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How to win a cancellation action against a European trademark ?

Written by Antony21/01/2025

How to win a cancellation action before the EUIPO ?

Protecting trademarks effectively within the European Union requires a deep understanding of the legal mechanisms available to challenge the validity or use of a registered trademark. The invalidity and revocation procedures, collectively referred to as “cancellation proceedings,” before the European Union Intellectual Property Office (EUIPO) provide rights holders and third parties with tools to maintain the integrity of the trademark register.

In 2024, approximately 2,000 cases have been consistently initiated each year since 2021, showing a stable trend with a slight decrease. Meanwhile, revocation proceedings have remained stable at approximately 500 per year since 2021, with a slight upward trend observed.

Table of Contents

  1. Introduction to invalidity and revocation procedures
  2. Invalidity procedure
    • Absolute grounds for invalidity
    • Relative grounds for invalidity
  3. Revocation procedure
    • Non-use of the trademark
    • Becoming a generic term
    • Misleading character of the trademark
  4. Procedure Before the EUIPO
    • Application filing by your representative
    • Adversarial phase
    • Decision and effects
  5. Recent trends and emerging practices
  6. Practical tips for success in cancellation actions
  7. Strategic approaches to cancellation actions
  8. Case studies: Lessons from recent decisions
  9. Emerging trends in trademark cancellation
  10. Practical Insights: Preparing evidence for success
  11. Strengthening the legal framework: Recommendations for businesses
  12. FAQ

  1. Introduction to invalidity and revocation procedures

The invalidity and revocation procedures aim to challenge the validity or continued use of a registered European Union trademark (EUTM). Invalidity disputes the trademark’s validity at the time of registration, while revocation addresses the loss of the trademark owner’s rights due to post-registration circumstances.

  1. Invalidity procedure

A trademark can be declared invalid based on absolute or relative grounds.

Absolute grounds for invalidity

A trademark may be invalidated if, at the time of registration, it:

  • Lacked distinctiveness.
  • Was descriptive of the goods or services in question.
  • Contravened public order or morality.
  • Was liable to mislead the public regarding the nature, quality, or geographical origin of the goods or services.

Relative grounds for invalidity

A trademark may also be invalidated if it infringes upon prior rights, such as:

  • An earlier identical or similar trademark for identical or similar goods or services, creating a likelihood of confusion.
  • Copyright, design, trade name, or company name rights.

  1. Revocation procedure

Revocation addresses the improper use or non-use of a trademark following its registration.

Non-use of the trademark

The owner may lose their rights if the trademark has not been put to genuine use in the European Union for an uninterrupted period of five years without valid reasons.

Becoming a generic term

If, due to the owner’s actions or inaction, the trademark has become a generic term in the trade for the goods or services it covers, it may be revoked.

Misleading character of the trademark

A trademark may also be revoked if its use by the owner or with their consent has become misleading regarding the nature, quality, or geographical origin of the goods or services.

  1. Procedure before the EUIPO

Application filing by Your representative

To ensure a smooth and effective application process before the EUIPO, it is essential to engage a qualified counsel who can provide strategic advice and represent your interests effectively. While it is not mandatory to appoint a representative to file a cancellation action, parties without a domicile, principal place of business, or an effective and genuine industrial or commercial establishment within the European Economic Area (EEA) must be represented by an authorized representative in EUIPO proceedings. Even for those with a presence in the EEA, appointing a representative ensures the process is handled with the expertise required to maximize efficiency and effectiveness.

Adversarial phase

Once the application is received, the EUIPO verifies its admissibility. If deemed admissible, an adversarial phase begins, allowing the parties to present arguments and evidence. The EUIPO may also request additional information or clarification from the parties.

Decision and effects

Following the review of arguments and evidence, the EUIPO issues a decision. If the application is successful, the trademark is either invalidated retroactively or revoked from the date of the decision. These decisions can significantly impact the trademark landscape within the EU.

Appeal process

Decisions by the EUIPO can be challenged through a well-defined appeal process:

  1. Appeal to an EUIPO Board of Appeal: This must be filed within two months from the date of notification of the decision. A written statement detailing the grounds of appeal is required.
  2. Appeal to the General Court of the European Union: If dissatisfied with the Board of Appeal’s decision, an appeal can be lodged within two months from the notification of that decision. This process examines the legality of the decision but does not re-assess the facts.
  3. Referral to the Court of Justice of the European Union (CJEU): A further appeal on points of law can be made within two months of the General Court’s decision. The CJEU reviews legal errors but does not revisit the case’s substance.

  1. Recent trends and emerging practices

Use of artificial intelligence in trademark searches

With the increasing reliance on AI tools, many businesses now utilize AI-driven platforms for pre-registration trademark searches. These tools enhance precision and speed in identifying potential conflicts, reducing the likelihood of disputes.

Impact of blockchain on trademark authenticity

Blockchain technology offers a secure and transparent method for proving trademark use. By maintaining immutable records, it ensures authenticity and provides robust evidence in revocation proceedings.

  1. Practical tips for success in cancellation actions

  1. Conduct comprehensive pre-filing research: Ensure thorough investigation of potential conflicts or grounds for cancellation using tools like TMview.
  2. Maintain robust documentation: Keep detailed records of trademark usage to counter non-use allegations.
  3. Engage expert counsel early: Involve experienced legal professionals to navigate the complexities of EUIPO procedures.
  4. Leverage evidence effectively: Present compelling evidence, such as market surveys or sales data, to support your claims or defense.

  1. Strategic approaches to cancellation actions

Proactive risk assessment

Before initiating a cancellation action, it is critical to conduct a comprehensive risk assessment. This involves analyzing the targeted trademark’s weaknesses, such as lack of distinctiveness or non-use, and identifying supporting evidence to strengthen your case. Using tools like TMclass and DesignView can streamline this process and ensure a strategic approach.

Collaborating with regional experts

Trademark laws and practices can vary subtly between EU member states. Collaborating with local IP experts who understand jurisdictional nuances ensures your cancellation strategy aligns with both EUIPO standards and local regulations.

Tailoring arguments for absolute and relative grounds

When challenging a trademark based on absolute grounds, highlight legal principles such as descriptiveness or violation of public order. For relative grounds, focus on substantiating prior rights through market research, survey evidence, and sales data.

  1. Case studies: Lessons from recent decisions

Case study 1: Revocation for non-use

In 2023, a tech company successfully revoked a competitor’s trademark on the grounds of non-use. The claimant demonstrated that the trademark owner had not used the mark in commerce for over five years. This case underscores the importance of maintaining detailed records of trademark use.

Case study 2: Genericization of a trademark

A recent case involved a prominent food brand losing its trademark due to genericization. The opposing party presented consumer surveys and industry reports showing that the mark had become synonymous with the product category, no longer serving as a source identifier.

  1. Emerging trends in trademark cancellation

AI-driven case analysis

Artificial intelligence tools are being adopted by law firms and businesses to analyze previous EUIPO decisions. These tools can predict potential outcomes and identify the most persuasive arguments, streamlining the preparation process for cancellation proceedings.

Globalization of trademark disputes

With the rise of global commerce, trademark disputes increasingly involve cross-border issues. EUIPO decisions are often referenced in cases involving parallel trademarks filed in other jurisdictions, emphasizing the need for a unified global strategy.

Sustainability as a grounds for contestation

As sustainability becomes a consumer priority, trademarks misleadingly suggesting eco-friendliness are increasingly being challenged. Leveraging environmental claims can form a compelling basis for cancellation under absolute grounds.

  1. Practical insights: Preparing evidence for success

1 – Collect robust documentation

Evidence is crucial in trademark cancellation cases. Compile a comprehensive portfolio that includes:

  • Historical usage records (e.g., invoices, advertising campaigns).
  • Market surveys demonstrating consumer confusion or genericization.
  • Third-party testimonials or affidavits supporting your claims.

2 – Engage technical experts

For cases involving complex goods or services, expert opinions can provide critical insights. For example, a technical expert can validate claims about the functionality of a product, supporting arguments for invalidity based on lack of distinctiveness.

3 – Monitor competitors proactively

Use trademark monitoring tools to track potential infringements or misuse by competitors. This allows you to initiate cancellation proceedings promptly, protecting your brand equity.

  1. Strengthening the legal framework: Recommendations for businesses

Policy alignment with sustainability goals

Aligning trademark strategies with broader corporate sustainability goals can strengthen the defensibility of trademarks. For example, ensuring that trademarks promoting eco-friendly products are substantiated with solid evidence mitigates the risk of misleading claims.

Adapting to regulatory changes

With the EU’s continuous evolution of IP laws, businesses must stay updated on new directives and regulations. Engaging with IP attorneys who monitor these changes can ensure that strategies remain compliant and forward-looking.

FAQ entries

How do I prove non-use of a trademark?
To prove non-use, collect evidence such as market analyses, online presence checks, and absence of sales records during the relevant period.

Can I initiate cancellation proceedings outside the EU?
Yes, parallel actions can be initiated in jurisdictions where the trademark is also registered, provided local laws allow for cancellation based on similar grounds.

What is the success rate for cancellation proceedings at the EUIPO?
Recent EUIPO data suggests that approximately 40% of invalidity and revocation applications are successful, emphasizing the importance of presenting strong evidence.

Protect your trademarks and business reputation with expert legal guidance. Contact Dreyfus Law Firm today for tailored advice on cancellation actions before the EUIPO. Let us help safeguard your intellectual property rights!

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The Importance of Monitoring Brands on Social Media and Advanced Strategies to Counter Infringements

Written by Dreyfus17/12/2024

Online presence plays a crucial role in shaping a brand’s image, but this visibility also exposes it to significant risks such as counterfeiting, defamation, and rights violations. Social media, as both a catalyst for opportunities and a breeding ground for threats, demands increased vigilance. Companies must integrate monitoring as a fundamental element of their intangible asset management strategy. Dreyfus, an expert in intellectual property, positions itself as a key player in this field by providing tailored technical and legal solutions.

The Imperative of Proactive Monitoring on Social Media

Contrary to a commonly held assumption, content hosts (Facebook, Instagram, TikTok, etc.) are not legally obligated to actively monitor what is posted. According to the European Directive 2000/31/EC on electronic commerce, these technical intermediaries can only be held liable once notified of the existence of illegal content. This legal gap forces companies to assume active monitoring themselves to protect their brand.

The risks faced by companies that neglect monitoring are diverse and severe:

  • Counterfeiting: The dissemination of counterfeit products via social media affects revenues and weakens brand image.
  • Defamation and Smear Campaigns: A viral negative publication can irreparably damage a company’s reputation.
  • Identity Theft: Fake accounts exploiting the name of a brand or its executives undermine stakeholder trust.
  • Intellectual Property Rights Violations: Unauthorized use of logos or trade names can erode the legal protection of these assets.

Takedown Mechanisms: Pillars of a Reactive Response

Platforms such as Amazon, Alibaba, and Facebook have implemented “notice and takedown” procedures that allow illegal content to be reported and removed. These mechanisms directly address the proliferation of infringements within their ecosystems.

Typical Steps in a Takedown Procedure

  1. Identifying Infringing Content: This involves automated tools or manual analysis to pinpoint problematic posts.
  2. Notifying the Host: A formal request, including evidence of the violation, is submitted to the relevant platform.
  3. Review by the Host: Moderation teams assess the compliance of the request with internal policies and the legal framework.
  4. Content Removal: If the complaint is valid, the illegal content is swiftly deleted or blocked.
  5. Follow-up and Escalation: In cases of rejection or recurrence, legal actions may be considered.

A notable example is Amazon’s “Brand Registry” program, which provides brand owners with tools to monitor listings and report violations. Alibaba offers similar functionalities tailored to the Asian e-commerce context.

Why Rely on a Specialist Like Dreyfus?

Turning to experts maximizes the chances of success and minimizes delays in takedown procedures. Dreyfus offers:

  • Deep Legal Expertise: Each case is evaluated based on the applicable legal framework and relevant jurisprudence.
  • Advanced Technological Tools: Automated monitoring ensures rapid and accurate detection of infringements.
  • Comprehensive Support: From initial monitoring to potential legal proceedings, Dreyfus handles the entire process.

Social Media: Opportunities and Vulnerabilities

The open and participatory nature of social media, while a source of marketing opportunities, also serves as a gateway for various infringements.

  • Fraudulent Advertisements: These exploit a brand’s image to redirect users to counterfeit sites.
  • Shocking or Controversial Content: Associating a brand with controversial themes harms its public perception.
  • Orchestrated Smear Campaigns: Fabricated negative reviews, hostile hashtags, or defamatory posts erode reputation.

Three Strategic Axes for Enhanced Protection

Brands must adopt a multi-level approach: proactive, preventive, and reactive.

  1. Proactive: Maintain a Visible and Active Presence

Regular communication on social media helps monitor and control discussions about the brand.

  1. Preventive: Implement Structured Monitoring

Surveillance tools—such as automated crawlers or configurable alerts—detect potential infringements before they escalate.

  1. Reactive: Leverage Legal and Technical Remedies

Takedown procedures and legal actions remain essential steps to counter confirmed infringements.

A Changing Future: Challenges and Perspectives

The rapid evolution of technologies and online practices presents new challenges:

  • The Emergence of Deepfakes: These falsified contents complicate issues of defamation and counterfeiting.
  • Increased Regulation: The legal framework governing platforms could evolve, affecting host responsibilities.
  • Dual Use of Artificial Intelligence: While useful for monitoring, AI can also be exploited for malicious purposes.

Conclusion

Monitoring brands on social media is an indispensable strategic issue. Given the absence of proactive oversight by platforms, it is essential for companies to adopt comprehensive defense strategies. With the support of experts like Dreyfus, they can anticipate and counter threats while ensuring the sustainability and credibility of their brand in an ever-evolving digital environment.

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Entry Into Force on May 1, 2025 of the EU “Design Package”: Modernizing the EU Designs Framework

Written by Dreyfus19/11/2024

The recent publication of Regulation (EU) 2024/2822 and Directive (EU) 2024/2823 marks a key milestone in the modernization of the European legal framework for designs. These reforms, with certain provisions taking effect from May 1, 2025, foresee a phased implementation to harmonize, simplify, and adapt the system to the digital age.

Harmonization and modernization 

The term “Community design” has been updated to “European Union design” (EUD). This symbolic change modernizes the terminology while aligning it with that of European trademarks. To enhance identification, a visual symbol Ⓓ has been introduced, providing greater coherence within the system.

The reform expands definitions to incorporate technological advances. Animations, graphical interfaces, and digital twins are now included in the scope of protection, reflecting their essential role in modern industries. The concept of “product” has also been extended to non-physical forms, covering items used in video games or virtual environments such as the metaverse.

Filing procedures are now more flexible and better suited to creators’ needs. Applications can group up to 50 designs without classification constraints, and various digital formats are now accepted for design representations. Additionally, creators can defer publication for up to 30 months, offering strategic discretion to protect their designs while planning their market launch.

To promote accessibility, particularly for small and medium-sized enterprises (SMEs) and independent designers, some fees have been reduced or eliminated. Filing fees, for example, have been lowered, and the costs associated with the transfer of rights have been completely removed. However, a notable increase in renewal fees is expected. Previously, renewal fees for a 25-year period ranged from €90 to €180. Under the new framework, fees will start at €150 and rise to €700 by the fourth renewal cycle. This adjustment may disproportionately affect industries with longer product life cycles, such as automotive and industrial design, compared to industries like fashion, which are less impacted by the fee increase.

Enhanced protection of rights 

The EU reform clarifies key aspects of design visibility. From now on, visibility is no longer a general requirement for protection, except for components of complex products. This revision eliminates past ambiguities and extends protection to a wider range of contemporary and diverse designs.

A major innovation is the introduction of the repair clause. This provision removes legal protection for spare parts necessary to restore the appearance of a complex product, limiting exclusive rights in this domain. The measure strikes a balance between design protection and competition in the spare parts market. However, it requires manufacturers to inform consumers about the origin of the products used for repairs, enhancing transparency and enabling informed choices.

In the realm of 3D printing, the reform introduces an exclusive right allowing rights holders to prohibit the creation, dissemination, and use of digital files capable of reproducing a protected design via 3D printing. Although this technology remains relatively uncommon in households, the provisions anticipate its potential growth, safeguarding creators’ rights in this emerging field.

Lastly, the reform extends rights holders’ protections to goods in transit within the European Union, even if their final destination is outside EU territory. This change strengthens the enforcement of intellectual property rights in a globalized context, addressing the challenges posed by counterfeit goods in international trade.

Alternative dispute resolution and legal certainty 

The reform encourages EU Member States to establish administrative mechanisms for contesting the validity of national designs. Inspired by the EUIPO model for the European trademark (oppositions and cancelation actions), this approach offers a less expensive and faster alternative to traditional judicial procedures.

Additionally, the requirement for first disclosure within the EU has been abolished. Now, the initial disclosure of a design outside the EU can confer protection as an unregistered design. This change eliminates ambiguities from previous regulations, an important aspect in the post-Brexit context, where many designers chose the UK for their first presentations. This clarification further harmonizes the legal framework and reduces uncertainties for creators operating across multiple markets.

Key challenges to monitor 

While the reform has integrated significant advances for the digital age, uncertainties remain regarding the protection of AI-generated designs. This rapidly growing area raises fundamental questions about the adequacy of current legal frameworks, making it essential to ensure effective protection tailored to these new forms of creation.

Additionally, the growing divergences between EU and UK regimes, exacerbated by Brexit, require close attention. Creators and businesses must exercise caution to harmonize their design protection strategies in these two now-distinct territories, minimizing legal and commercial risks associated with this fragmentation.

Timeline and future prospects 

The new provisions will take effect in May 2025 for the regulation, while Member States have until December 2027 to transpose the directive into their national laws. This phased approach aims to ensure a harmonized application of the new rules across the European Union, offering creators an adjustment period.

The EU design reform represents a significant step forward in modernizing the legal framework and addressing 21st-century challenges. By clarifying key concepts, simplifying processes, and anticipating technological developments, the European Union offers a robust and inclusive system. For businesses and creators operating in Europe, adapting swiftly to these changes is essential to maximize the protection and competitiveness of their designs.

For assistance with managing and protecting your designs, our intellectual property experts are at your service. Dreyfus Law Firm with an international network of lawyers specializing in Intellectual Property.

 

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Case Study on Trademark Fraud Allegations in France: Hot Couture’s Pierre Cadault from Netflix Hit Series “Emily in Paris”

Written by Dreyfus18/11/2024

Breaking Down INPI’s Landmark Decision: A Tale of Two Industries

 The French National Institute of Industrial Property (INPI) recently addressed an intriguing trademark dispute that caught the entertainment industry’s attention. The case, involving a character name from the popular Netflix series “Emily in Paris,” has illuminated crucial aspects of bad faith trademark registration claims in the entertainment sector. The dispute centered on a trademark registration filed for cosmetics under Class 3, strategically positioned two months after the series premiere. The contested trademark is related to a fictional character portrayed as an extravagant couturier in the series, creating an unexpected intersection between beauty, fashion, and trademark law.

 

The INPI’s investigation delved deep into the chronology of events. Their analysis revealed “insufficient evidence” to establish the trademark holder’s awareness of prior use at the filing date. Despite the character “Pierre Cadault” prominently featured in the series as a renowned fashion designer, the evidence failed to demonstrate that the name “Cadault” alone had achieved meaningful recognition in France during the crucial initial months following the show’s release.

 

The art of proving bad faith: Beyond surface-level analysis

 A pivotal element in the INPI’s decision rested on the distinction between industries. While acknowledging the subtle connection between high fashion and cosmetics, the INPI determined that cosmetics operate in a separate commercial sphere from haute couture. This industry differentiation substantially weakened any presumed connection between the character’s name and the registered trademark category.

 

The INPI emphasized a fundamental principle: “mere awareness” of prior use does not constitute fraudulent intent. The burden of proving bad faith registration demands concrete evidence that the filing was specifically calculated to prevent a third party from utilizing a necessary business identifier. The timing of the registration, occurring two and a half months post-series launch, combined with the absence of communication between parties, significantly influenced the final determination.

 

The INPI’s reasoning revealed a subtle understanding of practical trademark enforcement. The notable absence of any legal action by the trademark holder to prevent the character’s name use in the series substantially undermined claims of malicious intent. This passive approach contrasted sharply with typical bad-faith scenarios, where trademark holders actively pursue cease-and-desist measures or legal proceedings.

 

A framework precision for evaluating bad faith

 The decision carried significant implications for the intersection of entertainment properties and trademark rights. The INPI acknowledged that while obtaining an injunction to prevent character name use would be legally challenging, potential conflicts could arise if Viacom pursued character-based cosmetic products. This nuanced observation highlights the complex relationship between entertainment content and commercial trademark rights.

 

This decision clarifies the framework for assessing bad faith in entertainment-related trademark registrations. The ruling emphasizes the critical importance of substantial evidence, industry context, and practical commercial implications. Future disputes will likely reference this decision’s “balanced approach” to evaluating trademark validity in the entertainment sector.

 

Conclusion

 The INPI’s thorough analysis offers valuable guidance for navigating the complex landscape of entertainment property rights and trademark protection. The decision underscores the necessity of considering both immediate and potential future commercial applications when evaluating trademark registration intent. This forward-looking perspective ensures that trademark protection serves its intended purpose without unduly restricting creative expression in the entertainment industry.

 

The ruling’s subtle approach to analyzing bad faith claims provides a robust framework that balances the legitimate interests of trademark applicants with those of entertainment property rights holders. As the entertainment industry continues to evolve, this decision will serve as a crucial reference point for resolving similar disputes, ensuring fair and practical outcomes in the dynamic intersection of entertainment and trademark law.

 

 At Dreyfus Law Firm, we recognize that the entertainment and media landscape present unique challenges for trademark protection, as evidenced by the recent “Emily in Paris” case. Our expertise lies in navigating these complex intersections between creative content and trademark rights. We guide entrepreneurs and companies through the intricate process of establishing and defending their trademark rights, particularly when industries overlap, as we saw with the fashion and cosmetics sectors in this case. “Bad faith claims” require sophisticated analysis and compelling evidence, but they are insufficient to demonstrate prior use or knowledge. Dreyfus Law Firm excels at building comprehensive strategies that consider both immediate concerns and future commercial implications. Our team prides itself on helping clients understand the practical aspects of trademark enforcement while ensuring their intellectual property assets are properly protected across multiple industries and jurisdictions.

Dreyfus Law Firm partners with an international network of lawyers specializing in intellectual property law.

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Co-branding: Strategy, Opportunities, and Challenges

Written by Dreyfus28/10/2024

By Dreyfuslawfirm

 

Co-branding has emerged as an indispensable strategy for companies aiming to extend their influence, enhance brand equity, and foster product innovation. However, this form of multi-brand collaboration necessitates meticulous planning and rigorous scrutiny due to its inherent risks. This article delves into the essential elements of co-branding, both from marketing and legal perspectives, while also identifying the opportunities and challenges associated with these strategic alliances.

 

Strategic Alignment and Value Convergence

The success of co-branding hinges on the precise strategic alignment between partner brands. These entities must share fundamental values and pursue compatible strategic goals, a condition necessary to establish a seamless collaboration and leverage potential synergies. Furthermore, each brand must target similar or complementary audiences to ensure a positive market impact and maximize the partnership’s overall outcome.

Mutual Benefits and Complementary Competencies

The core of successful co-branding lies in the creation of shared value. Co-branding thrives when each partner leverages its unique strengths: one brand may possess cutting-edge technological expertise, while another has established market recognition. By merging these distinct competencies, brands can offer high-value products or services unattainable independently, generating synergistic outcomes that exceed the sum of individual contributions.

Reputation and Risk Management

The reputation of partners is a critical factor in co-branding initiatives. Associating with a brand that has a questionable or undeveloped reputation can impair the overall image of the initiating company. Thus, thorough due diligence is paramount to evaluate the prospective partner’s stability and ensure their alignment with the project’s dynamics. Risks, including those related to consumer perception, must be identified and thoroughly assessed.

Legal Considerations: Intellectual Property and Contractual Agreements

Legal considerations are fundamental in ensuring the stability and viability of a co-branding partnership. Intellectual property (IP) rights concerning trademarks, logos, and co-created content must be clearly defined from the outset. Comprehensive contractual agreements are necessary to delineate each party’s roles and responsibilities, including revenue-sharing clauses and financial obligations. These agreements should incorporate predetermined dispute resolution mechanisms aimed at preventing and managing potential conflicts throughout the collaboration.

 

Quality Control and Consumer Perception

Quality control is another major aspect of co-branding. The perceived quality of co-branded products or services must be maintained to avoid damaging the brand image, which could negatively impact both entities. Quality standards must be established early and adhered to strictly to ensure consistency and protect the reputation of each partner.

 

Recent Statistics: Growth and Evolution of Co-branding

Recent data underscores the growing prevalence of co-branding: approximately 65% of marketing executives view these partnerships as essential for brand growth. Moreover, 71% of consumers report being more inclined to purchase a product co-branded with a trusted brand. These statistics highlight the importance of selecting strategic partners to maximize growth and reinforce consumer trust.

 

Expanding Industries and Digital Integration

Several sectors are distinguished by their effective use of co-branding:

– Technology: Partnerships between technology firms and health applications.

– Food and Beverages: Creation of unique products through collaborations between snack and confectionery brands.

– Fashion: Limited-edition collections that are often highly publicized and impactful.

– Automotive: Integration of advanced technologies through collaborations with high-tech companies.

 

These industries leverage co-branding to innovate, reach new market segments, and create unique value propositions, often utilizing digital strategies such as video marketing on social media platforms.

Challenges and Risks of Co-branding

Despite its numerous benefits, co-branding also presents challenges. Among the most significant are brand dilution, differences in corporate culture, and quality control issues. A major difficulty is ensuring equitable benefit distribution between partners to avoid tensions or resentment. Proactive management, through clear contracts and regular communication, is crucial to prevent these issues and guarantee the partnership’s success.

Conclusion: Optimizing Co-branded Collaborations

Co-branding offers a unique opportunity to expand each brand’s reach and enhance overall credibility, provided that the inherent challenges are fully understood. Rigorous strategic planning, structured risk management, and a clear delineation of roles and responsibilities are essential for maximizing success. With a methodical approach and anticipation of obstacles, companies can effectively leverage the unique advantages of co-branding while mitigating potential pitfalls.

Dreyfus Law Firm partners with an international network of lawyers specializing in intellectual property.

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France’s IP Legislation: Mastering Trademarks in a Global Playground

Written by Dreyfus21/10/2024

The French Intellectual Property Legal Framework: A Comprehensive Overview

The foundation of intellectual property (IP) law in France is a testament to its historical influence on legal traditions and reflects its progressive adaptation to new technological developments and globalization. The French IP system, particularly in the realm of trademarks, is robust, detailed, and harmonized with international conventions. It is structured to protect the creativity and innovations of individuals and companies alike.

 

The Core of French Trademark Law

 France’s trademark law is primarily governed by Law No. 91-7 of January 4, 1991, which was amended by Ordinance No. 2019-1169 of November 13, 2019. These laws are codified in the French Intellectual Property Code (FIPC), which forms the backbone of domestic regulations. The amendments have largely been driven by the need to align French law with broader European Union directives and international standards.

 

Trademarks in France serve as legal instruments that safeguard distinct business identifiers, names, logos, designs, and even sounds by ensuring exclusive rights to their use. The legal system also extends protection to non-traditional trademarks, including motion marks, holograms, and multimedia representations. The core requirements for trademark protection in France are quite clear: a trademark must be capable of distinguishing goods or services from those of others and be capable of being represented clearly in the official registry. The National Institute of Industrial Property (INPI) is the official body responsible for regulating trademarks in France.

 

A Global Player in Intellectual Property

France is not isolated in its legal approach to intellectual property. It actively participates in several key international agreements that shape global IP law. Among these, the Paris Convention for the Protection of Industrial Property (1883) and the Madrid Agreement (1892) have been foundational. Additionally, France’s signature on the TRIPS Agreement (1994) aligns it with international trade obligations, while agreements such as the Nice Agreement (1957) ensure a harmonized classification of goods and services worldwide. These treaties facilitate the international registration of trademarks and create a cohesive framework that allows French businesses to compete globally while protecting their intellectual property.

 

International agreements simplify the process of cross-border trademark registrations and provide mechanisms for French entities to enforce their rights in other jurisdictions. For instance, the Madrid Protocol (1997) and the Vienna Agreement (1973) offer frameworks for international classification and protection of figurative marks.

 

Establishing and Enforcing Rights: The Role of Registration

While registration is not mandatory to establish trademark ownership in many jurisdictions, in France, unregistered trademarks are not afforded legal protection. The concept of “common law” trademarks does not exist in French law. However, owners of well-known marks, defined under Article 6-bis of the Paris Convention, can use provisions under French tort law to prevent the misuse of similar signs. In practical terms, registration with the INPI ensures a more straightforward path to enforcement, including access to specialized courts and legal remedies in infringement cases.

 

Once registered, a French trademark is valid for a period of 10 years, and the registration can be renewed indefinitely. The registration also provides a presumption of validity, simplifying legal disputes related to ownership and use. Notably, the non-use of a trademark over a five-year period opens the door for third-party cancellation actions.

 

Challenging a Trademark: Opposition and Cancellation Proceedings

The French trademark system allows third parties to challenge applications and existing registrations. Once a trademark application is filed, it is published in the Trademark Gazette, opening a two-month window for opposition. Oppositions can be based on prior rights, including existing trademarks, copyright, company names, or geographical indications.

 

Cancellation proceedings are equally vital in maintaining the integrity of the trademark register. Such actions may be based on grounds including the lack of distinctiveness, bad faith, or non-use. The process typically involves multiple exchanges of evidence and legal arguments between the parties. Moreover, if a trademark is found to be misleading, deceptive, or descriptive, it can be invalidated.

 Online and Digital Dimensions of Trademark Protection

As the world becomes increasingly digitized, the protection of trademarks in online environments has gained prominence. Under the Electronic Post and Telecommunications Code, French law provides mechanisms to cancel or transfer infringing domain names. Domain names, which hold significant commercial value, can form part of opposition proceedings if they have established sufficient recognition among the public.

 

Infringement in the online space is treated similarly to traditional forms of infringement, with courts recognizing the unique challenges posed by digital platforms. Trademarks can also be enforced under the French unfair competition law, which extends protection against unfair commercial practices, particularly in cases where foreign well-known trademarks are involved.

 

Licensing and Assignment: Managing Trademark Rights

Trademarks, as valuable business assets, can be licensed or assigned, partially or wholly, for specific goods and services. Licensing agreements, when recorded with the INPI, allow for easier enforcement of trademark rights and enable the licensee to pursue infringement claims if authorized. The assignment of trademarks, which can be for tax purposes or business restructuring, must be executed in writing and signed by both parties.

 

Recording such transactions is not mandatory for validity, but it is crucial for enforceability against third parties. The INPI manages the recorded licenses and assignments with processes designed to be efficient and cost-effective.

 

Conclusion: The Future of French Intellectual Property Law

France’s intellectual property legal framework is a dynamic system that balances tradition with modern innovation. Its alignment with international standards and robust domestic regulations ensures that businesses operating within its jurisdiction can effectively protect and enforce their intellectual property. As new technologies emerge, the French legal system will likely continue to adapt, ensuring that its IP laws remain relevant and responsive to the needs of creators and businesses alike.

 

At Dreyfus Law Firm, our team is well-versed in the intricacies of the French IP legal framework, ensuring that our clients confidently navigate the complexities of trademark registration, enforcement, and international agreements. We understand the unique challenges that arise in today’s digital landscape and are committed to providing tailored solutions that protect your creative assets.

 

By partnering with Dreyfus Law Firm, companies can effectively manage their intellectual property portfolios and safeguard their innovations. Our comprehensive approach facilitates smooth registration processes and equips clients with strategies to tackle potential infringements and disputes. With our guidance, businesses can focus on what they do best, innovating, while we handle the legal intricacies of IP management. Choose Dreyfus Law Firm to ensure your intellectual property is in expert hands!

 

Dreyfus Law Firm partners with an international network of lawyers specializing in intellectual property.

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Likelihood of confusion and trademark distinctiveness : Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO

Written by Dreyfus09/09/2024

Two recent trademark dispute decisions, Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO, provide valuable insights into how the European Union Intellectual Property Office (EUIPO) and the European General Court (EGC) assess similarity, distinctiveness, and the likelihood of confusion between trademarks. These cases highlight the complexities involved in trademark disputes and illustrate the fine lines that can determine the outcome of such cases.

Bar Paris v Paris Bar (T-117/23)

v

Background

On June 28, 2019, Superstudio 21 GmbH filed an application for the European Union trademark registration of the sign for foodstuffs and restaurant services. Kantstraße Paris Bar GmbH opposed the registraton based on its earlier German trademark, which covered similar services. Initially, the EUIPO’s Opposition Division upheld the opposition, but this decision was later annulled by the EUIPO’s Board of Appeal (BoA), leading to the General Court’s final decision.

Court Findings

The General Court focused on the descriptive nature of the word elements ‘Paris Bar’ and ‘Bar Paris’, given their association with Parisian culture and gastronomy. Despite their arrangement, these elements were considered lowly distinctive. The inclusion of a Gallic rooster as a figurative element in the contested trademark was deemed as distinctive and dominant as the word elements. However, the court ruled that there was only a low degree of visual similarity on account of the inversed order of the words, a high degree of phonetic similarity, and a limited conceptual impact due to the generic nature of the words.

The Court confirmed the Board of Appeal’s finding that the inherent distinctiveness of the earlier mark is very low. The opponent’s claim of increased distinctiveness due to intensive use was rejected because of insufficient evidence relating to one single bar in Berlin.

Ultimately, the General Court ruled out the likelihood of confusion based on the visual perception of the trademarks, which it considered predominant in the context of buying foodstuffs and visiting restaurant. This decision emphasizes the importance of visual differences in distinguishing trademarks, especially when the word elements are considered generic or descriptive.

 

ZERO MEAT v MEAT ZERO (R 2052/2023-2)

 v

Background

On september 29, 2021, CPF Food and Beverage Co., Ltd. applied for registration of the ‘ZERO MEAT’ trademark for meat substitutes, which was opposed by Norma based on their earlier ‘MEAT ZERO’ trademark. The opposition was initially upheld due to a likelihood of confusion, but the decision was overturned by the Board of Appeal.

Board of Appeal’s decision

The BoA found that the words ‘zero’ and ‘meat’ are basic English terms understood across the European Union, thus possessing low distinctiveness. The arrangement of these words and the inclusion of a numeral and color differences in the trademarks contributed to their overall impression, which the BoA found distinct enough to avoid confusion. Indeed, the different layout and color shades were significant enough to differentiate the trademarks in the market.

Finally, both trademarks referred to meat-free products and an environmentally friendly ethos, yet this was not enough to confuse the average consumer due to the non-distinctive nature of the descriptive words used.

Conclusion

The decisions in both Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO underline the importance of the distinctiveness of the elements that compose a trademark in determining the likelihood of confusion. These cases demonstrate that non-distinctive or descriptive elements afford a limited scope of protection, which is a crucial consideration for businesses when developing brand identifiers.

Finally, these decisions which do not appear to be in line with the case of the Court of Justice of the European Union might encourage a reevaluation of the CJEU’s approach regarding the weight given to the distinctiveness of earlier trademarks.

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Enhance Your Intangible Assets with the IP Strategy Diagnostic

Written by Dreyfus16/07/2024

At Dreyfus, we understand the critical importance of protecting and valuing your company’s intangible assets. This is why we offer tailored support through the IP Strategy Diagnostic, an initiative supported by Bpifrance.

What is the IP Strategy Diagnostic?

The IP Strategy Diagnostic, implemented by Bpifrance, is designed to assist innovative Start-ups, SMEs, and mid-sized companies. It provides financial aid covering 80% of consulting costs, up to a maximum of €10,000 excluding VAT. This initiative aims to develop a suitable intellectual property (IP) strategy, enabling the valuation of your intangible assets such as patents, trademarks, designs, software, and data.

Objectives of the IP Strategy Diagnostic

The primary goal of the IP Strategy Diagnostic is to strengthen your IP strategy, which is essential for your company’s growth. Key objectives include:

 

– Identifying and evaluating your assets : Determine the strengths and improvement areas of your intangible assets.

– Securing professional relationships : Protect IP aspects in your interactions with clients, partners, and employees.

– Developing an action plan : Implement concrete steps for the protection and valuation of your assets, aligned with your commercial strategy.

– Competitive analysis : Understand the IP strategies of other market players and anticipate potential challenges.

 

 Implementation Process

The IP Strategy Diagnostic process involves several stages :

 

  1. Initial assessment : Analyze existing intangible assets in relation to your projects and market.
  2. Strategy definition : Develop an IP strategy with specific actions to protect and value your assets.
  3. Implementation and training : Propose suitable training and implement the recommended actions.

 

 Costs and Funding

The total cost of this service ranges from €3,000 to €10,000 excluding VAT, depending on your company’s complexity and specific needs. With Bpifrance’s subsidy covering 80% of the costs, you can receive financial support ranging from €2,400 to €8,000 excluding VAT.

 Eligibility Criteria

 

The IP Strategy Diagnostic is available to independent Start-ups, SMEs, and mid-sized companies registered in France, with fewer than 2,000 employees. To benefit, a prequalification phase with an expert recognized by Bpifrance is required. Once validated, you can submit your funding request through your online Bpifrance account.

 

 Dreyfus Expertise

With over 30 years of experience, Dreyfus is renowned for supporting companies in protecting and valuing their intangible assets. Our experts assist you in:

 

– Feasibility assessment of your projects : Analyzing objectives, markets, strengths, and constraints.

– Development of your IP strategy : Creating and managing your IP portfolios.

– Valuation of your assets : Conducting audits, evaluations, and providing investor advice.

–  Protection of your assets : Managing disputes, opposition, arbitration, and mediation.

– Contract drafting : Negotiating and drafting IP-related agreements and business contracts.

–  Competitive intelligence : Technical and legal monitoring.

– Training and awareness : Custom training programs to meet your needs.

 

 Conclusion

At Dreyfus, we are committed to helping you optimize the value of your intangible assets and secure your operations with a well-defined intellectual property strategy. Contact us to learn more about our support and how we can assist you in benefiting from Bpifrance’s IP Strategy Diagnostic.

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Outsmarting Dupes: Essential Strategies to Protect and Enhance Your Trademarks

Written by Dreyfus02/07/2024

Image generated by DALL E 3 Microsoft version

In an increasingly globalised world, companies are faced with a growing problem: dupes. Dupes have become an increasingly prevalent phenomenon in the field of intellectual property, especially in trademark and design enforcement.

A dupe is a product inspired by an original product that attempts to capture the look, style and even the packaging of the original product, without being an exact reproduction. Duplicate” is neither a reproduction nor an imitation or copy. Unlike counterfeiting, which illegally reproduces a protected brand, dupes often play in legal grey areas. They use names, logos or packaging that evoke the original without copying them directly. In fact, the aim of the dupe manufacturer is not to make people believe that his articles are those of the brand from which he takes his inspiration, but to capture the attention of consumers by following in the footsteps of the trademark owner, without however copying exactly the distinctive elements of that brand.

 

How can companies effectively protect their trademarks and innovations in an environment where dupes exploit legal grey areas without explicitly breaking intellectual property laws?

 

Dupes can seriously compromise companies’ revenues by offering low-cost alternatives. While some consumers knowingly buy an imitation, many others are fooled by the striking resemblance into believing they are buying a genuine product for less.

 

However, the quality of these ‘inspired products’ is often much lower than that of the originals, which can seriously damage the reputation of the original trademark. When consumers associate the poor quality of dupes with the genuine trademark, this can lead to a decline in trust and loyalty.

 

Pursuing legal action against dupe manufacturers is often a complex and expensive process. It requires considerable resources, both in terms of time and money, but it is essential to protect trademarks and maintain their integrity in the marketplace.

A few strategies to counter the harmful effects of dupes

 

In order to secure your trademark rights, it is essential to set up active market surveillance in order to quickly detect dupes. To do this, it is advisable to use online monitoring tools that can identify imitations on e-commerce platforms, social networks and other distribution channels. These sophisticated monitoring systems can provide immediate alerts if suspicious products are detected, enabling a rapid and appropriate response.

 

It is also essential to ensure that your trademarks and designs are properly registered and protected in all the territories in which you operate. This protection must include not only trademarks, but also copyrights and patents, where applicable. This may involve registering and protecting your packaging as a trademark. Distinctive and unique packaging can be legally protected, strengthening the defence against dupes. Well-designed and protected packaging can deter imitators and facilitate legal action against them. Protecting packaging also helps to maintain brand integrity and image.

 

Working with other companies to fight counterfeiters can also be very effective. Partnerships can include sharing information about counterfeiters and taking joint action to put pressure on online sales platforms to remove adverts for counterfeit products. Cross-sector cooperation can enhance the effectiveness of anti-counterfeiting measures.

 

Finally, it is advisable to implement traceability technologies such as QR codes or RFID (radio frequency identification) chips to enable consumers to check the authenticity of your products. These technologies can also help track and identify dupe distribution points. Increased traceability improves product transparency and safety, while making it easier to take action against counterfeiters.

Conclusion

Dupes represent a major challenge for businesses, but with a proactive strategy and concrete actions, it is possible to protect your trademarks and minimise their negative impacts. By combining market surveillance, legal protection, consumer education and the use of advanced technologies, you can strengthen the defence of your intellectual property.

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What Are the Challenges of Defending Your Intellectual Property Rights?

Written by Dreyfus10/03/2023

lightbulb, invention, creation, protectionAs an intellectual property (IP) owner, it is essential to protect your rights and defend your IP against infringement. However, this can be difficult and complex, as there are a variety of challenges that can arise when attempting to protect your IP.

 

 

The first challenge is the cost of defending your rights. IP litigation can be expensive, especially when involving a large company or multiple parties. The cost of litigation includes legal fees, court costs, and expert witness fees. Additionally, you must consider the opportunity cost of taking time away from your business or research to pursue IP litigation.

 

 

The second challenge is the time and effort involved in defending your IP. IP litigation can be lengthy and complex, often taking years to resolve. You must be prepared to invest significant time and resources into the process, from researching the law to preparing legal documents and attending court proceedings.

 

 

The third challenge is the risk of not being able to successfully defend your IP. Even if you have a strong legal case and a good strategy, there is no guarantee that you will prevail in court. In addition, the court may order you to pay the other party’s legal fees if you lose the case.

 

 

The fourth challenge is the difficulty of enforcing a favorable judgment. Even if you win your case and the court orders the other party to stop infringing your IP, it can be difficult to actually enforce the judgment.

 

This is especially true if the other party is located in a different jurisdiction or is a large corporation with significant resources.

 

 

The fifth challenge is the risk of negative publicity. IP litigation can be very public, and the media may report on the case. This can put a negative light on your business or research, and may even affect your ability to attract investors or customers.

 

 

Finally, IP owners must be aware of the risk of counterclaims. The other party may file a counterclaim against you in an attempt to avoid liability or to shift the blame. These counterclaims can be difficult to defend against and may require additional resources and legal fees.

 

 

Overall, defending your IP rights can be a complicated and expensive process. As an IP owner, it is important to understand the risks and challenges associated with IP litigation and to be prepared to address them. While the process can be difficult, it is essential to protecting your valuable IP rights.

 

 

 

 

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

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