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Protecting intellectual property assets is a major concern of companies. Trademarks are a subject of immediate interest, because they allow consumers to associate products and/or services with a specific company. The company is therefore more easily recognized and is more likely to see customers buy its products.

Once a trademark has been duly registered, a company can start to exploit it.  That is when we must be most vigilant. Indeed, a trademark may lose its distinctiveness after its registration, by becoming a generic trademark.

What is a generic trademark?

Put simply, a generic trademark is one that has become “The common name in trade for a product or service” One of the main criteria for the validity of a trademark is its distinctiveness (Article L. 711-2 of the French Intellectual Property Code). Under the article L. 714-6 of the French Intellectual Property Code, a generic trademark is devoid of distinctiveness because it has become “The common name in trade for a product or service”.

In other words, a generic trademark is a trademark that has become a common term for a type of product or service. It is used by both consumers and competitors of the trademark to refer to the product or service no matter by whom it has been provided. As a victim of its success, the trademark no longer enables consumers to identify products and services as coming from the company concerned. It falls therefore into the public domain.

As such, the company that created the trademark loses its exclusive right of exploitation. It will no longer be able to oppose the use of its trademark by third parties who seek to use it as the descriptive or ‘generic’ name of the product or service for which it has become famous. This is called genericide of a trademark.

Under the aforementioned article L. 714-6, an action for revocation or cancellation for genericide of a trademark that became generic requires two conditions:

– the trademark must have become the common name of the product or service;

– such use must be caused by the trademark owner, namely mostly his inaction.

Hence, the need for a company to act effectively against any use of its trademark as a generic term. If the owner acts effectively against any generic use, the trademark will continue to be protected by law.

Good practices to prevent a trademark from becoming generic

Acting before any commercialization, is the most effective way to prevent a trademark from becoming generic. It is also advisable not to misuse the trademark later on.

If you have created a totally new product or seek to become a brand leader in a new market, it is imperative to create – or use -a term to designate the new product, as there is a strong risk of confusion between the trademark and the product. For example, Apple’s trademark is iPhone, and the product to which it is applied is a “smartphone”.  Similarly, if a generic term exists but is particularly complex, it is useful to provide a simpler term, where your trademark is the market leader. It is also recommended to use the term defined in this way in agreements with third parties (e.g. letter of commitment, coexistence agreement, etc.).

In addition, the trademark must be used correctly in all circumstances, both externally and internally.

The use of the trademark must be particularly monitored during advertising campaigns. The trademark should be distinguished from the surrounding text promoting the marketed product or service by placing it in BLOCK LETTERS or, by Capitalising the first letter.

Using the trademark as a noun makes it more likely to be confused as the generic name. This practice should be discarded in favour of using it as an adjective. For example; “a Kleenex handkerchief” rather than “a Kleenex”.

Another good practice is to use the ® symbol or the ™ symbol. Although the latter have no legal value in France unlike in the United States, their use on the market is common. Promoting the trademark as an asset belonging to the company discouraging its use as a common term.

A trademark becomes generic mainly because of its misuse by the public. This misuse is not necessarily the result of an intend to harm. As such, it is recommended to carry out advertising campaigns aimed at consumers promoting correct use in order to avoid misuse. Preparing written standards defining the correct use of the trademark that can be easily distributed to third parties (licensees, consumers, etc.) also participates to this public education.

Avoiding misuse of the trademark also requires protection against abusive use of the trademark by third parties. It is therefore necessary to monitor product and service descriptions for new trademark applications and press publications mentioning the trademark.

Finally, because a trademark may be declared generic as a result of the owner’s actions or lack of action, it is in the company’s best interest to ensure that it can prove that it has taken steps to avoid the trademark becoming generic. In this respect, marketing files (advertising costs, unsolicited mentions in the press, etc.), letters of formal notice, summonses or even court decisions are all evidence to be kept.

In short, a potentially generic trademark remains protectable under trademark law if its owner has enforced actions against its misuse and gathered supporting evidences to prove that extent.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. 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.