What is a position mark?

A position mark protects the specific way in which a sign is affixed to a product, rather than the sign itself. It is therefore distinct from figurative or three-dimensional marks.

2. What are the criteria for the validity of a position mark ?

It must be clear, precise, and sufficiently distinctive to enable consumers to identify the origin of the product.

3. What is the difference between a position mark and a design ?

A design protects the aesthetic appearance of a product, while a position mark protects the commercial origin associated with a particular visual positioning.

4. Can position mark protection and design protection be combined ?

Yes, both types of protection can coexist if they serve different purposes: one aesthetic, the other distinctive.

5. Why register a position mark ?

To prevent imitations and strengthen the protection of iconic visual elements that contribute to a brand’s identity, such as a seam, a stripe, or a distinctive location.

Introduction

In an increasingly complex legal environment, a trademark license agreement may be reclassified as a franchise, leading to significant legal and financial consequences. This situation, referred to as an “accidental franchise,” often arises when businesses expand internationally without anticipating the specific legal obligations that apply to franchises. This article highlights the risks, red flags, and best practices to secure licensing agreements.

What is an accidental franchise?

An accidental franchise occurs when a company believes it is granting a simple trademark license, but the contractual provisions and actual practices meet the legal criteria of a franchise.

Under French law, a franchise generally implies:

• The provision of a trademark or distinctive sign.
• Payment of remuneration by the franchisee.
• The transfer of substantial know-how and ongoing assistance.

By contrast, a trademark license, is limited to authorizing the use of the sign under quality control, with exploitation restricted to a given territory, without any operational supervision of the licensee. The line is subtle but decisive.

Legal and financial risks of reclassification

Reclassifying a license as a franchise may result in:

• Regulatory sanctions: nullity of the contract or fines in the absence of pre-contractual disclosure documents or required formalities.
• Civil liability: claims for damages by franchisees, reimbursement of amounts paid.
• Tax risks: reassessments concerning the nature of royalties.
• Damage to brand image: publicity of disputes and loss of credibility.

Illustrative example: A French fashion company imposes a uniform store design and mandatory marketing strategy on its licensees. The court reclassifies the agreements as franchise contracts, leading to their nullification and compensation to franchisees.

Warning signs in licensing agreements

a) Excessive control over the licensee

Clauses imposing management methods, pricing policies, or detailed operating manuals.

b) Fees resembling franchise entry fees

Upfront payments for training, advertising, or assistance.

c) Rigid territorial exclusivity

Agreements tied to strict marketing obligations.

d) Continuous mandatory assistance

Permanent transfer of know-how and ongoing supervision.

Best practices to secure agreements

• Anticipate local laws: review franchise legislation before drafting a license agreement.
• Limit assistance: focus only on trademark use and compliance with quality standards.
• Clear drafting: specify financial obligations to avoid assimilation with franchise entry fees.
• Rely on specialized counsel: intellectual property and franchise lawyers can adapt contracts to local requirements.
• Regular audits: periodically review agreements to ensure compliance with evolving regulations.

Case study: A French cosmetics start-up structured its foreign licensing agreements with specialized legal advice. By limiting obligations to quality control, it avoided reclassification as a franchise and safeguarded its business model.

Conclusion

Avoiding the accidental franchise is a strategic issue for protecting brand value and ensuring the legal security of licensing agreements. Increased vigilance and carefully drafted contracts can prevent disputes and optimize commercial expansion.

Key takeaway: clearly distinguishing between a license and a franchise is essential to secure operations and preserve reputation.

Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

What distinguishes a franchise from a trademark license?
A franchise involves a complete business concept with assistance and control, while a license is limited to the use of a trademark under quality control.

What is an “accidental franchise” in practice?
An accidental franchise occurs when a license agreement is reclassified as a franchise due to failure to comply with legal formalities.

What are the main risks for the company in case of reclassification?
The risks include the nullity of the contract, financial penalties, and the liability of the licensor.

What obligations do franchisors have in France?
Franchisors must provide the pre-contractual disclosure document (DIP, under the Doubin Law), transfer know-how, and ensure ongoing assistance.

What warning signs should be identified in a contract?
Overly detailed operating obligations, excessive control, or the existence of imposed confidential know-how.

How can an operating manual be prevented from being treated as franchise know-how?
By limiting the manual to quality standards without conveying structured confidential know-how.

The fight against counterfeiting and infringements of intellectual property rights remains a major economic, legal, and security challenge, affecting all sectors : fashion, luxury goods, technology, pharmaceuticals, and consumer products alike. Every year, French customs authorities intercept millions of counterfeit goods, representing a significant loss of revenue for rights holders and a tangible risk to consumer safety and health.

In this context, proactive customs action has become a cornerstone of rights enforcement. Under Regulation (EU) No. 608/2013 and its national transposition, notably the French Customs Code and the French Intellectual Property Code, customs authorities have, for several years, held the power to initiate seizures on their own initiative whenever they detect suspicious goods, even in the absence of a prior request from the rights holder. This power, now fully embedded in operational practice and supported by internal administrative guidelines, has profoundly reshaped customs enforcement strategy: it strengthens responsiveness, optimises prevention, and provides an effective mechanism to stem the inflow of counterfeit products into the market.

When mastered and combined with close cooperation between rights holders and customs, this system can serve as a genuine legal and operational shield for any business seeking to protect its intangible assets.

Context and evolution of the legal framework

Customs seizure is a vital tool in the fight against counterfeiting and the illicit importation of goods infringing intellectual property rights. Historically, customs intervention often required an explicit request from the rights holder. However, European and national legislation has progressively expanded the powers of customs administrations, enabling them to act ex officio when they identify suspicious goods, in accordance with Regulation (EU) No. 608/2013 and Articles L. 521-1 et seq. of the French Intellectual Property Code.

In France, customs authorities may initiate a seizure whenever there is objective evidence suggesting a potential infringement. This interpretation offers a major strategic advantage to rights holders, who thus benefit from proactive protection.

Conditions and procedure for implementation

Seizure initiated by customs authorities

A seizure may be triggered in two ways:

• Following a prior application for action filed by the rights holder, valid for a set period and renewable.
• Through spontaneous detection by customs, even without a prior application, where clear signs of counterfeiting or infringement are identified.

Customs services then act without delay to prevent the goods from being dispersed, securing them in designated storage facilities.

Rights and obligations of the rights holder

Once the seizure has been carried out, the rights holder is promptly notified and is granted:

• A period of 10 working days (extendable) to initiate legal proceedings or confirm the infringement.
• The option to request simplified destruction if the declarant or holder of the goods does not oppose the seizure.

In return, the rights holder must provide proof of their rights (registration certificates, evidence of use where applicable) and work closely with customs to qualify the goods.

Practical advantages for rights holders

The expansion of customs’ role brings several key benefits:

• Greater responsiveness: action is possible even without an initial request.
• Early interception of counterfeit flows before they reach the market.
• Time and resource savings for rights holders, enabling them to focus on litigation stages.
• Enhanced deterrence: infringing importers know that monitoring is continuous.

Limitations and precautions

Despite these advantages, certain precautions remain essential:

• Keep customs applications for action up to date to cover all product categories and countries of origin.
• Provide customs with detailed product identification sheets to facilitate rapid detection.
• Anticipate costs and timelines linked to legal proceedings if the seizure is contested.
• Be aware of the risk of unjustified detention and the need to verify the infringement promptly.

Conclusion and outlook

The ability of customs authorities to initiate seizures on their own initiative significantly strengthens the protection of intellectual property rights. Combined with proactive cooperation between rights holders and customs, this power can substantially reduce the inflow of counterfeit goods into the territory.

The European legal framework may evolve further in the coming years, particularly to reinforce cooperation between Member States and improve information sharing.

Dreyfus Law Firm is in partnership with a global network of attorneys specialising in Intellectual Property.

Nathalie Dreyfus, with the support of the entire Dreyfus team.

FAQ

1. What is a customs seizure?

It is the detention by customs authorities of goods suspected of infringing an intellectual property right.

2. Can customs act without a request from the rights holder?

Yes, if there is objective evidence of counterfeiting.

3. What is the deadline to act after notification of a seizure?

Generally 10 working days, with the possibility of extension.

4. What documents must be provided to customs?

Registration certificates, evidence of use, and detailed product identification sheets.

5. Does this mechanism apply to all forms of intellectual property?

Yes, including trademarks, designs and models, copyright, patents, and geographical indications.

The rapid rise of artificial intelligence (AI) is profoundly transforming the landscape of innovation. AI systems are increasingly capable of generating original inventions, prompting a fundamental question: can AI be legally recognized as an inventor under patent law? Recent judicial rulings and ongoing debates highlight the tensions between technological progress and existing legal frameworks.

Current legal framework: must the inventor or author be human?

1. The DABUS case: when artificial intelligence seeks inventorship rights

The DABUS case transcends a mere legal dispute; it encapsulates the tension between technological innovation and current law. DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) is an AI system developed by Dr. Stephen Thaler. He argued that two inventions a fractal-structured food container and a signaling device were created without any human inventive input. Accordingly, he requested that DABUS be named as the sole inventor in patent applications filed worldwide.

Patent offices in the United Kingdom, United States, European Patent Office (EPO), Australia, and Germany rejected these claims outright. In all these jurisdictions, the law requires that only a natural person can be legally designated as inventor.

The UK Supreme Court grounded its decision on the Patents Act 1977, which explicitly states the inventor must be a “natural person.”

Similarly, the EPO ruled in decisions J 0008/20 and J 0009/20 (December 21, 2021) that, although Article 81 EPC requires naming an inventor, Articles 60(1) and 81 EPC together imply that only a natural person can hold this status.

Similarly, the EPO ruled in cases J 0008/20 and J 0009/20 (decisions dated December 21, 2021) that although Article 81 EPC requires the designation of an inventor, a combined interpretation of this provision with Article 60(1) EPC leads to the conclusion that only a natural person may be designated as inventor. The EPO emphasized that AI cannot hold or transfer rights, a fundamental prerequisite for patent entitlement. Thus, AI lacks the legal capacity to be recognized as inventor under the European Patent Convention.

In the United States, the Federal Circuit ruled in Thaler v. Vidal (2022) that the term “individual” in the Patent Act refers solely to natural persons.

To date, only South Africa has diverged. In 2021, its Companies and Intellectual Property Commission (CIPC) accepted a patent application listing AI as inventor. However, this remains a special case due to South Africa’s declaratory patent system lacking substantive patentability examination, limiting its international authority.

2. Can AI be the author of a work? The U.S. Courts’ clear ruling

The question of human authorship also arises in copyright law. Dr. Thaler attempted to register an AI-generated work titled “A Recent Entrance to Paradise”, again naming the AI as sole author.

In March 2025, the U.S. Court of Appeals for the District of Columbia Circuit decisively held in Thaler v. Perlmutter that a machine cannot hold copyright.

Although the Copyright Act does not define “author,” the Court reasoned that the law’s spirit clearly envisions a human being capable of intent, choice, and ownership of exclusive rights from the moment of creation.

The Court further underscored that AI is merely a tool, not a legal subject. Creation occurs through the human who programs or operates the machine, not the machine itself.

Moreover, the U.S. Copyright Office has consistently maintained a human authorship requirement for copyright registration, aligned with longstanding copyright doctrine.

3. The situation in France: an approach based on human originality

Under French and European law, copyright protection depends on originality understood as an expression of the author’s personality.

According to the Court of Justice of the European Union’s established case law (Infopaq, Painer, Funke Medien), a work is protectable only if the author exercised free and creative choices revealing personal intellectual effort.

AI, however advanced, has no legal personality, creative capacity, or intent. It merely executes algorithms.

Consequently, neither in France nor in the EU can a work entirely generated by AI currently qualify for copyright protection.

4. Toward legal evolution?

These cases affirm that human authorship remains a fundamental principle of intellectual property law. While some advocate reform to recognize AI’s autonomous creative role, most legal systems favor preserving a personalist concept of creation.

This does not leave operators of AI-generated works without recourse. Unfair competition law, contractual protections, and civil liability may offer alternative safeguards. However, meaningful change requires clear legislative action rather than judicial reinterpretation.

Legal and economic challenges

Protecting innovations generated by AI

The refusal to recognize AI as inventor creates significant obstacles to protecting innovations. Companies investing heavily in AI-generated inventions face a legal gap. Without patent protection, these inventions risk exposure to unauthorized copying and loss of competitive edge.

This situation may also discourage investment in AI research and development, as companies could be hesitant to commit resources to technologies whose outcomes lack protection under intellectual property rights.

Implications for companies and investors

Legal ambiguity surrounding AI inventorship recognition could have serious economic consequences. Companies might be reluctant to commercialize AI-derived inventions, fearing litigation or inadequate protection. Likewise, investors may hesitate to finance innovative AI projects given the lack of legal clarity.

Future perspectives for patent law

Recognizing AI as co-inventor?

In light of these challenges, some experts propose evolving patent law to permit AI recognition as co-inventor alongside a human. This would acknowledge AI’s active role in invention while retaining human accountability. Such change would require legislative amendment and international harmonization. 

Adapting legal systems and professional practices

Legal systems might develop tailored mechanisms for AI-generated inventions, such as sui generis protection regimes designed to address their unique characteristics. Concurrently, IP professionals must adapt practices to assess and protect AI innovations effectively.

Conclusion

The question of AI recognition as inventor under patent law remains complex and contentious. Recent rulings uphold the necessity of a human inventor, yet technological progress pressures lawmakers to reconsider. Legal adaptation appears inevitable to keep pace with innovation and ensure effective protection of AI-generated inventions.

Dreyfus Law Firm works with clients in the food sector, providing specialist advice on intellectual property and regulatory issues to ensure compliance with national and European laws.

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Nathalie Dreyfus with the support of the entire Dreyfus firm team.

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