Legal Watch: Two people file a complaint regarding the same domain name

Written by Dreyfus17/03/2022

When two people file a complaint regarding the same domain name, the domain name’s transfer isn’t necessarily granted to the trademark rights’ owner

The Uniform Domain Name Dispute Resolution Policy specifies in point 4) a) that the relevant disputes involve those where a domain name is “identical or confusingly similar to a trademark in which the complainant has rights”.

This is the case when the domain name has been registered and used in bad faith, when the registrant has no rights or legitimate interests and when the domain name registered by the domain name registrant is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Recently, the WIPO Arbitration and Mediation Center considered that, although the applicant had previous trademark rights, the transfer of the disputed domain name shall happen on behalf of the other complainants.

The complainants in this case were Victoria and David Beckham.

The first complainant, Victoria Beckham, a former member of the Spice Girls, is specialized in haute couture and commercialises clothes under her name on the website “www.victoriabeckham.com”. The trademark “VICTORIA BECKHAM” is notorious, especially in the United-Kingdom: it was designated as Designer Brand of the Year in 2011.

The second complainant is David Beckham, renowned for his soccer career, as well as for his professional collaborations with major brands.

He owns several trademarks, invoked in support of the complaint and in particular some registered in the United States “BECKHAM” No. 3342223, dated 20 November 2007, renewed, relating inter alia to clothing products and the trademark “BECKHAM” No. 4208454, dated 18 September 2021 in class 3, which includes perfumes. Thus, the trademarks cited in support of the complaint belong solely to him.

The Beckhams discovered the domain name <usbeckham.com> registered on 8 July 2020, after the registration of Mr Beckham’s trademarks. This domain name linked to a page selling clothing, handbags, shoes and accessories. The site was titled “BECKHAM® Official Online Boutique” and featured the header “BECKHAM” in a font similar to Victoria Beckham’s site. It also had a “Perfume” tab, which redirected to the <genewus.com> website, selling perfumes but also a range of swimwear bearing the name “Victoria Beck”.

Firstly, the expert observed that both complainants shared the same name BECKHAM, for which David Beckham had acquired trademark protection for perfumes and clothing. Hereby, the expert considered the consolidation of the complainants well-founded.
According to the expert the disputed domain name may generate a risk of confusion with the earlier trademarks as it incorporates the word BECKHAM.
Concerning the legitimate interest and the potential rights of the defendant, the complainants argue that they have not given any authorization to the defendant to use their name and that the latter held no rights on the sign “BECKHAM”.
The use of the domain name is confusing for products in competition with those of the complainants and have a title with the symbol ® implying that the respondent is the owner of the trademark “BECKHAM”. The term “Official” also suggests that the website is official. This demonstrates the respondent’s lack of good faith: the expert therefore considers that she has no right nor legitimate interest in the domain name.
Furthermore, with regard to the registration and use in bad faith, the expert considers that the applicants are very famous and that the defendant could not have been unaware of the applicants’ trademarks “BECKHAM”, given that she lived in London and in view of her interest in “high fashion” as mentioned on her website. Moreover, her name is not “Beckham”. However, this name has some significance in the world of high fashion through the applicants’ trademarks. The expert therefore considers that the defendant necessarily registered and used the domain name in bad faith.
Therefore, the complaint was accepted and the domain name was transferred to the first complainant, Victoria Beckham.

This ruling is interesting since most of the decision’s reasoning is based on Mr. Beckham’s trademarks. The trademarks in question were protected in particular for “clothing” and “perfumes”. Those same products are found on the disputed website.

A research reveals that there are several “VICTORIA BECKHAM” trademarks, but at first sight, they do not belong to Mrs. Beckham herself, but to her company. Although the company bears the same name, it was not a complainant in this litigation.

The consolidation of complainants makes it possible to consider that “2 become 1″ for the purposes of the complaint. Anyone of the complainants can obtain the disputed domain name whereas it is not decisive which one of them is mentioned as the actual trademark owner in the complaint.

Perhaps Victoria Beckham could have argued that she has common law rights regarding the name “BECKHAM”. However, these rights would have been in competition with those of her company.

(WIPO Arbitration and Mediation Center, Case n°D2021-1841, Victoria Beckham, David Beckham v. Contact Privacy Inc. Customer 1247653581/ Cynthia Panford)

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

Written by Dreyfus11/03/2022

*Image generated by DALL-E 3, Microsoft Version

The metaverse -a parallel virtual world which is booming in the Web 3.0 era- has become an unavoidable topic. This fictional world will combine prospectively and simultaneously virtual reality (VR), augmented reality (AR), blockchain, crypto-currencies, social networks, etc. Many companies are already planning to do business in this world following the company’s digital transition.

As a result, trademark applications covering products and services related to “digital virtual objects” have been multiplying since the end of 2021.

But how to effectively protect this new activity that calls for a whole new lexicon?

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

In a few words, the metaverse can be defined as a fabricated virtual universe -mixing the words “meta” and “universe”, to designate a meta-universe in which social interactions would be extended and digitized. It seems to be directly inspired by the 1992 novel “Snow Crash” (“Le Samourai virtuel” in French) by Neal Stephenson.

This parallel digital environment embodies a new way to explore innovative and ambitious projects from a different perspective, before they take concrete shape in the actual world.

As an example, Aglet created its own range of sneakers, the “TELGAs”, after launching it as a digital collection for online games. The collection is also available on the OpenSea platform, alongside brands such as Nike and Adidas, who have stepped up to virtual collections in the form of Non-Fungible Tokens (NFTs).

NFTs, whose transactions are mostly hosted on the Ethereum blockchain, are essential components of the metaverse. This digital asset category, which is distinct from crypto-currencies such as Bitcoin and Ether, allows for authentic and unforgeable certification of the ownership of one of these virtual digital objects offered for sale in the metaverse.

The metaverse follows on from social networks and will undoubtedly allow companies to establish a strong online presence, beyond the operation of a traditional website.

Whether the metaverse is a trend that will last and become anchored in our culture is uncertain, though many large companies have already taken the plunge.

Before venturing into the metaverse, it is necessary to register specific trademarks, adapted to the goods and services of the metaverse. This will ensure efficient protection against infringement and will enhance the value of the company’s brand assets. In this respect, it is important to draft an appropriate wording for the trademark.

2.How to design an adequate and optimal protection?

When launching an activity into the metaverse, the definition of the goods and services should be careful considered as the crucial element of a trademark is its wording above all. The filing process for a trademark application with the INPI, EUIPO, or any other national industrial property office, will indeed guarantee, to some extent, a monopoly on goods and services determined. This will confer also a commercial value to the trademark, once it is registered by an industrial property office.

As a reminder, once a trademark application has been filed, it is impossible to add classes of goods and services and to add any additional good or service, nor to add goods or services. Only a modification in the sense of a restriction of the wording will be considered.

The most relevant classes, which will contribute to the wording, are classes 9 and 41.

Class 9 allows for NFT coverage, although the product may not be accepted as such. More explanatory wording will be required. For example, one can target “downloadable digital products, i.e. digital objects created using blockchain technology”. These goods can be of all kinds: clothing, works of art, etc.

Class 41 covers the components of entertainment. In this respect, MMORPGs, which are defined as interactive games, which by their nature and concordance are closely associated with the metaverse, could be covered in class 41.

When a virtual trademark is to be exploited through points of sale, services class 35 seems unavoidable in order to include, among other things, “retail store services for virtual goods”.

In a complementary vision, it will then be necessary to think of designating the corresponding goods in the classes that classically cover them.

3.Virtual trademarks registered in various sectors

In early February 2022, Pumpernickel Associates, LLC filed a trademark application for “PANERAVERSE” No. 97251535 with the USPTO. This filing, initiated for virtual food and beverage products, NFTs and the ability to purchase real products in the virtual world, demonstrates a definite willingness by the American company to deploy these outlets in the metaverse.

McDonald’s has also filed trademark applications (No. 97253179; No. 97253170; No. 97253159) for “the operation of a virtual restaurant offering real and virtual products” and for “the operating a virtual restaurant online featuring home delivery”. In addition, the U.S. fast food chain also plans to obtain a trademark for “on-line actual and virtual concerts and other virtual events” and other entertainment services for a virtual McCafe (No. 97253767; No. 97253361; No. 97253336).

These are not the only trademark applications filed at this time; Facebook and Nike pioneered this trend, followed by luxury, textile, cosmetics and perfume brands. L’Oréal, for example, has filed several registration applications for perfume brands from its portfolio, in their digital version, with the French National Institute of Industrial Property (INPI)

4.Conceptual considerations

In light of this unprecedented craze around the metaverse, one might wonder whether these immaterial goods, whose projected use is exclusively intended for virtual exploitation, should not come under a new particular category of products, not defined to date under the Nice Classification.

The addition of an ad hoc class dedicated to these virtual goods and services seems complex insofar as many of them could overlap with already existing products and services. The list could be very long.

In any case, drafting a trademark for the metaverse requires a meticulous definition of the goods and services concerned.

The Nice Classification, despite the successive trademark filings made since November 2021, does not include for the moment, in its explanatory notes or product suggestions, any reference to goods and/or services closely related to the metaverse or NFTs. Perhaps it will do so shortly in view of the developments encountered.

What will be the boundaries between the metaverse and the actual world? The question is a structuring one for trademark law and competition law. The European Commissioner Margrethe Vestager and the president of the US antitrust authority, Lina Khan, are wondering about “the right time to put in place competition rules in this emerging sector”.

Dreyfus accompany you in the protection of your brands in the metaverse era and to draft with you a wording of goods and services adapted to your activity.

Is it possible to invoke a trademark that is not protected in the defendant’s country?

Written by Dreyfus08/03/2022

The trademark invoked by the applicant does not necessarily have to be protected in the country of the respondent

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISIONVente-privee.com v. 郑碧莲 (Zheng Bi Lian)Case No. DCN2021-0004

In order for a UDRP complaint to succeed, it is necessary to prove a trademark right similar or identical to the domain name, generating a risk of confusion. Then, it must be established that the respondent has no rights or legitimate interests, and finally, it must be shown that the respondent has registered and used the name in bad faith.

In order to establish this bad faith, it is essential to show that the respondent has prior knowledge of the applicant’s rights and that the disputed registration is aimed at these rights. Being the owner of a trademark protected in the country where the defendant is established is therefore a considerable asset. However, it is not a requirement.
Vente-privee.com is a French e-commerce company that has been operating for 20 years in the organization of event-based sales of all kinds of products and services at reduced prices, including major trademarks.
At the beginning of 2019, Vente-privee.com began a process of unifying its trademarks under a single new name: VEEPEE. This rebranding was widely promoted internationally. It had previously secured trademark rights to the “VEEPEE” sign via a filing an EUTM in November 2017 and via an international trademark filed the same day covering Mexico, Monaco, Norway and Switzerland. Vente-privee.com also owns numerous domain names matching “VEEPEE” such as <veepee.es>, <veepee.it>, <veepee.de> and <veepee.com>.

Having detected the registration of the <veepee.cn> domain name reserved in 2018 by a China-based registrant, the company filed a complaint with the WIPO Arbitration and Mediation Center seeking the transfer of the name.
The likelihood of confusion was easily admitted by the expert, who considered the domain name to be identical to the applicant’s earlier trademarks. On this occasion, he recalls that the trademark does not need to be registered in a specific country for the assessment of the likelihood of confusion.

This is in line with the assessment of WIPO’s Overview 3.0, which specifies in its section 1.1.2, quoted by the expert, that in view of the international nature of domain names and the Internet, the jurisdiction in which the trademark is protected is not relevant for the analysis of the first criterion. Bearing in mind, however, that this factor may be important for the examination of the other criteria.

the Panel notes that the Respondent has no business relationship with the Complainant and has not received any authorization from it to reserve the disputed domain name. As the Respondent did not respond to the Complaint, the Panel finds that Vente-privee.com has established that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally, on the issue of bad faith, the expert insists on the arbitrary nature of the name VEEPEE: “VEEPEE is a made-up word with no particular meaning in Chinese or English”. He also highlights the fact that the domain name has not been actively used, but on the contrary refers to a website in English, accessible to all, on which it is for sale.

Therefore, the expert orders that the disputed domain name <veepee.cn> be transferred to the Complainant.

This decision is a reminder that it is important to choose the right trademarks to be used in a UDRP complaint. Ideally, it is necessary to prove a registration in the country of the registrant, if possible prior to the domain name. In the absence of a registration in the relevant jurisdiction, it is important to demonstrate that the trademark is used and known outside the boundaries of its registration.

In this instance, we note that the disputed domain name is indeed subsequent to the applicant’s trademarks, but prior to the Vente-privee.com rebranding operation by almost a year. This information might have required analysis had the Respondent responded to the Complaint. Information that could have been counterbalanced, however, with the registration date of the name <veepee.com> (the <.com> targeting the international), which is very old: December 6, 1999.

Online Trademark Protection

Written by Dreyfus07/03/2022

Monitoring, protecting and promoting your trademarks online: these are the core business activities of the Dreyfus law firm.

Our team assists you to anticipate, secure and optimize your trademarks, allowing you to enhance your business.

A successful trademark registration does not mean that your trademark is automatically protected. Nonetheless, your trademark has an undeniable business value and as such warrants to be monitored and defended. One of the important issues is that public entities such as the INPI, EUIPO or WIPO are not required to notify prior trademark owners when a third-party applicant files an application for a similar or identical trademark. Since these organisms do not assess whether trademark applications are likely to infringe earlier trademarks, it is up to the applicants to perform a prior art search. In other words, careful trademark monitoring is very important for an optimal and durable protection of your trademark. However, identifying risks and responding accurately, effectively and timely to potential harms is not always obvious.

That is why the Dreyfus team helps you monitor and protect your trademarks online. First, we detect potential infringements, then we inform you in due time when a (strongly) similar or identical trademark is filed.

Thanks to our innovative Dreyfus IPweb® solution, we are able to monitor and automatically detect trademark filings that are identical or similar to yours and to take steps against any potential infringement before a similar trademark enters the market. IPweb® provides direct access to a company’s domain name monitoring services. It covers all social media networks such as Facebook, Twitter, Instagram, and LinkedIn, as well as advertising platforms such as Google AdWords. Your trademarks are constantly monitored and you will be swiftly alerted in the event of a breach.

After assessing the similarity of the signs and the products and services in question as well as your chances of success, we will inform you immediately and, if necessary, advise you on the steps that should be followed. As it is better to be safe rather than sorry, it is important to act as quickly as possible and to contact the third-party applicant at an early stage, by sending him a warning, a letter of formal notice or even by filing an opposition against the trademark application to ensure that the said applicant uses an alternative name for his/her products and/or services.

Detecting potential trademark infringements and securing your trademarks online

We report potential trademark infringements on the Internet and social networks and we provide you with personalized advice regarding your portfolio management strategy, including weaknesses that could hinder the development of your (digital) business and give rise to possible litigation.

In this regard, we offer you appropriate and personalized strategies to anticipate dangers, such as online fraud (i.e. phishing, fake websites, identity theft, forged emails, etc.) which requires immediate action as it can be significantly damaging to the image and reputation of your trademark and may generate a financial loss.

For compliance purposes, we can help you put in place a strategy to prevent any breach caused by domain names. This includes – in addition to monitoring your trademark among Internet domain names – monitoring of your trademark on other social networks (such as Facebook, Twitter, LinkedIn, Instagram, YouTube, Snapchat) to detect and respond appropriately to any new breach.
With our intuitive platform, Dreyfus IPWeb®, we allow our clients to have access to – and closely follow their trademark files online. Moreover, our clients have access to the results of the performed surveillance on trademarks, domain names, corporate names or social networks. With these trace and control tools, we help you restructure the management of your trademark portfolio in an easy and accessible way.

Online trademark audits

The next step consists of performing a trademark audit. It is a crucial step to get a global and transversal view of the potential value of your trademarks and to anticipate risks such as conflicts regarding ownership, the loss of rights on an unused trademark or the expiration of your trademark rights. With thorough online trademark evaluations, we will bring to light potential harmful situations and assess the risks and opportunities in relation with your trademark. Besides, trademark audits become important assets when negotiating licensing or assignment agreements.

Furthermore, the Dreyfus team offers you personalized recommendations to strengthen your trademark rights. The online assessment and promotion services offered by the Dreyfus team will allow you to have an accurate and global overview of your situation, from a legal, commercial and technological perspective.

(Pre)litigation

The Dreyfus law firm assists you with the defense and enhancement of your rights and helps you resolve your disputes efficiently, quickly and amicably. With its detailed knowledge of trademarks in the digital environment, our team helps you settle your disputes online, out-of-court and in a confidential, strategic and efficient manner. Thanks to its know-how and its many clients, the Dreyfus team follows continuously and closely ongoing issues and has an increased vision of current and future risks.

The Dreyfus team will help you successfully defend and enhance your trademark rights and will assist you with the resolution of disputes, infringement actions, problems relating to domain names, as well as during mediation and arbitration procedures. Have you discovered a website that infringes on your trademark? Do you have a French or European Union trademark or an international trademark having effect in France or in the European Union and would you like to file an opposition to an application for registration of a French trademark or an international trademark having effect in France?

Dreyfus & Associates assists you in effectively and rapidly defending your rights. In this regard, we help you introduce an opposition procedure before the INPI to prevent the registration of a trademark that infringes on your prior rights. We also assist you in initiating an out-of-court settlement procedure before the WIPO Arbitration and Mediation Centre, including the resolution of national and international domain name disputes.

The next round of application for gTLDs

Written by Dreyfus02/02/2022

In 2013, ICANN launched a vast operation to remedy domain name saturation and promote competition by setting up new gTLDs. These new extensions have helped unclog the market for more traditional extensions such as “.com”.

With the next application window expected in 2022, many companies are already showing a strong interest in “.BRAND”, such as Uber, which reportedly announced it at an ICANN virtual meeting (as reported by a GoDaddy registrar).
The personalised extension has many advantages, such as trust, since the company only is able to allow the registration of a domain name in its “. BRAND”. It also shows the willingness of companies to invest in order to enhance their trademarks.

On the other hand, other companies, due to lack of use or for other reasons, such as the restrictions that weigh on any registry, decide to terminate their “.BRAND”. In May, June and July 2021, four companies proceeded to this termination. This is what the recent update of the ICANN website shows:

• The “.SWIFTCOVER” for the company Swiftcover of Axa.
• The “.RMIT” for the company Royal Melbourne Institute of Technology
• The “.DABUR” for the company DABUR India Limited
• The “.LIXIL” for LIXIL Group Corporation

In 2012, many big companies applied for their “.BRAND”. It should be noted, however, that this application has a significant cost. In addition to the technical and consulting fees, the amount to apply was US$ 180,000 per application in 2012.

With the challenges raised by the security on the Internet and the obligations that weigh on companies, especially to protect the data of their customers, it is very likely, despite these costs, that the next round will be a real success. Many “.BRAND” are successfully used today, both from a marketing point of view and in terms of the security they provide to Internet users.

About this topic…

♦How to prepare for the next round of applications to the <.mark>?

♦ICANN Summit: the fight against DNS abuse, a GAC priority

Are trademark payment notices always to be trusted?

Written by Dreyfus14/01/2022

Prepare and prevent, don’t repair and prevent…This saying also applies to trademarks, since fraudulent payment notices are becoming more and more common nowadays.

How is this happening?

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

It is therefore crucial to be vigilant.

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

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

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

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

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

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

Here are our advices.

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

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

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

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

About this topic…

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

The reputation of the trademark is not enough to prove typosquatting

Written by Dreyfus23/12/2021

When you are the owner of a well-known trademark and you detect a domain name that is almost identical to it, and moreover on sale for a substantial amount of money, it is tempting to consider that it is a case of typosquatting. However, it is essential to pay attention to details.

The Valeo Group

The Valeo Group, which specializes in the design, production and distribution of automobile components, and its affiliate, Valeo Services, have experienced this, after filing a complaint against the <valoservices.com> domain name registered in 2018, which was offered for sale for EUR 2288.

The applicants were respectively registered in 1955 and 1987 and the name VALEO was adopted in 1980. Together they have 59 research centers and 191 production sites. They have received numerous awards for their products. They also own several word marks based on the “VALEO” sign, notably in France, the European Union, China and the United States, and also hold semi-figurative marks including the name “VALEO SERVICE”. Finally, they operate the domain names <valeo.com> and <valeoservice.com>.

The respondent, who answered the complaint, describes himself as an engineer based in the United States who has a large portfolio of generic domain names.

The respondent believes that there is no likelihood of confusion between the disputed name and the complainants’ trademarks. It explains that “valo” means “light” in Finnish and that a search on the sign “VALO” on Google or on trademark databases does not reveal any trademark including “VALEO”.

While these arguments, especially the second one, are interesting, they have no place in the analysis of the likelihood of confusion between a trademark and a domain name, which consists of a simple side-by-side analysis of the two names. Since the omission of the letter “E” can be perceived as a spelling mistake, the expert considers that there is indeed a similarity between the signs.

After this first step, the expert does not address the issue of the defendant’s rights or legitimate interest, but directly addresses the issue of bad faith. On this point, the applicants state that their trademarks are very well known and rely on decisions of the Chinese and European Trademark Union Offices as well as on old UDRP decisions.

The Respondent reiterates its arguments regarding the use of the Finnish language and its clearance searches. The respondent states that it has several domain names in a foreign language or containing the term “service”.

The panelist is skeptical about mixing Finnish and English in a domain name but considers the respondent’s research that shows that a query on “VALO” does not lead to the complainants and the fact that many companies around the world are named VALO or have adopted a name beginning with VALO. Therefore, the complaint is dismissed. However, the expert points out that it is always possible to turn to a more appropriate procedure. The Panel also rejects the Respondent’s request to characterize the complaint as a reverse domain name hijacking.

Thus, it is advisable to put oneself in the shoes of the reserving party to determine whether he could have had knowledge of the trademarks, in particular by taking into account his country of origin and the field of activity in which the trademark is renowned. In this respect, the expert notes that the car parts sector is relatively discreet.

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.

About this topic …

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

How did Miley Cyrus manage to register her eponymous trademark despite the existence of the earlier Cyrus trademark?

Written by Dreyfus03/12/2021

Some cases are interesting because of the judicial outcomes, others because of the reputation of the Parties in the proceedings, and others because they fall into both categories.

This is the case of the judgment rendered by the General Court of the European Union on June 16, 2021. This decision opposed the European Union Trademark Office (EUIPO) to the company of the famous singer and actress Miley Cyrus: Smiley Miley. The latter is challenging the decision rendered by the Office in the dispute between it and the company Trademarks Ltd.

The genesis of this procedure was the European Union trademark application, in the name of Smiley Miley, of the word mark MILEY CYRUS in classes 9, 16, 28 and 41.

Cyrus Trademarks Ltd. lodged an opposition against said application, on the basis of its earlier European Union “CYRUS” trademark No. 9176306, registered for goods in classes 9 and 20.

After the Opposition Division partially upheld the opposition because of the likelihood of confusion, Smiley Miley filed an appeal that the EUIPO rejected.

Indeed, the EUIPO considered that there was a likelihood of confusion in particular because the level of attention of the relevant public varied from medium to high, that, by all means, the goods and at stake were identical and similar, and that, visually and phonetically, the signs were relatively similar.

Were the signs distinctive, different and differentiable?

The key criterion for assessing the risk as a whole is the overall impression that the trademark produces.

The Board of Appeal first tried to analyze the value of a surname compared to a first name and concluded that a surname has a “higher intrinsic value”. Then, the Court considered that neither the first name Miley nor the surname Cyrus are common in the European Union, “including for the English-speaking public”.

Not surprisingly, the applicant denounced this reasoning. The Court of First Instance recalled that these principles cannot be applied automatically, as they are principles drawn from experience and not set in stone. That said, as the singer and actress enjoys real renown, the assessment of the distinctive character of her mark would be less Manichean than it would have been for a trademark based on the first and last names of a non-famous person. In this regard, the Court of First Instance agreed with the applicant, considering that none of the elements of the mark “MILEY CYRUS” was more dominant than the other.

Regarding visual and aural levels, the Tribunal deemed that the trademarks were similar despite their differences.

The delicate examination of the conceptual comparison of signs

The applicant assessed that, due to Miley Cyrus’s fame, the mark was distinct from the earlier trademark. The EUIPO considered that the name and surname of the singer had not become a symbol of a concept.

The Court of First Instance accepted that Miley Cyrus was a character known to the general public in the ordinary course of events (a finding the Board of Appeal did not challenge).

When the Court of First Instance assessed the conceptual meaning of “MILEY CYRUS”, using the Larousse definition of “concept”, its research showed that, given her fame, the singer had indeed become the symbol of a concept.

On the other hand, and insofar as the artist had never performed using her surname alone, even though it is not common, the Court concluded that the public would not necessarily perceive the term “Cyrus” as referring directly to Miley Cyrus.

The Court therefore concluded that the “earlier mark has no particular semantic meaning for the relevant public”. Moreover, insofar as the concepts of the two trademarks were quite different, this had the effect of blurring their visual and phonetic similarities.

The law established that to qualify a likelihood of confusion, there must be an identity or similarity of the signs and an identity or similarity of the goods and services designated. Here, the Court of First Instance’s reasonings allowed to discard the likelihood of confusion between the two marks; the star entered the European Union trademark registry under No.012807111.

This decision serves as a reminder that great conceptual differences between two trademarks can benefit an applicant. This case also adds to the list of cases where the fame of names has allowed visual and phonetic similarities of signs to be easily dismissed.

About this topic…

♦ Towards increased protection for authors and performers: what does Directive 2019/790 bring to the harmonization of contract chains?

Influencers: be careful not to promote counterfeit products!

Written by Dreyfus15/09/2021

The Internet has changed the way we do business. From now on, advertising agencies are no longer the only ones to promote their client’s products; influencers have become the privileged interlocutors of brands wishing to make their products successful. If this approach does not seem abnormal, legal actions are flourishing against these people, for trademark infringement.

In a recent case, “Petunia Products, Inc. V. Rodan & Fields, et al.”, the plaintiff Petunia Products (“Petunia”) filed a complaint against Rodan & Fields for infringement of its trademark “BROW BOOST”. The latter had hired the influencer Molly Sims in order to promote its “Brow Defining Boost” product. On August 6, 2021, Federal Judge Cormac J. Carney dismissed the influencer’s motion to dismiss the complaint of alleged trademark infringement, in particular, because the plaintiff had succeeded in demonstrating that the promotion of the contested product could mislead consumers and create a likelihood of confusion between the prior trademark and the defendant’s product.

In particular, the judge argued that the Federal Trade Commission (FTC) declared that influencers and celebrities could be held liable for false or, at the very least, misleading advertising. Judge Carney drew a parallel with the case at stake and considered that every statement made by an influencer could amount to liability. Besides, and this is the main point of the first decision in this case, the judge took into consideration the risk of confusion, keystone of any claim for trademark infringement. In this case, this risk was genuine since the products were in direct competition with each other, from two competing companies operating on the same market, with a very similar name.

However, this decision must be balanced insofar as Judge Carney only ruled on the motion to dismiss filed by the influencer.

Concept and role of the influencer

It is necessary to understand the legal definition of “influencer”. In the opinion in Maximian Schrems v. Facebook Ireland Limited, Advocate General Bobek defines influencers as “everyday, ordinary internet users who accumulate a relatively large following on blogs and social media (…)”.

The French Authority of professional regulation of advertisement (ARPP) defines an influencer as “an individual expressing a point of view or giving advice in a specific field (…)”. It adds: “an influencer can act in a purely editorial framework or collaboration with a brand for the publication of content (product placement, (…), distribution of advertising content, etc.)” (free translation).

The influencer, therefore, has the power to direct the choices of the people following him/her, which is all the easier as the social networks on which they act are increasingly simple of use and accessible to the greatest number. Because of this ease of use, two American influencers, Kelly Fitzpatrick and Sabrina Kelly-Krejci promoted counterfeit products on Instagram and TikTok for sale on the Amazon platform. Amazon, therefore, filed a lawsuit on November 12, 2020 against the two women for fraudulent promotion of counterfeit products.

What is the influencer’s responsibility?

First of all, and Judge Conrey noted this in his decision, the influencer must state on the publication that the promotion of the brand results from a collaboration with the latter.

In France, this is also a recommendation of the French Professional Advertising Regulation Authority but most of all a legal obligation, which the French law for confidence in the digital economy (LCEN) of 2004 had already formulated. If the influencer can escape the net and not be found guilty of trademark infringement within the framework of a collaboration (that would be different if he/she promotes an infringing product directly), he/she could, be found liable of parasitism, unfair competition or misleading commercial practice, all three of which are heavily sanctioned under Article 1240 of the French Civil Code.

However, it is noteworthy that the influencer bears the weight of his/her responsibility concerning the information he/she publishes! Therefore, if a plaintiff can prove that the influencer in question was fully aware that the product he/she was promoting infringes on a third party’s rights, then it is likely that a judge would find the influencer and the company that contacted said influencer guilty of trademark infringement, either jointly or individually. Again, the judge will also consider the extent to which the product advertised by the influencer could confuse the public mind.

Hence, being an influencer is not without risks, and the partnership agreement concluded with a company must be carefully examined beforehand. Analysing the environment is essential as well as the product to be promoted must not infringe upon the prior rights of a trademark, even more so a competitor.

Dreyfus is at your disposal to assist you in securing these projects.

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How does the departure of Lionel Messi from FC Barcelona demonstrate the influence of players on the Intellectual Property rights of soccer clubs?

Written by Dreyfus08/09/2021

Underlying the performance of athletes, soccer clubs are engaged in a big race to develop their respective trademarks. FC Barcelona, until now the second biggest soccer club trademark, now risks losing its place to the club Paris Saint-Germain (PSG) as a result of Lionel Messi’s departure.

Lionel Messi has recently made the news by announcing his departure from FC Barcelona after more than two decades with the club.

This unexpected announcement is mainly due to the financial difficulties faced by FC Barcelona who are unable to take on the costs of the new contract agreed with the footballer two weeks ago..

This departure may not only impact the club’s quality of play but also its finances and especially its Intellectual Property rights.

A probable significant decrease in the value of the FC Barcelona brand

Brand Finance, in an article of 6 August 2021, estimated that the departure of Lionel Messi could cause an 11% decrease in the value of the club. This departure would cause a loss of €137 million. According to Brand Finance estimates. FC Barcelona has been, until now, one of the three most valued brands among soccer clubs (behind Real Madrid and in front of Manchester United). This news may well change the ranking.

Lionel Messi’s departure is even more impactful as he is considered one of the greatest players in the history of soccer. FC Barcelona’s image is therefore strongly impacted.

An opportunity for Lionel Messi’s new club.

On the other hand, the recruitment of the footballer by PSG is a real boon for the club which could see the value of its brand increase considerably. According to Brand Directory, the PSG brand is currently worth €887 million and ranks 7th among the most important soccer club brands.

The influence of players on intellectual property rights is such that some player brands even rival the value of some clubs’ rights. Messi has the most registered trademarks of all footballers. He has 115 trademarks, compared to 60 for Neymar, 53 for Cristiano Ronaldo and 46 for Paul Pogba. His trademarks are registered in various countries around the world, but mainly in Argentina, his country of origin. They are mainly registered in class 25 (Clothing), 28 (Games, sporting goods, toys) and 9 (Computer programs).

This trademark portfolio, owned by the footballer, is also an asset for the club that recruits him, as it increases its importance and influence.

So, PSG now holds two of the biggest players in terms of brand portfolio, Neymar and Lionel Messi, and could also be inclined to recruit Paul Pogba.

An impact on the new cryptocurrencies

As a result of PSG’s brand value, its cryptocurrency, “PSG Fan Tokens”, has grown considerably. The club made its mark by concluding the first player signing that included fan tokens. This news caused the cryptocurrency to rise by +100% in just three days.

As a result, the simple signing of Messi boosted the club’s PSG token capitalization to almost €144 million.

The PSG trademark is on track for considerable expansion, which can only reinforce the strength and interest of Intellectual Property rights in the world of soccer. Whether it’s the value of a club brand, the derivative products derived from it, or its cryptocurrencies, the composition of soccer teams considerably influences the pecuniary value of clubs.

We are a law firm with a unique expertise in the exploitation of intangible assets. We keep you updated on issues related to intellectual property and the digital economy through articles written by the Dreyfus legal team.

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Trademark

See also…

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

2.How to design an adequate and optimal protection?

3.Virtual trademarks registered in various sectors

4.Conceptual considerations

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