Introduction

In an environment where competition is growing increasingly fierce, the idea of resurrecting abandoned trademarks, known as zombie trademarks , has become a major strategic shift. Far from being a mere trend, trademarks revival has become a true economic lever. This article explores the assessment criteria, differences in treatment between jurisdictions, and the often underestimated legal risks associated with the reactivation of dormant trademarks.

What is a Zombie Trademark?

Zombie trademarks are those that have been registered  but are no longer actively used, either because they have expired or because they have not been put to genuine use. These brands are often considered “dead” in the sense that they are not exploited commercially. However, under certain circumstances, they can be reactivated or “resurrected.”

What motivates the resurrection of old Trademark ? Nostalgia is a key factor: consumers are drawn to the nostalgic aspect of these trademarks, especially when they evoke cultural memories. Furthermore, reviving trademarks can provide a competitive advantage by reducing the need to build a new brand identity while capitalizing on some residual reputation.

An emblematic example of this strategy is Old Spice, a men’s grooming brand, which was relaunched in the 2010s with a modern marketing approach and saw its sales double.

Legal risks associated with the revival of an abandoned trademark

Reactivating a trademark after revocation for non-use

Trademark law is based, inter alia, on the concept of use, the effective absence of which may lead to the revocation of the trademark registration. Failing serious use over an uninterrupted period of five years, a trademark is exposed to revocation, in accordance with Regulation (EU) 2017/1001 on the European Union trade mark. Once revocation is declared, the exclusive rights on the trademark cease to exist. From a strictly legal standpoint, the sign then becomes available again and may, in principle, be the subject of a new filing by a third party.

For a new applicant, the disappearance of the earlier right may appear to create an opportunity. Nevertheless, this opportunity remains fragile, particularly where the sign continues to enjoy a lasting presence in the public’s mind.

The role of residual reputation

Certain historical trademarks, although legally revoked, continue to benefit from persistent public recognition. This phenomenon is commonly referred to as residual reputation.

When a third party files a trademark that was previously well known, it may be exposed to the risk that the new filing is characterised as an opportunistic appropriation of pre-existing goodwill. In such circumstances, the challenge no longer concerns the existence of an earlier trademark right, but rather the legitimacy of the new applicant’s conduct.

The Question of Good Faith According to the European Approach

Reactivating a trademark must be done carefully. If a third party attempts to re-register an abandoned trademark and uses it in a way that could create a misleading impression of continuity, it could be interpreted as bad faith.

In the Nehera case (T-250/21, judgment of July 6, 2022), the European Court ruled that the lack of use and protection of the “Nehera” trademark for several decades, combined with the absence of any surviving reputation and exploitation, excluded any bad faith on the part of the applicant. Mere knowledge of past use was not sufficient to establish bad faith.

In the present case, the applicant had undertaken its own commercial efforts to relaunch the mark without creating a misleading impression of continuity, such that bad faith could not be established.”

In contrast, in the Simca case (T-327/12, judgment of May 8, 2014), the European Court confirmed that the Simca brand still enjoyed a residual reputation in 2007 despite its historical use. The applicant, fully aware of this reputation and the absence of serious prior use, filed the application intending to exploit that reputation, which constituted parasitism.

Therefore, the existence of a surviving reputation, combined with positive knowledge and the intent to take advantage of that reputation, led to the determination of bad faith, resulting in the invalidation of the European Union trademark.

Diverging National Approaches in Europe on the Good Faith Issue

An analysis of national case law reveals a marked divergence among EU Member States in the assessment of good faith in the context of the re-filing of abandoned trademarks. This heterogeneity highlights the absence of a unified approach as regards the weight given to a sign’s past notoriety and to the applicant’s intention at the time of filing.

In Germany, in the Testarossa case involving Ferrari (29 W (pat) 14/21), the court adopts a restrictive conception of bad faith. It holds that the residual reputation of a sign, taken in isolation, is not sufficient to preclude a new filing. In the absence of a current likelihood of confusion or a clearly established infringement of an existing protected trademark, the re-filing is not considered unlawful.

By contrast, the Court of Appeal of Paris, in the VOGICA case (May 16, 2025, RG No. 23/17886), adopts a significantly more protective approach. Although the trademark had not been subject to any genuine use since 1991, the court acknowledged the existence of a substantial residual reputation on the French market. Noting, moreover, the applicant’s inability to substantiate an autonomous and credible economic project, the court inferred an intention to unduly appropriate the economic value attached to the sign’s past notoriety. This strategy was characterised as parasitic behaviour, leading to the invalidation of the filing.

More generally, national courts do not assess good faith in a uniform manner when it comes to the re-filing of trademarks that have been abandoned or revoked for non-use.

What are the major legal risks identified in reviving a trademark?

Reviving a brand becomes legally risky when the following conditions are met:

• A current residual reputation, a proven knowledge of this reputation,
• And the absence of an independent economic project,

which exposes the applicant to:

• Invalidity for bad faith,
• Parasitic actions,
• And the lasting blockage of any revival strategy.

Conclusion

The revival of brands is a powerful strategy, but it must be approached with caution. A zombie brand can offer a significant competitive advantage, but the legal risks are also substantial. A successful resurrection relies on good faith, genuine use, and a thorough understanding of European case law. Therefore, a detailed analysis of the brand’s history, its prior use, and its residual reputation is essential.

Dreyfus & Associés works in partnership with a global network of specialized intellectual property lawyers.

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. What is a parasitic act in the context of brand revival?
A parasitic act involves exploiting the reputation of a historical brand without bringing any real innovation or added value, with the aim of unduly benefiting from its image.

2. What are the legal risks associated with reviving a dormant trademark?
Reviving a brand involves several legal risks, including cancellation for non-use if the brand has not been used for an extended period, bad faith, or a risk of confusion with other brands.

3. Can a dormant trademark be revived if it has been cancelled for non-use?
Reviving a dormant brand cancelled for non-use is possible, but it is subject to strict conditions. If a brand has been cancelled for non-use, it is necessary to prove that it has been used again in a serious and continuous manner in commerce.

4. Does residual good faith protect a trademark?
It depends on the assessment of the courts, based on whether the brand’s notoriety is still active in the public’s mind.

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.

Legal definition, recent case law, litigation procedures, evidence methods and protection strategies — everything you need to know to protect your confidential information.

In an economy built on intangibles, a company’s value often lies in what it doesn’t disclose. Customer databases, algorithms, business strategies or technical know-how: these critical assets are not always patentable, and this is where trade secret protection comes into play.

Since the French law of July 30, 2018, transposing EU Directive 2016/943, France has had a powerful but demanding protective framework. The 2024-2025 case law has significantly clarified the relationship between trade secrets, the right to evidence and GDPR. This reference guide provides everything you need to understand, protect and defend your confidential information.

This guide covers:

• The legal definition and 3 cumulative protection criteria
• The 2024-2025 case law review and its practical implications
• Litigation procedures: taking legal action, timelines, costs
• Methods for proving the prior existence of your secret
• Industry case studies (pharma, tech, food & beverage)
• Coordination with other intellectual property rights
• The international dimension of protection

Evolution of the Legal Framework

1. Fundamentals: What is a Trade Secret?

Unlike traditional intellectual property (patents, trademarks) which relies on a public title, trade secret law protects information by virtue of it remaining secret. This protection arose from a simple observation: some strategic information cannot or should not be patented.

The Legal Definition (Article L.151-1 of the French Commercial Code)

To be protected by law, information must cumulatively meet three strict criteria:

The 3 Cumulative Conditions

1. Secrecy
   The information is not generally known or readily accessible to persons within circles that normally deal with this type of information. This is the “non-obviousness” criterion: the information must not be commonplace in the relevant sector.
2. Commercial Value
   The information has commercial value (actual or potential) precisely because it is secret. This value can be direct (competitive advantage) or indirect (cost avoidance).
3. Reasonable Protection Measures
   The information is subject to concrete protection measures by its holder to maintain its secrecy. This is often the determining criterion in litigation.

Essential Point

If you don’t actively protect your information (confidentiality clauses, passwords, document classification), courts will consider there is no trade secret. This is the criterion most often neglected by companies.

What Does Trade Secret Law Cover?

The scope is very broad. The concept of “information” is interpreted extensively and includes:

Technical know-how: manufacturing processes, recipes, chemical formulas, production methods, optimization parameters, technical drawings.

Commercial information: customer and prospect lists, pricing policies, supplier terms, product margins, internal market shares.

Strategic data: M&A projects, development plans, proprietary market studies, business plans, financial projections.

Organizational information: strategic organization charts, management methods, optimized internal processes.

Algorithms and data: source code, scoring models, proprietary databases, software architectures.

What Trade Secret Law Does NOT Protect

Understanding the limits of this protection is essential:

Independent discovery: if a competitor independently develops the same information, you cannot sue them.

Lawful reverse engineering: analyzing a product placed on the market to understand how it works is legal (unless contractually prohibited).

Information becoming public: once a secret is disclosed (voluntarily or not), protection is lost definitively.

General employee skills: the know-how acquired by an employee (their “experience”) belongs to them and can be used with a new employer.

2. 2024-2025 Case Law Review

Recent judicial developments have been marked by an ongoing tension between two imperatives: protecting business secrets and the right to evidence (a party’s need to obtain documents to assert their rights in court).

The Landmark Ruling: Cass. Com., February 5, 2025 (No. 23-10.953)

This was the major turning point. In a case between the franchise networks Speed Rabbit Pizza and Domino’s Pizza, the French Cour de Cassation established a structuring principle for balancing these rights.

The Legal Principle

“The right to evidence may justify the production of elements covered by trade secrets, provided that such production is indispensable to its exercise and that the infringement is strictly proportionate to the aim pursued.”

Practical implications:

For a judge to order production of a document covered by trade secrets, it must be indispensable to resolve the dispute, not merely “necessary” or “useful”. The term “indispensable” is intentionally restrictive: it excludes “fishing expedition” requests (exploratory evidence gathering).

The judge must conduct a proportionality assessment between the competing rights. This involves verifying that no less intrusive means of proof exists, and that the requested document is truly decisive for the outcome of the case.

Managing Seizures (Seizure-Infringement and Article 145 CPC)

When a company is subject to an ex parte seizure on its premises, how can it prevent its secrets from ending up with a competitor?

Case law requires strict application of provisional sequestration:

Documents seized that may violate trade secrets are placed in escrow with a third party (usually the bailiff). A period of one month is granted to the seized party to contest disclosure. The judge rules on whether documents can be communicated before any transmission to the seizing party, applying the proportionality test.

The Preparatory Ruling: Cass. Com., June 5, 2024 (No. 23-10.954)

This decision laid the groundwork for the balance, recognizing for the first time that the right to evidence could justify an infringement of trade secrets, while requiring strict judicial oversight.

Unfairly Obtained Evidence: Cass.Ass, December 22, 2023 (No. 20-20.648)

The French Cour de cassation ruled that evidence obtained unfairly (secret recordings, stolen documents) may be admitted in court if two conditions are met: production is indispensable to exercising the right to evidence, and the infringement of the opposing party’s rights is proportionate to the aim pursued.

3. Trade Secrets vs GDPR: The CJEU Ruling of February 27, 2025

At the European level, the Court of Justice (CJEU, C-203/22, Dun & Bradstreet Austria) issued a major decision on the relationship between trade secrets and individual rights.

The Facts

An Austrian consumer was denied a mobile phone contract on the grounds of insufficient creditworthiness. This refusal was based on an automated assessment (credit scoring) conducted by Dun & Bradstreet. She requested an explanation of the “underlying logic” of this decision, invoking Article 15 of the GDPR (right of access). The company refused, citing trade secret protection of its algorithm.

The CJEU Decision

Principle Established by the CJEU

GDPR prevails over trade secrets regarding the right of access to personal data and information about automated decisions. The data controller must provide “meaningful information about the logic involved” in a manner that is “concise, transparent, intelligible and easily accessible”.

What this means for businesses:

Simply providing an algorithm or complex mathematical formula is not sufficient to fulfill the information obligation. The explanation must be understandable to a non-specialist.

The company must enable the individual to understand what data was used and how it influenced the decision. This doesn’t mean disclosing the complete algorithm, but explaining the determining criteria.

In case of dispute, allegedly protected information must be communicated to the judge who will balance the competing rights.

Sector Impact

This decision directly affects sectors using automated scoring: banks and credit institutions, insurance (personalized pricing), recruitment (automated CV screening), real estate rental (tenant creditworthiness), and more generally any automated decision-making process with significant effects on individuals.

4. Protection Strategies: “Reasonable Measures”

To benefit from legal protection, a company must prove it has implemented concrete measures. The term “reasonable” means appropriate to the nature of the information, the size of the company and the economic context. A SME doesn’t have the same resources as a Fortune 500 company, and courts take this into account.

Protection Measures Checklist

Legal Measures

• ☐ Non-disclosure agreements (NDAs): systematic before any discussion with a partner, service provider or investor
• ☐ Enhanced confidentiality clauses: in employment contracts and commercial agreements
• ☐ Non-compete clauses: for strategic positions, within legal limits
• ☐ IT charter: explicitly mentioning confidentiality duties and signed by all employees
• ☐ Internal regulations: incorporating confidentiality obligations

Technical Measures

• ☐ Access management: “need-to-know” principle
• ☐ Traceability: access logs for sensitive documents
• ☐ Encryption: of sensitive data at rest and in transit
• ☐ Strong authentication: MFA for access to critical systems
• ☐ DLP (Data Loss Prevention): data leak prevention tools

Organizational Measures

• ☐ Document marking: “CONFIDENTIAL — TRADE SECRET” label on sensitive documents
• ☐ Information classification: confidentiality level system (C1, C2, C3…)
• ☐ Staff training: awareness of social engineering risks and information leaks
• ☐ Exit procedures: reminder interview about obligations, retrieval of access and documents
• ☐ Physical security: secured premises for sensitive paper documents
• ☐ Secret inventory: regular mapping of the company’s confidential information

Practical Tip

“CONFIDENTIAL” marking of documents is the simplest and most effective measure to prove in court. An unmarked document will be difficult to consider as a trade secret. Also invest in traceability: being able to demonstrate who accessed what information and when is invaluable in litigation.

5. Proving Your Secret: Timestamping Methods

In case of dispute, you will need to prove that you held the information before the alleged infringement. A computer file’s creation date is not sufficient proof (it can be modified). You need to establish a certain date.

The Soleau Envelope (INPI)

The best-known and most economical solution for SMEs and individual inventors.

Principle: You send a document in two identical copies to INPI (French Patent Office). One copy is kept by INPI, the other is returned to you with an official stamp certifying the date.

Cost: €15 for 5-year protection, renewable once (10 years maximum).

Advantages: Simplicity, low cost, established judicial recognition.

Limitations: Limited size (7 pages maximum per compartment), not suitable for frequent updates, no direct international validity.

Website: INPI – Soleau Envelope

Deposit with a Bailiff or Notary

Traditional solution offering maximum evidentiary weight under French law.

Principle: A ministerial officer certifies the content of a document on a given date and stores it.

Cost: Variable depending on volume, generally €100 to €500 for a simple deposit.

Advantages: Uncontestable evidentiary weight, universal acceptance by French courts, ability to deposit digital media.

Limitations: Higher cost, less agile procedure for frequent updates.

Blockchain Timestamping

Modern solution, particularly suited for tech companies and frequent updates.

Principle: A digital fingerprint (hash) of your document is recorded in a public blockchain (usually Bitcoin or Ethereum). This record is immutable and timestamped.

Cost: A few euros per timestamp via specialized services, or integratable into your internal processes.

Advantages: Automatable, suitable for software development pipelines (CI/CD), low marginal cost, traceability of each version.

Limitations: Judicial recognition still emerging in France (but growing), need to keep the original document corresponding to the hash.

Providers: Woleet, OriginStamp, KeeSign, or solutions integrated into document management platforms.

APP Deposit (Software)

For source code and software, the French Agency for Program Protection offers a specialized deposit service.

Principle: Secure deposit of source code with certain date, recognized as proof of prior possession.

Cost: From €120 excluding VAT for 5 years.

Website: APP – Agency for Program Protection

Evidence Methods Comparison Table

6. Taking Legal Action: Procedures, Timelines and Costs

When a trade secret infringement is identified, several courses of action are available to the secret holder. The choice depends on urgency, severity of the infringement and objectives pursued.

Competent Jurisdiction

Civil Court (Tribunal judiciaire): competent for civil actions in trade secret matters. This is the general jurisdiction court.

Commercial Court (Tribunal de commerce): competent if the dispute is between two merchants or commercial companies and relates to commercial acts.

Labor Court (Conseil de prud’hommes): competent if the infringement is committed by an employee within the employment relationship (but action may be brought before the civil court for non-employment aspects).

Available Procedures

Interim Relief (Référé)

Fast-track procedure for obtaining provisional measures. Conditions: urgency and absence of serious dispute, or existence of imminent harm. Hearing timeline: generally 2 to 4 weeks after service. The judge can order provisional prohibition on use or disclosure of the secret, protective seizure of disputed products or documents, and penalty payments to ensure compliance.

Proceedings on the Merits

Full procedure for obtaining a definitive decision. Average duration: 12 to 24 months at first instance depending on complexity. Allows for final damages, permanent injunction and publication of the judgment.

Adapted Seizure-Infringement (Article L.152-3 of the Commercial Code)

Ex parte procedure (without the opposing party being notified) to establish an infringement and seize evidence. Application to the president of the civil court. Execution by bailiff at the presumed infringer’s premises. Sequestration of sensitive documents pending decision on their disclosure.

Limitation Period

Limitation Period: 5 Years

Civil action in trade secret matters is time-barred after 5 years from the day the trade secret holder knew or should have known the last fact enabling them to exercise their action (Article L.152-2 of the Commercial Code). This period can be interrupted by a formal notice or legal proceedings.

Cost Estimates

These estimates are indicative and vary according to case complexity, firm reputation and geographic area.

Elements to Gather Before Taking Action

Before initiating proceedings, ensure you have the following elements:

Proof of prior possession: Soleau envelope, notarial deposit, blockchain timestamp.

Proof of protection measures: signed NDAs, IT charters, access logs, document classification.

Proof of infringement: disclosed documents, infringing products, witness statements, correspondence.

Damage assessment: loss of revenue, lost R&D investments, reputational harm.

7. Remedies and Sanctions

In case of theft, misappropriation or unlawful disclosure, the law provides for extensive civil sanctions. Criminal liability remains limited to related offenses such as theft, breach of trust or receiving stolen goods.

What the Court Can Order

Prohibition orders: prohibition on using, manufacturing, marketing or disclosing the protected information. This prohibition may be accompanied by penalty payments for non-compliance.

Recall and destruction measures: product recall from the market, destruction of documents, files or products incorporating the secret (“infringing goods”).

Publication of the decision: at the infringer’s expense, in newspapers or on websites, to repair reputational harm.

Damages: calculated taking into account negative economic consequences (loss of earnings, lost opportunity), moral damage, and profits made by the infringer through the infringement.

Legal Exceptions (Article L.151-8 of the Commercial Code)

Trade secrets cannot be invoked in certain situations of overriding interest:

Exercise of the right to information: freedom of expression and freedom of the press, particularly to reveal information in the public interest.

Whistleblowers: disclosure of illegal activity or wrongdoing to protect the public interest (enhanced protection under the 2022 Waserman law).

Protection of a legitimate interest: particularly the right to evidence, subject to proportionality conditions established by 2025 case law.

Employee representatives: in the exercise of their functions (works council, union delegates).

8. Industry Case Studies

Trade secret protection is implemented differently across industries. Here are concrete examples illustrating the stakes and best practices.

Pharmaceutical and Biotechnology Industry

Typical Case: Protection of Development Data

A laboratory develops a new molecule. Before filing a patent (which requires disclosure), all R&D data constitutes critical trade secrets: preclinical trial results, tested formulations, observed side effects, synthesis processes.

Issue: A leak could allow a competitor to file a “blocking” patent or develop a similar molecule.

Recommended specific measures:

Strict compartmentalization of R&D teams (each team only has access to their part of the project). Laboratory notebooks timestamped and signed daily. Enhanced NDAs with CROs (Contract Research Organizations). Clean room procedures for license negotiations.

Technology Sector (Startups, Software Publishers)

Typical Case: Protection of Algorithms and Source Code

A startup develops a recommendation algorithm that constitutes its competitive advantage. The source code and model training parameters are trade secrets.

Issue: A developer leaving for a competitor could recreate a similar solution.

Recommended specific measures:

Technical architecture limiting access to complete code (microservices, module-based access). Systematic blockchain timestamping of commits. Specific confidentiality clauses in developer employment contracts. Monitoring of code repositories (GitHub, GitLab) to detect leaks. Formalized exit interviews with reminder of obligations.

Food and Beverage Industry

Typical Case: Protection of Recipes and Processes

A food manufacturer holds a unique recipe (sauce, beverage, processed product) whose secrecy is key to its market positioning. The most famous example is Coca-Cola, whose formula has been kept secret since 1886.

Issue: Disclosure would allow immediate copying by competitors or private labels.

Recommended specific measures:

Fragmentation of the recipe (different people know different parts). Coding of ingredients (internal codes instead of actual names). Restricted physical access to sensitive production areas. Regular audits of key ingredient suppliers.

Consulting and Professional Services

Typical Case: Protection of Methodologies and Client Data

A consulting firm develops proprietary methodologies and holds strategic data about its clients. These elements constitute major intangible assets.

Issue: A consultant leaving for a competitor takes their “address book” and methods.

Recommended specific measures:

Formal documentation of methodologies marked “trade secret”. Strict policy on use of client data (no export, anonymization). Client non-solicitation clauses. Team training on the distinction between personal skills and company assets.

9. Coordination with Other IP Rights

Trade secrets are not intellectual property rights in the strict sense, but they interact with other available protections. An effective protection strategy often combines several regimes.

Trade Secrets and Copyright

Cumulation possible: Software source code can simultaneously benefit from copyright (which protects the original form of expression) and trade secret protection (which protects the underlying algorithms and business logic).

Key differences:

Trade Secrets and Patents

Strategic choice: To patent or keep secret? This choice is fundamental and irreversible.

Patenting is preferable when: The invention is easily identifiable through reverse engineering. You want to monetize the invention (licenses, assignments). The commercial lifespan is less than 20 years. You need a title enforceable against all (including independent discoverers).

Secrecy is preferable when: The information doesn’t meet patentability criteria. The secret can be maintained long-term (no reverse engineering possible). The commercial lifespan exceeds 20 years. You want to avoid patent costs and disclosure.

Warning: Patents Destroy Secrecy

Filing a patent requires publication of the invention (18 months after filing). This disclosure is definitive: if the patent is invalidated or expires, the information remains in the public domain. The secret is lost forever.

Trade Secrets and Trademarks

Coordination: Trademarks protect a distinctive sign (public by nature), while trade secrets can protect brand strategy, positioning studies, launch projects before public announcement.

Trade Secrets and Designs

Coordination: Before launching a new design, plans and prototypes are trade secrets. Once the product is marketed, protection shifts to design rights (registered or unregistered for the EU).

Trade Secrets and Know-How in Contracts

In know-how license agreements or franchises, trade secrets are often the basis of the transferred value. Confidentiality clauses must be particularly carefully drafted, with a precise definition of the know-how scope, protection obligations for the licensee, and control mechanisms.

10. International Dimension

In a globalized economy, your trade secrets cross borders. Understanding the international protection framework is essential.

The Harmonized European Framework

EU Directive 2016/943 has harmonized protection across the 27 member states. This means the definition of trade secrets and available remedies are similar throughout the European Union, facilitating cross-border protection.

The TRIPS Agreement (WTO)

Article 39 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) requires the 164 WTO members to protect “undisclosed information”. This is the minimum ground of international protection.

International Comparison

Best Practices for International Protection

Adapt your NDAs to applicable law: An NDA governed by French law won’t have the same effectiveness before an American or Chinese court. Include choice of law and jurisdiction clauses.

Map your information flows: Identify where your secrets transit (subsidiaries, subcontractors, cloud). Each jurisdiction crossed requires a protection analysis.

Strengthen clauses with foreign partners: In some countries with weaker protection, stricter contractual clauses (penalties, bank guarantees) can compensate.

Consider international arbitration: For cross-border disputes, arbitration (ICC, LCIA) can offer faster proceedings and facilitated enforcement in many countries (New York Convention).

11. Patent vs Trade Secret: Comparison Table

Combined Strategy

The two protections are not mutually exclusive. An optimal strategy can combine: patenting key innovations (strong, monetizable protection) and keeping complementary information secret (manufacturing processes, optimization parameters, implementation know-how).

12. Q&A: Your Questions About Trade Secrets

What is the difference between a patent and a trade secret?
A patent grants a 20-year monopoly in exchange for public disclosure of the invention. A trade secret protects information as long as it remains secret (unlimited duration), but does not protect against independent discovery by a competitor (lawful reverse engineering). A patent is enforceable against everyone; a trade secret only protects against unlawful acquisition.

Can an employee use their knowledge with a new employer?
Yes, acquired know-how (“experience”) belongs to the employee. The line is crossed if they take documents, client files or use specific technical secrets identified as confidential by their former employer. The distinction lies in the nature of the information: general skills (usable) vs. protected information (prohibited).

What constitutes a “reasonable protection measure”?
There is no official list, but case law recognizes: “Confidential” marking of documents, restricted computer access, signed confidentiality clauses, physical security of premises and staff training. Complete absence of such measures prevents legal protection. “Reasonable” is assessed according to company size and nature of the information.

Do trade secrets override whistleblower protections?
No. The law provides clear exceptions (Article L.151-8 of the Commercial Code). Trade secrets cannot be invoked to prevent disclosure of illegal activity or wrongdoing aimed at protecting the public interest (right to alert). The 2022 Waserman law strengthened this protection.

How long does protection last?
It is potentially perpetual. It lasts as long as the three conditions (secrecy, value, protection) are met. If the information becomes public — through disclosure, leak or independent discovery — protection is immediately and definitively lost. The example of Coca-Cola’s formula (kept secret since 1886) illustrates this potentially unlimited duration.

Can trade secrets yield to the right to evidence?
Yes, since the French Cour de cassation’s ruling of February 5, 2025 (No. 23-10.953). The judge must verify whether production of the document is “indispensable” to prove the alleged facts and whether the infringement of secrecy is “strictly proportionate” to the aim pursued. This is a case-by-case assessment that excludes exploratory requests.

Must I explain my algorithms to affected individuals?
Since the CJEU ruling of February 27, 2025 (C-203/22), yes for automated decisions with significant effects (scoring, profiling). You must provide “meaningful information about the logic involved” in an understandable manner. This doesn’t mean disclosing the complete algorithm, but explaining the criteria used and their influence on the decision.

What is the limitation period for legal action?
Civil action is time-barred after 5 years from the day the trade secret holder knew or should have known the last fact enabling them to exercise their action (Article L.152-2 of the Commercial Code). This period can be interrupted by a formal notice or legal proceedings.

How can I prove I held the information before the infringement?
Several methods establish a certain date: the Soleau envelope (INPI, €15 for 5 years), deposit with a bailiff or notary, blockchain timestamping, or APP deposit for software. A computer file’s creation date is not sufficient proof as it can be modified.

Can source code be protected by both copyright and trade secrets?
Yes, these two protections can be combined. Copyright protects the original form of the code (automatically, without formalities), while trade secret law protects the underlying algorithms and business logic (provided the 3 legal criteria are met and confidentiality is maintained).

Legal References

• Definition and criteria: Article L.151-1 of the French Commercial Code
• Lawful and unlawful acquisition: Articles L.151-3 to L.151-6 of the French Commercial Code
• Exceptions: Articles L.151-7 and L.151-8 of the French Commercial Code
• Limitation period: Article L.152-2 of the French Commercial Code
• European Directive: Directive (EU) 2016/943 of June 8, 2016
• 2025 case law: Cass. Com., February 5, 2025, No. 23-10.953 | CJEU, February 27, 2025, C-203/22
• Soleau Envelope: INPI – Soleau Envelope

Need to Audit Your Protection or Take Legal Action?

Dreyfus assists you in implementing your protection measures, drafting your NDAs, timestamping your secrets and defending your interests in case of infringement.

Contact Our Experts

Introduction

The term Habeas Data echoes the centuries-old principle of Habeas Corpus, transposing the protection of individual freedoms into the immaterial sphere of personal data. In the age of digital medicine and global circulation of medical information, Habeas Data serves as a true guardian of personal health data, ensuring each individual’s right to access, control, and correct the information relating to their most intimate sphere: their health.

The origins of Habeas Data

Historical context and legal philosophy

Habeas Data emerged in the 20th century in Latin America as a constitutional remedy, allowing individuals to protect themselves against the abusive collection, use, or storage of their data. It enshrines the principle that personal data, like individual liberty, must be protected against arbitrary interference.

Recognition in latin american constitutional systems

Countries such as Brazil, Colombia, and Argentina have incorporated Habeas Data into their constitutions, granting citizens the right to access, rectify, or delete personal data held by public or private entities. This mechanism has served as a model for broader debates on digital sovereignty.

Definition of Habeas Data and health data

What Habeas Data covers

Habeas Data guarantees every individual the right to consult personal data held by third parties and to request its rectification or deletion if inaccurate or unlawfully processed. It is a procedural right that enshrines the principle of informational self-determination.

Clarifying the notion of health data

Under Article 4(15) of the GDPR, health data is defined as personal data related to the physical or mental health of a natural person, including the provision of health care services, revealing information about their health status. Its specificity lies in its highly sensitive nature, as it can impact dignity, employment, insurance, or individual freedom.

Why Habeas Data is essential for health data

Sensitivity and risks of misuse

Health data is classified as a special category of data. Unauthorized disclosure can have serious consequences, such as denial of insurance, stigmatization, workplace discrimination, or reputational harm.

Safeguarding dignity, privacy, and autonomy

Habeas Data functions as a constitutional safeguard that keeps health data under the individual’s exclusive control. It strengthens privacy, personal autonomy, and informational integrity, especially at a time when electronic medical records and digital health platforms are becoming widespread.

Distinction from European mechanisms such as the GDPR

Points of convergence

Both Habeas Data and the General Data Protection Regulation (GDPR) pursue similar objectives: transparency, purpose limitation, and rights of access, rectification, and erasure. Both are based on the principle of giving individuals control over their personal data.

Key differences in scope and application

The essential difference lies in their legal nature. The GDPR is a regulation applicable across the European Union, imposing obligations on data controllers. Habeas Data, on the other hand, is a constitutional right directly enforceable before the courts, providing citizens with an effective remedy.

Strategic and legal challenges

Why Habeas Data was established

This mechanism was designed to limit the growing power of institutions and corporations handling sensitive data, particularly in the healthcare sector. It ensures that individuals retain control over information that can directly affect their privacy and decision-making.

Anticipating the challenges of health data protection

Protecting health data now intersects with cross-border data flows, artificial intelligence, and digital platforms. An effective strategy requires:

• strengthening compliance programs in healthcare institutions,
• implementing clear patient consent practices,
• monitoring international transfers of sensitive data.

Conclusion

Habeas Data acts as a constitutional shield for health data, complementing and sometimes surpassing European mechanisms such as the GDPR. Its procedural dimension strengthens the effective protection of individuals in an increasingly digital society.

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

1. What is Habeas Data in simple terms?
It is a right allowing any person to access their personal data and request its correction or deletion.

2. Why is Habeas Data particularly important for health data?
Because such data is extremely sensitive, and its misuse may cause discrimination, financial loss, or harm to dignity.

3. What is the difference between Habeas Data and the GDPR?
The GDPR is a European regulation imposing obligations, while Habeas Data is a constitutional right directly enforceable in court.

4. Does the GDPR also protect health data?
Yes, it classifies health data as “sensitive data,” requiring explicit consent and enhanced safeguards.

5. Which countries recognize Habeas Data?
Notably Brazil, Argentina, and Colombia, where it is enshrined in the Constitution.

What is game reskinning?

Game reskinning involves copying the structure, logic, gameplay, algorithms, and mechanics of a game, while simply changing its appearance (graphic design, characters, sound interface) to give the illusion of a new game.

This practice, common in China, aims to reuse a successful gameplay without bearing the development cost or creative risk. As a result, it leads to “disguised” copies that seriously harm the legitimate rights holders.

Why is reskinning problematic?

• Consumer confusion: Players often fail to distinguish the original game from the copy.
• Harm to investment: Clones unfairly exploit the research and development (R&D) work of others.
• Revenue loss: Clones divert downloads and user engagement.
• Stifling innovation: By reducing the value of original creations, reskinning hinders technological progress.

3. The response of Chinese courts

3.1 A structuring case law

In the case of Rise of Kingdoms vs Commander (2024), the Guangdong High People’s Court condemned the company Jiujiu to more than 10 million yuan (USD 1.6 million) for copying the game mechanics of a competitor, while also copying the graphics from Age of Empires.
The court found that this combination—copying the “bones” (mechanics) and the “skin” (visuals) from two games—constituted parasitic behavior under Article 2 of the Chinese anti-unfair competition law (AUCL).
Three criteria were established:

1. Originality and competitive importance of the copied elements;
2. Extent of the reproduction compared to industry practices;
3. Bad faith or violation of honest business practices.

3.2 An evolving legal framework

Chinese courts have evolved: initially protective via copyright law (for software or audiovisual works), they now increasingly apply unfair competition law to sanction the abusive use of gameplay.
The Supreme Court also published a guideline in December 2024 on the judicial protection of technological innovation, recommending the broad application of AUCL clauses to fight “free riding” (Effortless gain) in innovative sectors.

What can developers and rights holders do?

• Document the creation process: design documents, code versions, aesthetic choices.
• Register protectable elements: trademarks, designs, interfaces.
• Implement proactive monitoring: detect clones on app stores.
• Build a strong evidence case: visual comparisons, confusion tests, economic data.
• Combine legal grounds: copyright, unfair competition, trade secrets.

Conclusion

Chinese courts mark a turning point in the fight against game reskinning, relying not only on copyright law but also on an evolving interpretation of unfair competition law. This strategy, now supported by hefty financial sanctions, is a deterrent to parasitic behavior in the gaming industry.
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

1. What is game reskinning?

   It is the practice of copying a game’s gameplay while only changing its appearance.

2. Why do Chinese courts impose high damages?

   To compensate for competitive loss and penalize unfair practices.

3. Are game mechanics protected by copyright?

   No, they are considered as ideas, but can be protected through unfair competition law.

4. Does this case law apply to foreign games?

   Yes, as long as they are exploited in the Chinese market.

5. What evidence is required?

   Screenshots, video comparisons, functional analyses, data on audience or revenue loss.

Background and Origins

On June 9, 2023, France enacted Law No. 2023-451, a pioneering piece of legislation aimed at regulating the commercial practices of influencers and protecting social media users. This law represents a significant step in regulating commercial influence and combating the abuses by influencers on various digital platforms.

Definitions and Objectives

In recent years, the sector of commercial influence has seen exponential growth but also significant deviations, ranging from the promotion of dangerous products to deceptive commercial practices. The Directorate General for Competition, Consumer Affairs, and Fraud Prevention (DGCCRF) conducted several investigations revealing increasing deceptive commercial practices. Simultaneously, the Professional Advertising Regulatory Authority (ARPP) had already established good practice rules and created an Observatory for Responsible Influence in 2019. However, these measures proved insufficient, prompting legislators to intervene more rigorously to regulate commercial influence and combat its abuses.

This new legislation is noteworthy for its role in regulating concepts increasingly integrated into our daily lives. Article 1 of the law precisely defines the term “influencer” as follows: “Individuals or legal entities who, for a fee, use their notoriety with their audience to communicate electronically to the public content aimed at directly or indirectly promoting goods, services, or a cause engage in the activity of commercial influence”. Additionally, the activity of influencer agents is now regulated by Article 7, which defines them as intermediaries representing influencers or facilitating their relations with advertisers while ensuring the compliance of their activities with the regulations in force.

In France, where the number of influencers is estimated at around 150,000, the behaviours of some have highlighted the need for stringent regulation to protect consumers, especially the younger one, who are highly susceptible to these new forms of advertising. With this context, the law mandates that platforms hosting influencer content identify and remove illegal materials while ensuring the transparency of commercial posts.

Influencers must now establish written contracts with advertisers, explicitly specifying the terms of their collaboration to ensure clarity and protection. Moreover, the law requires increased transparency: any publication must clearly indicate whether it is an “advertisement” or a “commercial collaboration” to avoid any confusion among consumers, in accordance with Article L. 121-3 of the Consumer Code.

Additionally, this legislation continues the efforts of the October 29, 2020, law by enhancing the protection of all sector actors, including minor influencers. Dedicated measures aim to secure the activity of child influencers on all digital platforms such as Instagram, Snapchat, TikTok, and extend the provisions initially provided for minor YouTubers by the October 19, 2020, law. Thus, these young influencers now benefit from the protections of the Labor Code. Their parents or legal guardians are required to sign contracts with advertisers, and a portion of the income generated is reserved for their future in the form of a nest egg.

Violations of these rules can result in severe penalties, including imprisonment of up to two years and fines of up to 300,000 euros. The law also establishes joint liability between the influencer, the advertiser, and their agent, ensuring that victims of abusive commercial practices can obtain effective redress.

Assessment After Several Months of Implementation of French Law No. 2023-451

Since its implementation, French Law No. 2023-451 has resulted in numerous sanctions against influencers for deceptive commercial practices. In response, online platforms have enhanced their monitoring policies to align with the new legislative standards.

Nevertheless, this law has encountered criticism from many content creators, who view it as an overly stringent government intervention. They contend that the swift enactment of this legislation may stifle creativity and innovation within the influencer marketing industry.

In response to these criticisms, a code of conduct for influencers has been developed. Although useful, this guide does not fully meet the legal requirements of Law No. 2023-451 and does not have the same legal standing as the legislation itself. However, it plays an important educational role by raising awareness among influencers about transparency and consumer protection issues. It also provides detailed explanations and practical tools, such as contract templates and compliance checklists.

In addition, the European Commission has expressed reservations about this law, suggesting that it may conflict with the Digital Services Act (DSA) and that it did not follow the notification procedure required by the Commission. As a result, the DDADUE law was promulgated on 22 April 2024 with the aim of revising the basic articles of the influencer legislation. This reform aims to align French legislation with European standards, including the E-Commerce Directive and the DSA, in order to ensure consistent regulation within the European Union.

Conclusion

Law no. 2023-451 represents a major step forward in the regulation of the commercial influence sector in France. While criticisms remain, the need to protect consumers and ensure greater transparency in the practices of influencers justifies these stringent measures. Future adjustments, in particular through the DDADUE law, will better harmonise French regulation with European standards and ensure uniform consumer protection across the European Union. Despite the criticism, the need to protect consumers and promote transparency in influencers’ advertising practices justifies the adoption of strict measures. Nevertheless, this regulation raises questions about its compliance with European directives, particularly with regard to freedom of expression and digital innovation.

The legal debate surrounding deceptive trade marks has taken on new significance with a preliminary question recently referred to the Court of Justice of the European Union (CJEU). This question focuses on the precise definition of a deceptive trade mark, particularly when the misleading information pertains not to the characteristics of the products or services but to the company itself.

Background of the Case

The case involves the French company Fauré Le Page, initially known for selling weapons and ammunition, as well as leather accessories. Founded in 1716 in Paris, the original Maison Fauré Le Page ceased operations in 1992, after which all its assets were transferred to its sole shareholder, the Saillard company. In 1989, Saillard filed an application for the French trade mark “Fauré Le Page,” covering products such as firearms and their parts, as well as leather and imitation leather goods.

In 2009, this trade mark was sold to a new entity, Fauré Le Page Paris, established that same year. This company subsequently filed, in 2011, two applications for French trade marks, both containing the words “Fauré Le Page Paris 1717” and covering various leather goods. However, these trade marks were contested by the company Goyard ST-Honoré, which sought their cancellation on the grounds that they were misleading, based on the old Trade Mark Directive (Directive 2008/95/EC, replaced by Directive (EU) 2015/2436).

Legal Framework

European trade mark legislation, particularly Article 4(1)(g) of the Trade Mark Directive (Directive (EU) 2015/2436), stipulates that a trade mark may be refused registration or annulled if it is “of such a nature as to deceive the public, particularly as to the nature, quality, or geographical origin of the goods or services.” Additionally, Article 20(b) of the same directive provides for the revocation of a trade mark if, after its registration, it becomes deceptive due to the use made of it by its proprietor or with the proprietor’s consent.

The main issue is whether a trade mark can be considered deceptive when it conveys false information not about the characteristics of the products or services, but about the attributes of the company itself, such as its founding date or age.

The Decision of the Court of Appeal and the question asked by the French Supreme Court (Cour de Cassation) to the CJUE

The Court of Appeal of Paris ruled that the “Paris 1717” trade marks was invalid. It found that the mention “Paris 1717” referred to the location and date of establishment of the company, which could mislead the public into believing in the continuity of the company’s operations since that date and the supposed transfer of know-how from the original Maison Fauré Le Page to Fauré Le Page Paris. This judgment was based on the fact that the original company had ceased its activities in 1992, while the new entity was founded in 2009.

However, Fauré Le Page Paris appealed this decision to the Cour de Cassation, arguing that Article 4(1)(g) of the Trademark Directive required deception regarding the characteristics of the products and services, not the qualities of the trade mark owner, such as the company’s founding year.

The Preliminary Question to the CJEU

Faced with this interpretation of the law, the Cour de Cassation decided to refer a preliminary question to the CJEU. It asks whether a trade mark can be considered deceptive when the false information concerns the age, reliability, and know-how of the manufacturer, rather than the characteristics of the goods themselves. Specifically, it poses two questions to the CJEU:

1. Should Article 4(1)(g) of Trademark Directive be interpreted to mean that a reference to a fictitious date in a trade mark, conveying false information about the age, reliability, and know-how of the manufacturer, is sufficient to establish the existence of actual deception or a serious risk of deceiving consumers?

2. If the answer to the first question is negative, should that article be interpreted to mean that a trade mark can be considered deceptive if there is a likelihood that consumers will believe that the trade mark owner has been producing these goods for centuries, thereby conferring a prestigious image on them, when this is not the case?

The outcome of this case could have significant implications for companies using historical references in their branding strategy. If the CJEU concludes that such a practice is deceptive, it could broaden the grounds for annulment of trade marks to include false information about the company itself, not just the products or services.

There is already precedent in European case law. For example, in the W. F. Gözze Frottierweberei and Gözze case (C-689/15), the CJEU ruled that for a trade mark to be deceptive, it must, by itself, create a risk of deceiving consumers, regardless of the use made of it after registration.

Furthermore, if the preliminary question had been posed under Article 20(b) of TMD3, which focuses on deceptive use of the trade mark after registration, the answer might be different. This article does not limit deception to the characteristics of the goods or services but could include misleading information about the company.

In any case, if the geographical origin of goods and services can be considered an important characteristic under Article 4(1)(g) of the Trademark Directive, why not the founding date of the company? Both are intangible properties, but they can significantly impact the perceived quality of goods and services and consumers’ purchasing decisions.

Future Implications

The decision the CJEU makes in this case will be crucial. It could redefine the legal criteria surrounding the notion of a deceptive trade mark, with potential repercussions for branding strategies, particularly in the luxury sector, where history and heritage play a key role. Companies may need to reassess their branding strategies to ensure that any historical or prestigious references are not perceived as misleading by consumers.

It is essential for companies to take a proactive approach to trade mark management, ensuring that the historical or prestigious information they use does not mislead consumers. The CJEU’s decision could also have an impact beyond Europe, influencing trade mark practices globally.

This case highlights the increasing importance of protecting consumers against misleading commercial practices and underscores the need for companies to maintain full transparency in their brand communication.

In a context where environmental awareness is continuously growing, the demand for eco-friendly products is intensifying. This trend has led to a proliferation of brand names suggesting eco-friendliness. However, it has become difficult for the public to distinguish between brands genuinely committed to environmental efforts and those merely using “green” vocabulary to deceive consumers.

Indeed, in its impact assessment report accompanying the proposal for a Directive amending Directives 2005/29/EC and 2011/83/EU as regards empowering consumers for the green transition through better protection against unfair practices and better information, the European Commission’s Regulatory Scrutiny Board (RSB) noted that over 53.3% of environmental claims analyzed within the EU were found to be vague, misleading, or unfounded, while 42% lacked any tangible evidence. This is why the European Union has taken firm measures to regulate these practices.

The Rise of “Green” Trademarks

More and more consumers are prioritizing eco-friendly products. This growth in demand has pushed brands to reposition themselves, emphasizing their environmental commitments.

Brands have responded to this demand by choosing brand names using environmentally oriented vocabulary and incorporating green colors into their logos. Expressions like “green,” “sustainable,” “eco-friendly,” “natural,” or “biodegradable” are frequently used. This marketing approach, aiming to evoke a positive image and meet growing consumer expectations, is also found in logos incorporating leaves, trees, the planet, or green or blue colors to reinforce this image.

In 2021, a study carried out by the EUIPO through the European Observatory on Infringements of Intellectual Property Rights examined the increasing frequency with which goods and services specification of EUTMs reflect issues related to environmental protection and sustainability. An algorithm was developed to search among the more than 65 million terms contained in EU trademark (EUTM) applications filed over the years to identify those containing at least one “green” term. More than two million EU trademark applications filed with the EUIPO since it began operation in 1996 were considered.

The study shows that the number of “green” EUTM filings has increased significantly since the office began its activities in 1996, both in absolute terms and as a proportion of all EUTM filings.

Green EUTM Filing, 1996-2020 (EUIPO)                   Green EUTM filings as a share of all EUTM filings, 1996-2020 (EUIPO)     

However, trademark registration applications that specifically include direct environmental claims can be refused. These refusals are usually based on the descriptive nature of the mark, although there may also be another reason related to the misleading nature of the trademark.

Therefore, the use of unjustified green trademark will lead to accusations of greenwashing.

Indeed, with the explosion of green marketing, greenwashing practices have also multiplied, attracting the attention of regulators, legislators, and potential litigants such as competitors, customers, or consumer protection organizations.

Greenwashing

Greenwashing is the use of ecological terms or symbols without them corresponding to actual practices. The goal is to give a falsely eco-friendly image to attract consumers. Brands that engage in greenwashing seek to capitalize on the growing market for eco-friendly products without genuinely investing in environmentally friendly practices.

In this context, the European legislator has intervened again with Directive 2024/825 of February 28, 2024, amending Directives 2005/29/EC and 2011/83/EU on unfair commercial practices. This directive is in line with the European Green Deal and the European Circular Economy Action Plan. It aims to “enable consumers to make better-informed business decisions to promote sustainable consumption, eliminate practices that harm the sustainable economy, and divert consumers from sustainable consumption choices.” It creates an action plan for the green transition, targeting greenwashing with three principles. Firstly, brands must be able to prove all their environmental claims. Secondly, the claims must be validated by an independent body. Finally, consumers must receive clear and reliable information. Member States have a 24-month period to transpose the directive into their national laws from March 6, 2024.

France had already introduced provisions to specifically sanction greenwashing statements from January 1, 2023, with Decrees No. 2022-538 and 2022-539 of April 13, 2022, prohibiting advertisements stating that a product or service is carbon-neutral unless a report explaining how carbon neutrality is achieved is published and updated annually.

Greenwashing statements could already be sanctioned on the ground of unfair competition and misleading commercial practices since Law No. 2021-1104 of August 22, 2021, on Climate and Resilience. The new law gives an environmental dimension to the definition of misleading commercial practices.

Conclusion

The proliferation of “green” trademarks names is a natural response to the growing demand for environmentally friendly products. However, greenwashing practices threaten trust in eco-friendly initiatives. To avoid pitfalls and create credible green trademarks, it is essential to follow a transparent strategy, comply with environmental standards, and involve competent experts. The protection of eco-friendly brands and the fight against misleading practices also require increased consumer vigilance and support from lawyers and intellectual property attorneys specializing in this field.

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September 27, 2023, Paris Court of Appeal Case No. 21/12348

On September 27, 2023, the Paris Court of Appeal rendered a pivotal decision concerning copyright law in the realm of interior design and applied arts. At the heart of the case was the “Lyre” lamp, a unique creation by sculptor Philippe Cuny, which ignited a legal battle against architect Carlo Rampazzi for copyright infringement.

The “Lyre” Lamp’s case

In this case, Carlo Rampazzi, an interior designer, commissioned Philippe Cuny, a sculptor specializing in mirrors and lighting fixtures, to create several models of a “Lyre” lamp. Architect Carlo Rampazzi then published photos of the “Lyre” lamp on social media without obtaining prior authorization from the creator and without mentioning his name. Consequently, the creator, Philippe Cuny, sued the architect before the Paris Judicial Court for copyright infringement.

In May 2021, the Paris Judicial Court ruled in favor of Philippe Cuny, the creator of the lamp, condemning Carlo Rampazzi for copyright infringement.

Carlo Rampazzi appealed this decision to the Paris Court of Appeal. On September 27, 2023, the Paris Court of Appeal confirmed the lower court’s decision. The Court ruled on the originality of the lamp and then on the infringement, thereby rejecting the accessory theory raised by architect Carlo Rampazzi. The judges of the Court of Appeal reiterate that it is possible to combine design rights and copyright, provided that originality is demonstrated. It also recalls the consistent position of jurisprudence on the accessory theory according to which, firstly, the work must be presented in the background, not constituting a main subject, and secondly, the exploitation of the work must be unintentional.

The “Lyre” Lamp is protected by copyright

The Court first examined the question of whether the “Lyre” lamp was protected by copyright. As Philippe Cuny’s authorship was not disputed, the Court directly addressed the copyright protection of the “Lyre” lamp model.

The Court recalled that all applied art works must be original to be protected by copyright. Originality, distinct from novelty, is the manifestation of the author’s creative abilities, reflecting the imprint of their personality, to make ‘free and creative choices’.

Copyright protection will only be denied for a design if its form is exclusively dictated by the function of the product.

On the criterion of originality, the Court of Appeal concluded that the “Lyre” lamp met the originality criteria due to its distinctive features such as its asymmetrical harp shape, airy and sensual appearance, and its ability to evoke different images and emotions. Moreover, the Court noted that Mr. Cuny successfully reconciled the technical constraints of a lamp with a very personal representation, which evidenced the originality of his work.

The exclusion of the Accessory Theory

To avoid a conviction for infringement on the basis of unauthorized use (breach of the author’s reproduction right) and without mentioning the author’s name (breach of the right to paternity), architect Carlo Rampazzi invoked the accessory theory. This limitation to copyright is based on the European Directive of May 22, 2001, on the harmonization of certain aspects of copyright and related rights in the information society.

Constant jurisprudence considers that the so-called fortuitous inclusion exception applies when two cumulative conditions are met: the work must be presented in the background, not being the main subject, and the exploitation of the work must be unintentional.

In examining the contentious photographs, the Court of Appeal concluded that the “Lyre” lamp was deliberately highlighted and not accidental, thus excluding the application of this exception. In one of the photographs, the lamp was placed in the foreground with a setting that emphasized the object, while in another, although located in the background, it was still very visible in all its features and significant in the composition of the scene. The Court of Appeal specifies that in this case, it matters little that the lamps were modified and that they were ‘neither the object nor the goal of the communication’.

Therefore, the accessory theory could not validly be invoked for this case

Conclusion: A Precedent for Protection and Respect in Design

The Paris Court of Appeal’s ruling not only vindicated Philippe Cuny’s rights but also set a robust precedent for respecting intellectual property in the design and architectural sectors.

Web 3.0 and the metaverse represent a new era in the evolution of the Internet, marking a transition from a static, information-centered web to a dynamic and immersive space. These technologies not only push the limits of online interaction but also redefine how we perceive and engage with the digital world. The metaverse, in particular, offers a parallel universe where individuals can interact, work, play, and experience environments in virtual settings. This technological advancement comes with new ways of conceptualizing ownership, identity, and community in the digital world.

At the heart of the metaverse economy are NFTs (Non-Fungible Tokens) and cryptocurrencies, redefining ownership and value in the digital space. NFTs, in particular, have become synonymous with digital ownership, enabling the purchase, sale, and collection of artworks, multimedia content, and even virtual land. Meanwhile, cryptocurrencies offer a secure and decentralized transaction method, essential in a world where physical borders are increasingly irrelevant. Together, these technologies facilitate a dynamic and constantly evolving digital market, propelling the metaverse beyond a mere leisure space into a viable commercial platform.

Emerging Intellectual Property Challenges in the Metaverse

Navigating Copyright Protection In the Metaverse

In the metaverse, copyright issues take on a new dimension. The ease with which digital content can be copied and modified raises concerns about copyright protection.

Existing copyright and image rights legislation applies in the metaverse. This means that when a company creates an NFT incorporating music, for example, for an event in the metaverse, the company must obtain the copyright for this music. Creating NFTs without the necessary rights could result in liabilities for the creator and potentially infringe the rights of those who market them.

Although there is not yet an apparent practice for determining responsibilities in the metaverse, it is likely that there will be in the near future. Those who own NFTs that violate third-party intellectual property rights could lose this ownership (or even the NFT itself could lose value, as the market will know that such an intangible asset has inherent liability).

Additionally, creators and businesses operating in the metaverse must navigate a complex legal framework. They must ensure that their creations do not infringe on others’ copyrights and, at the same time, protect their own works against counterfeiting and unauthorized use. This task is made even more difficult as copyright laws vary considerably from country to country.

Trademark Challenges in the Virtual Spaces

The reality created by the metaverse has opened new business opportunities for companies by breaking down territorial barriers, increasing brand reach to previously inaccessible consumers, and consequently expanding sales and services in both the physical and virtual worlds. While bringing a new market with new connections and possibilities, the metaverse also creates new legal situations that must be carefully evaluated.

When registering a trademark, it is necessary to indicate the category of products or services for which the trademark registration is requested. Trademark law only protects signs as they guarantee the origin of a product or service, not the signs themselves. Therefore, the principle of specificity is fundamental.

However, the metaverse is a virtual environment where physical goods, such as clothing or bags, do not circulate. This raises the question of whether the owner of a trademark registered for products in the category of bags, for example, could exercise their rights in the metaverse environment even though they have not registered their trademark for products covering the class of NFTs, perceived as lines of code.

Some believe that the classification of products and services is insufficient to guarantee trademark protection in the metaverse. In reality, case law (notably the metabirkin case) suggests that a consumer purchasing a clothing item in the form of an NFT (lines of code), which closely resembles a well-known earlier brand in the textile market, will logically assume that the physical world brand has expanded into the digital world.

The mere possibility of characterizing a risk of confusion in the consumer’s mind between NFTs and earlier trademarks demonstrates that an unregistered brand for virtual products could still be protected in the metaverse. However, this argument should be nuanced, as in this hypothesis, the brand in question was a renowned brand.

Instead of risking your brand’s protection by relying solely on reputation, a more conservative legal strategy is recommended, involving obtaining trademark registrations for the digital environment.

Protecting Design And Technological Innovations

The rapid evolution of immersive reality technologies, blockchain, artificial intelligence, interconnectivity, among others, are key to the metaverse bringing about the social revolution it has promised in the coming years. Those close to technological developments will be better positioned to benefit from these advances and identify opportunities in this new world.

In addition to technological innovation, the metaverse allows for numerous advances in aesthetic innovation. A product with an innovative design has relevant appeal and economic value, and it can reach other dimensions in this immersive experience, where forms and colors can be explored without the limitations of the physical world.

Technological innovations in the metaverse can thus be protected by patents, a legal instrument that guarantees an exclusive right over new technology. The main objective is to support technological evolution, as with market exclusivity, the patent holder can recover the investment applied in research and development and reinvest the amount in new developments, thus generating a self-sustaining cycle of innovation. Patents are also a source of technological information, and their content can serve as a basis for other innovations to develop. Consequently, patents can stimulate the development of new technologies that will improve the metaverse in the coming years.

On the other hand, aesthetic innovations can be protected by industrial design registrations. Monetizing a product with a remarkable design in the metaverse or even the layout of applications will be strengthened with adequate legal protection, capable of preventing inappropriate use by third parties.

Contractual Considerations and Licensing In the Metaverse

Given that the metaverse is an entirely decentralized platform without a single owner or dominant operator, how can we ensure that licenses are fair and transparent? The internet has brought challenges in this regard, particularly concerning the legitimacy of contracting, the limits of protection, the place of operation, and the determination of responsibilities.

Fiscal Implications and Taxation

From a fiscal perspective, assessing the nature of transactions in the metaverse will determine the applicable treatment, jurisdiction, applicable rates, and possibly compensatory planning with other transactions.

However, is a transaction in the metaverse a sale or a license? Is it a national or international transaction? Does it fall under consumer law or B2B law?

Regarding Existing Contracts

In the case of existing ongoing license contracts, will it be necessary to execute contractual modifications to accommodate the metaverse? Will clauses such as licensed objects, time limits, territoriality, ownership limits, collaboration in creation, and forms of remuneration need to be revised in the new contractual environment of the metaverse?

These are questions that must be studied on a case-by-case basis, without legislative or regulatory definitions of the metaverse. This makes the licensing of Intellectual Property assets a major challenge and an excellent opportunity for the virtual world.

While the metaverse offers opportunities for creative developers, businesses, and individuals, it can also present a complicated legal effort for commercial management in this new environment. In the field of intellectual property asset licensing, the metaverse is a dynamic environment that leads us to question whether contractual practices are in line with rights already guaranteed to holders. Obtaining effective legal advice will help individuals and businesses navigate these nuances.

Challenges of the Metaverse for Intellectual Property Lawyers and Industrial Property Advisors (CPI)

The metaverse redefines how we interact with technology, each other, and the digital world in general. This rapidly evolving virtual space poses new challenges for intellectual property law specialists and industrial property advisory firms, who play a crucial role in navigating the legal complexities of this environment.

Role of Intellectual Property Law Firms and Industrial Property Advisory Firms in Navigating the Metaverse Legally

Experts in industrial property rights and intellectual property law are on the front line to help companies navigate the complex legal framework of the metaverse. With the emergence of new forms of digital property, such as NFTs, and the popularization of augmented and virtual reality, issues of copyright, trademarks, patents, and image rights are becoming increasingly pressing.

These experts must not only understand the technical aspects of these new technologies but also anticipate legislative developments and the legal implications they entail. They are obligated to provide strategic advice to protect their clients’ creations and innovations in this new domain, while respecting the rights of others.

Intellectual property specialists help their clients understand the importance of registering and protecting their intellectual property rights from the outset of their venture into the metaverse. This includes registering trademarks, protecting copyright on digital works, managing designs & models, and handling patents for innovative technologies.

For example, in trademark law, it is necessary to ensure that the client has properly registered their trademark for virtual products to better defend themselves in a counterfeiting dispute or to prevent a competitor from registering the trademark for virtual products before them. In copyright law, the intellectual property law expert must ensure that the client has intellectual property rights for digital use, particularly to avoid an infringement action from the right holder.

Proactive monitoring of IP violations and the implementation of protective measures are also crucial. This may involve monitoring metaverse platforms to detect and act against unauthorized or counterfeit uses of IP assets.

Advice for Companies Wishing to Invest in the Metaverse

For companies eager to dive into the metaverse, collaboration with specialized intellectual property firms is essential. These firms can provide advice on how to effectively protect their digital assets, manage risks related to intellectual property, and navigate constantly evolving regulations.

Companies must be aware that traditional business practices may not apply as is in the metaverse. Therefore, brand and marketing strategies must be adapted to align with the unique characteristics of this virtual space.

Securing Innovation and Ownership: Navigating the Future of Intellectual Property in the Metaverse

In conclusion, as the metaverse continues to expand its virtual horizons, it brings forth unprecedented challenges and opportunities in the realm of intellectual property. It necessitates a proactive, informed, and adaptive approach from creators, businesses, and legal professionals.

As they navigate this intricate new world, understanding and safeguarding intellectual property rights is paramount to fostering innovation, maintaining competitive advantage, and ensuring a fair, thriving digital economy.

By staying ahead of evolving legal frameworks, embracing new protective strategies, and fostering collaborative relationships with specialized IP firms, stakeholders can not only mitigate risks but also harness the full potential of the metaverse. As we step into this new era, the intersection of technology, law, and creativity will become increasingly complex yet undeniably exciting, shaping the future of digital interaction and ownership.

For expert guidance and strategic solutions tailored to your unique needs in the Metaverse and Intellectual Property matters, contact the Dreyfus law firm team today. Let us help you navigate this new digital frontier with confidence and security.

The history of Birkenstock dates back to 1774 when Johann Adam Birkenstock opened his first shoemaker’s shop in Frankfurt. In 1897, the Birkenstock company was founded with the aim of creating comfortable shoes for workers and people with foot problems. The brand’s popularity grew in Germany and expanded internationally in the 1960s. Today, Birkenstock is synonymous with comfort and foot wellness. The Birkenstock sandal has become an icon of fashion and comfort, thanks to its cork and latex footbed that is moulded to the contours of the foot.

The brand’s outer sole pattern, which features a wave-like design, has become iconic and has been the subject of several legal decisions in German and European courts. Birkenstock has sought to protect this pattern as a trademark.

Background:

In 2016, Birkenstock obtained position trademark protection in Germany for a distinctive pattern on the sole of its shoes (registration number 3020150531693).

– A position trademark is a type of trademark that is characterised by its specific position on a product or its packaging, rather than by traditional word or figurative elements.

A third party applied to the German Patent and Trademark Office to cancel the trademark, claiming that it lacked distinctiveness and clarity for goods without soles.

– Distinctiveness refers to a trademark’s ability to distinguish itself from similar goods or services on the market.

The German Patent and Trademark Office declared Birkenstock’s trademark invalid for lack of distinctiveness.

Birkenstock appealed against this decision to the German Patent and Trademark Court (Case No. 28 W (pat) 24/18).

The German Patent and Trademark Court dismissed Birkenstock’s appeal on the basis of existing case law on design trademarks. The court confirmed that the mark lacks distinctiveness for goods with soles or related to soles as well as for goods not related to soles.

– A trademark must be sufficiently unique to enable consumers to associate it with a particular commercial source. It is this distinctiveness that gives a trademark its value and legal protection.

Alongside these proceedings in Germany, a similar decision was made at the European Union level. The General Court of the European Union confirmed the cancellation of Birkenstock’s trademark for the entire European Union (Case T-365/20).

Ultimately, Birkenstock’s position trademark was declared non-distinctive for the relevant goods in both Germany and the European Union.

However, if Birkenstock’s orthopaedic shoe does not gain consensus, it remains a fashion icon eligible for copyright protection. The company has already obtained protection for its ‘Madrid’ model. Birkenstock still has options to safeguard its intellectual property assets.

Why was Birkenstock’s position trademark rejected?

The issue of the distinctiveness of this trademark was examined by the German Patent and Trademark Court, which confirmed the lack of distinctiveness.

In assessing distinctiveness, the court reiterated the consistent case law on trademarks: the criteria for assessing distinctiveness are the same for all types of trademarks.

However, the German Office emphasises that signs consisting solely of the shape or three-dimensional representation of goods are not necessarily seen by the public in the same way as traditional verbal or figurative trademarks, which are independent of the appearance of the marked goods.

If goods or their packaging lack figurative or verbal elements, the average consumer will not usually infer commercial origin from their shape. Therefore, a trademark only has inherent distinctiveness if it significantly departs from the standards or practices of the relevant sector and fulfils its essential function of identifying commercial origin.

When evaluating whether a product design is considered common by the public, it is important to focus primarily on the relevant sector. Designs from adjacent sectors may also be considered if, under specific circumstances, the relevant public may shift its perception to the relevant sector.

The Court applied these criteria to Birkenstock’s trademark.

– The judges found that soles often have a profile for better grip, whether for work, leisure or sport. The Court referred to various sole designs available prior to the filing date. Based on these earlier designs, the Court held that the contested trademark was merely a variant of soles with criss-crossing and wavy lines.

– Birkenstock argued that its design gave the impression of bones. The Court rejected this argument because the relevant public would not see the pattern as resembling bones.

– Therefore, the trademark was found to be devoid of any distinctive character in respect of goods which have or are (part of) a sole.

The example of Birkenstock highlights the challenge of securing trademark protection for the appearance of goods in Europe. To be considered distinctive, patterns that constitute a trademark must be unique, unusual, or have gained recognition and a well-known character through extensive use. As pattern trademarks gain popularity and companies seek to safeguard them, courts may need to clarify the criteria for distinctiveness of these types of trademarks. The decision in the Birkenstock case issued by the CJEU may impact the assessment of other trademarks.

EUIPO, R 275/2023-4, September 13, 2023, TVAR VIRTUÁLNÍ STŘELNÉ ZBRANĚ (fig.)

The fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) addressed an important issue for those interested in trademark protection in virtual worlds in a recent decision on September 13, 2023 

The decision concerned an application for registration of a European Union trademark in classes 9, 35, and 41 filed by Colt CZ Group SE (Colt), a Czech holding company that acquired Colt’s Manufacturing Company LLC, a well-known American firearm manufacturer.

Colt filed a trademark application for a virtual firearm in February 2022 for virtual products and services related to online firearms. However, in December 2022, the EUIPO examiner rejected the application, arguing that the trademark lacked the required distinctiveness.

The reasons for the examiner’s rejection were as follows:

• Without distinctiveness, the trademark resembled a common representation of a virtual firearm, and the target audience would perceive it as such.
• The fact that some members of the public may be knowledgeable about firearms had no bearing on the assessment of distinctiveness.

As a result, the trademark lacked distinctiveness.

Colt appealed the decision, arguing that the trademark was unique and recognizable, notably thanks to the verbal element “CZ BREN 2” and the complexity of the virtual weapon’s shape represented.

The Board of Appeal began by emphasising that the distinctiveness of a trademark must be evaluated in light of the requested products and services, as well as public perception.

Concerning the relevant audience, the Board determined that it consisted primarily of the general public.

Regarding the distinctiveness of the trademark, the Board examined two particular elements: the verbal element “CZ BREN 2” and the visual representation of the virtual firearm.

Because of its size and lack of contrast with the background, the verbal element “CZ BREN 2” was deemed insignificant, making it difficult to identify for a significant proportion of the public.

The visual representation of the virtual firearm was deemed commonplace and conforming to industry standards, not deviating significantly from consumers’ expectations for virtual firearms. 

In conclusion, the Board upheld the examiner’s decision that the trademark was not distinctive because it did not allow the public to identify the commercial source of the questioned products and services.

This decision emphasises the importance of distinctiveness in trademarks’ registration in the context of virtual worlds and clarifies how the target audience, as well as verbal and visual elements, are considered in this assessment.

It highlights an important point: even if a product or service in the real world is specialized or requires particular expertise (such as firearms), the targeted audience for the virtual equivalent of that product or service may be much broader and less specialized in terms of knowledge.

Introduction

The International Trademark Association (“INTA”) provided a comprehensive and clear definition of “Domain Name Abuse” on May 16, 2023. Prior to this date, the definition of “Domain Name Abuse” was imprecise in the private sector, government, and universities. INTA defines it as “any activity that makes, or intends to make, use of domain names, the Domain Name System protocol, or any digital identifiers that are similar in form or function to domain names to carry out deceptive, malicious, or illegal activity.”

This new definition will therefore enable prior trademark owners to protect their rights when their trademarks are targeted by criminals.

Understanding Domain Name Abuse

Abuse occurs when bad actors commit fraud and steal from consumers, businesses, or even governmental bodies, all while infringing on the rights of prior trademark holders. It manifests through the malicious use of domain name systems, notably via phishing, spamming, distributing malicious software, or engaging in fraudulent activities like cybersquatting, typosquatting, dotsquatting, domain hijacking, shadowing, and domain name impersonation.

Implications for Trademark Holders and Consumers

Abuse is a hazardous practice for both victims (consumers, businesses, government agencies) and prior trademark holders. In fact, bad-faith actors maliciously register domain names by replicating pre-existing trademarks or domain names that have been legitimately registered and renewed. To lend credibility to these dubious websites, these malicious domain holders will replicate the products and services offered by the legitimate owner, as well as their email correspondence, mailing address, and even the brand image of companies.

Domain name abuse thereby infringes upon the rights of legitimate trademark holders and creates a significant risk of confusion for users.

Previous Definitions: Gaps and Limitations

In January 2022, the European Commission published the European Union study on the abuse of domain names, which was quickly followed in March 2023 by the United States, with an active commitment to securing critical infrastructures, particularly domain name systems, as part of its National Cybersecurity Strategy. The prevalence of domain name abuse compelled various nations to take necessary action; however, these were frequently limited and ambiguous.

Although many definitions existed prior to INTA’s report, many of them failed to adequately address important intellectual property concerns like counterfeiting and privacy. 

One example is the definition given by the European Commission in January 2022. According to the European Commission, abuse would be “any activity using domain names or the DNS protocol to conduct harmful or illegal activities.”

In clause 11 of the registry agreement, ICANN, the Internet Corporation for Assigned Names and Numbers, asserts that domain name abuse includes “malware, phishing, trademark or copyright infringements, deceptive or fraudulent practises, counterfeiting, or any other activity contrary to prevailing legislation…”

Finally, the Voluntary Framework on Domain Name Abuse defines them as “malware, botnets, phishing, pharming, or SPAM disseminating malware, botnets, phishing, pharming, or SPAM disseminating malware, botnets, phishing, or pharming.”

These definitions largely represent what the technical community recognizes as abuse. Indeed, confining domain name abuse to “technical breaches” failed to anticipate the tangible legal challenges of these practices.

Similarly, mentioning “harmful or illegal activities” without defining their scope did not provide adequate legal guidance regarding intellectual property. 

It was therefore critical to develop a comprehensive, concise, and understandable definition of domain name abuse in order to best protect victims of these infringements and trademark holders.

INTA’s Comprehensive Definition of Domain Name Abuse

Given the increasing instances of attacks on domain names and cyber risks, INTA felt the need to step in and provide a clear technical and legal definition that incorporates issues of intellectual property and emerging technologies.

Domain name abuse, is now defined as “any activity that makes, or intends to make, use of domain names, the Domain Name System protocol, or any digital identifiers that are similar in form or function to domain names to carry out deceptive, malicious, or illegal activity”

The inclusion of the term “similar in form or function to domain names” allows INTA to make the necessary connection with intellectual property. Indeed, the function of a trademark is to assure the origin of a product or service. However, domain name abuse misleads internet users about the origin of brands, creating a significant risk of confusion through techniques such as cybersquatting, typosquatting, and dotsquatting.

Conclusion on the new definition of Domain Name Abuse.

The new definition of domain name system abuse now helps trademark owners and the general public. It calls for ongoing vigilance and cooperation between organisations such as INTA and ICANN to ensure a clear understanding of the issues surrounding this concept.

To find out more read our articles on Domain name right : bona fide offer of goods or services, AFNIC’s New Mediation Procedure: Fast and Free Dispute Resolution for Domain Name Holders or visit INTA’s website.

A lot of work is currently being done to define domain name abuse or domain name Infringements. Domain abuse is the use or intent to use of domain names, the DNS domain name system protocol, or any digital identifier with a shape or function similar to domain names, for deceptive, malicious, or illegal purposes.

But where do we stand in the fight against domain name infringement?

Focus on the Attack Vector:  a form of Domain Name Abuse

The form of damage corresponds to the attack vectors. Domain name abuse is becoming more common, manifesting itself on websites, via search engines, or in email inboxes via phishing attempts.

In 2023, holders of contentious domain names are increasingly using certain “modern” domain name infringements vectors. Among them are domain name infringements via SMS, QR codes, or even sponsored ads.

In the case of SMS, the infringement takes advantage of flaws in communication protocols. A URL link pointing to a malicious website is frequently attached to the SMS.

QR codes, on the other hand, function as URL shorteners and can direct users to potentially harmful websites. These QR codes are increasingly being printed in paper format on fake notices of passage or fines.

Finally, sponsored advertisements are extremely popular. Malicious sites often appear at the top of Google searches in the form of advertising inserts. The lack of a precise visual indicator often prompts internet users to click on these ads without being wary of the content they contain.

These new attack vectors highlight the creativity and determination of malicious actors. These novel forms are accompanied by substantive innovations. In actuality, the landscape of infringements is also expanding.

An overview of Domain Name Infringements

There are various types of infringements. Cybersquatting, phishing, and fake institutional websites are well-known practices. Others, more recent, require a thorough examination.

A New Form of Cybersquatting: Robot Cybersquatting

Cybersquatting, the act of registering brand-related domain names with the intent to profit from the brand’s reputation, disrupt its visibility, or sell it back to its rightful owner, isn’t new. However, its methods are becoming more sophisticated.

Bots, particularly in China, now constantly monitor domain names. They swiftly register domains once they become available, especially if they are related to legitimate brands. These “vacuum” bots snap up domains that lapse into the public domain for any reason. While this tactic existed in the past, it’s seeing a resurgence, especially in China.

The ‘Fake Shop’ Trend

The so-called “fake shop” is a new 2023 trend. Some fraudulent websites register domain names by linking a previous brand to a country name. These fake shops are counterfeit sites that deliver no product or service. They are near-perfect, semi-automated duplications of previously registered brand sites. The similarity of these contentious sites with legitimate ones creates almost inevitable confusion for consumers. In an effort to sidestep some alternative dispute resolution procedures, such as the UDRP (Uniform Domain Name Dispute Resolution Policy), by replacing trademarks within the domain name by a generic term, this new domain name infringement trend is more difficult to combat.

Click Fraud

Another trend for 2023 is “click fraud.” Click fraud is a type of fraud that occurs online within pay-per-click advertising. Website owners are paid based on the number of visitors who click on the ads in this advertising. Click fraud typically occurs on a large scale, with multiple links targeted and clicked multiple times, rather than just once. Malicious actors will obtain expired domain names or typosquat domain names that appear legitimate in order to entice users to click.

Identity Theft and Fake Merchant Sites

Identity theft and the creation of fake merchant sites are frequently seasonal, which means that fraudsters create contentious sites during tax or local fee collection periods, or during festive periods such as Christmas, Mother’s Day, or Valentine’s Day. This strategy targets both the B2B and B2C markets.

The fake merchant site is created in the name of a company whose official details are usurped. The credibility of these fake sites lies in the accuracy of the information concerning the merchant, such as the Siren, Siret, and VAT numbers, and in the usurpation of the company’s Whois data. This tactic is commonly used when legitimate businesses lack an online presence. Consumers who do not have access to the legitimate company’s official website believe the contentious site is authentic. To

Furthermore, fraudsters create fake Yellow Pages accounts, or official sites such as “Google My Business” or “societe.com,” and even fake reviews. The consequence of this practice is hefty as, beyond infringing on intellectual property rights and usurping companies’ identities, fraudsters scam consumers by never delivering the purchased products. This domain name abuse is severe since there’s both a monetary and personal data theft of the deceived consumers.

Identity Theft and Fake Orders

This practice consists in obtaining an undue merchandise delivery, in other words, diverting a product’s delivery. The perpetrators send an email that appears to be from a brand or company and requests large purchase quotes from sellers or distributors. Then they request payment for these purchases.

This method is especially dangerous since it can involve large amounts of money. Numerous elements give the appearance of an official site, lending credibility to identity theft. Fraudsters access official signatures and stamps from freely available online general assemblies, as well as recent financial statements, at least partially. Only the phone numbers and email are linked to the scammer.

Email Interception and Fake Bank Details

The most recent domain name infringement trend consists in redirecting a legitimate bank transfer to a third-party account. It is classified as a high-level attack because it primarily involves real estate and banking transactions.

The perpetrator begins by hacking the victim’s email. They monitor exchanges until they find an interesting transaction, identify related order discussions, and intercept a legitimate email during these exchanges. Then, they replace the legitimate email with a falsified one, modify the attached bank details, and send the email to the correspondent. Scammers use forged emails that look exactly like legitimate emails. Because of multiple exchanges in the victim’s email, the victim frequently misses the subtle email change, resulting in transactions that benefit the perpetrator.

Final thoughts

Consumers, companies, and owners of intellectual property are all affected by the recent rise in domain name infringement. Malicious actors can commit more difficult-to-detect domain name abuses thanks to increasingly sophisticated and cunning attack vectors combined with computer tool mastery. It is critical to exercise extreme caution when using the internet, emails, SMS, and even paper mail. The best way for businesses to protect themselves, their leaders, and their customers is to keep an eye on their domain names and put in place a policy and plan of action that takes this into account. Today, we talk about compliance strategy and domain names. If you have any questions, please do not be hesitant to get in touch with us.

To find out more, read our article New AFNIC Mediation Procedure: Fast and Free Dispute Resolution for Domain Name Holders

Generative artificial intelligence (AI) is a type of artificial intelligence system that can generate text, images, and other media.

The process of creating content with generative AI can be roughly divided into two steps:

– The initial source of inspiration is termed as the “input”. The generic creation is based on this initial data, either retrieved from data labelled by the user/creator of the AI or from data autonomously found by the AI, to subsequently produce an “output” or result.

 – From the initial data (input), the AI generates a model, infers rules, and then applies these rules. This is the output.

As a result, generative artificial intelligence raises concerns about the protection of both upstream content and downstream output.

Upstream protection for content processed by generative AI

In the upstream, intellectual property rights may be infringed upon if data is copied by AI and then used without permission. Indeed, there is a reproduction of copyrighted content (texts, images, sounds) to feed AI databases.

These contents, however, are protected by intellectual property rights. To legally feed AIs without prior authorization, the European legislator created an exception for “text and data mining,” which suspends the exploitation monopoly under copyright and related rights for data mining purposes. This relates to Articles 3 and 4 of Directive 2019/790 of the European Parliament and Council on copyright and related rights in the digital single market, which was adopted on April 17, 2019.

Data mining involves collecting data to transform them. There is a mining operation, which means algorithmic processing in order to interpret results. Nonetheless, these mining operations violate intellectual and artistic property rights.

Text and data mining can also lead to acts protected by copyright, sui generis rights on databases, or both, especially regarding the reproduction of works or other protected items, the extraction of content from a database, or both, which is the case when data is standardised during the text and data mining process.

The Directive 2019/790 establishes two mandatory exceptions for copying, i.e., two exceptions on reproducing content protected by literary and artistic property rights overall (texts, sounds, images, for all copyrights, related rights, and sui generis rights).

– Article 3 is a mandatory academic exception, benefiting research bodies and cultural heritage institutions performing mining for scientific research purposes, which right holders can’t oppose.

– Article 4, on the other hand, is an exception for all uses, regardless of the purpose (including commercial), provided that the copyright holder has not expressed opposition. In this case, the right holders can oppose even though the exception is mandatory. This may seem contradictory, but in reality, it’s the only possible balance between the rights of intellectual property right holders and the rights of those reproducing the data.

While data mining is currently allowed, the debate on the protection of content used upstream by generative AI to produce content is not over. Appeals are multiplying. For instance, in Europe, right holders are mobilising through “position papers” since the context between the drafting of Directive 2019/790 in 2018 and the time when generative AIs are booming in 2023 is very different. Compensation for intellectual property rights holders for the exception on data mining is now part of the considerations of intellectual property specialists working on the topic.

Protection of Content Generated by Generative AI

While robots were once considered passive tools, advances in artificial intelligence research have raised concerns about their role in the creative process. Indeed, these advancements sometimes attribute a significant role to them in content creation, raising questions about the protection of content generated by generative AI.

Under copyright law, the principle remains indifferent to merit (CJEU 1st March 2012, Football Dataco Ltd et al. vs. Yahoo! UK Ltd et al., Case C-604/10). Yet, it remains contentious to assert that generative AI can be the author of a work it produces.

This brings up the question: Is the appearance of a work tied to a regime? Should we accept protection for works generated by AI?

The European Parliament’s report from 27th January 2017 on recommendations for civil law rules on robotics suggested that copyright criteria should be adapted to accommodate these new AI-generated creations.

What’s crucial here is distinguishing between creations assisted by generative AI and those autonomously generated by AI.

If generative AI is used as a tool assisting creation, there’s no debate. The work is protected by copyright, with the affiliated rights belonging to the human creator. In this scenario, the work clearly reflects the personality of its human creator.

But what about the opposite scenario? Do we lean towards copyright or other paths (common law, special law)?

In 2018, the Superior Council of Literary and Artistic Property conducted an economic and legal analysis of the options.

The idea of AI as an author is ruled out today. To qualify as a work under the European Union law, it must meet specific conditions:

– There must be a human author.
– The work must be original.

Given these conditions, today’s perceived autonomy of AI is exaggerated as human involvement is essential. The idea of creating an “electronic personality” is rejected, as it might disrupt existing legal categories, leading to a legal chimaera. Without a human entity, the work can’t fulfil the originality criterion, which in France refers to the “imprint of the author’s personality” and similarly in the European Union, denotes an “intellectual creation unique to its author”, both necessitating a human presence.

The link to a human author in copyright law seems to be an international requirement
suggested by the Berne Convention.

If literary and artistic property rights are chosen, determining which specific rights apply (copyright, sui generis rights) becomes essential. Also, the definition of the author (indirect author, work without an author?) must be clarified.

Some argue no protection is required, and the “opt out” would fall under the “common by design” regime.

While awaiting legislation specific to works produced by generative AI, it’s worth noting emerging case law in this field. Notably, the US District Court for the District of Columbia’s decision in Thaler vs. Perlmutter on 18th August 2023, which ruled that copyright doesn’t apply to creations made by AI tools, even if they’re trained by human intelligence.

Such discussions on highly current topics raise genuine legal questions. The rise of new technologies requires the legislature’s keen attention and continuous updates to stay relevant. It’ll be fascinating to see future measures and laws adopted to further regulate these smart new inventions.

To find out more about generative AI, read our article Generative AI: Balancing Innovation and Intellectual Property Rights Protection or visit WIPO Magazine and Blog Modérateur.

Intellectual property (IP) litigation is a process used to resolve a dispute over the ownership or use of IP. It is a legal process that can be used to protect and enforce the rights of IP owners. IP litigation is an important tool for businesses, as it enables them to protect their valuable IP assets and to prevent infringement.

The most common form of IP litigation is patent litigation. Patent litigation is used to resolve disputes over the ownership of inventions and the rights associated with them. Patent litigation can help to protect businesses from infringement and can help to ensure that they have exclusive rights to their inventions. Copyright litigation is another form of IP litigation. Copyright litigation is used to resolve disputes over the ownership of creative works, such as artwork, literature, music, and software. Copyright litigation can help to protect businesses from infringement and can help to ensure that they have exclusive rights to their works. Trademark litigation is another form of IP litigation. Trademark litigation is used to resolve disputes over the ownership of trademarks and the rights associated with them. Trademark litigation can help to protect businesses from infringement and can help to ensure that they have exclusive rights to their trademarks. The benefits of IP litigation for businesses are numerous. IP litigation can help to protect a business from infringement and can help to ensure that they have exclusive rights to their IP assets. IP litigation can also protect a business from competitors by preventing them from misusing or copying a business’s IP assets. In addition, IP litigation can help to protect a business’s reputation and to ensure that their products are not associated with competitors. IP litigation can also help to protect a business’s investments. IP litigation can help to ensure that a business’s investments are not wasted by competitors who are infringing on their IP rights. IP litigation can also help to secure a business’s investments by preventing competitors from misusing or copying their IP assets. IP litigation can also help to protect a business’s revenues. IP litigation can help to ensure that a business’s revenues are not lost due to infringement or misappropriation of their IP assets. IP litigation can also help to protect a business’s revenues by preventing competitors from copying or misusing their IP assets. Finally, IP litigation can help to protect a business’s future. IP litigation can help to ensure that a business’s IP assets remain valuable and can help to prevent competitors from taking advantage of them. IP litigation can also help to protect a business’s future by preventing competitors from misusing or copying their IP assets.

In conclusion, IP litigation is a valuable tool for businesses. IP litigation can help to protect a business’s valuable IP assets, can help to protect a business’s investments, can help to protect a business’s revenues, and can help to protect a business’s future. IP litigation can help to ensure that a business’s IP assets remain valuable and can help to prevent competitors from taking advantage of them.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

The European Union (EU) is one of the most technologically advanced areas in the world, and as such, it is important that businesses remain compliant with all applicable IT laws. This article provides an overview of some of the key regulations that all companies should be aware of to ensure they remain compliant with the latest IT laws in the EU.

The EU General Data Protection Regulation (GDPR) is one of the most important pieces of legislation in the EU. It sets out the rules that companies must follow when processing and storing the personal data of EU citizens. Key elements of the GDPR include the right for people to access the data that companies hold on them, the right to be forgotten and the right to data portability. Companies must also ensure that they are transparent about how they are using personal data and must have appropriate measures in place to protect it. The EU Network and Information Security (NIS) Directive is another key piece of legislation. It sets out the requirements for organizations that operate “essential services” such as energy, transport, healthcare and banking. The Directive requires these organizations to take appropriate measures to protect their networks and information systems from cyber-attacks. This includes ensuring that they have appropriate security policies and procedures in place, as well as measures to detect, report and respond to cyber-attacks. The EU Digital Single Market Strategy is a set of rules designed to ensure that businesses can operate freely and fairly in the digital world. It includes measures to make sure that digital services are not subject to unreasonable restrictions, that businesses can compete on a level playing field, and that consumers have access to a wide range of digital content and services. This includes ensuring that copyright laws are respected and that online content is not blocked or filtered unnecessarily.

Finally, the EU e-Privacy Directive sets out rules for the use of cookies and other tracking technologies. Companies must inform users about how they are using cookies and must obtain the user’s consent before using them. Companies must also ensure that any information collected through cookies is kept secure and is only used for the purposes for which it was collected.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Contract law is an area of law that governs the enforcement of contracts and the related legal implications. It is a complex and multifaceted field of law that is applicable in many different scenarios. The European Union (EU) has its own set of contract law regulations that are specifically tailored to the needs of the EU. It is important for businesses, lawyers, and individuals to understand the basics of contract law in the EU in order to effectively navigate the legal landscape.

At its core, contract law in the EU is based on the principle of freedom of contract. This means that parties are free to enter into contracts as long as they do not violate public policy or any other applicable laws. The terms and conditions of the contract must be clearly defined in order to be enforceable. This includes the rights and obligations of each party, the duration of the agreement, and any other relevant details.

The EU also has a number of specific laws and regulations that apply to contracts. These include the European Union Consumer Rights Directive, which provides a set of minimum standards for consumer rights in contracts, and the General Data Protection Regulation (GDPR), which regulates the processing and handling of personal data.

In addition to specific laws, the EU also has a number of general principles that apply to contracts. These include the principle of good faith, which requires that parties act in a fair and reasonable manner. The principle of reasonableness also applies, which states that the terms of the contract must be reasonable and not impose an undue burden on either party.

Finally, the EU also has a number of rules that regulate the formation and execution of contracts. These include the requirements for a valid offer and acceptance, the capacity of each party to enter into the contract, and the rules of consideration. Consideration is a term that refers to the exchange of something of value between the parties, such as money or goods.

Contract law in the EU is an important and complex area of law that requires an in-depth understanding of the laws and regulations. It is important for businesses, lawyers, and individuals to understand the basics of contract law in order to effectively navigate the legal landscape.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

In the digital age, there are a variety of ways in which businesses can be exposed to intellectual property (IP) litigation. As technology has become increasingly pervasive in our lives, the risk of litigation has increased along with it. The best way to protect your business from IP litigation is to take proactive steps to minimize the risk. Here are some tips for reducing the chances of being taken to court for an IP-related dispute.

1. Have a Clear IP Policy Having a clear and comprehensive IP policy in place is essential for protecting your business from IP litigation. A good IP policy should outline how your business handles intellectual property, including how it is used, shared and protected. It should also include specific instructions on how to handle disputes, such as what steps should be taken and who should handle the dispute. Having a clear policy in place sets expectations for employees and partners and makes it easier to take action if a dispute arises.

2. Use Copyright Notices Copyright notices are one of the best ways to protect your work from being copied or shared without permission. A copyright notice is simply a statement that notifies others that the work is protected by copyright law and that unauthorized use is prohibited. Copyright notices should be placed on all of your work, including website content, software, images, and other digital assets.

3. Monitor Your Content Monitoring your content is an important step to take in order to protect your business from IP litigation. This involves regularly checking online to see if your content is being used without permission. If you discover that someone is using your content without permission, you can take action to have it removed or to file a lawsuit.

4. Register Your Copyrights If you have created something that qualifies for copyright protection, it is important to register the copyright with the U.S. Copyright Office. Registering your copyright grants you additional legal protections and makes it easier to defend your work in court.

5. Consider Licensing If you want to protect your content from being used without permission, you may want to consider using a licensing agreement. A licensing agreement allows you to control how your work is used and shared by specifying what rights are granted to the licensee. This can help to protect your work and minimize the risk of litigation.

6. Use Non-Disclosure Agreements Non-disclosure agreements (NDAs) are effective in preventing confidential information from being shared without permission. An NDA is a legally binding agreement that prohibits the recipient from sharing confidential information or using it for any purpose other than what is specified in the agreement. By using NDAs, you can prevent confidential information from being shared without permission, which can help to minimize the risk of litigation.

7. Have a Dispute Resolution Process Having a dispute resolution process in place is an important step to take to minimize the risk of IP litigation. This process should involve an initial consultation with a qualified attorney to discuss the potential dispute and identify potential solutions. The process should also involve mediation, which is a form of alternative dispute resolution that can help to resolve disputes without going to court.

The digital age has brought about a new set of challenges for businesses when it comes to protecting their intellectual property. However, by taking proactive steps to minimize the risk, you can help to protect your business from IP litigation. By having a clear IP policy, using copyright notices, monitoring your content, registering your copyrights, using licensing agreements, using NDAs, and having a dispute resolution process in place, you can reduce your chances of being taken to court for an IP-related dispute.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Industrial property law is the specialized legal field that governs the protection and use of intellectual property (IP). It covers the laws related to copyrights, patents, trademarks, designs, trade secrets, and other IP. Industrial property law is complex, but for businesses and individuals looking to protect their interests, the benefits of understanding it are clear.

First, industrial property law provides businesses with a way to protect their work and investments. By obtaining patents, copyrights, and trademarks, companies can ensure that their investments of time and money are protected. This has the added benefit of giving businesses an edge over competitors since their IP is protected and cannot be copied or used without permission. Second, industrial property law is a way for businesses to make money. By obtaining patents, businesses can license their IP to other companies, meaning they can make money by granting companies the right to use their IP. This is an important source of income for many companies and can be a great way to expand a business’s reach. Third, industrial property law can help companies avoid litigation. By understanding and adhering to the laws governing IP, companies can avoid costly legal battles with competitors. This is especially important for small companies who may not have the resources to defend themselves in court. Fourth, industrial property law helps companies protect their reputation. A company’s reputation is one of its most valuable assets, and by understanding the laws surrounding IP, companies can ensure that their reputation remains intact. This is especially important in industries where reputation is key, such as technology and healthcare, since IP can easily be stolen or misused. Finally, industrial property law can help companies stay compliant with local and international laws. Companies operating on an international scale must understand the laws governing IP in each jurisdiction they operate in. This is essential for companies looking to do business overseas and protect their IP from infringement.

Overall, industrial property law is an essential part of any business’s operations. It provides companies with a way to protect their investments, make money, avoid litigation, protect their reputation, and stay compliant with local and international laws. Understanding and adhering to industrial property law is key for any business looking to protect their IP.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

The world of technology is ever-evolving, and the same applies to the law that governs it. The latest development is Web 3.0 law, which is the legal framework created to govern the newest generation of technology and the internet. This article will explain what Web 3.0 law is and how it can affect businesses.

Web 3.0 law is a broad term that refers to the legal framework that has been created to govern the future of the internet. It is a legal framework that will provide protection for both companies and consumers in the digital age. It is designed to ensure that digital assets, such as data and content, are protected from unauthorized access or misuse. It also ensures that companies are held accountable for their actions and that consumers are given the tools to protect themselves from potential harm.

Web 3.0 law covers a number of different areas, including intellectual property (IP) rights, privacy, data protection, and cybersecurity. It also includes regulations on the use of artificial intelligence (AI) and other emerging technologies. It is important for businesses to understand these regulations, as they can have a significant impact on how they do business.

One of the key components of Web 3.0 law is the protection of IP rights. This includes copyright, trademark, and patent laws. These laws are designed to ensure that businesses are able to protect their intellectual property, such as inventions, designs, logos, and other creative works. This ensures that businesses are able to benefit from the products they create and that they are not unfairly taken advantage of by others.

Furthermore, Web 3.0 law also includes regulations on privacy and data protection. This is important for businesses, as they need to ensure that they are protecting their customers’ data and are not sharing it with third parties without their consent. Additionally, businesses need to comply with regulations on data retention and disposal, as well as data protection laws, such as the General Data Protection Regulation (GDPR).

Lastly, Web 3.0 law also covers cybersecurity. This is important for businesses, as it helps to protect them from cyberattacks, such as data breaches and ransomware. Additionally, it provides guidance on how to secure networks and how to respond to cyberattacks.

Overall, Web 3.0 law is an important development in the legal framework governing the future of the Internet. It is designed to ensure that companies can protect their digital assets and that consumers have the tools to protect themselves from potential harm. It is important for companies to understand these regulations, as they can have a significant impact on their operations.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Intellectual property (IP) is a valuable asset for businesses, and it is important for companies to understand the legal implications of IP contracts in the EU. Companies that operate in the EU should be aware of the various legal requirements that need to be considered when drafting an IP contract. This article will discuss some of the important considerations to be taken into account when drafting an IP contract in the EU.

The first consideration is the type of IP contract being drafted. There are several different types of IP contracts in the EU, such as patent licenses, trademark licenses, copyright licenses, and trade secrets contracts. It is important to determine which type of contract best suits the needs of the company and to determine the scope of the agreement. The second consideration is the jurisdiction of the contract. The jurisdiction of the contract determines which laws will apply to the contract and the parties involved. It is important to select a jurisdiction that is most appropriate for the company and the type of IP being protected. The third consideration is the language of the contract. The language of the contract should be clear and concise and should be tailored to the needs of the company. It is important to include all relevant terms and conditions in the contract, and to ensure that they are clearly understood by all parties involved. The fourth consideration is the enforcement of the contract. It is important to consider how the contract will be enforced in the event of a dispute. It is important to include provisions for dispute resolution and to ensure that the contract is enforceable in the event of a breach of the agreement. The fifth consideration is the duration of the contract. It is important to determine the length of the contract and to include provisions for renewal or termination. Companies should also consider the possibility of amendment or termination of the contract in the event of unforeseen circumstances. Finally, it is important to consider any additional clauses or provisions that may be included in the contract. This could include confidentiality provisions, warranties, and indemnities. It is important to ensure that these provisions are in line with the company’s legal requirements and are clearly understood by all parties involved.

In conclusion, when drafting an IP contract in the EU, it is important to consider the various legal requirements and to ensure that the contract is tailored to the needs of the company. Companies should ensure that the contract is clear and concise and that all relevant terms and conditions are included.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Technology is more integral to our lives and businesses than ever before. With this shift, the need for sound legal protection of technology-related assets has grown as well. This is where IT law comes into play. IT law, or information technology law, is a branch of law that covers the use, development, and implementation of technology. It’s a complex and ever-evolving area of law, and it can be the difference between success and failure for many businesses.

IT law covers a wide range of topics, including intellectual property, data protection and privacy, cyber security, and technology contracts. Each of these areas of law can play a key role in protecting a business’s assets, products, and services. The following is a brief overview of how IT law can help protect businesses in each of these areas. Intellectual Property Intellectual property (IP) law is the cornerstone of IT law. It deals with protecting intangible assets such as copyrights, trademarks, and patents. Copyrights protect an individual’s or business’s creative works, such as books, music, and software, from being copied or used without permission. Trademarks protect a business’s brand identity by ensuring that their logo, name, and other identifying marks can’t be used by another business. Patents protect inventions from being copied or used without permission. Data Protection and Privacy Data protection and privacy law is the set of laws that govern how businesses collect, use, store, and protect personal data. This includes data from customers, clients, and employees. Data protection and privacy laws are designed to ensure that businesses are transparent about how they are collecting and using data, and that they are taking steps to protect the data from unauthorized access. Cyber Security Cyber security law is the set of laws that govern how businesses protect their networks and data from cyberattacks. This includes everything from developing a secure network architecture to implementing effective cyber security measures, such as firewalls and encryption. Cyber security laws also require businesses to have a plan in place to respond to and recover from cyberattacks. Technology Contracts Technology contracts are the agreements that govern a business’s relationship with its vendors and other technology providers. These contracts cover everything from the services being provided to the terms of payment. It’s important that businesses have sound technology contracts in place to ensure they are getting the best value from their technology providers and that they are protected from potential legal issues.

Overall, IT law provides a number of important protections for businesses. It is a complex and ever-evolving area of law, which is why it’s important for businesses to have an experienced IT lawyer on their side. An experienced IT lawyer can help businesses stay up to date on the latest developments in IT law and ensure they have the legal protections in place that they need to succeed.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Copyright is an important form of intellectual property protection that authors, artists, and other creators of works can register in the European Union (EU). The EU has a harmonised copyright system that applies to all of its member states, making it easier to protect your work across the entire EU. Here are the steps for registering a copyright in the EU.

First, you must determine whether your work is eligible for copyright protection. Copyright protection is available for both published and unpublished works, including literary, dramatic, musical, and artistic works. As long as your work is original and has not been copied from someone else, then it is eligible for copyright protection. Second, you must decide where you want to register your copyright. You can register your copyright in the EU through the European Intellectual Property Office (EUIPO). This is the main office where all EU copyright registrations are processed. Third, you must prepare the documents required for registration. These include a completed application form, a copy of the work itself, and a fee for registration. You may also need to include a power of attorney or a statement of legal representation if you are registering your copyright through an agent. Fourth, you must submit your application and documents to the EUIPO. The EUIPO will review your application and documents to make sure they meet the requirements for registration. If the EUIPO approves your application, you will be issued a certificate of registration and a registration number. Finally, you must keep your registration up to date. Copyright registrations are valid for the life of the author, plus an additional 70 years. You must renew your registration every 10 years in order to keep it valid.

These are the steps for registering a copyright in the EU. Copyright registration is an important form of intellectual property protection that can help you protect your work and your rights.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Filing a patent application is the first step towards protecting your intellectual property. A patent grants its owner the right to exclude others from making, using, offering for sale, or selling the invention throughout the country in which the patent is granted and, in some cases, importing the invention. Patents are governed by the laws of each country, so it is important to understand the laws of the country or countries in which you wish to file a patent application.

Before you file a patent application, you must first determine whether the invention is eligible to be patented. Patents are typically granted for inventions that are new and useful. To be considered “new,” the invention must not have been previously known or used by others. To be considered “useful,” the invention must provide some kind of benefit or utility, such as a machine that can be used to perform a task. After determining that your invention is eligible for a patent, you must then decide what type of patent you would like to file for. There are three main types of patents: utility patents, design patents, and plant patents. Utility patents cover inventions that are functional, such as machines, processes, and chemical compositions. Design patents cover the ornamental design of a functional item. Plant patents cover newly developed varieties of plants. Once you have decided on the type of patent you would like to file for, you must then prepare the necessary documents. To apply for a patent, you must submit a written application, which includes a description of the invention, drawings of the invention, and any other relevant information. You must also include a claim, which is a statement that describes the scope of the invention. After you have gathered the necessary documents, you must then decide how you would like to file the application. You can file a patent application in person at a patent office, or you can file an application electronically. If you choose to file electronically, you must have a valid email address and a digital signature to complete the application. Once the patent application has been filed, the patent office will review it and determine if the invention qualifies as patentable. If the patent office approves the application, it will then issue a patent. The patent will give you exclusive rights to the invention, which can be used to prevent others from using or selling the invention without your permission.

Filing a patent application is a complex process, so it is important to understand the laws and procedures involved. If you are unsure of how to proceed, it is best to consult a lawyer or patent agent. A lawyer or patent agent can help you navigate the legal process and ensure that your application is complete and accurate.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Intellectual property (IP) is an ever-evolving concept that is used to protect creations of the mind. It includes inventions, literary and artistic works, symbols, names, and images used in commerce. Protecting this intangible property is critical to ensuring that creators, inventors, and business owners get the recognition and financial reward that they deserve for their work. Intellectual property protection comes in several forms and can be used to protect different types of intellectual property.

Patents A patent is a form of intellectual property protection that allows the creator of an invention or process to be the exclusive owner of that invention or process. Patents are granted by a government agency and provide the inventor with the right to exclude others from making, using, or selling their invention. Patents also allow the inventor to receive a financial reward for their invention if it is used by others. Patents can be granted for inventions such as machines, processes, and chemical compounds. Trademarks Trademarks are a form of intellectual property protection that is used to protect names, symbols, and other identifying features of a product or service. Trademarks can be used to protect a business’s brand, allowing them to distinguish their products from those of other businesses. Trademarks can also be used to protect a business’s reputation. Trademarks can be registered with a government agency and can be renewed periodically. Copyrights Copyrights are a form of intellectual property protection that is used to protect literary and artistic works. These works can include books, music, photographs, and computer programs. The purpose of copyright is to protect the original expression of an idea, not the idea itself. Copyrights do not protect ideas, only the expression of those ideas. Copyrights can be registered with a government agency and can be renewed periodically. Trade Secrets Trade secrets are a form of intellectual property protection that is used to protect confidential information that is not generally known to the public. Trade secrets can include formulas, recipes, processes, and other business information. Trade secrets are usually kept confidential and are not registered with a government agency. Industrial Design Rights Industrial design rights are a form of intellectual property protection that is used to protect the unique visual design of a product. This includes the shape, configuration, pattern, and ornamentation of a product. Industrial design rights are registered with a government agency and can be renewed periodically. Geographical Indications Geographical indications are a form of intellectual property protection that is used to protect goods that originate from a certain geographical area. This includes wines, cheeses, and other food products that are associated with a particular region. Geographical indications are registered with a government agency and can be renewed periodically.

Intellectual property protection is essential for businesses and inventors who have created something new and unique. Different types of intellectual property protection are available and can be used to protect different types of intellectual property. It is important to understand the different types of intellectual property protection and how they can be used to protect your intellectual property.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Intellectual property (IP) is a valuable asset that requires protection from others who may seek to use or exploit it without your permission. It is essential to understand the options available to you for enforcing your IP rights and the steps you can take to protect them.

The first option is to register your intellectual property with the relevant government or international authorities. This will give you a formal legal right to your IP, which can then be enforced in court if necessary. It is important to remember that registration is not a requirement for enforcing your IP rights, but it can provide additional legal protection. Another option is to use cease and desist letters. These are letters sent to someone who is infringing your IP rights, informing them of your ownership and asking them to stop their activities. This is often a quick and effective way of resolving issues without the need to go to court. If the infringer does not comply with the cease and desist letter, you can pursue legal action, such as filing a lawsuit. This can be a lengthy and expensive process but can be necessary if the infringement is serious and has caused significant damage to your IP rights. You can also pursue criminal charges against someone who has infringed your IP rights. This is a serious matter, as it can result in fines or even imprisonment for the infringer. It is important to note that this is only an option if the infringement is particularly serious and has caused significant harm to your IP rights. Finally, you can take steps to prevent infringement in the first place, such as using watermarking and digital rights management systems. These can be effective ways of protecting your IP and deterring people from attempting to use or exploit it without your permission.

Enforcing your intellectual property rights is an important part of protecting your valuable asset. Understanding the different options available to you is essential in ensuring that your IP is secure and protected from infringement.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

The protection of industrial property rights is essential to any business. Industrial property rights include inventions, trademarks, designs, and trade secrets, among others. They are essential for any business to protect their brand, products, and ideas. But how can you protect your rights to industrial property?

In this article, we will discuss how businesses can protect their rights to industrial property. We will cover the different types of industrial property rights, the importance of registering your rights, and other methods of protection. Types of Industrial Property Rights Before we discuss how to protect your rights to industrial property, it’s important to understand the types of industrial property rights. There are four main types of industrial property rights: 1. Patents: Patents are exclusive rights granted to inventors to prevent others from using, making, selling, or importing their inventions without their permission. 2. Trademarks: Trademarks are words, phrases, symbols, logos, or other devices used to distinguish goods or services from those of other businesses. 3. Designs: Design rights are exclusive rights granted to designs or models of products or their packaging. 4. Trade Secrets: Trade secrets are confidential information or processes that are used to protect a business’s competitive advantage. The Importance of Registering Your Rights It is important to register your rights to industrial property. Registering your rights can help ensure that your rights are protected, and that you are the only one who can exploit them. Patents and trademarks can be registered with national or regional patent and trademark offices. Designs can be registered with the Community Design Office of the European Union Intellectual Property Office (EUIPO). Trade secrets can be protected through various methods, including contracts, non-disclosure agreements, and encryption. Other Methods of Protection In addition to registering your rights to industrial property, there are other methods of protection. These include: 1. Licensing: Licensing is a way to allow others to use your industrial property rights on certain terms and conditions. 2. Litigation: Litigation is the process of taking legal action against someone who is infringing on your industrial property rights. 3. Monitoring: Monitoring is the process of keeping track of potential infringers and taking action if necessary.

Protecting your rights to industrial property is essential for any business. To protect your rights, it is important to understand the different types of industrial property rights, register your rights, and use other methods of protection, such as licensing and litigation. By taking these steps, you can ensure that your rights to industrial property are protected.

Whether you are an entrepreneur, author, artist or inventor, it is important that you understand the steps to maximize your intellectual property protection. Here are some strategies you can use to do so.

The first step is to register your intellectual property. This will give you legal title, which third parties will have to reject if they consider it invalid. For example, it is easier to defend a chair model on the basis of a registered design than on the basis of a copyright that will be more difficult to date and prove!

Depending on the type of intellectual property you are trying to protect, you should contact the appropriate office. For example: the INPI to register a French trademark, the EUIPO for a European Union trademark.

Another important step is to get the right contracts to protect your intellectual property. For example, you want to register a trademark with a logo and hire a graphic designer to create the logo. You cannot legally register the trademark once the logo has been created; you must first ensure that the copyright on the logo has been assigned, in compliance with the rules set out in the Intellectual Property Code.

Some contracts may also include a non-disclosure clause (NDA agreements), which will protect your ideas from being disclosed to others without your permission. Protecting your rights also deters potential transgressors, as they will know that you are serious about protecting your property.

Finally, you should familiarize yourself with the applicable laws: limitation periods, requirements to ensure that a trademark or design is valid, etc.

By following these strategies, you can maximize your protection against the unlawful use of your intellectual property. It is also important to consult with an intellectual property attorney or consultant who can advise you on what steps to take to protect your property.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Whether you are an inventor, an artist, or a company, it’s likely that you hold intellectual property rights that may be subject to a licensing agreement. Granting a license on an intellectual property (IP) asset offers a variety of benefits, ranging from generating additional income to safeguarding innovative ideas of your company. Understanding the advantages associated with leveraging your IP rights through a license will enable you to grasp the optimal strategy to pursue.

Granting a license for your intellectual property rights ensure a stable stream of additional income. By allowing another party to use your intellectual property asset (such as trademarks, patents, designs, or models) for a fee, you can earn supplementary revenue that can be reinvested, particularly in research and development. By signing a licensing contract, you also control the usage of your asset by the licensee. It is crucial to set out all the rules governing the use of the asset, such as the duration and scope of the license, with the utmost precision.

Licensing is also a good way to limit the risk of infringement. By authorizing third parties to market or use your intellectual property assets according to the rules you have established, subject to various provisions regarding competition law or consumer protection, you reduce the temptation to use your assets without permission. Similarly, licensing also helps to protect your brand reputation.

Moreover, utilizing licensing agreements can be an effective way to expand your business. By permitting a third party to use your industrial property, you can open up new markets and facilitate the development of new products directly relating to your intellectual property rights. This is an excellent way to grow your business and increase profits.

Finally, licensing your IP can help to ensure that your ideas are being used in a legal and ethical manner. By signing a licensing agreement, you can ensure that the conditions of use for your intellectual property rights align with your company’s values.

Utilizing an intellectual property licensing agreement can be a great way to generate extra income, safeguard your ideas, expand your business, or maintain control over how your intellectual property is used. Nevertheless, it is crucial to work with an experienced intellectual property lawyer or industrial property advisor to ensure that the licensing agreement is appropriately drafted and that your interests are protected.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

As technology and innovation develop, intellectual property (IP) rights are becoming increasingly important in the European Union (EU). From the self-employed to large companies, everyone can benefit from a sound IP strategy.

The EU has four main categories of intellectual property rights: literary and artistic property law, which is further divided into copyright and related rights, trademark law, patent law and design law.

Copyright protection is the most well-known form of IP protection. It is the set of rights that an author has over their work. Copyright protection is acquired automatically, provided that the conditions of originality (understood as “the expression of the author’s personality”) and of form are met, with the work having to be tangible as an idea cannot be protected.

Copyrights apply not only to original works, such as literature, films, music and art, but also to more specific objects such as software, databases and other digital works. Copyright protection in the European Union is valid for the lifetime of the author and up to 70 years after his death. Additionally, trademarks are intellectual property rights that allow companies to distinguish their goods and services from those of their competitors. A trademark can be a word, a phrase, a logo, a sound or an image.

At the European Union level, trademarks must be registered with the European Union Intellectual Property Office (EUIPO). The protection is valid for a period of 10 years from the date of filing, indefinitely renewable.

Patents protect inventions, such as machines, processes or certain chemical compounds. For an invention to be patentable, it must be new, involve an inventive/innovative step and be susceptible to industrial application. A patent grants exclusive rights to the inventor to exploit or allow the exploitation of his invention. Patents are granted by the European Patent Office (EPO) and are valid throughout the EU for a maximum of 20 years.

Finally, designs protect the appearance of a product, such as its shape, decoration or pattern. A design can be registered with the EUIPO and is valid throughout the EU for 5 years, renewable every 5 years for a period of 25 years.

It is important for companies to understand the different types of IP protection in the EU and how best to use them to protect their assets. Having a solid IP strategy in place can help companies protect their work and maintain their competitive edge.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

When it comes to intellectual property law, it is important to understand the differences between copyrights and patents. Both copyrights and patents protect creators and inventors from having their work stolen or copied, but they do so in different ways.

Copyrights are a type of intellectual property that protect the expression of an idea in a tangible form. This could include books, music, films, photographs, artwork, software, and other forms of creative expression. A copyright owner has the exclusive right to reproduce, distribute, display, and perform the work, as well as create derivative works based on the original. Copyright protection lasts for the life of the author, plus another seventy years.

Patents, on the other hand, are a type of intellectual property that protect inventions. This could include machines, industrial processes, chemical compositions, and other types of functional products. A patent owner has the exclusive right to make, use, and sell the invention, as well as to license others to do the same. Patent protection lasts for twenty years from the date the application for the patent was filed.

The most important difference between copyrights and patents is the type of protection they provide. Copyrights protect creative expression, while patents protect inventions. Copyrights protect the expression of an idea, while patents protect the physical idea itself. For example, a copyright would protect a book that describes how to build a new type of machine, while a patent would protect the machine itself.

Another key difference between copyrights and patents is the length of protection they provide. Copyrights last for the life of the author plus seventy years, while patents last for twenty years from the date the application for the patent was filed.

Finally, a major difference between copyrights and patents is the filing formality. While copyrights are automatically protected, an application must be filed with the appropriate Office in order to obtain patent protection.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

When it comes to protecting your brand, registering a trademark is one of the most important steps you can take. A trademark can be anything from a word, a name, a logo, etc. or the combination of these elements that distinguishes the products or services of a company from competitors. Registering a trademark can provide the owner with certain legal rights and protections, and can be an important tool to help your business succeed.

 The main advantage of registering a trademark is that it gives you exclusive rights to use the trademark in connection to designated goods and services. This means that you can prevent others from using the same or a confusingly similar mark in connection with the same goods and services. This can prevent competitors from taking advantage of the reputation of your mark.

It also prevents consumer confusion between your company and your competitors, which can lead to lost sales and decreased brand recognition. In addition to providing exclusive rights to exploit the mark, registration also proves the validity of the mark. Therefore, a third party cannot use the same or a similar mark as yours once you have successfully registered it.

However, it is important to note that registering a trademark only allows you to prevent the use of your trademark without consent in certain territories. For example, if you register your mark in the United States, Europe and other countries, this only prevents a third party from using your mark in those geographical areas.

Finally, trademark registration can be used as a way to monetize your brand. Once your trademark is registered, you can license the right to use your trademark to others, such as manufacturers or retailers. You can also use your trademark as a form of collateral to obtain loans or investments.

Registering a trademark can be a powerful tool to help you protect and grow your business. By registering your mark, you can prevent competitors from using the same or a similar mark, obtain a presumption of ownership and validity, and monetize your mark.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

When it comes to protecting intellectual property rights, it is important to consult with a lawyer who is knowledgeable and experienced in the laws pertaining to intellectual property. But do you need to hire a licensed attorney? The answer is yes, you should always hire a licensed attorney when dealing with intellectual property matters.

In the United States, all attorneys must be licensed to practice law. This means that they must pass the bar exam and be admitted to practice in a particular state or jurisdiction. In the European Union, there are similar regulations for attorneys who specialize in intellectual property law. These attorneys must be licensed to practice in a specific EU member state, and they must have the knowledge and expertise to handle intellectual property matters in the EU. The primary reason why you should always hire a licensed attorney to help with your intellectual property matters is to ensure that you are receiving the best possible representation. Intellectual property is a complex area of law, and having a knowledgeable attorney at your side is essential. A licensed attorney will be able to advise you on the best ways to protect your intellectual property rights, as well as any potential risks that you may be facing. This knowledge and experience will help you make informed decisions about how to best protect your intellectual property. In addition, a licensed attorney will be able to provide legal advice and representation in any disputes that may arise. Intellectual property disputes can be complex, and having an experienced attorney by your side can help ensure that you are receiving the best possible outcome. This is especially important when it comes to matters of copyright infringement or other types of intellectual property theft. Finally, having a licensed attorney can help you navigate the legal system. A licensed attorney will be familiar with the laws and regulations that pertain to intellectual property, as well as the various courts and procedures that may be involved in any legal proceedings. This knowledge and experience can help ensure that you are well-prepared and informed when it comes time to defend your intellectual property rights.

In conclusion, it is important to always hire a licensed attorney when dealing with intellectual property matters. A licensed attorney will have the experience and knowledge to advise you on the best ways to protect your intellectual property rights, as well as any potential risks that you may face. Additionally, a licensed attorney can provide legal advice and representation in any disputes that may arise. Finally, a licensed attorney can help you navigate the legal system and ensure that you are well-prepared and informed when it comes time to defend your intellectual property rights.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Intellectual property (IP) refers to any original creation of the mind, including inventions, literary and artistic works, designs, symbols, names and images. It is the owner’s exclusive right to his or her creation. Intellectual property protection is a legal framework that allows owners to benefit from their work and prevent others from using it without their consent. Without protection, businesses and individuals can be vulnerable to IP theft which can lead to costly consequences.

First of all, not protecting your IP can result in lost business opportunities. Competitors can easily copy your ideas and products and present them as their own. Without protection, you will not be able to take legal action even if you know that another company is infringing on your rights. You won’t be able to stop them from taking advantage of your hard work and then lose potential profits.

Second, failing to protect your IP can result in the loss of brand identity. The trademarks and logos associated with your IP are essential elements of your corporate identity. Without protection, your competitors can easily imitate your logos and brand identity or counterfeit your products. This can lead to confusion among consumers, who may not be able to distinguish between your original products and services and those reproduced by your competitor.

Third, failing to protect your IP can lead to costly legal disputes. If your IP is not formally registered with the appropriate Office, you will have difficulty proving in court that it is yours. This can lead to costly legal disputes that can take a long time to resolve. Even if you ultimately win the case, the process will be long and complicated.

Fourth, not protecting your IP can result in a loss of potential licensing revenue. Licensing allows the licensee to enjoy income by giving a third party the right to exploit an IP right. Companies may be willing to pay for the rights to exploit your IP, but without protection, you will not be able to enforce the terms of the agreement.

Finally, not protecting your IP can result in a loss of reputation. If your competitors are able to pass off your work as their own, it can damage your reputation. Customers may assume that you are not innovative or creative, which can lead to decreased sales.

It is clear that not protecting your IP can have costly consequences. To protect your IP and your business, it is important to consult a professional who can advise you on the best course of action. An IP lawyer can help you determine the best way to protect your work and ensure that you get the maximum benefit.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

When it comes to protecting your intellectual property, it is important to hire a law firm that specializes in this area. An intellectual property law firm can provide you with legal advice and representation tailored to your specific needs. Here are some of the benefits of consulting with an intellectual property law firm.

Expertise and experience: When dealing with something as complex as intellectual property, it is important to have an experienced and knowledgeable legal team on your side. A law firm that specializes in this area of law will be familiar with the regulations surrounding intellectual property, as well as the best strategies for protecting it. They will have the expertise to help you understand the complexities of the process and ensure that your rights are protected.

1. Cost-effective solutions: An intellectual property law firm will be able to provide you with cost-effective solutions to protect your interests. They will understand the importance of keeping costs to a minimum and will be able to provide you with the most cost-effective ways to protect your intellectual property.

3. Comprehensive representation: When dealing with intellectual property, it is important to have a law firm that can provide you with comprehensive representation. A law firm that specializes in this area of law will be able to provide you with legal advice tailored to your specific needs. This means that they will be able to provide you with the most complete representation and help you efficiently protect your interests.

4. Strategic Planning: An intellectual property law firm will also be able to provide you with strategic planning advice. They will be able to help you develop a comprehensive plan to protect your interests and ensure that you take the necessary steps to protect your intellectual rights.

5. Dispute Resolution: Finally, an intellectual property law firm will also be able to provide you with dispute resolution services. If a dispute arises regarding your intellectual property rights, the law firm will be able to provide you with representation and advice to ensure that your rights are protected.

Consulting with an intellectual property law firm can offer you many benefits. From expertise and experience to cost-effective solutions and comprehensive representation, an intellectual property law firm can provide the protection you need to protect your interests.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Intellectual and industrial property law firms specialize in protecting the intangible assets of companies and individuals. They offer services ranging from registration to enforcement of industrial rights such as patents, trademarks or designs, and artistic rights such as copyrights. They also can help in drafting contracts related to intellectual rights. By hiring an intellectual property law firm, you can better protect your intangible assets and avoid costly litigation.

The activities of intellectual property firms are mainly focused on patents, trademarks.

Patents: Patents protect inventions from being copied or used without the owners permission. An intellectual property law firm can help you obtain a patent for your invention. filing a patent application with the appropriate office. In order to ensure the patentability of your invention, the firm can also assist you in conducting searches. In addition to this, the firm is able to meet other client needs such as: opposition, drafting of patent contracts, representation in court proceedings, etc.

Trademarks: A trademark can be a word, a name, a logo, etc. or the combination of these elements to distinguish the products or services of a company from those of its competitors. An intellectual property law firm can help you register a trademark with the appropriate office. The firm can also help you search the availability of a mark to ensure that it is registrable. In the event of disputes, the firm can act on your behalf to file opposition, negotiate licensing or assignment agreements, as well as before the Court for litigation proceedings.

Designs: They protect the appearance of a product or part of a product characterized by lines, contours, colors, etc. In order to protect your designs, the Intellectual Property Law Firm will provide you with services ranging from searching, filing the application with the competent Office to drafting the related contracts and representation in case of litigation.

Copyright: Copyright protects original works in tangible form, such as literary, artistic and musical works, etc. An intellectual property law firm can assist you in protecting your copyright from registration to defense in the event of litigation.

An intellectual property law firm can provide invaluable services to protect your assets. The firm can help you obtain patents, trademarks, designs, and copyrights, draft contracts, and enforce your intellectual rights. By hiring an intellectual and industrial property law firm, you can more effectively protect your intellectual property and avoid costly litigation.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

If you’re in business, you’ll undoubtedly have heard of intellectual and industrial property rights. But do you know what these rights are and how they can help protect you and your business from legal issues and disputes?

Understanding the various types of intellectual property rights and how to protect them is critical to the longevity of your business. In this article, we will discuss the different types of intellectual property rights, the importance of protecting them, and which rights are best suited to your business.

Let’s begin by exploring what intellectual property is. Intellectual property rights are exclusive rights granted to the creators and owners of inventions, literary and artistic works, trademarks and trade secrets. These rights allow owners to control the use of their creations and to derive economic benefits from their use. Intellectual property rights are divided into two categories, literary and artistic property and industrial property.

The first category includes copyrights and related rights, which include literary works, musical works, works of visual art, films, photographs and software.

Secondly, industrial property is a form of intellectual property that concerns creations relating to industry, such as inventions, trademarks, industrial designs, geographical indications, trade secrets, and others. Industrial property aims to protect the property rights of the inventor or owner of creations and to encourage further innovation.

Once you understand the different types of intellectual property rights, you can begin to consider which ones are right for your business. It is important to note that different types of intellectual property rights offer different levels of protection. For example, trademark protection may include a name, logo, slogan or other visual or audio elements, while patents can protect a wide variety of inventions, such as machines, electronic devices, chemicals, industrial processes, drugs, tools and methods.

It is important to understand these different levels of protection and choose the ones that are appropriate for your business. It is also important to consider the duration of the protection. Some intellectual property rights are only valid for a certain period of time, whilst others may stand to last for decades. However, it is important to consider the long-term implications of the various types of protection and to choose those that are appropriate for your business.

Finally, it is crucial to understand the legal implications of these intellectual property rights. These rights can be complex and may require the assistance of a qualified legal professional such as an attorney or counsel.

In conclusion, understanding the different types of intellectual and industrial property rights is essential for the success of your business. It’s important to consider which rights are right for your business, how long the protection will last, and the legal implications of these rights. With the correct information and advice, you can ensure that your business is protected for years to come.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Trademark law covers a set of specific rules, with subtleties, that a specialist can help you to best understand your trademark issues.

The Industrial Property Attorney, a regulated profession, provides various services, the main ones of which are presented below:

Firstly, they can help you in registering your trademark by advising you on the registration of a word trademark (a name) or a stylized logo instead, which can help you to stand out from your competitors. They will analyzes your activity and the signs you use to indicate which trademark to register. Beforehand, he conducts a prior art search to make sure that the sign is available, i.e. that there is no prior trademark that could hinder your projects.

Secondly, when your trademark is already filed and registered, the Industrial Property Attorney can monitor future filings to detect those that infringe your rights, in which case he will attempt to resolve the situation by sending a detailed letter of formal notice. If necessary, an opposition to the litigious filing may be filed so that the Trademark Office (such as the INPI in France or the EUIPO in the European Union) rejects the trademark application.

Thirdly, the Industrial Property Attorney can also help you defend your brand on the Internet. Infringements are not uncommon and some companies, such as those specializing in fashion, are particularly affected during certain “peak” periods for counterfeiting: Black Friday, sales, Christmas, etc.

Finally, the Industrial Property Attorney negotiates your contracts for you: trademark transfer or license, coexistence agreement, memorandum of understanding following a conflict, etc. A trademark license is a good way to increase the value of your business by earning royalties.

These are the most common tasks entrusted to the Industrial Property Attorney, as far as trademarks are concerned. However, their activity is much broader!

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

If you are a victim of copyright infringement in the European Union (EU), hiring an intellectual property specialist can be an invaluable move. Intellectual property law is a complex and ever-changing field, and having the support of a skilled professional to help you navigate the complexities of the EU legal system is essential. Even if you have a basic understanding of copyright law, counsel can provide the expertise you need to protect your rights and interests.

Copyright infringement occurs when someone uses a protected creation (such as a writing or photograph) without the permission of the copyright owner. Copyright protection in the EU is provided by the European Copyright Directive. This directive establishes a minimum level of copyright protection that must be established in all member states.

Depending on the severity of the infringement, penalties can include heavy fines and even jail time. In addition, the copyright owner may be entitled to damages. If you believe that your copyright has been infringed, it is important to consult a specialist who can help you assess the situation and determine the best course of action.

They can also provide you with advice on how to best enforce your copyright. This may involve taking legal action against the infringer or seeking amicable solutions, usually recommended as a first step, by sending a letter of formal notice to open discussions and stop the infringement.

The specialist can also help you navigate the complexities of the EU legal system. The specialist can also provide you with advice on how to prevent copyright infringement in the future. This can be done by filing an Enveloppe Soleau in France, for example, which will help prove the integrity of your creation.

If you are a victim of copyright infringement in the European Union, it is imperative to consult an intellectual property specialist, who will provide you with the appropriate assistance to repair the damage. He or she can also help you obtain damages in a court of law.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

If you are considering legal actions related to intellectual property, it is important to understand the difference between a patent specialist and a specialist in trademarks, designs, etc., otherwise known as a soft IP specialist. Both work with individuals, companies and other entities to ensure and optimize the protection of their intellectual property rights. However, they specialize in different areas of IP law.

Patent specialists assist clients in obtaining, protecting and enforcing their patent rights. They are familiar with the complex regulations surrounding patents and can advise clients on how to comply with the relevant laws. They also assist clients in drafting and filing patent applications, as well as conducting searches to determine the patentability of an invention. These are known as prior art searches, which are also found in other areas of intellectual property law.

Soft IP specialists focus on the broader spectrum of IP law. They provide advice on legal issues related to copyright, trademark, designs, domain names, etc.

They negotiate for their clients and can help them resolve various types of litigation: Internet infringement, subsequent trademark that imitates the one the client has protected. Additionally, they often provide advice on how to protect IP rights and enhance their value (via a trademark license, for example).

Therefore, it is necessary to turn to the right interlocutor; of course, firms may have several departments and be specialists in several fields: patents, software, Internet, trademarks, etc.!

By knowing the qualifications and specific areas of expertise of each specialist, you can be sure to choose the right person to handle a case. However, an IP attorney will of course refer you to one of his colleagues if your IP problem does not fall within his field of expertise.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Intellectual property (IP) is an important asset for any company. It is the creative expression of an idea, an invention or a brand. It is essential to protect your IP rights in order to ensure a monopoly of exploitation on your creations. Whether you are a business owner, an inventor or an artist, it is important to understand how to protect your IP rights. This article will provide an overview of the steps to follow to protect your rights.

The first step in protecting your IP rights is to understand what intellectual property is. This includes copyrights, trademarks, patents, designs and trade secrets. Copyright protects literary and artistic works, such as books, paintings, music and films. Trademark law protects a sign: it can be verbal but it can also be a logo or a sound sign such as a jingle. Patent rights protect inventions and trade secrets protect confidential business information.

Once you have identified the type of intellectual property you own, the next step is to register that asset. Apart from copyright, which arises with a work of the mind, intellectual property rights must be registered with the office in the country where you wish to be protected. For example, the INPI is the competent office for French trademarks, patents and designs.

Once this registration has been made, you will have an intellectual property right that will allow you to defend your creation in case of infringement. You will be able to exercise this right as you wish: for example, you will be able to conclude contracts on this right in order to be remunerated for each authorized use.

Concerning the business secret, it is usual to protect it by a confidentiality agreement. This contract will allow you to take legal action if your co-contractor violates its obligations.

Therefore, these IP rights will give you the means to defend your rights: first of all in a pre-litigation means by a letter of formal notice, then in a litigation manner, by taking legal action. It will be important to call upon a lawyer or counsel specialized in intellectual property and experienced.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Intellectual property law is an ever-evolving field that covers a wide range of legal matters related to copyrights, trademarks, patents, trade secrets, and other forms of creative works. In today’s digital age, understanding the nuances of intellectual property law has become increasingly important for businesses, entrepreneurs, and individuals.

What about trademark law?

Trademark law considers an exclusive right of use on a sign which can be verbal or figurative. The trademark has a function of identification of origin: it indicates to consumers the origin of the goods and services covered by the trademark.

A lawyer or attorney specializing in trademark law will be able to help you register a sign and provide you with advice and establish an effective strategy so that your trademark is protected against infringement. Thus, the trademark lawyer or attorney will be able to accompany you in the defense of your trademark against various infringements.

What about patent law?

Patent law was designed to protect inventors from unauthorized use and reproduction of their inventions. A patent gives its owner an exclusive right to use an invention. This invention can take different forms: it can be a product invention or a process invention.

A patent lawyer or attorney will be able to help you file a patent application and provide advice on how to best protect your invention from unauthorized use. This includes advice on how to properly use your invention and what to do if someone infringes on your right.

What about trade secrets?

Trade secrets are designed to protect businesses from unauthorized disclosure of confidential information. Trade secrets can include formulas, processes, recipes, customer lists and other confidential information.

An attorney or counsel who specializes in trade secret law can help you to protect your confidential information and provide advice on how to prevent unauthorized disclosure of those trade secrets. This includes advice on how to properly use your trade secrets and what to do if someone infringes on your rights.

In conclusion, intellectual property law covers a multitude of matters: copyright, trademark law, patent law, trade secrets and design law. Contacting a lawyer or attorney competent in the field is essential in order to best protect your intellectual property rights.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

Protecting your copyrights, trademarks and other forms of intellectual property is essential to the success of your business. Therefore, it is important to understand the cost of effective protection. How much does an IP lawyer or attorney cost in the EU?

The cost of an IP lawyer or attorney in the European Union depends on several factors, including the expertise in question, the experience of the lawyer and the location of the lawyer. Some attorneys will charge for their services on a flat fee basis while others will charge on a time basis.

The cost of an IP lawyer or attorney in the European Union depends on several factors, including the expertise in question, the experience of the lawyer and the location of the lawyer. Some attorneys will charge for their services on a flat fee basis while others will charge on a time basis.

The complexity of the case and the amount of work required will also influence the cost of the service. When searching for an IP lawyer in the EU, it is important to consider the experience and reputation of the IP lawyer or attorney. A lawyer who has handled similar cases in the past will have a better understanding of the legal process and framework and will be more likely to provide effective representation.

Furthermore, it is important to choose an attorney who is familiar with the laws and regulations of the country where your business is located. Once you have chosen an intellectual property lawyer, it is important to determine the cost of their services.

Many attorneys will offer a free initial consultation, which can be a great way to get a sense of future fees. The attorney will be able to provide you with an estimate of their fees, or a detailed quote, as well as any additional costs associated with, for example, trademark filing fees or foreign agents that may be required.

In addition to legal fees, an IP attorney may also charge for any additional services they provide. This may include searching EU law, drafting documents or providing expertise. The cost of these services will vary depending on the lawyer and the services they provide.

When it comes to protecting your intellectual property rights, it is important to hire a qualified and experienced attorney or counsel. The cost of an IP lawyer or attorney in the EU can vary, but it is important to ensure that your lawyer is experienced, competent and able to provide effective representation.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

In the European Union (EU), intellectual property rights are regulated by two offices: the European Intellectual Property Office (EUIPO) located in Alicante and the European Patent Office (EPO) located in Munich. Therefore, as an ordinary person or legal professional who owns an intellectual property right, you will probably need to hire a lawyer specialized in intellectual property in order to best protect. However, does this lawyer have to be licensed in the EU to practice? This means that if you are a company or an individual who owns intellectual property rights, you may need to hire an intellectual property lawyer to protect you and your business. Then it is important to consider, does that lawyer have to be licensed in the EU?

In short, the answer is no. An IP lawyer does not need to be licensed in the EU to practice. However, there are certain requirements that must be met to practice in the EU Primarily, an attorney must have a valid license in the jurisdiction where he or she practices. This license must be issued by the competent authority of the jurisdiction.

Secondly, the lawyer must have a valid professional qualification in intellectual property law. Furthermore, this qualification must be recognized by the EPO. The lawyer must also be a member of a professional body recognized by the EPO.

Finally, the lawyer must be registered with the EPO. This registration requires the provision of certain documents, including a valid license and a professional qualification in intellectual property law. Once the registration is complete, the lawyer will be added to the register of intellectual property lawyers authorized by the EPO. The lawyer will also be required to meet the ethical standards established by the EPO. These standards are set out in the European Patent Convention, which is the legal framework that governs intellectual property law in the EU and more specifically patent law.

Overall, an IP lawyer does not need to be licensed in the EU to practice. However, he must meet certain requirements to practice in the EU, including having a valid license, a valid professional qualification and being registered with the EPO.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets.  We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

An intellectual property lawyer or attorney specializes in the protection and enforcement of intellectual property rights. Intellectual property (IP) rights protect intangible objects, such as inventions, intellectual works or trademarks. Depending on the country, these rights are governed by federal, state and international laws.

An intellectual property lawyer is an expert in the various fields of intellectual property law: patent law, trademark law, copyright law and design law. Thus, they are able to help their clients protect their ideas and creations against potential infringements. For example, an intellectual property lawyer or attorney can help a person or a company to file a patent or a trademark. They can also assist a client in the management of their copyrights. Finally, the lawyer specialized in intellectual property can take the necessary measures and act if necessary to prevent infringements.

One of the main services provided by a lawyer or attorney specialized in intellectual property is the filing of a patent application. A patent gives its holder exclusive rights to exploit an invention for a period of 20 years. The lawyer specialized in intellectual property will then be able to help you to establish a general and global strategy of defense of your invention in order to ensure it is protected.

Another service that can be provided by a lawyer specialized in intellectual property is the registration of a trademark. Just like the patent right, the trademark right refers a control of possible exploitation of the sign. The trademark is a distinctive sign allowing to link products or services to the company from which they originate. The lawyer or intellectual property attorney can help a person or a legal entity register a sign as a trademark and then defend this trademark against infringements.

In addition to assisting in the creation of a trademark or patent right, an intellectual property lawyer can ensure that the right in question is respected. For example, an intellectual property lawyer will be able to negotiate a license agreement for an intellectual property right, to act in case of infringement and to help a person in the legal sector this copyright, etc.

Finally, an intellectual property lawyer can provide advice and guidance to clients on how best to protect their intellectual property assets. They can help clients to understand the various aspects of intellectual property law and provide advice on how to best protect their ideas, designs and inventions from theft or misuse.

Intellectual property (IP) lawyers and attorneys provide a variety of services to help protect a company’s or individual’s creations and inventions from being copied or misused. IP lawyers and attorneys specialize in the legal protection of copyrights, trademarks, patents, and trade secrets. These four areas of IP law are the main focus of IP attorneys, but they can also provide other services related to IP rights, such as drafting licensing agreements, infringement actions and litigation strategy.

When it comes to copyright protection, IP lawyers and attorneys assist their clients in drafting and negotiating copyright agreements, such as transfer and license agreements. In addition, they can help prevent and protect their clients from potential copyright infringement.

When it comes to trademarks, IP lawyers and attorneys can help their clients register their trademarks in France and in the European Union with the EUIPO. They can also assist their clients who would like to register their trademarks internationally and specifically, in the United States, thanks to their partnerships with other firms.  Moreover, they can also advise their clients on how to protect their trademarks against infringement and how to enforce their rights against those who infringe their trademarks.

Furthermore, patents are another area in which IP lawyers and attorneys specialize. An IP attorney can assist a client in filing and prosecuting a patent application. They can also help with patent infringement and licensing disputes.

Finally, IP lawyers and attorneys can help clients protect their trade secrets. They can advise clients on how to protect their trade secrets, such as implementing confidentiality agreements, patents, and non-disclosure agreements. Additionally, they can help clients enforce their trade secrets against those who attempt to use or disclose them without authorization.

In addition to the above services, IP lawyers and attorneys also provide other services related to IP law. These services can include conducting IP audits to identify potential IP issues, providing IP licensing advice and assistance, filing IP litigation, and providing IP   training.

In conclusion, IP lawyers and attorneys can be valuable assets to businesses and individuals who wish to protect their intellectual property. As mentioned above, an IP attorney can provide a multitude of services to help protect copyrights, trademarks, patents and trade secrets. Attorneys and lawyers can be involved at the outset of a client’s project, but also throughout the project’s life and in the event of litigation. 

eSports viewers may reach 29.6 million per month by the end of 2022, beginning of 2023, according to Insider Intelligence.

The eSports ecosystem may surpass $1 billion in revenue this year. NewZoo the leading resource for analytics and market research, projects a potential revenue to hit $1.8 billion.

eSports is most certainly a new industry with projected high value and the intellectual property rights of eSports needs to be protected adequately.

So, what are eSports?

As defined by the website dictionary.com, eSports refers to competitive tournaments of videogames, especially among professional gamers. This covers all videogames, including virtual simulators of traditional sports and their tournaments.

Protecting the brand for eSport tournaments

The eSport tournament is a sports competition but it is also an entertainment as well.  Therefore, it is recommended to secure trademark rights targeting both “sports activities” and “entertainment” in class 41 (although the links between sports and eSports are somewhat controversial, it is recommended to aim at a larger scope of services).  Services, which are more specifically related to competitions, must also be designated such as “organisation of competitions” or “organisation of games and competitions, using the Internet”.

If the company organising the competition, where in some cases, may be the Game Publisher, also offers promotional products for sale, the trademark must be protected in the corresponding classes.  For example:  class 25 for clothing, class 9 for NFT collectibles, class 16 for posters.

This is essential, especially if licences are subsequently granted to certain partners. The “Advertising” in class 35 may be referred to if the organiser offers advertising services for the benefit of sponsors during tournaments.

Protection must be considered for the verbal element to be protected and for the logo that will be used. In respect to this point, it is necessary to ensure the transfer of the copyright in regard to the visual is obtained, especially if it is realised by a third party or an employee.

Exploitation of a tournament: What happens with the copyright licences?

A traditional sporting event, such as a football match, cannot be protected by copyright as an intellectual creation or work. (See Football Association Premier League v QC Leisure and Karen Murphy v Media Protection Services Limited C-403/08 and C-429/08).

In comparison, according to the Court of Justice of the European Union (CJEU), the “video games […] cannot be regarded simply as computer programs but complex multimedia works expressing conceptually autonomous narrative and graphic creations. Such games must therefore be regarded as intellectual works protected by copyright” (see Nintendo Co. Ltd, Nintendo of America Inc., Nintendo of Europe GmbH v. PC Box Srl, 9Net Srl Decision No. C-355/12).

In retrospect, there is no owner of a traditional sport.  However, with videogames, the Game Publisher may have property rights to the game or its elements including source codes, characters, music, landscape, etc. These are all protected through copyright, providing that they are actually original.

In the decision of the French Court of Cassation dated 25 June 2009, the judge found that a video game is a complex work requiring the application of a distributive regime. It should include the regimes of software, audio-visual work, as well as the musical work, and other specific elements.

The Publisher acquires the different rights for distribution and commercial exploitation purposes. The exploitation may be done in the form of video game sales, tournaments, or sales of licenses to “players” for non-commercial use.

It is important to note that the organizers of eSports events will be required to obtain the necessary user rights to make the videogames publicly available at tournaments or through other distribution channels, such as online streaming services (eg. Twitch or Youtube).

In the ecosystem of eSports, competitions are filmed and broadcast on social networks and on video.

Earlier, in 2022, Goldman Sachs predicted that for eSports, revenue streams for media rights and sponsorship could amount to 40% and 35% respectively.  To date, however, there has not been an applicable regime associated to eSports in respect of broadcasting rights, sponsorship and gamers’ Intellectual Property rights under French jurisdiction.  Therefore, concerned Actors would be well advised to integrate these revenue numbers into their operating strategy.

Most recently, the French Ministry of Culture has proposed a new law No. 2021-1382 dated 25 October 2021 seeking to find a comprehensive solution for videogames whereby the legislator has given the Chairman of the National Gaming Authority the power to block injunctions after an accelerated judicial procedure on request, against circumvention websites.

It is crucial to have a legal plan to self-protect before organising an eSport competition, interms of trademarks, to be ready to come up against  infringements, as well as in terms of copyright, to avoid infringing the publisher’s rights.

As a complex ecosystem, the intellectual property rights to eSports are governed by a web of contractual documents due to the lack of national and international regulations. They are usually drawn up by the Publisher in collaboration with their intellectual property counsels. While a complete specific legal framework is still pending, the rules today are mainly in the hands of the Publisher.

SEE ALSO…

♦ https://www.dreyfus.fr/en/2021/12/13/work-created-by-an-artificial-intelligence-is-copyright-protection-possible/

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.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

To the delight of our taste buds, flavors and gourmet creations are part of our daily lives, but from a legal perspective, the situation is more delicate and the flavor more bitter. Indeed, there is a consensus on the need to protect culinary creations but intellectual property law currently offers only peripheral protection.

As we saw in a previous article, cooking recipes can be protected by author rights, the aesthetics or visual appearance of the creation is covered by designs, innovative techniques used in the creation may give rise to patent protection and the name can be registered as a trademark. None of these solutions protect the actual creations themselves. In addition, certain conditions must be met, which may not reflect practice. Under these circumstances, the most appropriate solution is usually author rights protection, which is intended to protect an original creation regardless of its form of expression (Article L. 112-1 of the French Intellectual Property Code). Nevertheless, the Court of justice of the European Union (ECJ, 13 November 2018, “Levola”, C 310/17) has refused to protect flavors in this way. The French Cour de Cassation has adopted a similar position on fragrances (Cass. Com., 10 December 2013, n°19872). In short, when it comes to culinary creations, the law remains speechless.

In order to fill this legal void, several deputies have submitted to the National Assembly a bill about the protection of recipes and culinary creations, on April 30, 2019.

The main purpose of the text is to clarify the situation of traditional recipes on one hand and culinary creations on the other hand.

Thus, the creation of a new institution, the “Fondation pour la gastronomie française”, is envisaged. This private non-profit legal entity would be in charge of listing and protecting traditional recipes in order to identify restaurateurs who respect them. The aim is to promote the knowledge, conservation and enhancement of French gastronomy as well as reassuring consumers.

Moreover, the bill provides for the creation of a public institution, the “Institut national de la création culinaire certifiée” (INCC), to ensure the protection of culinary creations. The INCC would issue a new industrial property title, the certificate of culinary creation, to provide protection for a period of 20 years. A hybrid between author rights and industrial property rights, this title includes economic rights as well as three moral rights (right of disclosure, right to the name, right to respect for culinary creation).

The conditions for granting such a certificate are:

• the creation must be new with respect to the state of the culinary art;
• the existence of a creative activity, not resulting in an obvious way from the state of the art for a skilled person;
• an own gustatory character.

The bill excludes from protection a number of productions such as creations involving elements of the human body, narcotics or creations violating public order. The text also provides a specific regime for employees’ creations, close to the one existing in author rights, as well as an opposition procedure lasting two months from the publication of the application for the grant of a culinary creation certificate. Unsurprisingly, any infringement to this new property right would constitute an act of counterfeiting.

This bill, being a combination of trademark law and author rights, is not convincing. The Chefs themselves do not appear to be asking for such protection and the measure will probably mainly benefit the food industries. The bill has now been referred to the Committee on Cultural Affairs and Education. This is a case to follow.

Specializing in intellectual property, Dreyfus will know how to create the perfect recipe to enhance and protect your rights. Do not hesitate to contact us!

On April 30, Spain finalized the reform of its trademark law, started in late 2018. From that date, the Royal Decree 306/2019 of 26 April 2019 amending the Regulations under Spanish Trademark Act 17/2001 entered into force.

The possibility to request proof of use in defense in opposition proceedings is one of the main innovations introduced into Spanish law by the 2018 reform. The European Union already provides for such a means of defense in article 47 of the European Union Trademark Regulation (EUTR). Thus, this reform of Spanish law is part of the welcome European harmonization.

The Royal Decree 306/2019, under discussion, establishes how this new defense will be implemented.

Thus, from now on, proof of use may be required for all opposition proceedings filed since May 1, 2019.

This mean of defense can be invoked against Spanish trademarks and trade names and against international trademarks designating Spain. However, not all prior right can be contested. To be challenged, the prior trademark or trade name must have been registered for at least five years. The holder of such prior rights will then have the burden of proof of the actual exploitation of the rights claimed.

If the evidence provided is insufficient, then the opposition request will be rejected. The relevant prior right or the existence of a likelihood of confusion will not be taken into consideration for the resolution of the dispute.

In this respect, the documents provided as evidence must refer to the goods and/or services for which the prior right is registered. If the opposition is based on part of the goods and/or services, then the right holder must provide the proof of a genuine use only for those goods and/or services. The supporting evidences must establish the real and serious exploitation of the prior right. This exploitation is established when products and/or services are offered for sale and put into the market.

The documents communicated must indicate the place, date, extent and nature of the sign’s use. For example, that may be catalogues, brochures, invoices, labels, advertisements, etc. Items provided by third parties constitute concrete and independent evidence. As such, their probative value is higher than the value given by the prior trademark owner’s evidence.

According to the judgment “Société Roche Bobois Groupe v. Société Caravane” of 23 January 2019, n° 17-18693, the French Cour de cassation held that a sign used to reference a piece of furniture may constitute a trademark infringement. In the present case, Roche Bobois had marketed sofas referenced as “Karawan”. Caravane, considering this exploitation damaging, sued Roche Bobois for infringement of its “Caravane” trademarks (both French and international).

Asserting that the use of a sign as a reference is common in the furniture sector, Roche Bobois claimed that the consumer was not likely to think that the sign “Karawan” was an indicator or origin of the products and is therefore not used as a trademark. Thus, Roche Bobois claimed that there was no infringement of the trademark “Caravane”. In its decision, the French Cour de Cassation ruled in favor of Caravane. The Court states that “the presence of the trademark “Roche Bobois” and the marketing of the products in a store dedicated to this trademark were not such as to remove the function of the disputed sign as an indicator of origin”.

The French Cour de Cassation  applied article L. 713-3 b) of the French Intellectual Property Code, which prohibits “The imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration.”

As such, Roche Bobois was counterfeiting. Indeed, the Court held that the sign “Karawan” was not solely used as a sign to reference but as a trademark. Relying on different indicators, the Court found that the sign was used as trademark. Indeed, the sign “Karawan” was not only written in large letters and clearly displayed on advertising posters but the trademark “Roche Bobois” was not clearly visible to the customer (at the bottom of the advertising posters, in small characters, etc.). Furthermore, a Google search combining the terms “sofas” and “Karawan” led to products of Roche Bobois. The sign was therefore not used for referencing purposes but solely for distinguishing and individualizing products as being those of Roche Bobois. Then, there was a risk of confusion in the minds of the public between the trademark “Caravan” and the designation “Karawan”. As a consequence, the use of the sign “Karawan” by Roche Bobois infringed the “Caravan” trademark.

The use of a sign as a reference is common practice in the furniture sector, but the decision of the French Cour de Cassation requires companies resorting to this practice to be more careful in the choice and the use of a sign as a reference. It is essential to avoid any risk of confusion in the minds of the public. The trademark associated with the marketed product must therefore be clearly visible and distinct of the sign used to reference.

Our study of the draft orders transposing the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015, leads us today to examine the invalidity action. The owner of an earlier mark who is instituting invalidity proceedings may now be opposed by the defendant non-use of the earlier mark. In addition, the invalidity action becomes imprescriptible.

Non-use is a defense in invalidity proceedings

As French law currently stands, a trademark cannot be registered if it consists of:

• a sign which cannot be represented graphically (Article L. 711-1);
• a sign devoid of distinctive character (Article L. 711-2);
• a sign which is contrary to public policy or morality (article L. 711-3);
• or a sign infringing an prior right (Article L. 711-4).

Only the graphical representation requirement is removed by the draft orders. The other conditions of validity of a mark are still grounds for invalidity proceedings. The owner of prior rights may request the invalidation a trademark infringing his rights, while the public prosecutor may request it pursuant to all the other conditions of validity (Article L. 714-3). The owner of a well-known trademark may also initiate invalidity proceedings against a trademark registered subsequently to his own (Article L. 714-4).

The French draft orders introduce the possibility to raise as a defense in invalidity proceedings the non-use of the prior trademark. In other words, the owner of a challenged mark may argue in defense that the earlier mark has not been used seriously for an uninterrupted period of five years. The plaintiff must provide proof of this serious use. Thereupon, there are two scenarios under the new Article L. 716-2-3.

• If the earlier trademark has been registered for more than five years prior to the date of the institution of the invalidity proceedings, but less than five years before the filing of the later trademark: the owner of the mark thus challenged must provide proof of serious use during the five years preceding his application or provide adequate reasons for this non-use;
• If the earlier trademark has been registered for more than five years at the time that the later trademark is filed: the owner of the mark thus challenged will have to provide proof of serious use for the five years preceding the filing of the prior trademark and during the five years preceding his application. Here again, only adequate reasons for its non-use will be able to excuse lack of serious use.

Invalidity proceedings become imprescriptible

Invalidity proceedings are currently subject to the ordinary law prescription provided by article 2224 of the French Civil Code, namely “five years from the day the holder of a right knew or should have known the facts enabling him to exercise his right”. Article L. 714-3 of the French Intellectual Property Code furthermore states that a trademark owner cannot institute invalidity proceedings if the contested trademark “was filed in good faith and if he had tolerated its use for five years”.

The French draft orders make invalidity proceedings imprescriptible in a new Article L. 716-2-6. Only well-known trademarks, within the meaning of Article 6bis of the Paris Convention, will remain subject to a statute of limitations of five years from the date of registration, unless the application has been made in bad faith (Article L. 716-2-7, new).

It can be argued that making invalidity proceedings imprescriptible weakens the rights of trademark owners because their rights can be challenged at any time..

The new measures put in place by the French draft orders transposing the “trademark reform package” must therefore encourage trademark owners to check with great care the validity of their sign before registering it as a trademark.

To be continued…

On May 20 2019, EUIPO and EURid, the European Registry for Internet Domains, announced in two separate press releases that they have launched a new monitoring service for domain names in .eu and .ею (See EUIPO press release and EURid press release).

According to these two press releases, this new service aims at fighting cybersquatting and bad faith domain name registrations. Since May 18, 2019, applicants and holders of European Union trademarks may opt in to receive an alert as soon as a .eu or .ею domain name, identical to their European Union trademark application, is registered.

It is specified that this new service is advantageous both in terms of speed and efficiency. It allows applicants and holders of European Union trademarks to be informed of the registration of these domain names more quickly than if they would have to monitor registrations themselves, and they are thus able to act more quickly if necessary. In addition, this service will also detect earlier the registrations of other domain names by third parties, in the event of multiple bad faith domain names registrations.

Finally, these two press releases specify the that EUIPO and EURid have collaborated since 2016 and that they signed a second letter of collaboration at the Annual Meeting of the International Trademark Association (INTA) in Boston, which was held from May 18 to May 22, 2019, thus strengthening the collaboration between these two entities.

Dreyfus is a specialist in domain names matters and can assist you in managing your domain name portfolio.

One of the main innovations introduced by the “Trademark Package” Directive of 16 December 2015 (2015/2436 EU) is the introduction of an administrative procedure for revocation or declaration of invalidity. Some countries, such as Great Britain or Germany, have already introduced this new scheme into their legislation, but this was not the case in France. As the Directive did not specify how this new procedure must be implemented, the Government undertook this task with its draft project of the “Trademark reform Package”. The draft orders introduce several new articles in the French intellectual property Code (CPI) which aim at regulating how this administrative procedure can be implemented before the National Institute of Industrial Property (INPI).

Until now, pursuant to article R. 712-17 of the CPI, the INPI only addressed the issue  of revocation for non-use if it was introduced by  a trademark owner in an opposition proceeding. The French draft orders make the INPI competent to judge an application for revocation or invalidity of a trademark in a larger number of cases.

The INPI thus becomes primarily competent to deal with applications for invalidity and revocations of trademarks, even if there is no pending litigation. The courts remain competent to deal with counterclaims, asking the court to revoke or invalidate a trademark, and for applications for invalidity as a principal based on commercial names, domain names or author rights. More generally, courts remain exclusively competent to deal with other civil actions and trademark claims, including related issues of unfair competition. The same applies for invalidity or revocation applications’ presented in a case of an infringement request (as a principal or counterclaim), or when provisional or protective measures are being enforced (Articles L 411-4 and L. 716-5 new).

The administrative procedure before the INPI is provided by the articles L. 716-1 and R. 716-1 to R. 716-11 (new) and includes an adversarial investigation phase. The INPI must decide on the application of invalidity or revocation within three months of the end of this phase, otherwise the application is deemed to have been rejected.

The application for invalidity or revocation submitted to the INPI must include:

– the identity of the applicant;

– the indications allowing to establish the existence, nature, origin and scope of the prior rights invoked;

– the references of the trademark and the goods or services covered by the application for invalidity or revocation;

– the presentation of the means;

– the proof of  payment of the fee (within one month);

– the authorization of a potential representative.

This request must be carefully prepared since once it has been made its basis and scope cannot be extended.

The instruction phase begins with the notification to the owner of the contested trademark of the action filed against him. This leads to adversarial exchanges through written observations. These written exchanges between the parties may be punctuated by oral observations. Once the instruction phase has been completed, the INPI decides on the application.

In this respect, all these INPI decisions ruling on an application for revocation or invalidity must be reasoned   (Article L. 411-5, new) and may be the subject of an action for invalidity or reform before the French Court of appeals of the applicant’s place of residence (Articles L. 411-4-1 and R. 411-19, new).

With this new administrative procedure, it is no longer mandatory to go to court. However, the invalidity of a trademark is often part of a broader litigation, which may itself concern several titles. Not all the multiple issues thus raised will be within the competence of the INPI. Consequently, the judicial judge will recover exclusive jurisdiction to rule on the case (e.g. if there is a related issue of unfair competition). Although his jurisdiction will be mainly limited to counterclaims for revocation and invalidity, the judicial judge is therefore not entirely set apart from this new procedure. The courts will retain their jurisdiction over  the more complex cases, and their role will thus be complementary to the role assigned to the INPI.

Though the INPI is given greater jurisdiction, it is unlikely that the new procedure will be less costly, simpler, and faster and that it will indeed  declutter the INPI’s registry from  many unused trademark, as it was expected.

To be continued…

Since March 17, 2019, Canada has officially become a member of the Madrid Protocol, the Nice Agreement and the Singapore Treaty. These treaties will be applicable in Canada from 17 June 2019. Following a long process of reform, Canada’s adoption of these texts was highly expected and profoundly amended the Canadian Trademarks Act.

The accession of Canada to the Madrid Protocol allows a harmonization of Canadian’s trademark law on an international level. With a single international application, Canadian applicants will now be able to file an application in more than 80 different countries. Applicants from a Member State of the Madrid Protocol will have the opportunity to designate Canada in their international applications for registration. This alignment on the international standard brings many changes to Canadian law, which has been duly amended (Bill C-31). Trademark owners will have to take this into account from June 17.

Thus, the classification of goods and services according to the Nice Classification becomes mandatory for all registration applications. The measure is applicable to new filings and unpublished pending applications. Trademarks already registered will be classified in this way when renewed.

In this respect, the term of protection of a trademark is reduced from 15 to 10 years for any trademark registered after the entry into force of these treaties in Canada. Any trademark with a renewal deadline of June 17, 2019 or later will have a renewal term of 10 years.

The Canadian Intellectual Property Office has also established a mechanism allowing a third party to bring to the attention of the Office information that affect the registrability of a trademark filing. This procedure determines whether a trademark is registrable. It is applicable only in three cases :

• if there is a likelihood of confusion with a prior trademark
• if there is a likelihood of confusion with a previously filed trademark
• if goods and services in the application for registration are identical or similar to an prior trademark.

Evidence of past use and written arguments will not be taken into consideration and the Office reserves the right to eliminate this practice in the event of abuse.

Moreover, an opposition to a trademark application may now be partial and only concerns certain goods and services designated by the application for registration. If the opposition is successful, the applicant will be able to keep his trademark application for the goods and services not covered by the opposition.

Finally, the mandatory declarations of use is removed and the registration of specific trademarks (olfactory, gustatory, etc.) becomes possible if the trademark is distinctive in Canada on the filing date of the application. Furthermore, it is no longer required to indicate whether a trademark filed in Canada has already been used in Canada or abroad.

Trademark owners are therefore encouraged to audit their portfolios of protected trademarks in Canada to understand the possible consequences of the new law. Moreover, Canada’s entry into the system of the international trademark is a tremendous opportunity to protect new brands in Canada: to be used without moderation! Dreyfus assists its clients worldwide in their brand protection and defense strategies. Do not hesitate to contact us.

In this article, we present the latest key statistics on domain name registration from a report published by Verisign in March 2019.

According to this report, the number of top-level domain names registrations (TLDs) reached approximately 348.7 million at the end of the 4th quarter of 2018, an increase of nearly 16.3 million or 4.9% in the number of domain name registrations compared to the previous year.

It is interesting to note that the number of domain name registrations in .com and .net was 153 million at the end of the fourth quarter of 2018, an increase of nearly 6.6 million or 4.5% in one year.

In addition, the number of country code top-level domain names (ccTLDs) registrations at the end of the last quarter of 2018 reached 154.3 million, an increase of nearly 8.2 million or 5.6% in one year.

Finally, domain names registered in new extensions (ngTLDs) at the end of the last quarter of 2018 were 23.8 million, an increase of approximately 3.2 million or 15.5% in one year.

It is important to establish a clear strategy for domain name registration. Dreyfus can assist you in the management of your domain name portfolio.

On February 1, 2019, a new version of the Common regulations under the Madrid Agreement and Protocol for the international trademark went into effect..

In its information notice No. 21/2018, the World Intellectual Property Organization (WIPO) details the various changes that have been made to this text. These concern:

• The division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new point 7.7)
• The merger of international registrations (new Rule 27ter),
• The cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b)),
• The possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations,
• The publication in the WIPO Gazette of international marks (Rule 32).

The new features and the main rules concerning these procedures are detailed below:

• The division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new item 7.7)

The new Rule 27bis of the Common Regulations under the Madrid Agreement and Protocol specifies in its paragraph (1)(a) that “A request by the holder for the division of an international registration for some only of the goods and services in respect of a designated Contracting Party shall be presented to the International Bureau on the relevant official form by the Office of that designated Contracting Party, once the latter is satisfied that the division whose recording is requested meets the requirements of its applicable law, including the requirements concerning fees.”

Thus, the owner of an international registration may request the division of an international registration for some of the designated goods and services with regard to only one designated contracting party.

Various formalities must be respected in order to make such a division. For example, the request should be made through the intermediary of the intellectual property office concerned by the division request. Moreover, in the information notice No.21/2018, it is specified that “The Office concerned may examine the request for division of an international registration to ensure that it meets the requirements in the applicable national or regional law, as the case may be, before presenting it to the International Bureau of WIPO. The Office may also require the payment of a fee, directly to this Office, different from the fee due to the International Bureau of WIPO.”

It is the responsibility of the International Bureau of WIPO to examine the request in order to determine whether it meets the requirements of Rule 27bis and to notify the Office that submitted the request so that any irregularity can be corrected, while at the same time informing the holder. The concerned office has a period of three months from the date of the notification to correct any such irregularity. Otherwise, the request will be considered abandoned.

Finally, the information notice No.21/2018 specifies that, if the conditions are met, the International Bureau of WIPO shall record the division of the international registration with regard to a designated contracting party and then create “ a divisional international registration for the goods and services specified in the request and with the Contracting Party concerned as the sole designated Contracting Party, notify the Office that presented the request and inform the holder”.

• The merger of international registrations (new Rule 27ter)

The information notice specifies that “all provisions dealing with the merger of international registrations will be consolidated in new Rule 27ter of the Common Regulations” following the deletion of Rule 27(3) from the same text.

These provisions relate to the merger of international registrations resulting from the recording of a partial change of ownership, the merger of international registrations resulting from the recording of the division of an international registration and the recording and notification of such mergers.

A request for the merging of international registrations resulting from the recording of a partial change of ownership must be submitted to the International Bureau of WIPO by the holder directly or through the Office of the Contracting Party of the said holder.

The information notice No.21/2018 specifies to that matter that “A divisional international registration may be merged only with the international registration from which it was divided”. A request for the merging of international registrations resulting from the recording of the division of an international registration may be submitted only by the holder through the Office that filed the division request.

• The cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b))

WIPO says in its information notice No.21/2018 that: “the International Bureau of WIPO will be required to cancel, in whole or in part, as the case may be, an international registration resulting from the recording of division when the international registration from which it was divided is either totally or partially cancelled, at the request of the Office of origin, due to the ceasing of effect of the basic mark”.

• The possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations

The information notice No. 21/2018 of the WIPO specifies that “a Contracting Party, the law of which does not provide for the division of applications for the registration of a mark or of registrations of a mark, may notify the Director General of WIPO, before new Rule 27bis enters into force or before that Contracting Party becomes bound by the Madrid Protocol, that it will not present to the International Bureau of WIPO requests for division of international registrations”.

The same applies to requests for the merger of international registrations resulting from a division.

Contracting Parties, having made such notifications to the Director General of WIPO, may subsequently change their position at any time and accept such requests.

Finally, this same information notice specifies that “any Contracting Party may, before new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations enter into force or before the Contracting Party becomes bound by the Madrid Protocol, notify the Director General of WIPO that either one or both of the new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the applicable national or regional laws, as the case may be”. Contracting Parties which have sent such a notification shall again have the possibility to withdraw it.

• The publication in the WIPO Gazette of international marks (Rule 32)

Finally, the amendments and points detailed in the previous paragraphs also have an impact on Rule 32, of the Common Regulations under the Madrid Agreement and Protocol, regarding the publication of marks in the WIPO Gazette of International Marks. Paragraph (1)(a) of this Rule now provides that “The International Bureau shall publish in the Gazette relevant data concerning […] (viiibis) division recorded under Rule 27bis(4) and merger recorded under Rule 27ter”. Moreover, paragraph 2 provides that “The International Bureau shall publish in the Gazette (i) any notification made under Rules […], 27bis(6), 27ter(2)(b) or 40(6) […]”.

The international brand system is becoming more and more technical. Dreyfus can assist you in your brand protection strategies in all countries of the world.

Continuing the review of the changes in the opposition procedure made by the French draft orders transposing the “Trademark reform package”, we will now focus on the conduct of the procedure.

The conduct of the amended opposition procedure

An opposition procedure has been provided for a long time by Article L 712-5, but it is rather concise, as it merely states that the procedure must be contradictory. The procedure itself is detailed in Article R 712-16. It specifies that the opposition must be notified without delay and gives the applicant two months at least to submit his observations and to possibly choose a representative. The parties may then submit their observations during a period of at least two months, subject to any closures or suspensions. The National Institute of Industrial Property (INPI) then publishes its decision.  Though the article R 712-16 indeed indicates that the draft decision is notified to the parties so that they may challenge it if they wish to do so, no indication is provided as to the duration of this period or even how many comments may be  submitted. Emphasis is placed on respecting the right to be heard, as shown by the obligation for the parties to notify any comments f to the other.

In order to comply with the “Trademark Package” directive, the French government has drafted a new article L. 712-5 and a new article R. 712-16-1, which both detail the stages of the opposition procedure.

Firstly, an investigation phase allows the opponent and the applicant of the contested trademark to debate. The opposition is notified to the applicant, who then has two months following the publication of the registration to submit written observations. He must also provide his identity and the information required to establish the existence, nature, origin and scope of his rights, the references to the application for registration, the disputed goods and/or services, the fee payment receipt, and the power of attorney of his representative, if applicable. The changes thus made are about the delay granted for providing these various documents, which can be extended by one month, except for the communication of the fee payment receipt. Previously, the deadline was two months for all of these documents, except for the power of attorney, which had to be provided within one month.

Furthermore, the applicant may ask the opponent to produce documents establishing that his trademark has been genuinely used, if it has been registered for more than five years. In such a case, the opponent has one month to submit his comments and to contest any documents he may have received. A third and final adversarial exchange of one month may then take place, without the possibility, however, of raising new claims.

Oral observations may be presented during this time, in accordance with the procedures laid down by the Director General of the INPI.

Finally, a decision on the opposition is taken within three months. Failing this, this, the opposition is deemed to have been rejected (this period may be suspended, as provided for in the new Article R. 712-17.

As a result, the opposition procedure is now circumscribed in clearly defined delays. The number of exchanges between the parties, as well as the time allowed to provide documents for the file, or observations, is limited in a concern of speed and efficiency.

The opposition procedure would thus evolve both as regards its conduct, which is now specified and clarified, and in regards to the rights which may be invoked, and their holders. The changes would allow French law to take into account development in practice by giving priority to the protection of holders of previous rights.

To be continued…

Among the changes made by the French draft orders transposing the “Trademark reform package”, in addition to deleting the graphic representation requirement and the expansion of grounds for refusing an application, is the modification of the opposition procedure.

Thus, the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 requires, above all, a rapid and efficient procedure, but does not detail which steps must be taken to this effect. However, article 5 of the Directive details the rights, which may be invoked.  In its draft orders, the French government plans to extend the prior rights that may be invoked and to modify the opposition procedure, which will lead to a modification of the French Intellectual Property Code.

The extension of prior rights that may be invoked

As the law currently stands, an application for opposition to the registration of a trademark must be filed within two months (Article L. 712-3 of the French Intellectual Property Code, referring to Article L. 712-4 of the same Code), by clearly identified persons and must invoke prior rights. In this respect, Article L. 712-4 of the French Intellectual Property Code provides that an opposition may be formulated by:

“(…) 1° the owner of a mark that has been registered or applied for at an earlier date or which enjoys an earlier priority date or by the owner of an earlier well-known mark ;

 1° bis The Director of the National Institute of Origin and Quality, where there is a risk of damage to the name, image, reputation or notoriety of a designation of origin or geographical indication (…);

 2° The beneficiary of an exclusive right of exploitation, unless otherwise stipulated in the contract ;

 3° A territorial community under h of Article L. 711-4 or under an infringement of a geographical indication defined in Article L. 721-2, therefore that this indication includes the name of the community concerned ;

 4° A defense and management organization mentioned in Article L. 721-4 which  geographical indication has been approved in application of  Article L. 721-3 or whose application for approval is being examined by the Institute (…)”

The previous rights that may be protected by a territorial community under paragraph 3 are its name, image and reputation as well as geographical indications, as defined by Article L 721-2 of the French Intellectual Property Code, which contain the name of the territorial community. The geographical indications defense and management organization referred to in paragraph 4 is a private legal entity.

In its draft orders, the French government has chosen to treat separately the rights that may be invoked and the rights holders who may file an opposition: the new Article L. 712-4 of the French Intellectual Property Code focuses on the former, while the new Article L. 712-4-1 deals with the latter. This change of form is accompanied by a change of substance. The rights that may be invoked are extended, which has repercussions on the holders who can act. In this regard, it follows that:

– The existence of an earlier famous trademark, that is to say a trademark which is known worldwide, may be invoked in an opposition procedure;

– Any legal person may invoke the existence of a legal name or a company name if there is a risk of confusion  in the public’s mind;

– Any public legal person may report an infringement of the name, image or reputation of a public institution or authority, or of a body governed by public law.

– The existence of a trademark protected in a State member of the Paris Convention may be invoked in an opposition procedure.

Furthermore, changes have been made regarding the rights that can already be invoked. Approved or registered geographical indications can be invoked, but the law no longer refers to infringement of their name, image or reputation. This change is welcome since a geographical indication is a name used to designate a specific product, and thus it can hardly claim to have a name, an image and even less a reputation. Indeed, only the entity or the territory to which this name is attached can claim it. This expression is therefore reserved for infringement to the rights of a territorial community, institution, authority or a public organization.

In this respect, the draft orders also allow any person exercising his rights over an approved or a registered geographical indication to file an opposition. As the text is not specific, it may be a physical person or a legal entity, such as territorial communities, if their name is being used.

However, designations of origin are no longer mentioned in the new wording of the Article L. 712-4. Today, this term refers to several sub-categories. It is therefore likely that it will be included in geographical indications, as the aim in both cases is to guarantee quality and to recognize a place of production or know-how specific to a particular region.

Moreover, opposition to an application for registration may now be filed by the owner of a trademark, which was registered without his authorization, in the name of his agent or representative. This add-on thus takes this particular practice into account to protect the interests of the trademark holder. Until now, Article R712-13 provided the possibility for a holder to act through a representative, but did not consider that the latter could act without authorization. Besides, the French Intellectual Property Code did not provide any guidelines in such a case.

Finally, it should be noted that, from now on, several of these rights can be invoked at the same time in a sole opposition procedure. It will be necessary, however, that they belong to a single holder, or that the various holders have appointed a common representative (new Article R. 712-13), and that the goods and/or services of the trademarks are at least partly identical to those of the contested trademark.

To be continued….

The Czech Republic has recently amended its Trademark law in order to transpose the EU directive of 16 December 2015 (2015/2436 UE) and integrate these legal provisions into its legislative system. The legal provisions came into force on 1 January 2019.

Various amendments have been made to the Czech law, the main ones are discussed below.

The requirement of graphic representation of the trademark has been removed. It is now possible to register a trademark provided that it can be represented by any existing technological means such as MP3 files. Hence, in addition to the registration of a word trademark, semi-figurative trademark or figurative trademark, it is now possible to register a sound trademark, a position trademark, a shape trademark, a colour trademark, a movement trademark, or a hologram trademark, for example.

Moreover, it is no longer possible to register a trademark for goods and services whose title is too broad, for example by using a title from the Nice classification or by using a term that is too general.

In addition, the Czech trademark office previously carried out a search among prior trademarks registered for identical goods or services. From now on, it is no longer the case. Henceforth, it is now up to the trademark owner to set up a monitoring for its trademarks and to file an opposition within the time limit.

Furthermore, amendments regarding the opposition proceeding have also been introduced.  The possibility to request the opponent to provide proof of use in opposition proceedings has been introduced for trademarks that have been registered for more than 5 years. The applicant has a period of two months from the notification of the opposition in order to make such a request. The evidence must be filed by the opponent within 4 months from the request of proof of use.

Finally, changes relating to counterfeiting have also been introduced with this reform in order to provide better protection against counterfeiting. For instance, the owner of prior trademark rights can prevent importation of goods whose main characteristics resemble his prior trademarks before these products are released for free circulation in Czech Republic.

Trademark law in the European Union is becoming increasingly uniform. However, there are still some specific features that need to be taken into account. Dreyfus is a specialist in trademark protection and defense strategy in the European Union. Our IP boutique law firm can develop a strategy tailored to your needs.

In France, the transposition of the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 is still ongoing. The draft orders, published on February 15, plan numerous amendments to the French Intellectual Property Code. We will focus here on the refusal grounds of an application for registration of a trademark, extended by the project.

As the law currently stands, article L. 711-3 of the French Intellectual Property Code sets out three grounds for refusal of registration:

“The following may not be adopted as a mark or an element of a mark:

1. a) Signs excluded by Article 6ter of the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised, or by paragraph 2 of Article 23 of Annex 1C to the Agreement Establishing the World Trade Organization;
2. b) Signs contrary to public policy or morality or whose use is prohibited by law;
3. c) Signs liable to mislead the public, particularly as regards the nature, quality or geographical origin of the goods or services.”

Paragraph c) refers here to the arms, flags or emblems of a State of the European Union, as well as to signs containing a geographical indication identifying wines or spirits if the designated products do not actually have this origin.

The draft enactment transposing Directive (EU) 2015/2436 would modify article L.711-3, which is well established in French law. Thus, if the violation of public policy or accepted principles of morality,  fraud as to the nature, quality or origin of the product or service, or use of State emblems, would remain grounds for refusal of registration of a trademark, the draft order amends Article L. 711-3 and adds other grounds for refusal.

Designations of origin and geographical indications

In accordance with Article L. 711-3 of the French Intellectual Property Code, an application for registration of a trademark may be refused if the sign is or contains a geographical indication falsely identifying the origin of wines or spirits.

This ground is retained in the draft enactment, but it is reformulated and extended. In that respect, the refusal of an application for registration could now be based on traditional terms for wines and traditional specialities guaranteed, knowing that these terms refer, among others, to the methods of production, elaboration, exploitation and ageing of the wine or to its quality.

Moreover, the previous existence of an appellation of origin or a geographical indication may in itself justify the refusal to register a trademark. Article L. 711-4 already allows to invoke an earlier appellation of origin or geographical indication to counter the registration of a new trademark in opposition proceedings. The new wording of article L. 711-3 of the French Intellectual Property Code therefore reinforces the protection granted to appellations of origin and geographical indications and thus demonstrates their economic importance.

Previously registered plant variety denominations

French law protects plant varieties by issuing a plant variety certificate (Article L. 623-4 of the French Intellectual Property Code). However, the Intellectual Property Code did not make any explicit link between this certificate and the registration of a trademark. Protecting a trademark which reproduces the characteristics of a new plant was therefore possible.

From now on, the existence of an earlier registered plant variety constitutes grounds for refusal of the registration of a new trademark which would reproduces its main characteristics or its denomination (Article L. 711-3 modified). Consequently, just as in the case of appellations of origin and geographical indications, the registration of the trademark will be blocked from the beginning of the procedure.

Applicant’s bad faith

The “Trademark Reform Package” allows States to refuse to register a trademark because of applicant’s bad faith. The French Government used this opportunity in his draft orders and introduced this ground for refusal in article L. 711-3.

The text is clear on this point but leaves unanswered the question of the interpretation of the notion of “bad faith”. Therefore, the definition of this concept is left to the discretion of INPI representatives. The scope of this notion of bad faith will progressively be clarified by future decisions. The French Cour de Cassation has already ruled on the meaning of this concept in cancellation proceedings. .It appears that bad faith is a subjective element, which is assessed at the time of the filing, and is determined by all the facts. The applicant will have to intend to prevent the use of an earlier trademark, without regard to the interests of its holder. In other words, it is necessary to characterize an intention to harm. (Cass Com., 3 February 2015 n°13-18025)

In order to characterize this bad faith on the day of the application for registration, it can therefore be assumed that the intention of the applicant to act fraudulently and his knowledge of an existing prior right will also play a role. However, it is not possible to limit bad faith to cases where the applicant seeks to take ownership of the trademark of others. Bad faith might also refer to situations where the applicant seeks to prevent the filing of other trademarks. The refusal to register the mark thus also helps to fight parasitism and unfair competition.

Moreover, it should not be forgotten that, in France, the refusal of registration is made by a representative of the INPI. The latter will interpret bad faith on a case-by-case basis and in complete independence.

In other words, the grounds for refusal introduced by the draft orders implementing the “Trademark Reform Package” are not negligible. They extend the leeway granted to the INPI from the very beginning of the registration procedure. These changes focus on the development of geographical indications, designations of origin and plant varieties in order to take into account economic situations.

To be continued…

Following our previous analysis of the modifications generated by the transposition project of the “Trademark Package” in French law, we focus our analysis on the elimination of the graphical representation requirement.

Indeed, the enactment of the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 marks the disappearance at the European level of the graphical representability requirement, which was essential for the registration of a trademark. It is now sufficient that the sign is distinctive and represented “on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”(Article 3). This amendment is taken into account by the draft ordinances of the “Trademark reform package” with a new article L. 711-1 of the French Intellectual Property Code, which would make it possible to register olfactory or taste marks.

The graphic representability, a barrier to the recognition of olfactory and gustatory marks

The graphical representation requirement has not prevented the protection of three-dimensional or sound trademarks, but it has proved to be an insurmountable obstacle for the registration of olfactory or taste trademarks.

However, the registrars were not reluctant to grant such protection, as shown by a successful application for a grass smell (OHIM, 11 February 1999, R. 156/1998-2) or a beer smell (Unicorn Products, GB 2000234). If the requests were not always successful, the possibility of protection had at least the merit of existing. However, the European Court of Justice (ECJ) had put an end to this development in its Sieckman judgment (ECJ, 12 December 2002, Case C- 273/00) by stating that “in respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.” Fulfilling the requirement of graphical representation required therefore the presence of “figures, lines or characters”, which was possible for sound (graphic) and three-dimensional (figure) trademarks, but was impossible for olfactory and gustatory trademarks.

An abolition to European case-law

By removing this requirement, the new article L. 711-1 would implement a welcome change. Designs, patents, and copyright, were inadequate to protect these olfactory and gustatory signs. Bringing an action for infringement was therefore not possible, and only the action for unfair competition remained. However, it was too restrictive.

From now on, article L. 711-1 will require that the sign must be represented “in such a way as to enable any person to determine precisely and clearly the object of protection”. The object of protection, that is, the sign for which registration as a trademark is sought, must first and foremost be identifiable.

The main difficulty in registering an olfactory or gustatory trademark will therefore be to find a sufficiently intelligible, durable, clear and precise way to express the smell or the taste one wishes to protect. This translation will be able to make it possible to determine what the sign is and which special feature makes it distinctive. For example, for a rose smell, it will have to be possible to distinguish the smell of a certain type of rose and not all rose smells. The sign will correspond to that particular smell and its representation must make it possible to identify and recognize it. The applicant will also be able to provide a chemical formula. We will thus identify the smell thanks to this formula, which can be represented graphically. Indeed, if the limits of the sign are not clearly determined, it will be then impossible to verify that it satisfies the other criteria of the mark, distinctiveness in particular.

These new representations are now possible to implement thanks to technical means offering sufficient guarantees. Thus, a chemical formula, a description in written words, an odour sample, or a combination of those elements can now satisfy the graphical representation requirement.

Effects of the removal of the graphical representation  requirement

Removing the requirement for graphical representation requirement leads up to adapting to new technologies, to the development of innovation and to competitiveness between companies. Nevertheless, the evolution of trademark law in this area is only at its beginning and raises many questions. For instance, the INPI (as other European offices), is not used to having to examine chemical formulas or samples, and it will have to adapt to these new means of representation and their practical consequences. In addition, these changes will also impact in practice how counterfeiting is assessed.  For example, establishing fraudulent use of a smell will be more difficult than establishing the same fraud for mark represented graphically.

Consumers make little use of their sense of smell or their taste buds to identify a brand. Therefore, once registered, an olfactory or a gustatory mark could be at great risk to be forfeited. These marks are few in number, at least for now, and thus it is likely that the competent courts will have to wait a long time before being able to assess what does or does not constitute a precise and clear representation. The recognition of these trademarks by law is welcome, but it will not necessarily lead to their widespread use.

To be continued…

SOURCE: WOPI, Arbitration and Mediation Centre, 15 November 2018, No. D2018-1865, Medical Marijuana, Inc. v. Domains By Proxy, LLC / Michael Wigton, <cbdhempmeds.net>

 The opinions of the experts may diverge regarding how to interpret the conditions of the UDRP. Here, it is the first of the conditions that is under discussion, the one according to which there must be a risk of confusion between the domain name under attack and the trademark rights invoked.

Is this a purely formal analysis, that is to say are the trademark and the name identical or at least very similar? Or should we proceed to a more in-depth analysis, to determine whether a risk of confusion in the minds of the internet users is precisely likely to emerge?

Medical Marijuana, Inc., based in California, specialises in the manufacture and sale of numerous products, such as cosmetics and food supplements that include cannabidiol (CBD), a hemp by-product.

Medical Marijuana is the owner of several brands identifying their products, registered in the United States, Peru and Mexico. All include the sign “HEMPMEDS” (“hemp” meaning the plant and “med” being short for “medicines”). Two trademarks protected in the United States are the sign “HEMPMEDS YOUR TRUSTED CBD SOURCE”, one verbal and the other semi-figurative, it being specified that in both cases, the USPTO (United States Trademark Office) required a disclaimer on the term “HEMPMEDS”, i.e. a waiver of any exclusive right on this term.

This company found that one of its competitors, Bionic Sports Nutrition, LLC, had registered the domain name <cbdhempmeds.com>, which, according to Medical Marijuana, infringes their rights. They therefore filed a UDRP complaint before the WOPI Arbitration and Mediation Centre, submitting the case to a panel of three experts. The contentious name was reserved on 4 July 2017 and it links to a site on which the defendant markets its products containing CBD.

The applicant considers that this domain name causes confusion with its brands, since it is composed not only of the sign “HEMPMEDS” but also the acronym “CBD”. In addition, it states that the grantee was necessarily aware of the rights of the applicant, as it asserts that it is well-known in the cannabidiol sector.

The defendant does not agree. It submits that the applicant has no rights over the expression “CBD HEMP MEDS” or on “HEMP MEDS” alone. Furthermore, it considers that it has rights to the domain name since it uses it to sell CBD-based products via its subsidiary, CBD Medical, LLC.

The experts consider the first condition of the UDRP proceedings to be fulfilled: the applicant holds identical or similar trademark rights to the domain name, to the extent that a likelihood of confusion may arise. The analysis carried out corresponds to an analysis that can be described as formal: the applicant has trademark rights, similar to the domain name.

However, the experts express a reservation in the midst of their analysis. They base their remarks on the Mexican and Peruvian semi-figurative trademarks. This is because the American marks “HEMPMEDS YOUR TRUSTED CBD SOURCE” include a disclaimer on the sequence “HEMPMEDS” and the applicant does not have any rights to the sign “CBD” alone.

In addition, the fact that the applicant owns a trademark “HEMPMEDS”, stylised, registered with the Supplemental Register does not permit it to claim trademark rights enforceable in this context. It should be noted that this register only offers limited protection compared to the main register.

These remarks have an impact on the examination of the two other UDRP conditions. Indeed, the experts conclude that the defendant uses the domain name for a bona fide offer of products, namely for the sale of CBD-based products, and that the terms included in the domain name merely illustrate this offer.

Similarly, since the experts do not take account of brands registered in the United States, they consider there is no proof that the grantee had knowledge of the foreign rights of the applicant.

The complaint is therefore rejected.

To return to the first condition of the UDRP. One of the experts wished to express additional observations on this subject, focusing on the fact that it is, in principle, required to prove a likelihood of confusion between a trademark and a domain name. Now, the expert considers that this is not the case here. To support his point, he proposes an example: If a person held a trademark right in Greece on the sign “COMPUTER”, would we recognize that confusion is possible with a domain name such as <computer.org>?

These remarks show that some experts are more flexible than others concerning the analysis of the first criterion of the UDRP. Nonetheless, note that generally, while sometimes the first condition is considered to be met, the experts nonetheless remain very vigilant about the other conditions, to make sure the decisions rendered are equitable.

Domain name registrations are constantly increasing, reaching a growth rate of 3.5% in 2018. Domain names represent a valuable business asset for companies as they are the gateway to websites related to their activity. From now on, protecting domain names associated with the company’s trademark or activity has become almost as important for the company as protecting its trademarks. In addition, domain names are an important mean for cyberattacks and as a consequence they require vigilance from domain names owners and Internet users.

Alternative dispute resolution procedures (such as UDRP) remain for the time being the most appropriate solution, rather than through the courts, to resolve disputes related to these valuable assets. Moreover, domain name disputes have recently increased. Due to the anonymization of WHOIS forms, which are intended to comply with the GDPR, access to the data of the domain name owner are almost impossible. As a result of this absence of data, it is now more difficult to request the domain name owner to transfer the disputed domain name, which leads to an increase of UDRP procedures. In view of the growing importance of domain names, new systems must be designed such as procedures for lifting anonymity.

As a result of the increasing value of domain names, new questions emerge. Why are domain names both a valuable business and a risk factor? What are the impacts of cyberattacks on domain names? How to resolve domain name disputes? How to prevent domain name related risks?

In its April 2019 issue, “Expertises” magazine devotes an interview to Nathalie Dreyfus, who answers all the questions of Sylvie ROZENFELD related to domain names.

Here is a brief overview:

“The domain name continues to represent an important intangible asset of the company, although sites are increasingly accessed through search engines or social networks. It has become almost as important as a brand. It also represents a risk, a factor of vulnerability for companies. Cyber threats are more numerous and more complex, such as the pursuit of reservists. More than ever, surveillance is needed with the implementation of risk mapping and a defence strategy. »

Read the full interview here: Expertise n°445.

SOURCE: WIPO Arbitration and Mediation Centre, 28 October 2018, No. D2018-2016, Bayerische Motoren Werke AG v. Domain Admin, Whois Privacy Corp., <bmw.com>

The decision rendered by the WIPO Arbitration and Mediation Centre illustrates the case of homographic infringements, that is to say where a Latin letter is replaced by a letter that is practically identical, from another alphabet, so that the difference is not immediately detectable by the web surfer, particularly on tablet computers and telephones.

In the case at hand, it is the famous BMW trademark (Bayerische Motoren Werke) that was targeted by the infringement. A third party had reserved the internationalised domain name <bmẉ.com> (<xn—bm-e3s.com>), that is to say, containing non-Latin characters.

This name was used to carry out phishing. When accessed on a mobile device it pointed to a web page displaying the official BMW logo and offering free BMW cars by means of a survey aimed to “phish” for consumers’ information (obtain such information fraudulently by usurping the identity of BMW).

When such a fraud occurs, it is strongly recommended, alongside the actions conducted in the first instance to have the contentious site closed down, to register an extra-judiciary UDRP type complaint to be able to take back control of the name.

In the case at hand, the grantee did not respond to the complaint registered, which is not surprising given the manifestly fraudulent nature of the situation described.

The expert naturally recognised the risk of confusion between the BMW trademark and the <bmẉ.com> domain name, recalling that the experts acknowledge that the internationalised domain names are the equivalent of their Punycode translation.

Similarly, without difficulty, the absence of a legitimate interest of the defendant as well as its bad faith have been acknowledged.

What should be retained from this decision is that when you own the rights to a trademark, it is essential to proceed to extensive surveillance of one’s brands on the Internet and particularly of the corporate trademark (which corresponds to the company’s business name or trading name).

Surveillance of the trademark among non-Latin characters is desirable, among other things, in order to be able to detect any domain name that could be perceived as official by consumers and to act as quickly as possible against the most threatening names, i.e. those almost identical to the trademark.

Keywords: Non-Latin characters – IDN – Punycode – BMW – phishing – identity fraud

This year Nathalie Dreyfus and Dreyfus law firm were yet again recognized as “Excellent” in the category “Best Intellectual Property Law Firm in France” for brands and designs in 2019.

It is an honor for the firm to be ranked by the magazine among the best experts from different areas of law practice from Industrial Property to Tax Law in 50 countries.

Since 2017 Dreyfus has been a recognized expert in domain names and Internet risk mitigation cases – as Décideur Magazine puts it in its 2019 ranking:

« DREYFUS – ASSISTS CLIENTS TO ANCIPATE RISKS ON THE INTERNET

Track record: An NTIC specialist, the firm has implemented a new strategy this year to help clients to better comply with the GDPR. Developed for large companies and start-ups alike, the strategy helps integrating the new legislation and anticipating risks on the Internet. It also contains many international cases handled by Nathalie Dreyfus.

Why we are different: Dreyfus team provides custom tailored legal services to clients on a case-by-case basis in order to ensure full protection of their brands and domain names. The firm also has a dual legal and technical expertise that allows handling particularly complex, atypical or exceptional cases. »

We want to thank Leaders League for the recognition.

Dreyfus assists companies in management and valorization of their IP assets such as trademarks, designs, copyrights, domain names and patents in the off-line realm and on the internet.

On February 15 the French Government published draft orders transposing the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 known as the “Trademark reform Package”. This Directive aims to harmonize and modernize trademark law in the EU Member States.

This reform, which came into force on March 23, 2016 led to the adoption of two new legislative texts:

• Regulation 2015/2424, amending Regulations 207/2009/EC and 2868/95/EC, which became effective on October 1^st, 2017.
• Directive (EU) 2015/2436 of 16 December 2015, amending Directive 2008/95/EC. It had to be transposed into national legislation within three years, i.e. before January 14, 2019.

The draft orders were published one month late, on February 15. Major changes are made to the legislative and regulatory parts of the Intellectual Property Code as well as the Judicial Organization Code and the Consumer Code.

It is therefore essential to outline the main changes that could affect French Intellectual Property Code.

The grounds for refusing an application for registration are expanded. In addition to  signs that are contrary to public policy or morality, and signs that provide misleading information on the quality of a product or service that were already excluded from registration, the order now includes grounds such as:

• Appellations of origin
• Geographical indications
• Previously registered plant variety denominations
• Applications made in bad faith by the applicant

These grounds for refusing an application for registration are now expressly included in modified article L. 711-3 of the French Intellectual Property Code.

Being in line with the objective of the “Trademark reform Package”, the draft order abolishes some of the national French law peculiarities, bringing it in line with the EU law. Thus, the graphic representation requirement in Article L. 711-1 is abolished. It should therefore be possible to register sound trademarks, multimedia trademarks, motion trademarks, etc. in the same way as for European Trade Mark since 2017 before the EUIPO (European Union Intellectual Property Office).

Similarly, the opposition procedure against a trademark protected in France is modified to become more similar to European Trademark Office (EUIPO) opposition procedures.

Prior rights that may be invoked in an opposition are extended – Amendment of Article L. 712-4 of the Intellectual Property Code. From now on, an opposition action against a registration application may be based on:

• A well-known trademark or a notorious trademark, when the trademark in dispute is likely to unfairly take advantage from the reputation of the trademark or cause prejudice thereto
• A company name or a trade name
• A geographical indication
• The name, image or reputation of local authorities, institutions or public law bodies .

The draft order adds that an opposition may be based on several rights pertaining to the same owner as it is already the case in opposition proceedings before the EUIPO for European Union trademarks.

The opposition procedure is also modified. For a period of two months following the publication of the application for registration, a formal opposition to the application for registration may be filed before the INPI in the event of infringement of one of the earlier rights. However, the draft amends articles L. 712-4 and R. 712-14 of the French Intellectual Property Code: in addition to the usual period of formal opposition, the opponent has one additional month to provide the statement of the grounds on which the opposition is based, as well as certain documents identifying the parties.

The decision will be rendered after an adversarial procedure that includes an investigation phase involving a debate between the opponent and the owner of the contested application for registration.

The regime for the protection of certification trademarks and collective trademarks is amended – Amendment of Articles L. 715-1 et seq. The draft order indeed introduces new articles relating to the regime for the two above-mentioned types of trademarks.

Disputes concerning invalidity or revocation of trademarks are specified. Articles L. 716-1 to L. 716-5 are amended, and renamed, and the draft order proposes the following changes:

• An action for invalidity filed by the owner of an earlier trademark may be rejected if, at the request of the owner of the later trademark, he cannot prove genuine use of the earlier trademark during the five years preceding the action.. Lack of use of prior trademark will become an argument in defense against an action for a declaration of invalidity of a trademark.

• Invalidity actions become imprescriptible (Article L. 716-2-6) with the exception of actions based on well-known trademarks within the definition of the Paris Convention (Article 6 bis) which are time-barred after 5 years from the registration date of the contested trademark with the exception of tolerance of the subsequent trademark by the owner of the prior rights for a period of no less than 5 years.

• Clarification of the starting point for the prescription of infringement proceedings. According to new article L. 716-4-2, it is 5 years as of the day on which the holder of a right knew or should have known about the last act of counterfeiting enabling him to exercise it.