Raising funds through your intellectual property assets?

Written by Dreyfus29/07/2020

Start-ups’ executives, having difficulty obtaining loans to raise funds, may benefit from promoting their intellectual property assets, which can be used as loan guaranties or other credits. Indeed, intangible assets are among the preferred asset classes for investors seeking strong guarantees. As such, investment funds are offering more and more original solutions to fund start-ups.

Beyond the traditional tools of funding through intellectual property such as licenses, new ways of raising funds using intangible assets are emerging: auctions (by auction houses specializing in this field), online tradings, trusts, mortgages, etc.

On which assets should you base your collateral?

Patents

The patent portfolio of research companies is a valuable asset, provided it is kept under control. Under a mortgage, or a trust, the source of income, in order to be certain, requires the patent to be licensed.

Trademarks, designs

If the trademarks are licensed, they can give rise to a certain and regular income. They offer a valuable guarantee if the business is successful. For instance, in the late 1990s DreamWorks and the Tussauds Group both granted security guarantee over their IP covering both existing and future IP[1].

Moreover, designs have the advantage of having a value independent from the company’s status. Therefore, they can be a guarantee of value for investors.

Copyrights

Copyrights lasts up to 70 years after the author’s death : as such, once ownership and value are proven, they provide a valuable guarantee for the investor. Thereupon, the World Intellectual Property Organization (WIPO) has demonstrated that the taking of guarantees over copyright in the film and music industries is widespread and increasing in the biotechnology and software industries[2].

The forerunner of this financial innovation in intellectual property, David Bowie, will be remembered when he sold the “Bowie Bonds” which provided him with a regular income of over $1 million per year earned on the 25 albums he recorded before 1990.

It is therefore important to think of your intellectual property rights as real assets, and to reconsider the way they can be used: they can become effective security interests, especially for SMEs or start-ups that are launching their business.

This is true all over the world. For example, in India the government has introduced loan guarantee schemes through the possibility of mortgaging your trademarks or patents in order to encourage start-ups and cover the risk of real commercialization failures based on assets mortgaged by intellectual property rights.

To be continued!

It now appears possible to raise funds through your intellectual property assets. Dreyfus, an expert in legal issues related to intellectual property since 2004, helps you protect and enhance your rights and advises you on how to best manage your assets.

[1] [1]« Taking security over IP » Fieldfisher – February 2015

[2] « The Challenge of IP Financing » WIPO – September 2008

Sale of the domain name extensions: .cars, .car and .auto at auction

Written by Dreyfus23/07/2020

The domain name extensions (gTLDs) “.cars”, “.car” and “.auto” are about to be auctioned on July 13, 2020. Launched in 2015, these extensions have been at the forefront of innovation in the domain name and automotive marketing. They have been used around the world by dealerships, startups and major automotive technology companies.

After a five-year partnership, and more than $11 million raised, XYZ, a company offering new domain name options, and Uniregistry, both a registrar and a domain name registry, have jointly decided to divest this investment.

The auction will be conducted by Innovative Auctions, an independent auction consulting firm, and all assets to be auctioned will include the extensions in question, as well as all intellectual property rights, trademarks, social network accounts and high-value domain names such as <electric.car> and <rental.car>, which are currently reserved by Uniregistry.

It should be noted that this is the first gTLD auction in which anyone can participate. Interested parties can contact cars@innovativeauctions.com for more information.

Admissibility of the complaint against several defendants, subject to the existence of a body of evidence

Written by Dreyfus22/07/2020

Source: WIPO, Arbitration and Mediation Center, May 7, 2020, No. D2020-0491, Crédit Industriel et Commercial S.A. and Confédération Nationale du Crédit Mutuel v. Whois Privacy Service / Yassine Ahmed / Yassine Cleoo / Yassinee Cleo / Yacin Helaloa / Robert Michel

The companies Crédit industriel et commercial (“CIC”) and Confédération nationale du Crédit Mutuel (“Crédit Mutuel”), which belong to the same group, jointly filed a UDRP complaint against six defendants, including an anonymous service, following the reservation of 25 domain names. One reproduces the trademark CIC ( ), the others the trademark Crédit Mutuel ( ).

In theory, the UDRP Complaint should only be directed at one defendant. However, a complaint against several defendants may be admissible if it is shown, by corroborating evidence, that the domain names were most likely reserved by the same person or are under common control, despite disparities in the information communicated by the registrants at the time of registration. This is known as “consolidation of the complaint”. Of course, each defendant is given the opportunity to rebut this alleged connection by filing a response in the proceedings.

Here, the expert accepted the applicants’ request for 24 of the 25 domain names in question. Indeed, numerous elements tend to show that these names are under common control:

– they have similar structures: <credit-mutual-online-space-customer-confirmation-mobile.net>, <credit-mutual-service-security.org>, <cic-online-space-customer-confirmationmobile.com>, etc.

. – three defendants have the same first name, except for a few spelling variations: Yassine Cleoo, Yassinee Cleo, Yacin Helaloa. And two of them have almost the same last name: Cleoo / Cleo;

– four defendants mentioned addresses in Madrid, Spain;

– the domain names have been reserved through the same registrar, Amazon Registrar, Inc. ;

– the reservation date is close: December 2019 ;

– all used the same anonymity service (first respondent, namely Whois Privacy Service).

On the other hand, the request for consolidation of the complaint was refused because of the 25th domain, reserved by the sixth defendant. In fact, the expert noted that the information which defines this domain name and its reserved name does not make it possible to establish a link with the other defendants:

– the structure of the domain is different: <creditmutuel.com;

– the reservee has given an address in France and not in Spain;

– the domain name was registered in January 2020 while the other domains were registered in December 2019. Thus, the expert, after analysing the complaint on the merits, agreed to the transfer of the first 24 domain names to the applicants. As for the domain name, they refused to pronounce its transfer, considering that it was not demonstrated that its registrant was linked to the other defendants. They specifies, however, that the applicants may very well file a separate complaint against this domain name if they wish so.

The consolidation of the complaint allows several complainants to file a joint complaint and to target several defendants at the same time or alternatively. When several defendants are involved, concrete elements that lead to the belief that the registrants are related, should be reported. In addition to elements relating to identity, one can take into account the structure of the domain names, the date of registration, the hosting providers and registration of the domain, the page that the domain points to, etc.

This possibility offered to complainants has several beneficial aspects: mutualizing costs, getting around the “trap” of cybersquatters which consists in filling in false data when reserving domain names, not to mention a considerable time saving for both right holders and arbitration centres.

Our commentary of the decision is available in the issue n° 7-8, July 2020, alert 54 of the review Industial Property.

Invalidity action: assessment of the likelihood of confusion between a trademark and an earlier company name when the companies maintain economic links at the time of filing

Written by Dreyfus20/07/2020

In a decision of the Court of Justice of the European Union from April entretiennent, 2020 Gugler France SA v Gugler GmbH (Case No 736/18), the Tenth Chamber held, in the context of an invalidity action, that there is no likelihood of confusion between a trade mark and an earlier corporate name if, at the time of filing, the companies do in fact maintain economic links, and provided that there is no likelihood of error among the public as to the origin of the designated goods.

As a reminder, the Article L711-4 of the Intellectual Property Code states that it is not possible to register a trademark that could infringe prior rights, and in particular, if there is a likelihood of confusion, distinctive signs such as the company name or corporate name.

Thus, a conflict may arise when a company files as a trademark a sign that is identical to the corporate name of a company operating in the same sector of activity, creating in consequence a likelihood of confusion. The owner of the previous corporate name will then be entitled to act to cancel the trademark.

While the coexistence of a company name with a subsequently registered trademark had already been admitted (decision of the Paris Court of Appeal from February 24, 1999), it had also been affirmed that, if the use of the prior rights infringed their trademark right, the owner could request that the use be limited or prohibited (Commercial Chamber of the Court of Cassation of November 12, 1992). Therefore, the trademark right could defeat the prior right.

Thus, in case law, there is a certain prevalence of trademark rights over other distinctive signs.

In its decision from April 23 ,2020 Gugler France SA v. Gugler GmbH, the ECJ clarified the assessment of the likelihood of confusion between a trademark and an earlier company name.

The German company Gugler GmbH registered the semi-figurative Community trade mark “GUGLER” on August 25, 2003.

On November 17, 2010, Gugler France filed an application for a declaration of invalidity of the trade mark, in respect of all the goods and services designated, on the basis of its earlier company name.

The CJEU, seized after an application filed with the Cancellation Division of EUIPO and the filing of an appeal before the General Court of the European Union, confirmed the latter’s decision and dismissed Gugler France’s application for a declaration of invalidity.

In fact, on the day the trademark was registered, there were commercial relations between the parties, Gugler France being the distributor in France of the products manufactured by Gugler GmbH. In addition, Gugler GmbH held shares in the capital of Gugler France.

The Court held that the fact that consumers may believe that the goods and services in question come from companies which are economically linked does not constitute an error as to their origin.

The Court therefore rejects the argument of Gugler France that, in order to avoid the likelihood of confusion, the economic link must exist in a particular sense, namely from the holder of the earlier rights (Gugler France) to the holder of the later rights (Gugler GmbH).

According to the Court, the mere existence of a single point of control within a group in respect of products manufactured by one of them and distributed by another may be sufficient to exclude any likelihood of confusion as to the commercial origin of those products.

By this solution of the Court, the essential function of a trade mark right, which is the function of guaranteeing the identity of origin of the marked goods or services, is also indirectly recalled. The trade mark thus serves to distinguish the goods or services of one company from those offered by another company. Therefore, in this case, the commercial links between the two parties made it possible to consider that the goods had the same commercial origin.

Figurative trademarks: be aware of the extent of your protection

Written by Dreyfus17/07/2020

The judges of the Paris Court of Appeal, ruling on a referral from the Court of Cassation, adopted a strict approach to similarities between a figurative trademark and a later , semi-figurative trademark in a dispute between two companies specialized in ready-to-wear clothing.

The company Compagnie Financière de Californie (“Compagnie de Californie”), which specializes in street wear chic clothing, is the owner of the trademarks on the sign, in particular for clothing products.

In 2013, the company noted that International Sport Fashion, also active in the fashion industry, had registered and used a trademark that it believes to be similar to its own:

The signs in question have the shape of an eagle’s head, without detail, reproduced in black and white within a circle.

In order to obtain compensation for the damage it considers to have suffered, Compagnie de Californie brought an action for infringement.

After having been dismissed at first instance and on appeal, the company turned to the Court of Cassation, which referred the case back to the trial judges after partial cassation.

The referring Court of Appeal first compared the trademarks in question. Its analysis is rigorous, particularly from a conceptual standpoint: it considers that the trademark of Compagnie de Californie refers to “the dark side of the bird of prey while the other refers to the image of a much less aggressive bird” (certainly due to the presence of a closed beak).

The court points out, among other things, that visually, these birds’ heads are not facing the same direction and that one has the beak closed and the other open.

On the phonetic level, the court notes, unsurprisingly, that the mark at issue will be pronounced “Eagle Square” in reference to the verbal element it contains, which will not be the case for the earlier mark.

The court, therefore, considers that there is no likelihood of confusion between the marks.

Next, it examines the question of the exploitation by International Sport Fashion of its mark for clothing products. The Court takes into account all possible elements such as the packaging which contains the goods. The name “EAGLE SQUARE” is affixed to the packaging; it, therefore, considers that there is no likelihood of confusion in the minds of consumers.

It also states that the contested sign which appears by itself on some of the articles is each time bicoloured, “inducing a caesura in the sign”, which gives an overall impression, very different from the earlier mark.

The court, therefore, did not grant the applications of Compagnie de Californie.

Thus, with respect to figurative marks, it is necessary to meticulously estimate the chances of success of an infringement action, since great similarities are generally required to recognize the likelihood of confusion.

This case shows that even marks with a comparable style (presence of a bird in a circle, with only the head entirely painted black) can coexist in the market.

It is questionable whether the Court of Appeal would have taken a different approach had International Sport Fashion affixed the only black and white eagle head to its products. The question also arises as to whether the outcome might have been partially different had California Company also registered, as a trademark, its coloured eagle (which can be found in red on its official website https://www.compagniedecalifornie.com/).

Therefore, in addition to a detailed analysis of the chances of success before bringing an action, it is also necessary to protect the trademark as exploited, taking into account its variants, so as to benefit from the widest possible scope of protection.

Questions and answers about the new opposition procedure before the French trademark office INPI

Written by Dreyfus15/07/2020

Since December 11, 2019, the French opposition procedure has evolved. We provide an update on the changes and questions.

Key elements about the French opposition against trademarks

Typically, as soon as a trademark application could infringe a prior trademark right, it is possible to prevent its registration by opposing said trademark application directly before the French Trademark Office INPI.

This was the case before the reform and it hasn’t changed since: an opposition can be filed against a French trademark application or an international trademark designating France.

The time limits to act remain unchanged and are as follow:

– Regarding the registration of a French trademark application, an opposition must be filed within two months of the publication of said application in the French Official Bulletin of Industrial Property (BOPI).

– In the case of an international trademark application designating France, the opposition request is filed within two months of the publication of the registration in the WIPO Gazette of International Trademarks.

This procedure has evolved since December 11, 2019, offering a new opposition process.

In which situations does the new opposition procedure apply?

– Applicable to French trademark applications filed as of December 11, 2019, for trademarks published in the BOPI as of January 3, 2020.

– Applicable to French designations of international trademark applications, published in the WIPO Gazette as of December 11, 2020.

What is the purpose of this reform?

This reform was implemented in order to reinforce the adversarial principle, by allowing the parties to exchange and compare their arguments throughout the procedure, on the one hand; and on the other hand, to support the analysis of evidence of use of the earlier trademark.

What are the changes brought about by this new opposition procedure?

If you wish to oppose a trademark application filed after December 11, 2019, you can now :

– Base your opposition on other rights than trademark rights (which were not previously taken into account) such as well-known trademarks, company names or corporate names, trade names, signs or domain names;

– Invoke several previous rights in the same opposition (provided they belong to the same owner) ;

– Ground your opposition within one month by filing the statement of grounds on which the opposition is based. At the end of this period, the opposition is notified to the opposite party. However, it is impossible to extend the scope of the opposition during this period, either to other goods or services referred to in the initial application, or to other prior rights.

On the rights and grounds that can be invoked

What are the rights and grounds for the opposition?

Prior to the reform, the rights and grounds on which an opposition could be based were as follows:

– Earlier trademark;

– Geographical indication or application for a geographical indication;

– Infringement to the name, image or reputation of a local authority.

With the reform, the following previous rights are added:

– Well known trademark;

– Corporate name;

– Trade name, sign and domain name ;

– Infringement to the reputation of a public establishment of a public establishment for inter-municipal cooperation;

– Name of a public entity ;

– Trademark registered by an agent without authorization.

Is the examination of evidence of use deeper?

Genuine use, or proper reasons for non-use, must be reported for each good and service invoked in support of the opposition. Thus, the earlier trademark will only be deemed to be registered for the goods or services for which this demonstration has been made. The INPI is now in charge to carry out said examination. In the past, only the courts were in charge.

As far as domain names are concerned, since the GDRP the Whois records are anonymized. How can it be justified that the person who made the domain name reservation has the right to file an opposition?

If the Whois record is anonymous, then in addition to the anonymous Whois record, any document establishing the existence and identity of the domain name holder can be provided. It can be for example the certificate from the Registrar or an invoice showing the reservation of the domain name.

About the procedure

Which are the changes in the course of the procedure?

A phase of exchanges, also known as the “instruction phase” is set up. It starts with the notification of the opposition to the applicant. This instruction may include up to three phases of exchanges between the parties.

From now on, the procedure is no longer confined to a 6-month period. It is however subject to the principle of « silence is tantamount to rejection », within a period of 3 months. This means that if the INPI has not ruled within 3 months following the end of the exchange between the parties, the opposition is rejected.

The duration will therefore vary according to the number of replies from the parties, but in any case may not exceed 13 months.

What are the cases of suspension of the procedure?

Suspension is possible in several cases:

– When one of the rights invoked in support of the opposition has not yet been accepted or is subject to a legal action;

– At the initiative of the French trademark Office, the INPI.

The entire procedure is suspended when the opposition is based on several rights, even if the suspension concerns only one of the rights invoked.

The duration of the suspension in the event of a joint request by the parties is extended to 4 months and renewable twice, i.e. 12 months in total, instead of 6 months in the past.

On the role of the INPI

Does the French Trademark Office INPI have more power in the new procedure?

This new opposition procedure greatly strengthens the role of the INPI.

Before the new procedure, the role conferred on the INPI in the examination of proof of use was limited: apart from cases where the lack of use was proven, the opposition procedure was not closed.

At present, where the applicant requests proof of use of the earlier trademark, it is up to the INPI to decide on the genuine nature of the use of the earlier trademark for each of the goods and services invoked in support of the opposition.

This reform reinforces the adversarial principle and, consequently, the protection of the rights of trademark owners.

The lovelinesss of the European Union: to obtain in one Member State a declaration of counterfeiting for acts committed in another Member State

Written by Dreyfus06/07/2020

CJEU – September 5, 2019

AMS Neve Ltd, Barnett Waddingham Trustees, Mark Crabtree c/. Heritage Audio SL, Pedro Rodríguez Arriba,

It is possible to bring an actionbefore a national court with the purpose proving an infringement of the EU trademark in that Member State, even if the third party has advertised and marketed his goods in another Member State.

That is the answer given by the Court of Justice of the European Union to the preliminary ruling question concerning the interpretation of Article 97(5) of Council Regulation (EC) No 207/2009 of February 26, 2009 on the European Union trade mark.

That reference was made in the context of a dispute between the parties:

– The applicants : AMS Neve, a company founded in the United Kingdom, for manufacturing and marketing audio equipment, represented by its director Mr Crabtree. Barnett Waddingham Trustees “BW Trustees” is the trustee;

versus

– The defendants : Heritage Audio, a Spanish company also marketing audio equipment, represented by Mr Rodríguez Arribas

concerning an infringement action for alleged infringement of rights conferred, inter alia, by an European Union trade mark.

The applicants are the owners of the European Union trademark and of two trademarks registered in the United Kingdom.

Having discovered that Heritage Audio was marketing imitations of AMS Neve products bearing or referring to a sign identical or similar to the said EU and national trademarks and was advertising those products, they brought an action for infringement of an EU trade mark before the Intellectual Property and Enterprise Court in the United Kingdom.

In order to prove the infringement in the United Kingdom, the applicants provided the documents in support of their action, including in particular the contents of Heritage Audio’s website and its Facebook and Twitter accounts, an invoice issued by Heritage Audio to an individual, resident in the United Kingdom.

Then, in order to prove the infringement in the European Union, they provided screen shots from that website showing offers for the sale of audio equipment bearing a sign identical or similar to the European Union trademark. They underlined the fact that these offers are in English and that a section entitled “where to buy” is available on the website, listing distributors in various countries. In addition, they argued that Heritage Audio accepts orders from any Member State of the European Union.

While the Court agreed to rule on the protection of national intellectual property rights, it found that it lacked jurisdiction to rule on the infringement of the EU trade mark at issue.

The appellants appealed against that judgment to the United Kingdom Court of Appeal, which decided to enforce a stay on proceedings and to refer the following questions to the Court for a preliminary ruling:

– Does a national court of a Member State A have jurisdiction to rule on an action for infringement of the EU trademark on account of its advertising and marketing of goods carried out in Member State B?

– If so, what criteria should be taken into account in determining whether the company has taken active measures regarding the infringement?

The answers given by the CJEU are as follows:

– the plaintiff, depending on whether he chooses to bring the infringement action before the EU trademark court of the defendant’s domicile or before that of the territory in which the act of infringement was committed or threatened to be committed, determines the extent of the territorial jurisdiction of the court seized ;

o when the infringement action is based on Article 97(1), it shall cover acts of infringement committed on the territory of the Union (where the action is brought before the court of the defendant’s domicile or, if the defendant is not domiciled in the European Union, in the State in which he is professionally established);

o when it is based on paragraph 5 of the same Article, it shall be limited to acts of infringement committed or threatening to be committed within the territory of a single Member State, namely the Member State of the court seized ;

– in order to ensure that the acts of which the defendant is accused were committed in the EU , it is necessary to determine where the commercial content was actually made accessible to consumers and professionals for whom it was intended. Whether such advertising and offers subsequently had the effect of purchasing the defendant’s goods, is on the other hand, irrelevant.

In the present case, the advertisements and offers referred to by the applicants were aimed at consumers and/or professionals, in particular in the United Kingdom.

In those circumstances, the Court considers that the applicants have the right to bring an infringement action against that third party before a EU trademark court of the Member State within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display.

This possibility of bringing an infringement action before any competent national court to rule on acts of infringement committed in any Member State is very useful in particular to optimise the costs of proceedings, depending on the national regulations. France, for example, offers irrefutable methods of collecting evidence, such as a bailiff’s report, to establish facts of infringement, at attractive prices.

UDRP Procedure: manage a domain name portfolio with attention

Written by Dreyfus03/07/2020

WIPO, Arbitration and Mediation Center, March 10, 2020, No. D2019-3175, Orfeva SARL v. Vianney d’Alançon.

The company Orfeva has specialized for many years in baptism medals. Since 2010, it has been using the domain name ” medailledebapteme.fr ” as the domain name for its official website. Orfeva is also the owner of the French trademark “MEDAILLEDEBAPTEME.FR”.

Orfeva filed a UDRP complaint before the WIPO Arbitration and Mediation Center against the domain name <medailledebapteme.com>, claiming that it infringes its rights, and asking for a transfer.

This domain name was initially registered on July 21, 2010 by Mr. de Graaf, legal representative of the applicant, then, due to a non-renewal in 2016 – for reasons not explained – this name fell back into the public domain and was reserved on September 26, 2016 by Mr. Vianney d’Alançon to designate his own website for the sale of jewelry and silverware. Mr. Vianney d’Alançon has been the owner of the French trademark “1000 MEDAILLES DE BAPTEME.FR” since December 2015.

The applicant argued that the defendant registered the disputed domain name with perfect knowledge of the existence and use of its earlier mark. Consequently, it considers that the defendant sought to generate confusion with its earlier mark in order to try to divert consumers to its own internet site, by offering them the same goods on a very similar site. In addition, the applicant states that has filed an applicaion by letter, through its Counsel, for the restitution of the disputed domain name, without receiving a reply from the defendant.

The defendant, for its part, maintains that it purchased the domain name <medailledebapteme.com> because it is descriptive of his products and not in order to disrupt the applicant’s business. He argued that the expression ‘baptismal medal’ in everyday language cannot be the subject of a monopoly, being the generic, necessary and customary designation of baptismal medals in the jewellery sector.. Furthermore, he adds that he replied to the letter from the applicant’s counsel, refusing to uphold his claims. Finally, the defendant argues that there has been no demonstration of customer poaching. In that regard, it states in particular that the applicant’s business is not disrupted by the operation by a third party of the domain name <medaille-de-bapteme.fr> which predates the applicant’s domain name <medaille-de-bapteme.fr>.

The applicant’s position is not followed by the expert who considers that the domain name has not been registered and is not being used in bad faith.

Indeed, the name is descriptive of the Respondent’s activity, which justifies the registration of the domain name. The applicant’s knowledge of prior trade mark rights cannot affect the legitimacy of that registration.

Furthermore, the expert endorses the Respondent’s argument that it was not intended to disrupt the applicant’s business, pointing out that several companies specialising in the sale of christening medals and using very similar domain names coexist peacefully.

The expert concludes that the complaint must be rejected. In addition, he states that there is no evidence or reason to suspect any customer poaching or disruption of the applicant’s business operations. A court of law may rule on this matter, if necessary.

It should therefore be borne in mind that the abandonment of a domain name describing the activity, especially if it includes the highly prized top level domain “.com”, will most certainly be registered by a third party as soon as it falls into the public domain. Indeed, this type of name is generally very coveted, especially because it can enjoy high visibility on search engine results, corresponding to the keywords that Internet users can search for.

The same applies to domain names that reproduce the company’s brand and especially its corporate brand. Even if it is decided to no longer use a name, it may be advisable to keep it as a defensive measure to prevent a third party from taking it over.

Finally, it should be recalled that the parties must be attentive to the arguments they present before the WIPO, at the risk of departing from the UDRP’s legal regime. Unlike the judge, the expert does not have the power to declare a trademark invalid, nor to conduct investigations for unfair competition.

Keywords: generic designation of domain name – bad faith – trademark right – domain name – unfair competition

UDRP Procedure: proof of claimed trademark rights must be accurate

Written by Dreyfus02/07/2020

WIPO, Arbitration and Mediation Center, March 5, 2020, No. D2019-2887, SYMPHONY HOLDINGS LIMITED V. JAIMIE FULLER, FULLER CONSULTANCY F.Z.E.

The first criterion of the UDRP – which generally does not pose any difficulty – consists in the applicant demonstrating that a trademark in which he has rights is recognizable in the disputed domain name.

The text of the UDRP Guidelines, available on the ICANN website, is as follows: “Your domain name is identical to, or confusingly similar (note: potentially confusingly similar) to, a trademark or service mark in which the complainant has rights. It is not clear whether the applicant must simply be the owner of the mark, or whether he must also be the registered owner of that mark.

This point must be considered when reading the case of a Bermudan company Symphony Holdings Limited, against the Swiss defendant Jaimie Fuller of Fuller Consultancy concerningthe domain name <skins.net>

The applicant, Symphony Holdings Limited, claimed rights in the Australian trademark’SKINS.NET’, which is identical to the domain name. However, the Experts noted that the Symphony Holdings Limited did not appear as the owner of the mark in the databases of the Australian Office.

The applicant had submitted a copy of an agreement by which it had acquired a list of assets belonging to SKINS International Trading AG (“SITAG”), the registered owner of the mark.

However, this agreement was found to be insufficient, as the precise list of acquired rights was not provided. It was, therefore, not possible to verify that the trademark in question was part of it. All the more so since the contract specifies that all assets are transferred except for those already transferred in 2012 to a Japanese company.

This might lead to the conclusion that if the applicant had provided the list of the transferred trademarks, then the claimed trademark would have been accepted by the experts. The experts stated that they could have issued a “panel order”, i.e. a request for additional documentation. However, they did not do so because the dispute seemed too complex to be resolved via the UDRP procedure. In fact, at the time of the auction of SITAG’s assets, the defendant was one of the applicant’s competitors.

It should be noted that the Respondent had itself acquired the domain name in question, which belonged to SITAG, through an agreement.

On the one hand, this decision may help to recall a fundamental principle of trade mark law: registrations relating to trade marks should be done, in particular in assignment or licensing cases, in order to avoid being harmed subsequently, in the event of a court action, for example.

On the other hand, the decision also emphasizes that the UDRP procedure is not appropriate for all domain name disputes. It is tailored for disputes between a right holder and a cybersquatter. Commercial disputes between companies have no place here.

Thus, it is necessary to be vigilant with regard to all aspects of the procedure. The question of rights, which may seem elementary, must be perfectly taken care of in that the absence of valid proof of the trademark right will necessarily lead to the failure of the complaint, even if the case is more obvious than the one currently under discussion.

Coronavirus: the measures implemented by intellectual property offices to deal with the health crisis

Written by Dreyfus30/06/2020

The whole world’s been in slow motion since the Covid-19 virus spread. Thus, state governments are doing their best to maintain the continuity of the administration despite the implementation of containment measures,. Since an ordinance of March 16, the offices have decided to extend procedural deadlines that expired during this period of health crisis.

Here’s a list of the provisions that offices have put in place in order to allow better management of procedures related to trademarks, as well as patents.

INPI, The National Institute of Intellectual Property

The INPI decided in its order n°2020-32 of March 16, that the deadlines for proceedings relating to patents, trademarks and designs will be extended to 4 months for procedures concerning patents, trademarks and designs. However, the deadlines for priority for international extensions, for payments for patent and supplementary protection certificate filing, which are subject to supranational provisions, have been excluded.

The order adds that “in the event of failure to comply with a deadline, the health crisis will be taken into account when examining the procedures for appealing for restoration or for a forfeiture statement to the INPI. »

It should be noted that the bill put in place by the government was adopted by Parliament on March 2: the aim is to enable the Government to legislate by ordinance in many areas, including that of intellectual property. This ordinance thus includes provisions concerning the extension of the deadlines stemming from the Intellectual Property Code, including those relating to the opposition procedure.

In accordance with the new order dated March 25 (No. 2020-306), the INPI extended the delay of deadlines for procedures concerning trademark oppositions, trademark renewals or design extensions : it allows to benefit from thecorresponding grace period or for the filing of an administrative or judicial appeal.

In this way, it extends the deadlines which expire between March 12th and June 23rd. The statutory deadline for taking action runs until July 23rd if the initial deadline was set for one month, and until August 23rd if it was for two months or more.

The INPI is already planning to extend its deadlines until July. In the weeks to come, it will be necessary to closely monitor the news from the office.

EUIPO, European Union Intellectual Property Office

The Office had stated in its Decision No. EX-20-3 issued on March 16, that all deadlines expiring between 9 March and 30 April 2020 included, would be automatically extended until May 1st, 2020. Since May 1st is a public holiday, the deadlines were therefore extended until May 4, 2020.

EUIPO subsequently explained its decision on March 19. By the expression “all deadlines”, it meant all procedural deadlines, whether fixed by the Office or of a statutory nature. “They are stipulated directly in the Implementing Regulation,” with the exception of the deadlines relating to matters not covered by certain regulations, such as that on the European Union trademark (2017/1001). It is therefore applicable to all procedures, whether for trademarks, patents, renewals or opposition proceedings.

More recently, on April 29, WIPO’s Executive Director issued the Decision No. EX-20-4, extending all deadlines expiring between May 1st and May 17, to May 18, in order to further support and assist users during the COVID-19 pandemic.

WIPO, the International Intellectual Property Organization

In the opinion (No. 7/2020) issued on March 19, WIPO introduced possible remedies for failure to comply with the deadlines under the Madrid system and modalities for the extension of the deadlines when the national offices are closed.

With regard to the international registration of trademarks, WIPO added that the extension of the deadlines is automatic in the event that an IP office is not open to the public. Therefore, if a deadline for a provisional refusal expires on the day an office is closed, it will be extended on the first day following the opening of the office.

The opinion adds that, with regard to trademarks, applicants may request the continuation of the procedure without having to justify themselves, in particular for all matters relating to an international trademark application, a request for registration, a request for modification of a subsequent designation, etc…

WIPO has also recently announced automatic extensions of the deadlines in cases where a national IP office is closed to the public and in the event of disruption in postal or mail services.

USPTO, the United States Patent and Trademark Office

In a press release of March 16 and 19, USPTO had announced that it was waiving the late fees in certain situations for applicants affected by the coronavirus, as well as the requirement of an original handwritten signature in ink for certain documents.

On April 28, USPTO announced an extension of the deadlines up to May 31, 2020. This means that some actions that were due in this period can be postponed to 1 June. The USPTO gives an extension for certain deadlines between March 27 and April 30. This period runs to 30 days from the original deadline.

In order to obtain the extension, applicants or patentees must “submit a declaration that at least one person responsible for the delay has been affected by the COVID-19 pandemic, due to office closures, financial problems, inaccessibility of records, illness of a family member, or other similar circumstances. »

In other countries of the world

-The Canadian Intellectual Property Office is extending the deadline to July 6th, 2020.

–The German Patent and Trademark Office affirmed in a statement dated May 11 that the extension of the deadlines will be until June 2.

–UKIPO, the United Kingdom Office declared on May 7, 2020 that all deadlines falling on or posterior to March 24, 2020 (being those interrupted days) will be extended to the following interrupted day. The period of interruption will end on July 29th. This extension applies to most deadlines for patents, trademarks, supplementary protection certificates and designs.

–The Benelux Organisation for Intellectual Property is the most rigid office. Indeed, in a press release dated March 16, it discloses that trademark applications referring to coronavirus will be refused registration. However, in a press release of March 20, it revised their position by saying that “the BOIP will not withdraw any application or procedure because a given deadline has not been met. This also applies to opposition proceedings not filed on time or to payments not made on time”. These measures will be applicable until May 20, 2020, at least.

The WIPO website regularly updates information on the provisions adopted by various intellectual property offices in order to keep abreast of the various communications that offices can make around the world. With the introduction of deconfinement measures in some countries, including France, it will be necessary to closely follow the future news.

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

Trademark