Trademarks and AI: Can a Name Generated by Artificial Intelligence Be Protected?

Written by Dreyfus22/04/2025

The rise of artificial intelligence (AI) has revolutionized numerous sectors, including brand naming. Many companies now question whether a name generated by AI can benefit from legal protection as a trademark. This article reviews the relevant French legal framework and analyzes whether such a name can be registered, provided it complies with the provisions of the French Intellectual Property Code (Code de la propriété intellectuelle, CPI).

The Legal Framework for Trademarks in France

Definition and Acquisition of Trademark Rights

According to Article L.711-1 of the French Intellectual Property Code, a trademark is defined as a sign capable of distinguishing the goods or services of a natural or legal person from those of others. Ownership of a trademark is acquired through registration, pursuant to Article L.712-1 of the same code. Registration grants the holder exclusive rights over the trademark for the goods or services listed.

Conditions for Trademark Validity

For a trademark to be valid and registrable, it must meet the following conditions:

Distinctiveness: The sign must be capable of distinguishing the goods or services of one company from those of another.
Lawfulness: The sign must not be contrary to public order or accepted principles of morality.
Non-deceptiveness: The sign must not mislead the public, particularly regarding the nature, quality, or origin of the products or services.
Availability: The sign must not infringe any prior rights, such as already registered trademarks or protected business names.

These criteria are outlined in detail by the French National Institute of Industrial Property (INPI).

Applicability to AI-Generated Names

Compliance with Legal Requirements

A brand name generated by artificial intelligence may be registered in France as long as it complies with the above-mentioned conditions. The mere fact that the name is AI-generated does not preclude registration, provided it is distinctive, lawful, non-deceptive, and available. Notably, Article L.711-1 CPI does not impose any requirement regarding the origin of the sign, which means names generated by automated systems are not excluded from protection.

Specific Considerations Related to AI

Different considerations apply under copyright law. Unlike trademark law, which is focused on distinctiveness and availability, copyright protection requires human creative input and that the work reflects the author’s personality. Indeed, Article L.112-1 of the French Intellectual Property Code states that “works of the mind, whatever their genre, form of expression, merit, or purpose,” are protected, provided they are original.

As such, while a name generated by AI is unlikely to qualify for copyright protection without human input, it can nevertheless be registered as a trademark, assuming it fulfills the requirements set out in Articles L.711-1 et seq. of the CPI.

Recommendations for Businesses

Registering a trademark that results from a process involving AI requires a legally sound and strategic approach. Although the law does not exclude names generated by AI, their validity depends on a detailed legal analysis under the French Intellectual Property Code.

It is therefore essential to consult with an intellectual property expert – such as a specialized attorney or industrial property counsel – to secure the entire process. This professional can:

Assess the compliance of the name with the validity criteria set out in Articles L.711-1 and following, particularly its distinctiveness, lawfulness, and lack of conflict with prior rights;
Proceed with a thorough clearance search, which is critical to avoid future legal disputes;
Review the terms and conditions of the AI tools used, particularly regarding ownership or assignment of the generated content, which may include restrictive clauses;
Structure and document the name creation and selection process, to demonstrate, if necessary, a substantial and voluntary human intervention in the final choice.

This approach significantly strengthens the legal security of the trademark filing and helps anticipate risks related to the algorithmic origin of the sign.

Conclusion

Trademarks generated by artificial intelligence can be protected under French law, provided they meet the requirements of the Intellectual Property Code. By following the appropriate steps and involving qualified legal counsel, companies can effectively safeguard brand names created with the help of AI tools.

At Dreyfus Law Firm, we stand ready to provide comprehensive legal strategies tailored to each client’s needs. Our services include advising on trademark protection, and litigation support across multiple jurisdictions.

Dreyfus Law Firm is in partnership with a global network of Intellectual Property attorneys, ensuring comprehensive assistance for businesses worldwide.

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FAQ

1. Can an AI-generated name be registered as a trademark in France?

Yes, provided that it satisfies the criteria of distinctiveness, lawfulness, non-deceptiveness, and availability as outlined in the Intellectual Property Code.

2. Does the origin of the name (human or AI) affect its trademark validity?

No. The CPI does not distinguish based on the origin of the sign. What matters is compliance with the legal conditions for registration.

3. What are the risks of registering an AI-generated name without proper legal vetting?

There is a risk of refusal by the trademark office or future litigation if the name infringes prior rights.

Copyright and trademark in wine packaging and labeling

Written by Dreyfus17/04/2025

Key considerations for wineries and wine businesses in the United States

Wine labeling is more than just listing the varietal, region, or vintage—it’s a creative and strategic endeavor that shapes a winery’s public identity. Elements such as labels, logos, colors, fonts, taglines, and even bottle shapes can become critical assets, each subject to complex legal protections. In the United States, two primary areas of intellectual property (IP) come into play: copyright (for creative works) and trademark (for brand identifiers). When properly leveraged, these legal tools can protect a producer’s investment in design and branding, deter counterfeiters, and bolster a winery’s reputation in a crowded market.

This article delves into copyright and trademark laws as they affect the packaging and labeling of wine, highlighting the interplay with Alcohol and Tobacco Tax and Trade Bureau (TTB) regulations, and offering practical guidance for ensuring comprehensive protection of your label designs.

The importance of packaging and labeling in the wine industry

Brand differentiation and market perception

Visual Identity: In a sector where numerous bottles vie for attention on retail shelves, your label and packaging are often the first points of consumer engagement. A carefully crafted design can influence purchasing decisions.
Storytelling and Heritage: Many wineries infuse their labels with elements reflecting their history, terroir, or family legacy. Whether it’s a depiction of a vineyard landscape or a stylized crest passed down through generations, these creative visuals become a key part of the wine’s story.

(Stat Note: According to data from the Wine Market Council, up to 70% of wine-buying decisions are made in-store based on label appeal and perceived brand quality.)

The convergence of art and commerce

Wine labels transcend mere product description, often functioning as miniature works of art. This dual function—practical (identifying the wine) and artistic (evoking themes, emotions, stories)—can lead to overlapping legal protections under copyright law (protecting creative expression) and trademark law (protecting distinctive brand elements).

Copyright protection for wine labels and packaging

What copyright covers

Copyright in the United States protects “original works of authorship fixed in any tangible medium of expression.” For wine labels, this typically applies to:

Illustrations, graphics, and artwork: Any unique drawings, images, or decorative elements.
Photographs: If the label features original photography of a vineyard, estate, or other subjects.
Textual designs: Certain stylized text arrangements that reflect creative authorship, beyond merely stating the wine’s variety or region.

Under 17 U.S.C. § 102, you automatically hold the copyright to your label from the moment it’s created in a fixed form. However, registering the work with the U.S. Copyright Office (copyright.gov) offers additional legal benefits, including the ability to seek statutory damages and attorneys’ fees if you prevail in an infringement lawsuit.

Registration benefits and best practices

Enhanced enforcement: Registered copyrights provide a clear record of authorship and ownership.
Public notice: By registering, you publicly assert your claim, deterring would-be infringers.
Copyright notice: Including a notice (e.g., © [Year] [Owner Name]) on the label strengthens your position, though it is not mandatory for protection.

(Practical Tip: Some wineries register new label designs as soon as they’re finalized, particularly for high-end releases or limited-edition bottles that rely heavily on unique artwork.)

Limitations of copyright in labeling

Mandatory statements: Label elements required by TTB regulations—such as alcohol content, origin, net contents—cannot be copyrighted. They are considered functional or factual.
Generic or descriptive terms: Words that merely name a varietal (e.g., “Cabernet Sauvignon”) or region (e.g., “Napa Valley”) are not subject to copyright protection.

Trademark protection in wine labeling and branding

Distinctive elements eligible for trademark

Trademarks can protect a wide range of “source identifiers,” such as:

Brand names and winery names: For instance, “Silver Oak” or “Jordan Winery.”
Logos and stylized text: A custom emblem or stylized brand wordmark.
Taglines or slogans: Marketing phrases that help consumers identify and recall your wine.
Bottle shapes or label configurations (Trade Dress): If they are distinctive and non-functional. For example, a uniquely shaped bottle could be considered protectable trade dress when the shape itself signifies the brand.

The role of the USPTO

In the U.S., trademark registration is handled by the United States Patent and Trademark Office (USPTO) (uspto.gov). A federal trademark registration confers:

Nationwide protection: Deters infringers beyond your immediate region.
Legal presumptions: Proof of ownership and exclusive rights to use the mark in connection with specified goods.
Potential for international filing: Serves as a basis for Madrid Protocol applications via the World Intellectual Property Organization (WIPO).

Label approval vs. trademark registration

It’s crucial to distinguish between TTB label approval and USPTO trademark registration:

TTB: Focuses on compliance with labeling regulations (alcohol content, origin, disclaimers). Approval does not guarantee any IP rights in the brand name or artwork.
USPTO: Examines distinctiveness, likelihood of confusion, and existing prior rights. A name greenlit by TTB might still face refusal or opposition at the USPTO if similar marks exist.

(Example: A wine label approved by TTB with the word “Sunset Ridge” could still be refused by the USPTO if “Sunset Ridge Cellars” is an existing registered trademark.)

Navigating overlaps and potential conflicts

Copyright vs. Trademark

Copyright covers the artistic aspects—illustrations, creative text layout, or photographs.
Trademark covers the brand name, logos, or distinct label designs recognized by consumers as indicating a particular source.
These two can coexist. For instance, a visually ornate label design can have copyright protection for its artwork and trademark protection for the brand name or a stylized logo.

Confusion with geographic terms and appellations

Wine labeling often highlights regions or appellations (e.g., Napa Valley, Sonoma Coast, Willamette Valley). While these terms may be necessary to describe the product, they generally cannot serve as trademarks if they are considered primarily geographic.

Appellation conflicts: Groups like the Napa Valley Vintners Association actively defend the Napa name, ensuring it’s only used by wineries meeting certain AVA (American Viticultural Area) requirements.
Deceptive marks: A label referencing a region or type of wine (e.g., “Champagne,” “Port,” or “Burgundy”) without following legal standards or sourcing may be found deceptive by the USPTO and refused registration.

Common pitfalls

Generic or descriptive brand names: A term like “Chardonnay Reserve” is unlikely to qualify for trademark registration if it only describes the wine.
Overreliance on disclaimers: The USPTO may require disclaimers for descriptive words—such as “Winery,” “Estate,” or “Vineyards”—to avoid granting exclusive rights over generic or descriptive terms.
Failure to monitor: Neglecting to keep an eye on new trademark filings or unauthorized uses of your art or brand name can allow infringers to establish competing rights.

Case studies, statistics, and a hypothetical scenario

Case study: artistic label dispute

A California boutique winery, “Moonlight Cellars,” hired a freelance artist to create a highly detailed label for its new Merlot. The label featured a watercolor painting of an owl perched under a moonlit sky.

Copyright conflict: The artist later discovered the winery had slightly modified her painting for limited-edition releases without seeking permission. She filed a copyright infringement claim.
Trademark overlap: The winery had successfully registered “Moonlight Cellars” as a trademark but had neglected to secure permission for derivative use of the artwork.
Outcome: Through negotiation, the winery purchased additional rights. This underscored the need for clear licensing agreements that address both the original and potential future uses of label artwork.

Stats on wine label design and IP registration

A 2025 report by the USPTO indicated that trademark applications within Class 33 (wines and spirits) rose by 12% year over year, reflecting the increasing number of independent labels and craft producers. Separately, the Graphic Artists Guild noted a 20% rise in requests for label design-related copyright registrations, emphasizing the growing commercial importance of visual identity in the wine sector.

Hypothetical client example: Golden Crest Wines

“Golden Crest Wines,” a Washington-based winery, launched a new Rosé line with a stylized gold crest design. They:

Secured a trademark for the name “Golden Crest Wines” and the stylized crest logo via the USPTO.
Registered the label artwork with the U.S. Copyright Office to protect the crest’s elaborate design and background art.
Ensured TTB compliance by accurately listing the AVA and alcohol content.

Result: A cohesive IP strategy minimized the risks of both brand confusion and unauthorized replication of the label design.

Practical tips for protecting wine packaging and labels

Use written agreements for artwork

Whenever hiring freelance designers or agencies:

Clarify ownership: Decide whether you, as the winery, will own the full copyright upon creation, or whether the artist retains some rights.
License scope: Define if the artwork can be used across multiple product lines, websites, or future limited editions.
Work-for-hire provisions: In many cases, you must explicitly state that the work is “made for hire,” otherwise the artist may retain the copyright.

Conduct thorough searches before launch

USPTO TESS: Check for existing marks that could conflict with your proposed brand name, logo, or slogans.
Copyright Office records: If using stock imagery or previously commissioned art, ensure no overlapping claims or restrictions exist.
Appellation guidelines: Verify any TTB or AVA requirements for wording, disclaimers, or usage permissions.

Register, monitor, and enforce

Timely registration: File for trademark registration as soon as you decide on a brand. Similarly, register label designs or other major creative elements with the Copyright Office.
Monitoring new filings: Watch for potential conflicts in the USPTO Official Gazette and relevant creative marketplaces (e.g., popular design platforms).
Take swift action: If you spot an infringing label or brand name, consider sending a cease-and-desist letter or filing an opposition (for trademarks) or infringement suit (for copyright) where appropriate.

Plan for international protection

For wineries aiming to export or eventually tap into foreign markets (EU, UK, Asia, etc.):

Trademark extension: The Madrid Protocol allows you to extend your USPTO registration internationally through WIPO (wipo.int).
Labeling laws abroad: Investigate local regulations on disclaimers, mandatory health warnings, and protected geographical indications (like “Rioja” in Spain or “Bordeaux” in France).

Conclusion

In a competitive landscape where packaging and labeling speak volumes about your wine’s quality and origin, both copyright and trademark laws serve pivotal roles. Copyright can guard the creative essence of your label—its artwork, typography, and visual flair—while trademark secures your brand identity, ensuring that names and logos become cornerstones of consumer trust.

When carefully managed, these protections deter copycats, elevate brand perception, and may even become valuable business assets for expansions or partnerships. However, success hinges on anticipating legal hurdles, from TTB compliance to potential conflicts with existing marks or appellations.

Why work with Dreyfus?

Recognized Expertise: With over 20 years of experience in intellectual property and a deep understanding of wine regulations, our team assists clients in creating ironclad label strategies.
Global Network: We facilitate international registrations, ensuring that wineries eyeing overseas markets remain protected under multiple jurisdictions.
Tailored Guidance: Each winery’s story is unique. We offer strategic advice adapted to your creative vision, marketing goals, and compliance needs.

The cabinet Dreyfus et Associés is in partnership with a worldwide network of lawyers specialized in Intellectual Property.

Ready to protect your wine’s visual identity?

Contact us to develop a customized plan to safeguard your label and brand assets.
Subscribe to our newsletter for the latest legal updates in wine labeling and IP.
Download our practical guide, “5 Essential Tips for Copyright and Trademark Protection in Wine Labeling,” featuring case studies and checklists.

Additional Resources

USPTO: uspto.gov
TTB: ttb.gov
U.S. Copyright Office: copyright.gov
WIPO: wipo.int
Graphic Artists Guild: graphicartistsguild.org

Shape your wine’s story with confidence—fortify your labels and packaging using robust legal frameworks.

Trademark registration for a wine or a winery: key steps and common pitfalls

Written by Dreyfus17/04/2025

In the highly competitive world of wine production and distribution, standing out often hinges on building a distinctive identity—from the name of your winery or vineyard to the label on each bottle. In the United States, securing a trademark for your wine brand is one of the most effective ways to protect this identity. However, navigating the trademark system can be challenging, particularly when dealing with additional regulations related to wine labeling and geographical indications.

This article provides a detailed look at the trademark registration process for wines in the U.S., highlights frequent legal and regulatory pitfalls, and offers practical tips to safeguard your brand from costly conflicts. Whether you produce a Napa Valley Cabernet Sauvignon or a Willamette Valley Pinot Noir, a robust trademark strategy is vital for long-term success.

Why protect your wine brand or winery name?

Legal imperatives

Exclusive right to use the mark: By registering your trademark with the United States Patent and Trademark Office (USPTO), you gain nationwide priority over the use of the mark for the goods and services specified in your application.
Litigation leverage: Should a competitor attempt to adopt a similar name or label, holding a federal trademark registration bolsters your position in court. It allows you to potentially recover damages and attorneys’ fees, and it offers a legal presumption of validity and ownership of the mark throughout the U.S.
Protecting an intangible asset: Your brand is intellectual property that can be licensed, sold, or used as a valuable business asset. According to various industry reports, strong brand recognition can increase a winery’s overall valuation and attract investors, distributors, or joint-venture partners.

Economic stakes

Credibility for buyers and importers: Wine buyers—including restaurants, retailers, and wholesalers—gravitate toward well-branded products. A registered trademark signals professionalism and provides assurance that you take your business seriously.
Investor appeal: Private equity and other investors in the wine sector look favorably on wineries and wine brands that have protected their names. This is because a clear trademark strategy mitigates the risk of future legal complications.
Facilitating international expansion: With the U.S. as one of the largest wine-consuming nations in the world, many producers also aim to export. Having a federal registration can be a strong basis for filing in other countries through the Madrid System managed by the World Intellectual Property Organization (WIPO).

(Stat Note: According to the Wine Institute (wineinstitute.org), U.S. wine sales—domestic and imports—have consistently exceeded 400 million cases per year, reflecting robust demand and heightened competition in branding.)

Marketing and brand equity

Differentiating your AVA or winery story: American Viticultural Areas (AVAs) such as Napa Valley, Sonoma County, Willamette Valley, and Finger Lakes are integral to a wine’s identity. A trademark allows you to highlight unique qualities while avoiding consumer confusion with other wineries in the same region.
Long-term consumer loyalty: Once consumers come to trust a wine brand, they tend to become repeat buyers, seeking out new vintages or related labels under the same trademark.
Consistent branding across channels: A trademark gives you the foundation to unify your online presence, labeling, packaging, and promotional materials under a single, well-protected identity.

Trademark law and regulatory bodies in the U.S.

The USPTO

The United States Patent and Trademark Office (USPTO) is the primary federal agency for trademark registration. Once granted, a federal trademark registration offers protection across all 50 states and U.S. territories.

Term of protection: Initially valid for 10 years and renewable indefinitely, provided you file timely maintenance documents and demonstrate continued use.
Filing method: Online submission through the Trademark Electronic Application System (TEAS) is the standard.

State trademarks

In addition to federal registration, some wine producers opt for state-level trademarks (e.g., California Secretary of State for wineries in Napa). However, these provide limited geographic protection. For wineries hoping to sell across state lines, a USPTO registration is more robust.

TTB labeling regulations

The Alcohol and Tobacco Tax and Trade Bureau (TTB) (ttb.gov) oversees wine labeling and advertising. While TTB approval is separate from trademark registration, certain TTB regulations intersect with trademark considerations:

Brand name approval: The TTB might reject a label if it includes misleading geographic claims or references.
Appellation of Origin: Using names like “Napa Valley” or “Sonoma Coast” requires adherence to specific TTB and state-level rules regarding the percentage of grapes sourced from those regions.
Misleading terms: Terms that falsely imply certain winemaking practices or locations can run afoul of both TTB rules and trademark law.

Key steps for registering a wine trademark

Conducting a comprehensive clearance search

Before filing an application with the USPTO, it is crucial to perform a trademark clearance search.

USPTO Database: Search the TESS (Trademark Electronic Search System) to check for identical or similar marks.
Common Law Databases: Not all trademarks are registered. Many wineries rely on common law rights, so also search corporate names, domain names, and wine competition listings.
International Databases: If you plan to export, consider searching the databases of the EUIPO (European Union Intellectual Property Office) and the WIPO (World Intellectual Property Organization).

(Industry Stat: The USPTO receives tens of thousands of trademark applications per month across all industries. In the wine and spirits sector, the volume has been steadily increasing, reflecting the rise of boutique and craft producers.)

Classification and identifying goods/services

The USPTO uses International Classes under the Nice Classification System. Wine typically falls under:

Class 33: Alcoholic beverages (except beers).
Potential additional classes: If you provide wine club subscriptions (Class 35 for retail services) or tasting events (Class 41 for entertainment services), ensure they are included.

Precision in describing goods and services is crucial. An overly broad description might lead to either refusal or vulnerability to partial cancellation later, while an overly narrow description might limit brand expansion.

Filing the application

This step involves submitting a TEAS form via uspto.gov. Key elements of the application include:

Owner details: Whether you’re filing under an individual or corporate entity name.
Basis for filing: Use-based (Section 1(a)) if already in commerce, or intent-to-use (Section 1(b)) if you plan to commercialize soon.
Specimen (if applicable): If filing on a use basis, you must provide a label, packaging, or marketing materials showing how the mark is used in commerce.

Examination, publication, and opposition

Initial review: A USPTO examining attorney checks for compliance with procedural and substantive requirements.
Office actions: The examining attorney might issue an office action requesting clarifications, disclaimers, or refusals based on confusing similarity to an existing mark.
Publication in the Official Gazette: Upon acceptance, the mark is published. Any party who believes they would be harmed by the registration has 30 days to file an opposition before the Trademark Trial and Appeal Board (TTAB).

Registration and maintenance

If unopposed (or if you win an opposition proceeding), the USPTO issues a Certificate of Registration. The trademark is initially valid for 10 years, with a Section 8 Declaration of continued use due between the 5th and 6th year, and subsequent renewals required every 10 years.

Common pitfalls in wine trademark filings

Geographic misdescriptions and AVA conflicts

Using a protected AVA name like “Napa Valley” or “Santa Barbara County” without meeting the TTB’s sourcing requirements can trigger:

Refusal by the USPTO: On grounds of deceptively misdescriptive or primarily geographically descriptive if you do not meet TTB criteria.
Challenges from regional associations: Groups like the Napa Valley Vintners or the Oregon Wine Board vigorously defend their geographic designations.

Likelihood of confusion with existing marks

A slight variation in spelling may not be enough to avoid confusing similarity.

Example: “Cascade Hills Winery” vs. “Cascade Hill Vineyards” could be considered too close in the eyes of the USPTO if both produce wine in overlapping markets.
Legal consequences: If your mark is deemed confusingly similar, it can lead to refusal during examination or, worse, an opposition proceeding by the existing mark owner.

Improper use of foreign terms

Wine producers sometimes use French, Italian, or Spanish terms to evoke Old World charm. However, terms that are generic or descriptive in a foreign language can face refusal under the doctrine of foreign equivalents.

Example: Using “Château” for a U.S. winery might raise descriptive issues unless the overall mark has distinctiveness.

Timing issues and lack of monitoring

Late filing: Launching a brand in multiple states before filing can allow competitors to preempt your rights.
No watch service: Failing to monitor the USPTO Gazette or other platforms means missing the chance to oppose similar wine marks within the TTAB’s strict deadlines.

Case studies, statistics, and a hypothetical client

Case study: Green Valley Vineyards

Green Valley Vineyards wanted to expand distribution throughout the U.S. While the owners had used “Green Valley” informally for years, they discovered mid-expansion that a California winery called “Greenvalley Estate” was already registered with the USPTO.

Result: A TTAB opposition forced Green Valley Vineyards to rebrand to “GV Vineyards” and revise all their labeling and marketing materials—a costly endeavor in the middle of national expansion.

U.S. wine trademark data

A 2025 USPTO annual report noted a 15% year-over-year increase in wine-related trademark applications, highlighting the explosive growth of both boutique wineries and private-label ventures in the U.S. market. This surge correlates with the rise in e-commerce wine sales and direct-to-consumer shipping laws liberalizing in several states.

Fictional client example: Autumn Harvest Wines

Autumn Harvest Wines, based in the Finger Lakes region of New York, decided to register a new brand for their Riesling line—“Autumn Mist.” Through a comprehensive clearance search, they discovered a potential conflict with an Oregon-based brewer that had “Autumn’s Mist Ale.” Their attorney advised minor changes in the label design and the goods description to reduce confusion.

Outcome: The brand launched smoothly under a slightly altered name, “Autumn Mist Riesling,” circumventing likely opposition from the brewer.

Practical tips for a successful wine trademark strategy

Consult an attorney or IP specialist

Wine law intersects with traditional trademark law, TTB regulations, AVA restrictions, and occasionally import-export rules. An experienced intellectual property attorney or specialized consultant can:

Conduct a thorough clearance search, including common law and international resources.
Advise on naming conventions, disclaimers, and label design to comply with TTB and USPTO requirements.
Manage the entire trademark application process, from filing through potential TTAB proceedings.

Plan for international expansion

Many U.S. wineries eventually reach beyond domestic markets. A federal trademark registration can serve as a basis for Madrid System applications, extending coverage into key wine-consuming nations like Canada, the UK, China, or Japan.

Avoid brand squatting: Certain countries see opportunistic registrations by third parties who anticipate the future arrival of an American brand, then demand high fees to release the name.
Consult local counsel: In addition to WIPO filings, each country may have local regulations, especially concerning geographical indications or local labeling laws.

Implement a trademark watch and enforcement program

USPTO Gazette monitoring: Subscribe to a watch service to track newly published marks in wine, spirits, or related categories.
Active enforcement: Sending cease-and-desist letters or filing oppositions at the TTAB can deter infringers and demonstrate your commitment to brand protection.
Periodic audits: Regularly review your own label usage, domain names, and expansions into new products (e.g., wine spritzers, wine-based cocktails) to update your trademark portfolio.

Conclusion

Trademark registration is more than just a legal formality—it is a cornerstone of your brand’s identity, reputation, and long-term market success. In an industry as storied and dynamic as wine, a strong trademark not only shields you from imitators but also fortifies your brand story in the minds of consumers.

By proactively registering and maintaining your trademark, you signal quality, distinction, and credibility. For producers whose goal is to stand out in the crowded aisles of local retail shops or in high-end restaurants nationwide, trademark protection is a non-negotiable step in building a legacy.

Why work with Dreyfus?

Recognized Expertise: Our team has over 20 years of experience in intellectual property and extensive knowledge of wine law.
Global Network: We assist clients with international filing strategies, ensuring worldwide protection for brands poised for export.
Customized Approach: We thoroughly analyze your situation to develop a specialized trademark strategy that fits your unique goals, whether you’re a boutique winery in Oregon or a large-scale producer in California.

The cabinet Dreyfus et Associés is in partnership with a worldwide network of lawyers specialized in Intellectual Property.

Do you need help securing your wine brand?

Subscribe to our newsletter to stay informed of the latest legal developments in wine and intellectual property.
Download our practical guide on “10 Critical Mistakes to Avoid When Trademarking a Wine in the U.S.” (including case studies, expert tips, and a step-by-step checklist).

Useful External Links for Further Reading

USPTO: uspto.gov
TTB: ttb.gov
Wine Institute: wineinstitute.org
WIPO: wipo.int

Together, let’s protect and elevate your winemaking heritage.

How to win a cancellation action against a French trademark or invalidity proceedings before the INPI?

Written by vincent@agencepeach.fr12/02/2025

Effective trademark management in France requires a thorough mastery of the administrative procedures needed to challenge a trademark’s validity or obtain its revocation. The French National Institute of Industrial Property (INPI) provides simplified mechanisms for invalidation (nullity) and revocation (déchéance), enabling stakeholders to maintain fair practices in the field of trademarks.

In 2023, trademark-related cases account for 91% of all procedures before the INPI. Invalidation actions have risen to 22% (compared to 19% in 2022), while revocation procedures have decreased from 17% to 9%.

Introduction to Invalidation and Revocation Procedures before the INPI

The procedures for invalidation and revocation, introduced by the EU Trademark Package in 2020, allow you to challenge improper registrations or revoke a trademark. They offer a faster and more cost-effective alternative compared to court proceedings.

Invalidation (Nullity): The trademark was invalid from the moment it was registered. It is therefore removed from the register with retroactive effect.
Revocation (Déchéance): The trademark has lost its validity due to events occurring after its registration. Its effects end only for the future.

Key statistics:

In 2023, 60% of successful invalidation actions were based on absolute grounds.
Favorable revocation decisions for non-use represent 75% of cases initiated since 2021.

These tools protect market integrity and ensure fair competitive practices.

The Invalidation Procedure

Invalidation aims to eliminate trademarks that should never have been registered.

Absolute Grounds for Invalidation

A trademark may be invalidated if it:

Lacks distinctiveness: e.g., generic or descriptive terms.
Is contrary to public policy or accepted principles of morality.
Misleads the public: e.g., about the geographical origin or quality of the products.

Relative Grounds for Invalidation

A trademark may be invalidated for infringing prior rights:

Identical or similar trademark already registered.
Pre-existing copyright, trade names, or domain names.

Dive Deeper: When a trademark is challenged on relative grounds, it is crucial to present a clear comparative analysis of the distinctive elements, including phonetics, appearance, and meaning. Citing relevant case law bolsters your arguments.

Case Law Example: In 2022, a French trademark was invalidated for causing confusion with an EU trademark registered 5 years earlier (Source: INPI).

Extended Practical Example: A competitor registered a trademark using the dominant color of a pre-existing company, combined with similar wording. An expert analysis of consumer perception was crucial in convincing the INPI to invalidate the trademark on relative grounds.

The Revocation Procedure

Revocation addresses abuses or omissions that occur after registration.

Non-Use of a Trademark

If a trademark is not used within 5 years of its registration, it can be revoked. For instance, a trademark registered in 2017 with no proven use by 2023 could be subject to revocation.

Focus: Evidence of use may include invoices, advertising materials, or packaging samples. The absence of such documents weakens the owner’s position.

Becoming a Generic Term

Abusive use can cause a trademark to lose its distinctiveness. Examples include Aspirin or Kleenex, which have become generic terms in some countries.

Misleading Use

Use that misleads consumers about the nature or origin of products may lead to revocation.

Recent Example: In 2021, a trademark was revoked for misleading use after being applied to products radically different from those stated in the registration.

Administrative Process before the INPI

Filing the Application

Identify the targeted trademark.
State the grounds (invalidation or revocation).
Include the supporting evidence (non-use reports, market research, etc.).

Practical Tip: For complex applications, engaging an attorney can be pivotal to avoid rejection for incomplete filings.

Adversarial Phase

Each party presents its arguments and evidence through structured exchanges. Counter-evidence may include customer testimonials or financial data.

Final Decision and Appeals

Effects of Decisions:
- Invalidation: Retroactive effect.
- Revocation: Future effect only.
Appeals may be filed with the Paris Court of Appeal.

Practical Cases and Case Law Examples

Example of an Invalidation Action: A French trademark was invalidated for failing to meet distinctiveness requirements (Source: INPI, case 2022-03).
Example of a Revocation Action: A trademark not used within 5 years of registration was revoked in 2023 for non-use (Source: INPI case law).

Advanced Strategies to Maximize Your Chances of Success

Comprehensive Evidence Analysis: Gather persuasive documents such as expert reports, market studies, or consumer surveys to substantiate your claims.
Leverage Case Law: Reference similar cases to strengthen your position.
Prepare a Strategic File: Ensure each piece of evidence is presented coherently and in an organized manner.
Professional Support: Consult with intellectual property experts to maximize your odds of success.

Analysis of Recent Trends in Invalidation Actions

Increase in International Actions

With the rise of cross-border trade, trademark disputes involving international parties have risen significantly. Many companies seek to extend trademark protection beyond national borders, leading to conflicts with similar or identical trademarks registered in other jurisdictions. This trend is pushing owners to step up monitoring of their intellectual property assets.

Key Statistics:

In 2023, 35% of invalidation actions involved international parties (source: INPI).
A 15% increase in oppositions to European trademarks was observed during the same period.

The Rise of Digital Tools

The INPI and other organizations have implemented digital platforms to streamline the filing and tracking of procedures. These tools offer greater transparency and faster management of disputes. However, they also demand quick adaptation by companies to ensure accuracy and completeness in their filings.

Focus on Distinctiveness

Invalidation actions based on a lack of distinctiveness have been particularly numerous in 2023. Companies are now using more rigorous methods to demonstrate that contested trademarks are not sufficiently distinct from generic products or services.

Resources and Practical Tools

Useful Links for Professionals:

INPI Platform: Link to the filing portal
- Enables online submission of invalidation and revocation requests.
- Provides educational resources on procedures.
INPI Trademark Database: Trademark search
- Tool for searching registered trademarks and identifying potential conflicts.
WIPO (World Intellectual Property Organization):
- Platform for monitoring trademarks internationally (WIPO link).
Practical Guides:
- Download the guide on trademark disputes (INPI).

Analysis and Monitoring Tools:

Semrush / Ahrefs / Ubersuggest: Keyword analysis associated with trademarks to anticipate disputes.
TrademarkVision: AI-based tool for detecting visual similarities between trademarks.
Google Alerts: Track public mentions of your trademark or potential conflicts.

Our Expertise

At Dreyfus & Associés, we understand the importance of protecting your intellectual property assets while maintaining your competitiveness in the marketplace. Our services include:

Audit and Strategy:
- Evaluation of trademarks and identification of potential risks.
- In-depth analysis of grounds for invalidation or revocation.
Representation before the INPI and the Courts:
- Meticulous preparation of case files with convincing evidence.
- Robust defense in adversarial proceedings.
Strategic Monitoring:
- Monitoring competing trademarks.
- Early detection of possible conflicts.
International Management:
- Coordinating litigation across multiple jurisdictions.
- Aligning strategies on a global scale.

Contact us for a personalized consultation and learn how we can support you in all your initiatives.

FAQ

What is the difference between invalidation and revocation?

Invalidation addresses issues at the time of registration (e.g., lack of distinctiveness).
Revocation addresses abuses or omissions that occur after registration (e.g., non-use, misleading use).

What are the deadlines for filing an action?

There is no time limit for filing an invalidation action.
A revocation action may be initiated as soon as non-use is established (after 5 years).

How much does a procedure before the INPI cost?

Filing fees are generally moderate, with a base cost of €600 for an invalidation or revocation procedure. Attorney fees are additional.

Can I appeal an INPI decision?
Yes, a decision can be appealed before the Paris Court of Appeal within one month of the notification.
Why should I consult an intellectual property expert?
An expert ensures strategic analysis and thorough case management, significantly increasing your chances of success.

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

Identifying Infringing Content: This involves automated tools or manual analysis to pinpoint problematic posts.
Notifying the Host: A formal request, including evidence of the violation, is submitted to the relevant platform.
Review by the Host: Moderation teams assess the compliance of the request with internal policies and the legal framework.
Content Removal: If the complaint is valid, the illegal content is swiftly deleted or blocked.
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.

Proactive: Maintain a Visible and Active Presence

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

Preventive: Implement Structured Monitoring

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

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.

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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.

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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!

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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)

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)

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.