Trademark

How to bring an action for invalidity or revocation of a trademark before the French Trademark Office INPI?

INPI, procedure, intellectual property, trademarks

On April 1, 2020, a new trademark action nullity or revocation procedure entered into force, with the PACTE law.

This law, transposing European Directive 2015/2436 commonly known as the “Trademark Package”, establishes a new administrative action for trademark invalidity before the National Institute of Intellectual Property (“INPI”).

 

 

Since April 2020, it is possible to bring an action for nullity or revocation of a trademark before the INPI, a competence so far reserved for the courts.

The INPI’s e-procedures portal now makes it possible to introduce trademark invalidity or revocation requests. These new provisions entered into force with the PACTE law on April 1, 2020.

The procedure is instructed at the INPI by a team of specialized lawyers. It potentially makes unused trademarks available for new actors to use them, and enables to remove invalid trademarks or trademarks contrary to public order.

Applications for nullity or revocation of a trademark are only made electronically through a simple and fast tool, including online help and a secure payment area.

This administrative procedure replaces the procedure for contesting a trademark in court, which remains possible in certain specific cases, such as for infringement actions.

 

 

Who can request the invalidity of the trademark?

 

In the past, it was necessary to justify an interest in taking action to request the invalidity of a trademark. This interest in acting could, moreover, be strictly assessed.

From now on, when the request is based on an absolute ground of nullity, it is no longer necessary to prove an interest in bringing proceedings.

Absolute grounds for nullity relate to the intrinsic value of the trademark. For example, if the trademark is descriptive of the products it designates (such as “white chocolate” for … white chocolate), then any person can request that it be void, without justifying any damage that would be specific to them.

 

 

What are the characteristics of the procedure?

 

The procedure for nullity or revocation of a trademark opened before the INPI is a written and exclusively electronic procedure, accessible via the INPI e-procedures portal.

This procedure is subject to the adversarial principle, allowing the parties to exchange and confront their arguments several times throughout the procedure. The duration of the procedure is therefore dependent on the will of the parties, up to three contradictory written exchanges can be organized.

Finally, said procedure allows the presentation of oral observations. This hearing, at the request of one of the parties or the INPI, is organized at the end of the written exchanges.

 

 

Can we appeal the decision?

 

The decision is subject to appeal before a court, the appeal being devolutive and suspensive.

The decision of the INPI, like a court decision, can be appealed to the Court of Appeal of the applicant’s domicile.

The Parties will have one month to file an appeal, by electronic means, upon notification of the INPI decision. Some mandatory information are required, otherwise the claim could be deemed  inadmissible.

This appeal has a suspensive but also a devolutive effect, which means that the judges will have the obligation to retry the case in its entirety.

During the appeal process, the Parties have three months to hand in their submissions together with all of their substantive claims.

If necessary, a cassation appeal may be lodged subsequently, by the director of the INPI or the Parties.

 

What is the current state of this new procedure?

 

This new procedure made it possible to reduce a disparity that existed between France and the European Union, since this option was already offered before the European trademark office EUIPO.

Saving time and money for those who introduce the action but at the same time more risk of seeing your brand attacked if it is vulnerable.

The INPI case law databases show that 131 decisions have since been issued on April 1, 2021 ruling on the revocation or maintenance of a mark and 55 on the invalidity of a mark. It takes about six and a half months for a decision to be rendered.

By its simplicity and speed, the new trademark invalidity action procedure before the INPI helps relieve the congestion in the courts. Thus, decisions can be rendered relatively quickly and above all, more actions will be taken thanks to the limited costs of an administrative procedure.

 

 

Benefit from the new nullity and revocation proceedings before the INPI (French Office), Dreyfus can help you!

 

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.

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How to protect store layout -Visual Merchandising with Intellectual Property law?

Trademarks, shop window, design, stores, intellectual propertyVisual Merchandising (VM) represents all store layout techniques. It is the art of implementing the identity dimension through scenarization of points of sale.

The term Visual Merchandising is born in the United States in the 1950s with the rise of art in business. Andy Warhol made the first storefronts in New York. After the years of the Depression, it was necessary to boost the economy with eye-catching storefronts.

The industry is branded, every brand is unique and represents your business in the market.

It is the art of implementing the identity dimension of a store through a scenarization of spaces. It is a true creation of the company which displays its own identity in its store.

Visual merchandising makes it possible to reconcile commercial efficiency, aesthetics and enhancement of the image of the brand in order to attract customers and retain them. There are different channels to seek legal protection of your investments in visual merchandising.

 

 

How to protect store layout -Visual Merchandising with copyright law?

 

Interior design is likely to be protected by copyright, provided that the criteria of form and originality are met! In the “Ladurée” case, the Paris Court of Appeal acknowledged the originality of the layout: “The elements and spaces created bore the imprint of the author’s personality and in the choice of style, colors and decoration the personality of the author was reflected”.

 

How to protect store layout -Visual Merchandising with trademark law?

 

To be protected, a trademark must be distinctive, lawful and available. Thus, the company Apple Inc was able to obtain the registration of its sales spaces as a three-dimensional trademark.

 

How to protect store layout -Visual Merchandising with unfair competition and free-riding ?

 

The main act of unfair competition potentially occurring in visual merchandising is confusion / imitation: causing, in the mind of the customer, an assimilation or a similarity between two companies or between their products and services.

In the Zadig Voltaire v. Bérénice case, the company Zadig France based its claim to protect the fittings of its stores on unfair competition.

Parasitism refers to “the set of behaviors by which an economic agent interferes in the wake of another in order to profit, without investing anything, whether its efforts or its know-how”.

 

What precautions should you take to protect your IP rights?

 

To protect your IP rights, it is paramount to take several precautions:

* Ensure that confidentiality clauses are included in your contracts;

* Provide for nondisclosure agreements;

* Be vigilant on the terms of transfer of rights between the creator and the company.

For example, the Court of appeal of Paris considered in the Petit Bateau case that the publication by an employee of photographs revealing the new collection of a clothing brand, even on a private Facebook account, constitutes a serious fault justifying the dismissal.

The Court ruled that the employee at the origin of the publication had committed the serious fault of having communicated to third parties confidential information, while its employment contract expressly provided for an obligation of non-disclosure.

In order to protect your Visual merchandising, it is necessary to establish a protection strategy in the real world and in the digital world.

 

Why bet on the trademark?

 

This way you obtain a monopoly, which can be renewable indefinitely and which will constitute the pillar in your marketing and sales strategy.

It is important to register the trademark from the genesis of the project. To that end, it will be necessary to determine a limited but suitable territory. Likewise, it is important to think globally and digitally, and to envision the protection of domain names when registering your trademark.

 

The domain name is an important asset!

 

Today, intellectual property of which domain names are a part is identified by insurers as one of the top three risks facing businesses.

Domain names in particular serve as vectors for ever more sophisticated and varied frauds. Managing your brand on the internet is not just about filing and renewing, but also building a strategy.

It is important not only to invest in a protection and preventive defense strategy but also to set up appropriate watch services for your brand.

Finally, you must be particularly vigilant about the use that is made of your brand on the Internet by avoiding “bad buzz” that is harmful to your reputation.

As a creation, Visual merchandising is a real intellectual and economic investment that is essential to protect.

 

 

Dreyfus & associés

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.

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Why does the willingness to sell a domain name is not conditioned on an active approach? 

Télévision netflix (OMPI, Centre d’arbitrage et de médiation, 23 février 2021, affaire n° D2020-3322, Netflix Inc. c. WhoisGuard, Inc. / Siddharth Sethi)

 

Avons-nous encore besoin d’introduire Netflix ? Cette plateforme proposant des services de streaming vidéo compte 195 millions de membres dans plus de 190 pays et semble être connue dans le monde entier. Pourtant, certaines personnes tentent de se soustraire à cette notoriété pour tenter de se construire une légitimité artificielle et justifier l’enregistrement d’un nom de domaine .

 

En effet, alors que la société Netflix détient de nombreux enregistrements dans le monde pour le signe « NETFLIX » en tant que marque , la société a détecté l’enregistrement du nom de domaine <netflix.store> . En conséquence, elle a déposé une plainte auprès du Centre d’arbitrage et de médiation de l’OMPI pour obtenir son transfert.

Le nom de domaine, enregistré le 3 septembre 2017, pointe vers une page qui présente une animation composée d’un effet d’éclatement de couleur et se termine par un écran de couleur vierge.
Le titulaire soutient que le nom de domaine ne reproduit pas la marque NETFLIX mais est plutôt composé de deux termes , “net” et “flix”. Or, comme prévu, l’expert considère que la marque NETFLIX est reproduite à l’identique dans le nom de domaine.
L’expert considère que si l’utilisation du nom de domaine n’est pas commerciale, son enregistrement ne serait pas non plus considéré comme légitime. En effet, le site mis en place vise à légitimer l’enregistrement afin de dissimuler l’intention de vendre le nom de domaine au Plaignant. Ni la reproduction de la marque NETFLIX dans le nom de domaine litigieux, ni l’extension <.store> n’ont de sens si le projet devait effectivement être non commercial.

 

En conséquence, il estime que l’intimé n’a aucun droit ou intérêt légitime sur le nom de domaine .
Par ailleurs, l’expert constate que le Défendeur connaissait le Plaignant et son activité et prévoyait qu’en achetant le nom de domaine, il serait en mesure de le revendre au Plaignant avec un bénéfice significatif. Cette stratégie a été partiellement couronnée de succès, car Netflix a fait une offre que l’intimée a refusée, essayant d’obtenir une somme considérablement plus élevée.

Or, l’enregistrement d’un nom de domaine qui correspond à la marque d’un Plaignant avec l’intention de le vendre au Plaignant lui-même , établit la mauvaise foi. L’expert précise que le titulaire « [n’aurait pu] raisonnablement penser qu’un tiers serait en mesure d’utiliser commercialement le Nom de domaine litigieux ». Il convient également de noter que l’intimé a tenté de faire croire à la personne qui l’a contacté qu’il avait reçu d’autres offres plus élevées. En effet, le représentant de Netflix, qui n’avait pas indiqué qu’il agissait pour Netflix, ce qui était un secret de polichinelle, avait proposé la somme de 2 000 USD, que le déclarant jugeait trop faible.

L’expert commente ce comportement récurrent de certains cybersquatteurs : « Peu importe que le Défendeur n’ait pas proposé activement à la vente le Nom de domaine litigieux. Il n’est pas rare que des déclarants opportunistes de noms de domaine incluant une marque tierce attendent d’être approchés, réalisant qu’une offre active de vente du nom de domaine peut faciliter un procès UDRP à leur encontre ».

En conséquence, l’expert conclut que le nom de domaine litigieux a été enregistré et est utilisé de mauvaise foi et ordonne ainsi son transfert au Plaignant.

Sauf dans les cas où un nom de domaine reproduisant une marque notoire telle que NETFLIX est utilisé à des fins de critique sans usage commercial, ou pour un usage commercial minimal, il est quasiment inconcevable d’imaginer qu’un tel nom de domaine ait pu être enregistré de bonne foi . Netflix savait évidemment qu’elle gagnerait le procès, mais a visiblement choisi d’essayer de négocier un rachat à l’amiable pour un budget légèrement inférieur à celui d’une procédure UDRP, si l’on compte les 1 500 USD d’honoraires et les honoraires d’avocat. Cette approche, si elle réussissait, aurait permis d’économiser du temps et de l’argent, mais la simple offre de rachat a pour effet d’encourager le cybersquattage.

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How to protect your brands in the digital era?

brand protectionIntellectual property was viewed with passion – and in a style steeped in pre-Romanticism! – as “the most sacred, the most legitimate, the most unassailable […], the most personal of properties”; “The least likely to be contested, the one whose increase can neither hurt republican equality, nor overshadow freedom,” said Patrick Tafforeau in his book Intellectual Property Law published in 2017.

It should be borne in mind that intellectual property is protected by law. This protection is notably achieved through patents, copyright and trademark registrations. These intellectual property rights allow creators to obtain a certain form of recognition or even a financial advantage from their inventions, plant varieties or creations.

In this sense, paragraph 1 of article L111-1 of the Intellectual Property Code provides that: “The author of a work of the mind enjoys on this work, by the sole fact of his creation, of an exclusive and  intangible property right enforceable against all”.

In fact, the Internet has created tremendous opportunities for companies in terms of communicating their brand message. However, its global reach, openness, versatility and the fact that it is largely unregulated are all elements that have created fertile ground for trademark infringement such as counterfeiting.

 

For a long time, real world activity and Internet activity were separated. Today, the two worlds undeniably tend to come together. Trademark law is therefore very useful in defending yourself in the digital era. By appropriately balancing the interests of innovators with those of the general public, the intellectual property system aims to foster an environment conducive to the flourishing of creativity and innovation.

When you create a company or launch a product, know that it is recommended to protect your trademark (which can be the name of your company, a logo, numbers, letters, etc. …). This registration will protect your company from counterfeiting.

Once registered, the trademark is an industrial property title which gives you a monopoly of exploitation for a period of ten years, renewable indefinitely.

Registering your trademark gives you an exclusive right to a sign that distinguishes the products or services you offer from those of your competitors, which is a significant competitive advantage ! As such, your sign is protected for the categories of goods and services referred to in your trademark registration and in the territory for which said registration is accepted.

In this perspective, it is necessary to put in place a strategy for the protection of your brand as soon as possible. Before filing a trademark, it is important to make sure that it is available and that there is no owner of an earlier right to that trademark. You must therefore be the first to register this mark.

The reasons why trademark registration is becoming a necessity are multiplying in the face of the phenomenon of cybersquatting. Thus, owners of registered trademarks benefit from new advantages in the defense of their rights on the Internet.

 

First, it has become increasingly important to protect your brand on social media. Since 2009, Facebook has allowed its members to create usernames, easily accessible, but which can include brands. Prior to 2009, Facebook allowed registered trademark owners to identify their trademarks and prevent their use by other members.

Most social networks register user names on a “first come, first served” basis. In order to defend your rights, it is preferable to have a registered trademark in order to report a violation of trademark rights, according to the general conditions of use of social networks.

 

Secondly, the presence of a mark on the Internet also imposes its protection in referencing on search engines and in particular paid referencing. Through the AdWords system, Google allows advertisers to select keywords so that their ads will appear to Internet users after entering those words into a search. Conflicts arise when advertisers buy keywords that contain brands, but do not have rights to them.

Owning a trademark right then also becomes extremely useful in the fight against unfair practices.

 

Thirdly, the proliferation of new gTLD domain name extensions must also attract the attention of trademark owners. To date, more than 300 new gTLDs have been delegated, and gradually hundreds more will follow. Faced with the risk of conflicts with protected trademarks, a new tool is made available to trademark rights holders: The Trademark Clearinghouse. It is a centralized declarative database of registered trademarks. Once the trademark is registered, the holder benefits from the priority registration period for new gTLDs – Sunrise Period – and is notified when a third party wishes to register a domain name identical or similar to its trademark. The registrant of the disputed domain name is also informed that he may infringe trademark rights.

 

Finally, if a domain name reproducing or containing a trademark is registered, the trademark rights holder has the possibility of taking action against cybersquatters using dedicated extrajudicial procedures such as the Uniform Rapid Suspension (URS) and the Uniform Domain Resolution Policy (UDRP). These dedicated procedures are only open to trademark holders.

It should be remembered that the business landscape has changed with the rise of the Internet and, in order to thwart the risks of intellectual property infringements on online markets, it is important that companies adapt their management of industrial property rights portfolio accordingly.

 

Nathalie Dreyfus – Industrial Property Attorney, Expert at the Paris Court of Appeal, Founder & Director of Cabinet Dreyfus in Paris – Dreyfus.fr

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.

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What happens to the domain name reserved by the franchisee once the contractual relations have been broken?

domain name

One of the key elements of the franchise is the authorisation given by the franchisor to the franchise to exploit its trademark. In such contracts, it is key to define precisely the terms of use.

Century 21 Real Estate LLC (“Century 21”) is a renowned real estate company, founded in 1971 and managing 8000 franchised agencies in 80 countries. In particular, it owns the trademark C21, protected in Montenegro.

Century 21 filed a complaint before the WIPO Arbitration and Mediation Center to obtain the transfer of the domain name <c21fresh.me> registered on November 14, 2012 by Lika Ivanoc, which belongs to the Fresh d.o.o. company in Montenegro, also specialized in real estate.

Century 21 asserts that in the past the Respondent has been a member of its network of franchisees but that this is no longer the case. Realogy Group LLC, another parent company of Century 21, was reported to have entered into an agreement with a Serbian company, Real Estate d.o.o.

According to this agreement, which the Complainant does not provide, Real Estate d.o.o was authorized to use the trademarks of Century 21 and to enter into sub-franchises.

 

This agreement would have expired in 2014.

The Complainant explains that in 2015, the parent company of the Respondent, Century 21 Fresh Real Estate, was notified of the end of the contract of franchise. The letter stated that Century 21 did not know if Century 21 Fresh Real Estate was commercially connected to Real Estate d.o.o.

In the absence of any response, Century 21 filed a complaint to the Montenegrin Trade Inspection, and after that, Century 21 Fresh Real Estate has been ordered to withdraw the trademark from the photographs published on the web site www.realitica.com.

The above situation is quite complex.

 To begin with, the Respondent did not reply to the complaint, which would have eventually clarified the situation and the possible links, even the indirect ones, between the Complainant and the Respondent.

The expert acknowledges the similarity between the domain name <c21fresh.me> and the C21 trademark. However, he does not issue commentaries on the legitimate interest of the registrant and directly moves on to rule on the question of registration in bad faith.

He notes that if the Complainant clearly indicates that the Respondent was part of its franchisees network, it also had a letter sent to the Respondent’s parent company, suggesting that it was not sure that the Respondent was actually part of this network.

It might be surprising how little control Century 21 has over its network of franchisees and sub-franchisees. However, the name of the Respondent’s parent company appeared on the site of one of the franchises of the Complainant, which suggests that the Respondent was indeed a member of the franchise network.

The expert notices that during the course of this agreement Real Estate d.o.o. and the sub-franchisees had the authorization to use the trademarks of Century 21. Thus, the domain name has certainly been registered within this framework. Unless a clear clause in the contract prohibits to register domain names, it is difficult to consider that the domain name has been registered in bad faith in 2012.

The experts relies on a previous case, Elders Limited v. Private Company, No. D2007-1099, in which the expert concluded that the name registered by the franchisee was part of its activity even without the franchisor’s express authorisation. In the absence of evidence of other motivations that might have pushed the Respondent to register the domain name, the registration was considered to be in good faith.

 

The question then arises as to whether the renewal of the domain name <c21fresh.me> after the end of the contract of franchise can define a new starting point for the criterion of registration in bad faith. Referring to the WIPO Overview 3.0, the expert indicates that the simple renewal of the domain name cannot qualify a bad faith registration. Consequently, the complaint is rejected.

 

This decision shows that it is always preferable, for a company, to be the owner of the domain names used by its partners, such as franchisees, even if the latter are the ones exploiting them. At the very least, drafting a contractual provision is essential, specifying the way in which the trademarks of the franchise can be operated and if such use includes the registration of domain names, under which conditions, which charter to respect and when these names must be returned. The same problem can arise for social media accounts.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.

 

Source: WIPO, Arbitration and Mediation Center, Nov. 9, 2020, Case D2020-0008, Century 21 Real Estate LLC v. Luka Ivanoc, Fresh Realestate

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International Trademark: Islamic Republic of Pakistan joins the Madrid System

As of May 24, 2021, the Madrid System will officially welcome its 108th member: the Islamic Republic of Pakistan.

On February 24, 2021, Pakistan deposited its instrument of accession to the Madrid System with the Director General of the World Intellectual Property Office (WIPO). The arrival of this new member brings the number of countries covered by the Madrid System to 124, and highlights the importance of this international system for the filing and registration of Trademarks.

The Madrid System provides a practical and cost-effective solution for the registration and management of trademarks worldwide. More than 1.5 million international trademarks have been registered since its creation in 1891. While the system has been in place for more than 125 years, three quarters of its member countries have joined it in the last three decades. After the recent accessions of Canada, Samoa, Thailand, and the Sultanate of Brunei, it is now up to Pakistan to join the protocol.

Pakistan’s adhesion to the Madrid Protocol enables the harmonization of Pakistani trademark law at the international level. With the filing of a single international Trademark application, Pakistani applicants now have the possibility to apply for protection in 124 countries. Likewise, Pakistan can be designated by applications from any state party to the Madrid system and international Trademark owners can easily extend their protection in the Pakistani market.

The international trademark system is a major asset for the registration of your trademarks abroad at a lower cost.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.

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Unfair competition: a doomed market place

Unfair competition: a doomed market placeOn November 20, 2020, the Court of Appeal of Paris, condemned Webedia, a company specialised  in the management of Internet sites, for unfair competition towards the Bonpoint company.

Bonpoint is specialized in the manufacture and sale of high-end children’s clothing, marketing its discontinued products through online retailers of multi-brand clothing, including Yoox.com.

The Webedia company, for its part, run the marketplace shopoon.fr which is a guide for buying fashion and decoration items online putting Internet users in touch with e-commerce merchant sites. In particular, it offers products appearing on the site yoox.com.

So far so good. However, the Bonpoint company has found that 93% of the products of its brand displayed on the site shopoon.fr are unavailable for sale, and when the user clicks on these unavailable products, he is redirected to similar and competing products belonging to other brands.

The Court of Appeal of Paris considered that the presentation of products on the site shopoon.fr allowed the consumer to clearly distinguish available items from unavailable items. Consequently, this presentation was not likely to substantially alter the economic behavior of the normally informed and reasonably attentive consumer who, in case of unavailability of the desired branded product, would turn to articles of another brand.

Therefore, the Court ruled that Webedia had not committed deceptive marketing practices.

However, the Court reminds that if the Webedia company does not sell directly the articles which it presents on its site, it is nevertheless remunerated as soon as it puts forward the products of different sites and brands, in the event of unavailability of the initially sought-after product. It thus draws a financial advantage from the redirection of web users to these products.

Consequently, the judges held on this point that the Webedia company was guilty of unfair competition, by presenting on the site shopoon.fr 93% of articles of the Bonpoint company which it knew unavailable, and by “referring the web user to the possibility of seeing similar competing products“. They considered that the Webedia company had thus used the attraction force of the Bonpoint brand to generate traffic of web users oriented towards other products.

 

The Court thus ordered Webedia to pay Bonpoint the sum of 22,043 euros in damages, including 20,000 euros in compensation for moral prejudice and 2,043 euros for misappropriation of customers.

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Filing a trademark on behalf of a company in the process of creation: who may bring a trademark infringement action?

Dépôt d’une marque pour le compte d’une société en cours de formation : qui peut agir en contrefaçon de la marque ?It is common for trademarks to be filed by individuals acting on behalf of a company in the process of creation.

The founder of the company is then the regular owner of the trademark until the company in question takes over the filing. Therefore, the founder may initiate proceedings, in the meantime, in case of trademark infringement.

 

But what happens if the company that was supposed to be created and, therefore, become the owner of the trademark, is never formed?

The French Supreme Court expressed its view in a decision dated October 14, 2020. Ms. T, who had registered the trademark “Dousè Péyi” in the name of the company in the process of being created Dousè Péyi, filed a lawsuit against the company Sérénade des saveurs (Cass. Comm. 14 Oct. 2020, No. 18-23-965 T.c/ Sté Sérénade des saveurs).

The dispute concerned the filing of the trademark “Doucè Péyi”, almost identical to the earlier trademark.

Following this application, Ms. T sued Sérénade des saveurs for trademark infringement and unfair competition. The applicant raised a motion to dismiss the action, based on the lack of interest of the founder of the company to act in defence of a trademark registered on behalf of a company which was not yet created (see Article 31 of the French Code of Civil Procedure).

The company Sérénade des Saveurs claimed that Ms. T did not personally own the trademark. According to the defendant, since the company had never been created, Mrs. T should have recorded the change of ownership of the trademark at the INPI.

The first judges declared Ms. T’s action for infringement inadmissible for lack of interest in acting. The Court of Appeal confirmed this decision and stated that Ms. T “cannot claim ownership of this trademark in a personal capacity without having [recorded the change of ownership] on the National Trademark Register before initiating any action reserved to the owner of the trademark”. Otherwise, the change is unenforceable and any action in defence of the mark is therefore inadmissible.

Ms. T appealed to the Supreme Court and, rightly so, since the Commercial Chamber of the Court of Cassation ruled that the Court of Appeal had violated Article L210-6, paragraph 2, of the French Commercial Code, which establishes a system of taking over acts performed on behalf of a company in the process of creation: “every person who acted on behalf of a company in the process of creation before it acquired legal personality shall be held jointly and indefinitely liable for the acts thus performed, unless the company, after having been duly formed and registered, takes over the commitments entered into. Such commitments are then deemed to have been entered into from the outset by the company”.

The Supreme Court overturned the appeal decision and affirmed that in the absence of legal personality, the founder of the company, who registered the trademark, is the owner of the trademark and therefore Ms. T could rightly file a trademark infringement suit.

This solution guarantees the legal security of project leaders. The creation of a company can, in fact, take time. During this time, several acts must be accomplished and the law acknowledges their retroactive effect.

 

Filing a trademark in the name of a company in the process of creation is an interesting practice to enhance the value of the trademark assets and protect them against third parties that may file a similar or identical trademark while the company is not yet formed.

However, case law in this area is not consistent and requires to be attentive to details when filing a trademark.

In order for the company to automatically become the owner of the trademark at the time of its registration, a statement of the acts performed on behalf of the company while it being created should be made, which will be annexed to the articles of association, and should mention the filing of the trademark, indicating that the company takes over the legal act of filing on its behalf.

Dreyfus can assist you with the management of your trademarks portfolios in all countries around the world. Please feel free to contact us.

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The creation of a data access system Whois by ICANN

Since the advent of the General Data Protection Regulations (GDPR), it has become really difficult to obtain information about the registrant of a domain name. This obviously complicates the dialogue between trademark and domain name holders.

 

ICANN has proposed a project to create a System for Standardized Access/Disclosure (SSAD), which would allow standardized access to non-public data on domain name registrations.
The objective of the SSAD is to provide a predictable, transparent, efficient and accountable framework for access to non-public registration data. It must also be consistent with the GDPR.
However, the decision whether or not to grant requests would still belong to the registrars, as legal constraints on personal data may vary from country to country.

 

This project accelerated in August during Stage 2 of the policy development process, during which a final report was presented that provides 22 recommendations for the system.
The creation of this SSAD could, in the coming years, facilitate the fight against cybersquatting, which has been strongly impacted by the GDPR and WhoIs anonymization processes. It should be remembered that the next round of requests for domain name extensions should take place in 2023, bringing a whole new set of challenges in the fight against Internet attacks.

 

Source: LexisNexis, N°1 (January 2021)

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Domain names in <.suck> : between attack to brand image and freedom of expression

Sources: Domain Incite, Free speech, or bad faith? UDRP panels split on Everything.sucks domains, Oct. 22, 2020:

Free speech, or bad faith? UDRP panels split on Everything.sucks domains


Mirapex.sucks, Case n° 103141, 2020-06-29 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103141
Bioderma.sucks, Case n° 103142, 2020-07-01 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103142DNS News No. 270, Oct. 2020

The top-level domain name extension <.sucks> was open for registration by ICANN in 2015. At the time, some brands were already concerned about the risk of cybersquatting on these extensions, and the possible damage to the brand image that this could generate. In fact, many domain names that use trademarks known and ending in <.sucks> were born. Very often, these domain names refer to pages where Internet users can complain about the brand in question, whether they are consumers or former employees.

During the past months, the phenomenon has intensified with a lot of reservation numbers, clearly done by the same registrar of the domain name in <.sucks>. Suddenly, new online pages have emerged, with the same structure and bad comments about renowned brands. A system of resale at prices between $199 and $599 is also in place.
The question of the dispute resolution about the <.suck> is complex, since the situation raises issues relating to freedom of expression.

Two recent cases with two opposite outcomes illustrate this complexity. The domain names <mirapex.sucks> and <bioderma.sucks> were both registered by the same registrar and are both the subject of UDRP complaints. In response to these two complaints, the defendant based his argument on freedom of expression. For <mirapex.sucks>, the complaint was unsuccessful, on the contrary, for <bioderma.sucks>, the name transfer was ordered.

In the case of <bioderma.sucks>, the expert had taken into consideration the fact that the registrar didn’t use the domain name for bad comments on the trademark in question but was simply a third party who registered the domain name seeking to resell it. The reseller was a company located in the Turks and Caicos Islands whose activity is the purchase and resale of names in <.sucks>. The latter had no way of verifying if the bad comments were authentic. Especially because those comments seemed to have been added only after the complaint was filed.

On the other hand, in the decision on <mirapex.sucks>, reserved by the same company, the transfer was refused. The expert gave special attention to the nature of the <.sucks> and to the freedom of expression, while underlining the insufficiency of the argumentation of the applicant.
One thing is sure: prevention is better than cure, therefore it would preferable to register a brand in the extension <.sucks>, on a purely defensive basis.

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