Non classé Archives - Page 7 of 57

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?

Who really owns a social media account?

The user is the account holder, but the platform retains ownership of the infrastructure. The terms of use generally state that access can be restricted or removed at any time.
➡ A social media account is an intangible asset, governed by contractual terms.

Can a social media account be transferred or sold?

In principle, selling or transferring a personal account is prohibited by most platforms’ terms. However, in a professional context (influencer, brand), monetization or transfer may be allowed under contractual arrangements.

What happens if there is a dispute over a social media account?

In the event of a dispute (employer/employee, co-founders, heirs), courts analyze management, usage history, and intent to determine ownership. Including specific clauses in contracts or policies is strongly advised.

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.

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.

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.

How is this happening?

Dishonest private companies, scammers, approach trademark applicants directly to ask them to pay certain service fees or other payments that are in fact neither necessary nor legally required.

It is therefore crucial to be vigilant.

Since trademark registration and management are already time-consuming and expensive enough, it goes without saying that paying scammers for their so-called trademark services is unnecessary. You should be extra vigilant when enquiries about trademark procedures do not come directly from your usual counsel.

However, fraud is not always easy to detect and the imagination of fraudsters is endless.

For instance, some fraudsters approach trademark owners directly by e-mail and demand payment of certain expenses, fees or additional charges to obtain trademarks’ registration when these expenses are purely fictitious. The payment notices are often for trademark monitoring services, additional registration services or services related to trademark renewal.

The problem is that trademark owners are very often approached by a so-called official agency, company or institution and sometimes even a so-called public authority or government. They use the same official templates, signatures and stamps as these types of entities and they provide the exact data of the trademark application or registration in question. After all, this kind of information is relatively easy to find online.

Another issue is the cross-border nature of these scams.

It may happen that trademark owners receive a notice from a Russian, Indian or Chinese company. While it is perfectly possible that payment notices from foreign countries are made in good faith, it is always beneficial to carefully check the accuracy and legitimacy of such notices.

Here are our advices.

Firstly, we invite you to check the stage of the proceedings in which your trademark is located. Isn’t it strange to pay fees for the registration or renewal of a trademark if the time limit has not even started or has already expired?

We encourage you to be vigilant. Do not hesitate to ask us questions when you receive documents that do not come from Dreyfus. Indeed, it is always wise to contact your legal adviser before making a payment. Dreyfus is specialised in these matters and is fully aware of the applicable time limits, procedural steps and expenses.

There are also official offices and agencies that can be contacted in the event of a suspicious or misleading trademark notice. For instance, the United States Patent and Trademark Office (USPTO) can be contacted. Although this office does not have the legal authority to prevent companies from engaging in these types of fraudulent practices, the USPTO does assist in the fight against fraudulent trademark notices. The USPTO issues reports and works with the Department of Justice and the Federal Trade Commission. Trademark owners can always file complaints with the Federal Trade Commission. This commission has the power to investigate and even prosecute if, for example, a particular company commits fraudulent business practices on a large scale. Dreyfus can assist you in filing such complaints and prevent you from being entrapped.

Fraudulent trade mark notices are becoming increasingly common. It is important to be very vigilant, to check the applicable time limits, to contact your Trademark Attorney before making any payments. At Dreyfus, we work with trademark offices and official agencies, such as the USPTO, in case of trademark notices that are suspicious or appear to be misleading.

About this topic…

♦ Why is the well-knownness of an earlier trademark not enough to qualify bad faith?

Written by Dreyfus29/06/2021

On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.

In 2019, the US news agency Bloomberg appealed a decision of the AMF’s sanctions commission. The hearing before the court of appeal will be held this Thursday. Bloomberg was sentenced to 5 million euros for relaying information from a false Vinci press release.

A fake press release from Bloomberg

The American news agency Bloomberg is accused of having disseminated, in 2016, false information about Vinci without having verified it.

On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.

The false statement also indicates that the chief financial officer was fired. Less than a minute later, between 4:06 p.m. and 4:07 p.m., Bloomberg picked up the information and disclosed it on his terminal.

This press release had even been signed with the name of the real person in charge of Vinci’s press relations, while referring to a false cell phone number.

In defense, the defendants point out before the commission that the tone, the absence of spelling errors, the careful layout, the exact references to certain directors of Vinci or to its auditors, the mention of the real spokesperson for Vinci as well as the plausibility of the foot of the press release, which contained a link to unsubscribe from the Vinci mailing list and alerted the recipient to the automated processing of data, mentioning the contact details of the real correspondent Cnil de Vinci , did not differentiate this press release from a real press release established by Vinci.

The domain name issue in the false press release

The only inaccuracies in the false press release: the domain name of the false Vinci site to which the press release referred and the false mobile phone number of the “media contact”.

The fraudulent press release was also received by AFP, which did not follow up after realizing that this document had been posted on a mirror website, very similar to the real site but with a separate address (vinci.group and not vinci.com).

How to protect your domain name?

Domain names represent an essential intangible asset for companies since they allow access to websites related to their activity. Now, protecting the domain names associated with the trademark or the business of the company has become almost as important to the company as the protection of its brands.

In addition, domain names are the preferred medium for cyber-attacks which calls for increased vigilance on the part of owners and Internet users.

Phishing, fake president fraud, identity theft, fake job offers, theft of personal or banking data, whaling… frauds are numerous and are constantly adapting to technological progress;

Fraud is facilitated by the very protective provisions of the GDPR, which prevent the direct identification of the domain name registrant; technical service providers tend to rely upon the provisions of the GDPR and the LCEN to justify their inaction and allow fraud to continue;

There is a great risk of damage to the company’s image and reputation. Such fraud also has a significant financial impact, given the risk of embezzlement and money laundering.

The AMF’s Guide to Periodic Disclosure for Listed Companies (dated June

To protect your domain name from cybersquatters or competitors, it is recommended to also register the domain name as a trademark in addition to the reservation of the domain name.

It is possible, before making a domain name reservation and trademark registration, to check its availability, to avoid conflicts between domain names, trademarks or corporate names.

Domain names are now an integral part of the international economic landscape. Like industrial property rights and traditional distinctive signs, they are instruments of competition and intangible assets of companies. It is of course essential to have it for anyone who wants to exist in a market.

But care must be taken not to come into conflict with one’s competitors by using, even in good faith, distinctive signs close to theirs. Conversely, it is also necessary to enforce its own distinctive signs by not allowing third parties to appropriate signs close to its own in order to offer the same or similar services.

How to mitigate the risks regarding domain names ?

– Proceed to an audit of the corporate trademark and the company’s flagship trademarks among domain names, in order to map the risks;

– Set up a 7/7 watch of the corporate trademark among domain names, and a 7/7 or at least weekly watch on the company’s trademarks dedicated to goods or services;

– Set up watches on social networks such as Facebook, Instagram, Twitter and LinkedIn;

– Proceed with the preventive registration of domain names in risky extensions (such as .COM, .CO, .CM, .GROUP);

– Take preventive action(s) against potentially dangerous domain names;

– Define procedures and set up a crisis management unit to quickly react to infringements in case of emergency;

– Draft or update the company’s domain name policy (registration procedures, compliance with legal obligations, best practices) to be shared internally and with the company’s service providers and suppliers.

Cyber threats are more numerous and more complex and it has also become increasingly difficult to take action against registrants of disputed domains. More than ever, monitoring is required with the implementation of risk mapping and a defense strategy.

Dreyfus advise you in setting up the appropriate strategy to limit the risks related to domain names and to integrate industrial property assets in your compliance plans.

Written by Dreyfus18/06/2021

A right or legitimate interest in a domain name may be demonstrated by its use in the context of a bona fide offer of goods or services. This assessment requires to take into account how the domain name has been used, but also the space-time framework: When was the domain name registered? By whom? In which country?

Founded in 2003, Ba & sh is a French company operating in the field of design, manufacturing and distribution of women’s ready-to-wear clothing and fashion accessories.

Having detected the registration of the domain names <bashshitever.com> registered in 2014 and <bashclothing.co> in 2020, Ba & sh filed a complaint with the WIPO Arbitration and Mediation Center in order to obtain the transfer of these domain names.

While the construction of the <bashshitever.com> domain name is somewhat intriguing, the fact that the <bashclothing.co> name contains the term “clothing” may have led Ba & sh to consider that its rights were being infringed.

In any event, since the domain names include the sign “BASH” except for the ampersand, the panellist acknowledges a likelihood of confusion.

Nevertheless, the panellist deems that Respondent has chosen these domain names independently of Complainant’s trademark and has used them in the context of a bona fide offer of its goods on the corresponding websites.

Indeed, Respondent is from Malaysia, where the company was founded in 2015, while Ba & sh has provided no evidence of actual use of its BA & SH mark in that territory. Khor Xin Yu, Respondent, explains that he co-founded “BASH CLOTHING” in 2013 when he was 18 years old and that the mark was also used in Singapore in 2017. Initially, the sign used was “Bash Shit Ever”, later changed in 2020 to “Bash Clothing” as part of a branding update.

Similarly, Respondent provided an explanation and documentation justifying the selection of the sign BASH because of the meaning of the dictionary term “bash”. Finally, Respondent used a logo that differs from that of Complainant.

Complainant has not shown that Respondent registered and used the disputed domain names in bad faith.

Indeed, when the first disputed domain name <bashshitever.com> was acquired by Respondent, Complainant had been operating in France and worldwide for about 11 years and had owned an international trademark for about 7 years, designating Malaysia. However, Complainant has not presented any evidence of actual use of its BA & SH trademark in Malaysia at the time of registration of the first disputed domain name.

In addition, a Google search for “bash” shows several results unrelated to Complainant or its trademark. Respondent has also provided a plausible explanation as to why he chose the term “bash”, an English dictionary term related to the idea of a party insofar as its initial target was female students.

Finally, although the parties operate in the same market segment (i.e. ready-to-wear and accessories), Respondent’s use of the disputed domain names does not show an intention to compete with Complainant and its trademark, given the different logos/layouts, the significantly lower prices at which the Respondent’s clothing is offered for sale, and the absence of any information on Respondent’s website that would lead users to believe that the website is operated by Complainant or any of its affiliated entities.

The complaint is, therefore, dismissed.

Ba & sh should have investigated Respondent’s motives before initiating a UDRP proceeding, including whether its trademark was known in Respondent’s country when the first domain name was registered. It should also have determined for how long Respondent had been using the “Bash” sign for fashion activities. An investigation could have revealed these elements. Respondent explains that he first marketed the Bash clothing on social networks. And, depending on the answers to these two questions, write a proper letter to the defendant

Written by Dreyfus04/05/2021

The Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (General Data Protection Regulation) affects how you, as a website owner, can use cookies and online tracking of visitors from the European Union.

Wednesday March 31, 2021 was the very last limit set by the National Commission for Informatics and Freedoms (Cnil), for French advertisers to comply with European rules relating to cookies.

From Thursday, April 1, 2021, the banner on websites is required to enable much more explicitly Internet users to “refuse” these computer tracers much more explicitly.

This is one of the measures voted in 2016 by the European Union in the General Data Protection Regulation (GDPR) and entered into force in May 2018 in all 28 (now 27) member states.

When they browse the web or use mobile applications, Internet users are increasingly followed by various actors (service editors, advertising agencies, social networks, etc.) who analyze their browsing, their movements and their consultation or consumption habits, in particular in order to provide them with targeted advertising or personalized services.

This tracing is carried out by means of various technical tools, “tracers“, of which cookies are a part.

Cookies are small pieces of text inserted into your browser while you are browsing the web.

There are various types of cookies and have multiple uses: they can be used to remember your customer ID with a merchant site, the current content of your shopping cart, the language of the web page, an identifier allowing to track your navigation for statistical or advertising purposes, etc.

They are a source of concern for many users, while others are not even aware of their existence apart from the mandatory pop-ups on all websites that ask you to “Accept cookies“.

If you are a website owner, it is important that you make sure that the management of cookies and consent on your site complies with the very strict requirements of the GDPR.

In France, the National Commission for Informatics and Liberties (CNIL) carries out numerous checks and issues sanctions for non-compliance with the GDPR and French legislation.

Your website is required under the EU’s General Data Protection Regulation (GDPR) to allow European users to control the activation of cookies and trackers that collect their personal data.

This is the essential point of consent to the use of cookies according to the GDPR – and the future of our digital infrastructures.

The CNIL reminds that the consent requirement provided for by these provisions refers to the definition and the conditions provided for in Articles 4 and 7 of the GDPR.

It must therefore be free, specific, enlightened, unambiguous and the user must be able to withdraw it, at any time, with the same simplicity with which he has granted it.

In order to remind and clarify the law applicable to the deposit and reading of tracers in the user’s terminal, the CNIL adopted guidelines on September 17, 2020, supplemented by a recommendation aimed in particular at proposing examples of modalities consent collection practices.

Consent must be manifested by a positive action of the user, informed beforehand, in particular, of the consequences of his or her choice and having the means to accept, refuse and withdraw his or her consent. Appropriate systems must therefore be put in place to collect consent in practical ways that allow Internet users to benefit from easy-to-use solutions.

Acceptance of general conditions of use cannot be a valid method of obtaining consent.

The CNIL will therefore now carry out checks to assess compliance with the rules relating to tracers, in application of article 82 of the Data Protection Act and articles 4 and 7 of the RGPD on consent, as summarized in its guidelines.

Through this action, the CNIL intends to meet the expectations of Internet users who are increasingly sensitive to Internet tracking issues, as evidenced by the constant complaints it receives on this subject.

If breaches are noted following checks or complaints, the CNIL may use all the means made available to it in its repressive chain and issue, if necessary, formal notices or public sanctions.

The evolution of the applicable rules, clarified by the guidelines and the recommendation of the CNIL, marks a turning point and progress for Internet users, who will now be able to exercise better control over online tracers.

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

Written by Dreyfus13/04/2021

With the rise of the digital age, setting up a reliable and effective compliance strategy as well as mobilizing the skills of professionals have become key factors in the company’s performance, particularly in the field of intellectual property.

From the outset, it seems important to remember that compliance includes all the processes intended to ensure that a company, its managers and its employees comply with the legal and ethical standards applicable to them.

FromLAW No. 2016-1691 of 9 December 2016 on transparency, the fight against corruption and the modernization of economic life. on anti-corruption measures to the implementation of the Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (GDPR) of April 27, 2016, and including the duty of vigilance of parent companies and ordering companies (law of March 27, 2017) or the prevention of cyber risk (implementing decree of May 25, 2018 of the NIS directive), an undeniable operational impact on companies and their managers can be observed.

Likewise, the challenges and risks of intellectual property have increased in the virtual world. Domain names as well as social networks are likely to be the targets of multiple attacks.

The key challenges of compliance with regards to intellectual property risks (I) raise questions both about the practical consequences of compliance in all aspects of intellectual property the role of the “compliance officer” in this framework (II) and the role of the “compliance officer” in this framework (III).

The challenges of intellectual property compliance

The environment as well as legal decisions revolve around the long-term development of the company and justify the establishment of real legal engineering within companies whose intellectual property is decisive. This is the key challenge of compliance, which is both a framework for thinking and a method of solving problems, involving a large number of tools and components oriented by company strategy.

Legal, regulatory and fiscal constraints are increasingly stringent and make companies bear increased responsibility in case of negligence, or even simple inaction. In particular, the regulatory framework sets out increased requirements regarding the protection of consumers and personal data.

In the field of intellectual property, domain names are key assets to contemplate when analyzing the risks and drafting compliance plans. While they are a major asset, essential to the very functioning of the business (for example, for e-mail servers, they are also risk vectors: phishing, fraud, identity theft, forged e-mail …

Online fraud can lead to loss of turnover, endangerment of consumers, and if so, risks of civil or criminal liabilities of directors for non-compliance with enforceable laws and regulations. impact the stock market price, thus causing loss of customers.

It is therefore very important to put in place the appropriate strategies to anticipate dangers, react effectively in the event of a breach and ultimately protect the company.

The practical consequences of compliance in all aspects of intellectual and digital property

Compliance has an immediate impact on all aspects of intellectual property. Also, while the legislation is more and more restrictive for companies and intellectual property professionals, compliance requirements are reinforced. How to bring your company into compliance with the laws? What are the risks of not including the Internet in your compliance plan?

Beyond its legal meaning of compliance with the requirements of laws, regulations, Codes or even directives, compliance aims to protect the company and intellectual property professionals against any non-compliance with internal and external standards and its values. Intellectual property frauds are growing and becoming increasingly complex in the digital era, which requires taking action to mitigate risks for the company business, including in terms of compliance. Its objective is to avoid adverse consequences for the company and its managers, both financial and civil or criminal liability, or damage to image and reputation. It is ultimately part of a desire for lasting growth in all aspects of intellectual property, both in France and internationally.

To cope with these new standards, companies must put in place a governance policy capable of minimizing their exposure to risk vis-à-vis their customers, their shareholders, but also regulatory authorities.

To begin with, it is essential to identify the risks through the relevant audits.

Then, it is important to assess those risks and map them. The risk management policy shall be defined accordingly.

In particular, a policy for the management of Intellectual Property related risks calls for a virtually systematic surveillance system of trademarks among domain names.

The role of the “compliance officer”

The compliance officer must protect the company from any risk of non-compliance, and therefore ensure that the organization adopts good conduct in business practice, respects the rules of ethics and finally, complies with the various laws, regulations, or even European directives. It must therefore undertake a proactive approach, organize and implement the means necessary to comply with the regulations.

Likewise, it is important to anticipate risks: once they have been defined and supervised, the mission of the compliance officer being to protect the group and its reputation, he will have to analyze the rules and standards according to the context, the activity, and the business sector.

According to a study “Who are compliance professionals?” published on March 27, 2019 and carried out by the firm Fed Legal, 92% of compliance officers have a legal background. They are operational professionals who have a strategic vision as well as a multiplicity of soft skills, in particular an ability to persuade and an interest for teaching. In addition, 60% of compliance officers belong to legal services in which there are many recruitments, both in large and small companies.

When a company is questioned, the consequences are at the same time financial, commercial and human: the company reputation will suffer greatly. The compliance officer thus takes care of protecting his company from the financial, legal and reputational risks that it incurs in the event that it does not comply with laws, regulations, conventions, or quite simply a certain code of ethics or professional conduct.

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

Non classé

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

Who really owns a social media account?

Can a social media account be transferred or sold?

What happens if there is a dispute over a social media account?

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

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

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

See also…

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

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

2.How to design an adequate and optimal protection?

3.Virtual trademarks registered in various sectors

4.Conceptual considerations

See also…

Why is it necessary to register a trademark?

Registration of trademark (INPI)

How much will it cost to register a trademark with INPI

See also…

Brief : The AFNIC 2020 annual report

Are trademark payment notices always to be trusted?

How is this happening?

Here are our advices.

About this topic…

The Vinci’s case: how to set up an effective domain name strategy?

A fake press release from Bloomberg

The domain name issue in the false press release

How to protect your domain name?

How to mitigate the risks regarding domain names ?

Domain name right : bona fide offer of goods or services

What are the new cookies regulations?

How to develop a reliable and flexible compliance strategy for intellectual property professionals?

Sign up for our newsletter and stay informed about the latest developments in intellectual property and the digital economy!

News from Dreyfus Blog

Categories

Categories

Contact

Sign up for our newsletter and stay informed about the latest developments in intellectual property and the digital economy!