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.

Will trademark non-use due to quarantine be considered a valid reason?

Written by Dreyfus12/06/2020

Due to the current health situation, the majority of companies have reduced their activity. This suspension or reduction of activity will have an impact on all intellectual property and may in particular result in the non-use of the trademark by the owner, leading to its forfeiture.

In fact, in accordance with the French law, and more specifically Article L714-5 of the Intellectual Property Code, if a trademark is not used for an uninterrupted period of five years for the goods and services covered by the registration, the court may, order the revocation of the trademark and the cancellation of its registration, at the request of an interested third party

The holder must therefore ensure that there is genuine use during this five-year period, i.e. real exploitation.

Thus, owners of trademarks that had not been exploited before the health crisis and quarantine could not start or resume exploitation. This unprecedented period could therefore lead to a period of non-use of more than five years.

However, the trademark owner may invoke a valid reason justifying the absence of serious use. According to established case law, this just reason must have a direct link with the trademark, be a circumstance outside the control of the trademark owner which has made the use of the trademark impossible or excessively difficult.

Therefore, it seems that the court may consider the restrictions imposed by the Government because of the pandemic as a valid excuse for the non-use of the trademark by the owner. Indeed, this obstacle, which is external to the owner’s will and which has made the use of the trademark extremely difficult, may be qualified as a just cause which will prevent or should lessen the delay of a possible revocation of the trademark.

World Anti-Counterfeiting Day: issues and challenges

Written by Dreyfus10/06/2020

In honor of the 22nd World Anti-Counterfeiting Day, Dreyfus Law Firm attended a Webinar organized by INDICAM(Istituto di Centromarca per la lotta alla contraffazione) involving directors of various anti-counterfeiting organizations: GACG, EUIPO, UNIFAB, INDICAM, ANDEMAand ACG.

Anti-counterfeiting issues are always of paramount importance. In fact, approximately 5% of imports into the European Union are counterfeit products. The counterfeiting market is very lucrative for counterfeiters: it requires a very low investment for a very high profit. In addition, the risks associated with it are lower.

During the health crisis linked to the Covid19, the sale of counterfeit products increased significantly: masks, hydro-alcoholic gel, medical equipment; and all this to the detriment of the population’s health. This phenomenon was particularly observed on Marketplace platforms, which were forced to invest impressive means to suppress fraudulent advertisements.

Consequently, the question arises: if the platforms are capable of actively combating the sale of counterfeit medical products in times of crisis, why cannot the same be said of other acts of counterfeiting? Cooperation with the platforms should therefore be initiated to this end. European associations are closely following the progress of the Digital Single Act, which should represent an additional opportunity in the protection of rights.

Moreover, during the health crisis, the fight against counterfeiting has mainly been focused on medical products and devices. As a result, many infringements went undetected. For example, only products arriving by air were checked during this period and not products imported via cargo ships. To make things worse, in Belgium, for example, all the police officers whose mission was usually to combat counterfeiting were requisitioned in order to enforce anti-Covid-19 measures.

With the coronavirus, the fight against counterfeiting must therefore be stepped up. One of the challenges for the years to come is to provide consumers with the best possible information. Delphine Safarti-Sobreira, Director of UNIFAB (Union des Fabricants), said that awareness campaigns were already being launched through various media, including television broadcasts and YouTube. The next step will be to convince the government to introduce compulsory education in schools on this subject.

Three elements are essential in order to fight effectively against counterfeiting: an effective law, more information for consumers and an unwavering determination to continue the fight.

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

A senator is worried about parliamentarians IT security

Written by Dreyfus18/05/2020

Jérôme Bascher, the republican Senator of Oise (LR party) expressed his concerns in the report to the Senate No. 82 (2019-2020), on October 22, 2019 : ″Parliamentarians IT security is close to zero″

It is primarily a matter of distinguishing between institutional functions and the IT practices of parliamentarians themselves. While the former are relatively well protected, since they benefit from assistance such as that provided by the Anssi (national agency for the security of information systems), the latter are a source of great IT insecurity.

IT insecurity factors related to the workforce

1. Having its own IT equipment

The workforce is a key element in IT security. Each parliamentarian is free to have their own equipment (Huawei or Apple telephone), yetinsecurity can arise from their exchanges and from the means of communication they use. In fact, mobile instant messaging applications that are likely to be used, go through the GAFA. They are hosted by servers of Amazon web service and not by OVH, for example, which could potentially be an efficient French server. This could be countered by the argument that Amazon Web service is also based in France,

2. Not enough awareness among senators

While the Parliament benefits from the Trojan horse attacks detecting systems on institutional sites, the level of IT security among parliamentarians is still very low.

In 2018, the Senate’s IT security systems intercepted more than 30,000 high-risk contents. Senator Bascher assures that security services experience at least 2 or 3 cyber attacks per week.

Only wiling senators are aware of the importance of IT security. Senator Bascher pointed out : “I’ve never had a virus in my life, because I’m careful,”. Among the risks that public authorities may incur, appears the so called “facing”, that is,the creation of a fake Internet page that could be an apology for terrorism, that French channels Public Sénat and LCP-AN, whose credits are included in public authorities mission, can suffer from. It is a bit reminiscent of the past attack against the channel TV5 Monde a few years ago, which has since had to make considerable investment efforts to pay for its protection.

In addition, an increaseof requests that makethe site inaccessible – hasto be considered,

Cyber attacks against public authorities are now undeniable, as evidenced by the cyber attacks that hit Estonia in 2007, the German Bundestag in 2015 and, to a lesser extent, the Senate, in 2011.

Implementation of solutionsto reinforce the parliamentarians IT security

1. The current IT protection system

Senator Bascher points out that, 10% of the IT budget in France is spentonsecurity. A program administeredby the Ministry of Defence consisted in recruiting cyber-combatants, however there is a protection imbalance since the Elysée had its own network, which is not the case for the Parliament. Senator Bascher claims that the budget designated to cybersecurity should be increased.

2. A mechanism to be reinforced

The primary objective would be to improve the parliamentarians equipment and make them more aware of IT risks.

According to the Senator, it would also be necessary to reinforce the resources of the Anssi, which is currently the only entity that deals with all the organs of power.

Public authorities are therefore at the heart of the strategic and decision-making challenges of Western democracies, as a result of which, they became the main target of IT attacks. This is all the more true in the election period, as demonstrated by the 2016 American presidential election. It’s time to strengthen the parliamentarians IT protection.

UDRP procedure. The bad faith complainant: when the chances of success are so low that the applicant should not have taken action

Written by Dreyfus11/05/2020

Source: WIPO, Arbitration and Mediation Center, Jan. 30, 2020, No. D2019-2937, Scalpers Fashion, S.L. c/ Dreamissary Hostmaster

The Spanish company Scalpers Fashion is active in the fashion industry. It is the owner of numerous trademarks incorporating the “Scalpers” sign, including the European Union trademark “Scalpers” No. 6748578, registered on September 29, 2008. The company has filed a UDRP complaint before the WIPO Arbitration and Mediation Center against the domain name <scalpers.com>, claiming that it infringes its rights. The domain name was registered on September 15, 1997, by the Respondent Dreamissary Hostmaster, who is in fact a natural person, a U.S. citizen and the holder of a substantial number of domain names featuring dictionary words. The domain name at issue was exploited to generate pay-per-click revenues by leading to sponsored links referring to the sale of tickets. At the time the complaint was filed, the domain name in question resolved to a parking page.

The Complainant submits that the Respondent intends to take undue advantage of its reputation in fashion and to disrupt its business. In addition, the Complainant submits that the large sums proposed by the Respondent in various attempts t negotiate are evidence of his bad faith. Indeed, the Respondent allegedly offered initially $150,000 and then $195,000. Finally, the Complainant considers that the Respondent’s bad faith is manifested by the registration of more than 100 domain names, for him to be able to resell them for a profit.

The Respondent contends that he registered and used the domain name <scalpers.com> because of the definition of the word “scalper”: a person who buys tickets at the normal price and then resells them at a high price when demand is high and available seats are scarce. In addition, the latter requires the expert to conclude to reverse domain name hijacking.

The Complainant’s position was not followed by the expert. The expert considers that the domain name was neither registered nor used in bad faith. Indeed, the Respondent had registered the domain name more than 10 years before the Complainant’s alleged date of first use of the “Scalpers” trademark. In such circumstances, there was no basis to conclude that the Respondent targeted the Complainant’s mark, which was not in existence at the time the Respondent registered the disputed domain name. As regards the use of ???, the expert also concluded that there was no bad faith, since the Respondent had used the domain name for the meaning of the word “scalpers”. The expert ruling on the case indicates that the complaint should be dismissed. In addition, he stated that the complaint was filed in bad faith by the Complainant, and was intended to deprive the Respondent of ownership of his domain name. Indeed, several facts contribute to the expert’s position: the domain name was registered by the Respondent long before the Complainant owned a trademark right in the Scalpers sign; the UDRP Complaint was filed after two unsuccessful attempts to purchase the domain name from the Respondent; and the Respondent’s counsel notified the Complainant that the complaint should be withdrawn due to the manifest impossibility of establishing bad faith.

The Complainant clearly should have known that the complaint could not succeed. Thus, it should be borne in mind that the UDRP procedure is not a one-way tool. The aggrieved Respondent may attempt to reverse the proceedings to obtain a decision against the Complainant. Here, the lack of chance of success was particularly blatant, as the domain name predates the trademark rights of Scalpers Fashion.

The rise of phishing in the midst of the coronavirus crisis

Written by Dreyfus07/05/2020

Source: Bank Info Security, Feb. 11, 2020

The global health crisis caused by the coronavirus is a favorable context for phishing techniques. Indeed, many organized gangs of cybercriminals are pretending to be health organizations by using fake domain names. As a result, they send an e-mail pretending to be a health-related entity, in which they ask the recipient to click on a link and enter or confirm a login and password. For example, cybercriminals therefore send phishing e-mails containing domain names similar to those used by the Centers for Disease Control and Prevention. For example, cybersquatters have incorporated the domain name “cdc-gov.org” which is similar to the official domain name “cdc.gov”.
Thus, these malicious e-mails encourage users to click on a link that looks like it contains information related to the issues related to the coronavirus. In fact, Internet users are redirected to a fake website where they have to enter a username and password. In other cases, cybercriminals send phishing e-mails looking like they originate from the World Health Organization, inviting users to a link to download a document on security measures against the spread of the virus. Of course, this is not the case and users are redirected to a pop-up screen asking for a username and a password. It should be noted that some cybercriminals adopt a different tactic by posing as entities linked to the world of economics, such as shipping companies or manufacturing industries. The coronavirus crisis can have an impact that extends beyond health concerns. Hence, it is necessary to be doubly careful about the extension of these phishing campaigns, alert may be raised for example by e-mails containing numerous spelling mistakes.

The <.eu> extension against Brexit

Written by Dreyfus06/05/2020

Source: EURid, registry of the <.eu> extension

The United Kingdom parted from the European Union on January 31, 2020. As a result, the United Kingdom and the European Union entered into a transitio period, a period that has been announced to last till December 31, 2020. During this period, UK residents are still entitled to register and renew names in <.eu>.

However, once this period expires, they will no longer be able to register domain names with the <.eu> extension, nor to keep those they already hold, unless they comply with the requirements. The EURID originally detailed a comprehensive plan that was supposed to be implemented from November 1, 2019, the date when the United Kingdom was due to leave the European Union. It will finally apply at the end of the transition period, although no precise deadlines have yet been set. Once the transition period ends, only the following persons are entitled to register domain names in <.eu>: a citizen of the European Union, regardless of his/her place of residence; a natural person who is not a citizen of the Union European but is a resident of a Member State; a company established in the Union; or an organization established in the Union, without prejudice to the application of national law.

Thus, for already registered domain names, registrants will be able to update their contact details in an attempt to maintain their assets. In particular, they will have to indicate a country code of citizenship corresponding to a Member State of the European Union of 27 regardless of their residence or establish an entity legally established in one of the eligible Member States of the European Union of 27 or the EEA. All registrants who do not comply with these eligibility rules will see their domain names cancelles such the domain names will then be available for registration to all.

As non-compliant domain names will be withdrawn, it is appropriate to carry out a thorough analysis of registrants’ domain name portfolios to see whether any of their registrations is at risk.

The liberalization of prices for domain names in <.com>: a possible increase from2021

Written by Dreyfus04/05/2020

The gTLD <.com> apparently occupies more than 40% of the domain name market share, according to statistics provided by the site www.domainnamestat.com. These results confirm that it is an unavoidable extension, especially because the <.com>, which addresses the whole world, is a strong rallying sign.

However, the negotiations in progress between ICANN and the <.com> registry, VeriSign, could lead to a modification of the approval on this extension, so that the <.com>’s price would increase by possibly 7% per year, from 2021 to 2024. In return for this right, VeriSign would pay $4 million to ICANN.

This negotiation is notably allowed by an amendment accepted by the American Department of Commerce, datedOctober 26, 2018, by which it was indicated that “in view of the more dynamic market of domain names, the Department considers it advisable to modify the cooperation agreement in order to provide flexibility in the prices related to the registration and renewal of domain names of the .com registry”.

If the price of <.com> increases, it will be relevant to see whether other TLDs recover some of its market shares, especially among the new gTLDs. If it seems unlikely that companies will abandon the names in <.com> that they already hold, newcomers to the market could possibly prefer other extensions.

Association between blockchain and domain names

Written by Dreyfus24/04/2020

Domain names appear to be a fertile ground for innovators related to blockchain technology.

Domain names and blockchain meet around the launch of the new extension “.luxe”, which contrary to what one might think was not created for the luxury industry (which already has its extension “.luxury” launched in 2014). The Ethereum foundation, whose aim is to promote blockchain technology, has entered into a partnership with the Minds + Machines (MMX) registry to create a new use for domain names, making “.luxe” the equivalent for cryptocurrency of what a classic extension represents for the IP address.

This association thus makes the IP addresses for the “.luxe” extension more intelligible.

Indeed, holders can link their domain name composed of the “.luxe” extension to their Ethereum account to replace their 40 characters identification number and make it easier to remember and use.

Provisional French patent applications for a simplified registration are now possible

Written by Dreyfus20/04/2020

With the publication of Decree No. 2020-15 adopted for the application of the PACTE law, it is now possible to file provisional patent applications as of July 1, 2020.

What is a Provisional Patent Application ?

A provisional application is a patent application whose registration procedure is simplified since certain filing requirements may be deferred in time. It is a procedure which permits the setting of an earlier filing date.

What is the Objective of a Provisional Application ?

This procedure is intended to allow companies to file patent applications before the French National Institute of Intellectual Property (“INPI”) in a simpler and less costly way. Therefore, it aims to facilitate access to IP protection, especially for start-ups and SMEs. The main objective is to provide a more flexible procedure for registration of patents.

How to File a Provisional Application?

With this Decree, it is possible to file a provisional patent application and defer the submission of the claims, the technical content of the invention and a copy of the prior filings.

On the other hand, the applicant is obliged, when filing the application, to indicate explicitly that this is a provisional application.

After Filing the Provisional Application

Within twelve months of the filing date of the provisional application, the applicant may request that his provisional application be transformed into a “normal” patent application (by completing the above-mentioned requirements that he had previously deferred) or that his application be converted into a utility certificate.

At the end of this period, the provisional patent application is withdrawn. Ultimately, this procedure allows applicants to gain additional time before deciding on the future of their applications.

Payment of the Filing Fees

The applicant must pay the filing fee within one month of the filing date. However, the applicant may pay the fee for the search report within one month of making a request to turn the patent application into a normal one.

This less stringent registration procedure will allow applicants to apply for patents in a more flexible way, under certain conditions. It will render it possible to fix the date of creation of an invention and then to determine what action will be taken later on with regard to its protection.

Trademark