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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The conduct of the amended opposition procedure

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

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

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

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

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

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

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

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

To be continued…

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

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

The extension of prior rights that may be invoked

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

To be continued….

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Designations of origin and geographical indications

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

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

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

Previously registered plant variety denominations

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

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

Applicant’s bad faith

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

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

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

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

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

To be continued…

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

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

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

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

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

An abolition to European case-law

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

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

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

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

Effects of the removal of the graphical representation  requirement

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

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

To be continued…

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

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

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

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

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

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

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

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

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

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

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

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

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

The complaint is therefore rejected.

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

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

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

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

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

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

Here is a brief overview:

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

Read the full interview here: Expertise n°445.

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

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

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

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

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

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

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

Similarly, without difficulty, the absence of a legitimate interest of the defendant as well as its bad faith have been acknowledged.

What should be retained from this decision is that when you own the rights to a trademark, it is essential to proceed to extensive surveillance of one’s brands on the Internet and particularly of the corporate trademark (which corresponds to the company’s business name or trading name).

Surveillance of the trademark among non-Latin characters is desirable, among other things, in order to be able to detect any domain name that could be perceived as official by consumers and to act as quickly as possible against the most threatening names, i.e. those almost identical to the trademark.

Keywords: Non-Latin characters – IDN – Punycode – BMW – phishing – identity fraud

This year Nathalie Dreyfus and Dreyfus law firm were yet again recognized as “Excellent” in the category “Best Intellectual Property Law Firm in France” for brands and designs in 2019.

It is an honor for the firm to be ranked by the magazine among the best experts from different areas of law practice from Industrial Property to Tax Law in 50 countries.

Since 2017 Dreyfus has been a recognized expert in domain names and Internet risk mitigation cases – as Décideur Magazine puts it in its 2019 ranking:

« DREYFUS – ASSISTS CLIENTS TO ANCIPATE RISKS ON THE INTERNET

Track record: An NTIC specialist, the firm has implemented a new strategy this year to help clients to better comply with the GDPR. Developed for large companies and start-ups alike, the strategy helps integrating the new legislation and anticipating risks on the Internet. It also contains many international cases handled by Nathalie Dreyfus.

Why we are different: Dreyfus team provides custom tailored legal services to clients on a case-by-case basis in order to ensure full protection of their brands and domain names. The firm also has a dual legal and technical expertise that allows handling particularly complex, atypical or exceptional cases. »

We want to thank Leaders League for the recognition.

Dreyfus assists companies in management and valorization of their IP assets such as trademarks, designs, copyrights, domain names and patents in the off-line realm and on the internet.