What services does an intellectual property attorney provide?

Written by Dreyfus06/03/2023

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.

What is an intellectual property attorney?

Written by Dreyfus03/03/2023

An intellectual property attorney is a lawyer specialized in intellectual property law, who has a mission to support the protection of intellectual creations. Intellectual property law includes industrial property such as patents, trademarks and designs, as well as literary and artistic property. Intellectual property lawyers have a unique set of skills and knowledge related to filing, drafting contracts, as well as litigation related to intellectual property rights.

The purpose of an intellectual property lawyer is to assist individuals and businesses in protecting their intellectual property rights. This includes providing legal advice and representation to clients involved in the development, protection and enforcement of their intellectual property rights, primarily in the areas of patent, trademark, design and copyright.

Patents: A patent is a government grant that gives the owner exclusive rights to make and sell his invention. To obtain a patent, you must file a patent application with the national or regional Intellectual Property Office and meet the criteria for patentability including novelty, inventive step and industrial application. An intellectual property lawyer can assist in the patent application process, as well as in the application of a patent.

Trademarks: A trademark is a sign that distinguishes the products or services of a company from those of its competitors. The trademark can be a word, a name, a logo, etc. or a combination of these elements. Being one of the industrial property rights, it is necessary for the owner to file the trademark application with the coorect office. In order to be registered, the trademark must also meet certain criteria, including availability, distinctiveness and lawfulness. Trademarks have a central place in the work of intellectual property attorneys because they are important assets and the capital of companies.

Designs: Intellectual property lawyers also assist clients with the protection of designs. They protect the appearance of a product or part of a product characterized by lines, contours, colors, etc.

Copyright: Copyright is the legal protection of an original work expressed in tangible form. Copyright protects not only literary works, but also musical, graphic, and sound creations, as well as software and applied art. Although copyright is automatically protected without procedures, it is recommended to file the application for registration. An intellectual property lawyer can assist in the registration and enforcement of a copyright.

An intellectual property lawyer is an important asset for individuals and companies seeking to protect their intellectual property. The role of intellectual property lawyers contributes significantly to the development of technology as well as the economy.

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.

eSports: Reflective Points to Consider in Regard to Intellectual Property

Written by Dreyfus25/01/2023

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.

What are the design issues in the metaverse ?

Written by Dreyfus13/12/2022

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

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

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

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

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

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

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

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

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

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

1. The use of designs in the metaverse

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

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

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

2. The availability of unregistered designs in the metaverse

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

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

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

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

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

3. Protection of designs in the virtual world

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

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

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

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

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

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

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

No cybersquatting in the event of uncertainty regarding the transfer of a trademark

Written by Dreyfus04/08/2022

veille (WIPO, Arbitration and Mediation Center, Case No. D2022-0770, 11 May 2022, BH Vigny, BH Hotels, BH Balzac v. Paulo Ferreira, MBI Holdings)

In the decision held on May 11th, 2022, companies BH Vigny, BH Hotels, BH Balzac, all belonging to the same group, saw their UDRP complaint get rejected for lack of precision on an ongoing legal procedure.

The dispute involved five different domain names, namely <amarantebeaumanoir.com>, <amarantecannes.com>, <amarantechampselysees.com>, <hotelbalzac.com> and <hoteldevigny.com>, each of which referred to a French luxury hotel. The domain names were registered by Respondent, MBI Holdings. The evidence in the case shows that the director of MBI Holdings was also the director of two other entities: JJW Luxury Hotels and Amarante.

The domain names were registered while JJW Luxury Hotels and Amarante still owned the hotels in question. JJW Luxury Hotels owned the Hotel Balzac and the Hotel de Vigny, while Amarante managed the Amarante Champs-Elysées, Amarante Beau Manoir and Amarante Cannes.

The case is complex as it takes place in the context of a takeover between JJW Luxury Hotels and Amarante and Complainants. Several hotels in France had been acquired by the Complainants, including the above-mentioned hotels. Shortly before the UDRP complaint was filed, the three Complainants, members of the same group, had initiated not only a business transfer agreement, but also a trademark assignment agreement with the Respondent. According to the Complainants, the effect of this agreement was to grant full ownership of the trademarks and domain names associated with the aforementioned hotels.

However, Respondent argued that, contrary to the Complainants’ assertion, the transfer of the businesses and associated trademarks had not yet become permanent. In fact, a dispute was pending before the French court. Similarly, it appeared that certain contractual provisions provided for the retention of certain company funds in an escrow account. These provisions therefore suggested that the transfer of assets were not complete, final or irreversible.

Paragraph 4(a) of the UDRP requires three elements to be met in order to claim the transfer of a disputed domain name: similarity of the domain name to a prior right of the Complainant, evidence of the absence of a right or legitimate interest of the domain name’s current holder, and evidence of bad faith registration and use of the domain name by the current holder.

The first element is in default, according to the Expert, who however moderates his statement. The question of ownership of rights is raised, as the Respondent claims that the rights to trademarks and domain names have not yet been validly transferred. The Expert asserts that the evidence provided by the Complainants is not sufficient in order to determine whether the transfer of ownership is actually effective. In fact, Complainants did not provide any information on the ongoing legal proceedings, nor did he mention them in his complaint.

Understandably, the second requirement of paragraph 4(a) is not specifically discussed by the Expert, as it is essentially linked to the first. If Complainants are not able to demonstrate that the transfer of rights has taken place, they cannot prove that the Respondent, who previously held the rights, no longer does so.

Finally, the third requirement also poses a challenge for the Expert. In light of the context, it seems unlikely that the domain names were registered in bad faith, as the Respondent appeared to demonstrate a legitimate registration and use of the five domain names. Again, the lack of evidence does not allow the Panel to conclude that the bad faith test is met.

In summary, the texts are applied strictly and it is quite easy to understand the Expert’s position in this case. The solution could undoubtedly have been quite different if Complainants had communicated about the ongoing legal proceedings and submitted evidence that would have demonstrated the Respondent’s bad faith. According to the Expert, this case is not a classic case of cybersquatting, but rather a concurrent dispute to legal proceedings already underway.

Social Media Accounts are property, but who has right to ownership?

Written by Dreyfus02/08/2022

Social media platforms allow their users to create unique usernames which become part of their virtual identity, allowing them to share content and network with other platform users. These accounts become an integral part of our virtual life so many would say they are, in fact, one’s intangible property.

A. Can we know for sure who has right to ownership?

There are different types of social media accounts – personal and business – and although, in most cases they are easily distinguishable, sometimes the lines are blurred especially when employees of companies take on marketing roles.

Personal accounts are straightforward, as long as you read the fine print. You go on vacation, snap a photo and update your status on how your well-deserved vacation is going by uploading it to Instagram or Facebook, a platform you may use to connect with your friends and family. You are the only one who has access to your unique log in details such as username and password, hence a private account.

‘Business’ accounts run by a company’s employees are more complicated, regarding ownership and access to, what would otherwise be, private information. So, who owns business social media accounts accessed and controlled by employees? There are various factors which contribute to making that decision. Ideally, you want to ensure that other platform users recognise the username and associate it with the business, not the employee, like a trademark. The subject of content is still a grey area – is it the intellectual property of the employee or the company itself?

B. The hardships of distinguishing ownership in Hayley Paige v JLM Couture

The former question was the focal topic of discussion in the U.S. case of Hayley Paige Gutman v JLM Couture, where the parties disputed ownership rights of the hybrid Instagram account. Referring to the account as ‘hybrid’ due to the nature of the arguments presented by the parties.

This case was filed as a result of an alleged misuse of the account after Gutman advertised third party products without the approval of her employer, JLM Couture. The defendant, Gutman, argued that due to the style of the posts on her Instagram handle @misshayleypaige, the account was of a private and personal nature, created in personal capacity, even though she has used the account to promote her bridal collection designed for her parent company, JLM Couture.

The appellant, JLM Couture, counter proposed the account being a business account due to the significant percentage (95%) of the content consisting of marketing for the brand, Hayley Paige. The decision favoured the arguments of JLM Couture, stating that Gutman was under a contractual obligation to give her employer access to the account in question since she has signed a contract allowing the company to reserve the right of ownership over any marketing platform and contents published under the name of Hayley Paige or any derivative thereof in relation to her branding. Eventually, multiple negotiations and a restraining order (against Gutman) later, it was agreed that Gutman’s social media account was primarily used for marketing purposes, regardless of the odd personal content here and there, and JLM Couture had the contractual right to access it.

The economic value of a business social media account is often greater than a personal one, especially those which have a large following. Companies rely on these social media platform followings to grow the image and reputation of their establishment. Often, when there are blurred lines regarding the ownership of social media accounts, employees can easily damage a company’s imagine. For instance, in the case of PhoneDog v Kravitz, after the termination of Kravitz’s employment, he used the Twitter account originally created to advertise the services of PhoneDog during his employment, to advertise the services of its competitor. The appellant sued for misappropriation of the account and disclosure of trade secrets. The parties settled and Kravitz continued to use the Twitter account, but the appellant endured financial loss and, without a doubt, a loss of clientele.

A business’ right to ownership of social media accounts used for marketing purposes should be made clear, not only to avoid legal disputes such as those mentioned above but also to protect the integrity and image of the company. Employment contracts should contain social media clauses stating that any content produced and published on the social media account under the management of the business belongs exclusively to the business. So, a business social media account constitutes virtual property so why should you risk losing it?

♦ https://journals.muni.cz/mujlt/article/download/12298/11651/28166

How could Louis Vuitton, a well-known brand, fail to prevent the registration of a competing trademark?

Written by Dreyfus04/04/2022

On November 2, 2020 Louis Vuitton Malletier filed an opposition against the application for registration of the figurative mark “LOVES VITTORIO” designating the same goods in classes 25 and 26, on the basis of Article 8(1)(b) of the European Union Trade Mark Regulation (EUTR). The Office rejected the opposition on the grounds that the similarity between the earlier sign and the contested sign was slight, and thus not sufficient enough to create a likelihood of confusion on the part of consumers with an average level of attention. The opponent invoked article 8, paragraph 5, of the EUTR concerning the reputation of the trademark. However, due to a lack of evidence the judges rejected the complaint without examination of its merits.

1. Assessment of the likelihood of confusion in light of the overall impression given by the signs

Since the “SABEL BV v. Puma AG” judgment handed down on November 11, 1997 by the Court of Justice of the European Communities, a new approach to the assessment of the similarity between two signs has been put forward. This approach is more global, notably by studying the three following criteria: visual aspect, aural aspect and conceptual aspect. As a result, the Office conducts a step-by-step analysis of these criteria between the earlier mark and the application for registration of the contested mark.

First of all, on the visual aspect, the Office found a very low degree of similarity insofar as the two signs “have in common only the letter L” and “partially coincide in the stylization of the two letters”. In addition, although the stylization and colours used in the two signs are the same, consumers will perceive these elements as being merely decorative. The judges especially note a difference between the two signs by the addition of the words “LOVES” and “VITTORIO” and the letter “N” in the contested sign.

Likewise, in terms of aural similarity, the judges found only a slight degree of similarity in the pronunciation of the letter “L”. Finally, the Office stated that the two signs are conceptually different.

Thus, the Office concludes that the few similarities between the two signs are not sufficient to cause a likelihood of confusion for the consumer with an average level of attention and that they will distinguish the origin and the source of each sign. Moreover, the relevant public will perceive the sign as a whole, in particular by the addition of the terms “LOVES” and “VITTORIO” as well as the letters “L” and “N”, and will not limit itself to the same stylisation.

However, it must be noted that there is a visual similarity that could lead the relevant public not to perceive the difference between the letters “LV” and “LN” in a clear and precise manner, especially since the added term is “VITTORIO”.

Moreover, in view of the identical goods covered by the two signs, it seems somewhat surprising that the judges did not take this into account, given that according to the “Canon Kabushiki Kaisha and Metro-Goldwyn-Mayer Inc.” judgment handed down on September 29, 1998 by the Court of Justice of the European Communities, a low degree of similarity between the signs can be compensated by a high degree of similarity between the designated goods or services.

2. The unfortunate exclusion of the reputation of the earlier mark

At first glance, this decision may seem surprising in the sense that the earlier mark “LV” is a mark that supposedly enjoys a strong reputation.

Indeed, this reputation could probably have led the judges to grant the opposition request to the application for the registration of the contested mark, if the latter ” unduly [took] advantage of the distinctive character”; “or the reputation of the earlier mark”; “or [was] detrimental to them”.

However, this exclusion of the reputation of the mark is fully justified insofar as the Office renders its decision by limiting itself to the evidence and arguments provided by the opponent. However, the opponent did not provide evidence of the mark’s reputation, in accordance with Article 7(2)(f) of the European Trade Mark Delegated Regulation

It is therefore essential before the filing of any opposition to analyse the similarity between the signs and the goods and services between your trademark and the disputed trademark application, and particularly to provide all relevant evidence demonstrating the intensive use of the trademark or its reputation.

This decision highlights the importance of the evidence provided during a procedure relating to the relative grounds for refusal of registration of a trademark application, evidence that could undoubtedly have allowed a different turn of events.

Metaverse: is it necessary to register specific trademarks for protection?

Written by Dreyfus11/03/2022

*Image generated by DALL-E 3, Microsoft Version

The metaverse -a parallel virtual world which is booming in the Web 3.0 era- has become an unavoidable topic. This fictional world will combine prospectively and simultaneously virtual reality (VR), augmented reality (AR), blockchain, crypto-currencies, social networks, etc. Many companies are already planning to do business in this world following the company’s digital transition.

As a result, trademark applications covering products and services related to “digital virtual objects” have been multiplying since the end of 2021.

But how to effectively protect this new activity that calls for a whole new lexicon?

1.The metaverse, a new world for new ambitions?

In a few words, the metaverse can be defined as a fabricated virtual universe -mixing the words “meta” and “universe”, to designate a meta-universe in which social interactions would be extended and digitized. It seems to be directly inspired by the 1992 novel “Snow Crash” (“Le Samourai virtuel” in French) by Neal Stephenson.

This parallel digital environment embodies a new way to explore innovative and ambitious projects from a different perspective, before they take concrete shape in the actual world.

As an example, Aglet created its own range of sneakers, the “TELGAs”, after launching it as a digital collection for online games. The collection is also available on the OpenSea platform, alongside brands such as Nike and Adidas, who have stepped up to virtual collections in the form of Non-Fungible Tokens (NFTs).

NFTs, whose transactions are mostly hosted on the Ethereum blockchain, are essential components of the metaverse. This digital asset category, which is distinct from crypto-currencies such as Bitcoin and Ether, allows for authentic and unforgeable certification of the ownership of one of these virtual digital objects offered for sale in the metaverse.

The metaverse follows on from social networks and will undoubtedly allow companies to establish a strong online presence, beyond the operation of a traditional website.

Whether the metaverse is a trend that will last and become anchored in our culture is uncertain, though many large companies have already taken the plunge.

Before venturing into the metaverse, it is necessary to register specific trademarks, adapted to the goods and services of the metaverse. This will ensure efficient protection against infringement and will enhance the value of the company’s brand assets. In this respect, it is important to draft an appropriate wording for the trademark.

2.How to design an adequate and optimal protection?

When launching an activity into the metaverse, the definition of the goods and services should be careful considered as the crucial element of a trademark is its wording above all. The filing process for a trademark application with the INPI, EUIPO, or any other national industrial property office, will indeed guarantee, to some extent, a monopoly on goods and services determined. This will confer also a commercial value to the trademark, once it is registered by an industrial property office.

As a reminder, once a trademark application has been filed, it is impossible to add classes of goods and services and to add any additional good or service, nor to add goods or services. Only a modification in the sense of a restriction of the wording will be considered.

The most relevant classes, which will contribute to the wording, are classes 9 and 41.

Class 9 allows for NFT coverage, although the product may not be accepted as such. More explanatory wording will be required. For example, one can target “downloadable digital products, i.e. digital objects created using blockchain technology”. These goods can be of all kinds: clothing, works of art, etc.

Class 41 covers the components of entertainment. In this respect, MMORPGs, which are defined as interactive games, which by their nature and concordance are closely associated with the metaverse, could be covered in class 41.

When a virtual trademark is to be exploited through points of sale, services class 35 seems unavoidable in order to include, among other things, “retail store services for virtual goods”.

In a complementary vision, it will then be necessary to think of designating the corresponding goods in the classes that classically cover them.

3.Virtual trademarks registered in various sectors

In early February 2022, Pumpernickel Associates, LLC filed a trademark application for “PANERAVERSE” No. 97251535 with the USPTO. This filing, initiated for virtual food and beverage products, NFTs and the ability to purchase real products in the virtual world, demonstrates a definite willingness by the American company to deploy these outlets in the metaverse.

McDonald’s has also filed trademark applications (No. 97253179; No. 97253170; No. 97253159) for “the operation of a virtual restaurant offering real and virtual products” and for “the operating a virtual restaurant online featuring home delivery”. In addition, the U.S. fast food chain also plans to obtain a trademark for “on-line actual and virtual concerts and other virtual events” and other entertainment services for a virtual McCafe (No. 97253767; No. 97253361; No. 97253336).

These are not the only trademark applications filed at this time; Facebook and Nike pioneered this trend, followed by luxury, textile, cosmetics and perfume brands. L’Oréal, for example, has filed several registration applications for perfume brands from its portfolio, in their digital version, with the French National Institute of Industrial Property (INPI)

4.Conceptual considerations

In light of this unprecedented craze around the metaverse, one might wonder whether these immaterial goods, whose projected use is exclusively intended for virtual exploitation, should not come under a new particular category of products, not defined to date under the Nice Classification.

The addition of an ad hoc class dedicated to these virtual goods and services seems complex insofar as many of them could overlap with already existing products and services. The list could be very long.

In any case, drafting a trademark for the metaverse requires a meticulous definition of the goods and services concerned.

The Nice Classification, despite the successive trademark filings made since November 2021, does not include for the moment, in its explanatory notes or product suggestions, any reference to goods and/or services closely related to the metaverse or NFTs. Perhaps it will do so shortly in view of the developments encountered.

What will be the boundaries between the metaverse and the actual world? The question is a structuring one for trademark law and competition law. The European Commissioner Margrethe Vestager and the president of the US antitrust authority, Lina Khan, are wondering about “the right time to put in place competition rules in this emerging sector”.

Dreyfus accompany you in the protection of your brands in the metaverse era and to draft with you a wording of goods and services adapted to your activity.

Why is it necessary to register a trademark?

Written by Dreyfus24/02/2022

Registering your trademark allows you to protect it. For a French trademark, it must be registered with the INPI (National Institute of Industrial Property), but the protection can be extended to the European Union (EUIPO) and internationally (WIPO). When a trademark is registered on the national territory, in order to extend its protection, it is possible to register the trademark within the European Union and internationally. There is a right of priority which allows to file other trademark applications while benefiting from the filing date of the first application. The priority period is six months for trademarks.

Before considering filing a trademark with an office, it is necessary to make sure that the trademark is not already registered by another person. It is then sufficient to consult the databases of the offices in which are grouped all the trademarks already registered or in the process of being registered. The notion of distinctiveness is important in industrial property.

Indeed, a trademark is any sign, symbol, logo or any external appearance that will allow the average consumer not to confuse the trademarks between them. Signs allow companies to distinguish themselves from each other. A brand can take many forms: word, name, slogan, logo or a combination of several of these elements. This notion of distinctiveness is essential for the registration of the trademark, it allows to avoid an opposition procedure to the registration of the trademark on the basis of infringement.

Protecting your trademark allows you to use it without someone else infringing on it or without the use of your trademark infringing on another. Indeed, when your trademark is registered by the office, it does not infringe on the goods and services of an earlier trademark. If a new trademark infringes on your trademark, it is possible to file an opposition to the registration of this trademark.

Registration of trademark (INPI)

To register a trademark in France, the procedure is carried out in a dematerialized way on the INPI website. The duration of the registration is 10 years, the same period for each renewal to be made at the office. It is however possible to renew an expired trademark registration within 6 months following the last day of the month of expiration, however a 50% fee surcharge will be required.

How much will it cost to register a trademark with INPI

The INPI website specifies that the cost of registering a trademark with the INPI is 190 euros for one class and 40 euros for each additional class. For the renewal the price is 290 euros for one class and 40 euros per additional class.

The price for filing a trademark with the EUIPO is 850 euros for an electronic filing, plus 50 euros for a second class and 150 euros for any additional classes. For a renewal of a European trademark, it will be necessary to count 850 euros then 50 euros for a second class and 150 euros for all additional classes.

The price for an international trademark application varies depending on the countries that are covered by the application.

Today in France the registration of a trademark is not mandatory, however, not registering a trademark is taking risks. In France, the rights on a trademark are acquired by its registration and not by its use. Thus, the registration of a trademark provides legal protection.

However, it is important to perform prior searches to ensure that the trademark registration is possible. This work can be performed by patent attorneys, which adds a cost but ensures the validity of the trademark registration project.

Brief : The AFNIC 2020 annual report

Written by Dreyfus22/02/2022

The digital transition of small and medium-sized enterprises was the AFNIC’s 2020 target – a year marked by the health and economic crisis. This target was reflected in the 2020 Annual Report of the French association. The report was released in June 2021.

In fact, there was a growth of 7% of <.fr> registrations with a total reach of 3,670,372 registered names at the end of 2020. The reason of this growth were the AFNIC’s efforts to make the registration and use of <.fr> more accessible, safe and proximate.

Given the increasing need for digital transformation, small and medium-sized enterprises had little choice but to develop and exploit Internet activities. The AFNIC organized a massive promotion of a secure and advantageous online presence via its Réussir-en.fr device. Thanks to this initiative, digital transitions took place more efficiently and more often.

In addition, the AFNIC signed a partnership with the DGCCRF (Directorate General of Competition, Consumer and Repression of Fraud). The aim of their partnership was to transmit the list of corresponding domain names to the DGCCRF on a daily basis, in order to block sites that supported or facilitated deceptive marketing practices. The general idea was to create a climate of trust.

Finally, the AFNIC Foundation took measures, in the context of the worldwide health crisis, to support local initiatives. The foundation aimed to reduce the distance with the digital environment and to restore the social connection, in particular through: purchasing computers for schoolchildren, purchasing sound equipment for EHPAD residents or setting up dematerialized accompaniments in order to find jobs online.

The AFNIC succeeded to achieve its 2020 goal to ensure the digital transition of small and medium-sized enterprises through making <.fr> safer and more accessible, through massive promotion and through supporting local initiatives to reduce the distance with the digital environment and to restore the social connection.

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