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The UDRP does not constitute an alternative to an unsuccessful buyout attempt

The UDRP stands for the Uniform Domain-Name Dispute-Resolution Policy and is a legal process that requires both parties to present evidence and argue their case in an unbiased setting. In the case of SpaceX v. StarGroup, the UDRP was used to decide if a domain name infringed on another’s trademark. The UDRP found that the domain name was not in violation of a trademark. Instead, it was a legitimate use of the name to describe the company’s products and services. This case highlights the fact that the UDRP is a process designed to fairly and effectively resolve domain name disputes. It is not intended to be used for anything else. The complainant “SpaceX” is an American company providing aerospace manufacturing, transportation, and communications services in many countries. Its oldest trademark right on “STARLINK” comes from a European Union trademark registered on May 15, 2018. Since 2020, it has used the trademark “STARLINK” for communication services, notably broadband internet services by satellite. The complainant also owns the domain name <starlink.com>. The complainant invokes several arguments. Namely that the domain name incorporates its “STARLINK” trademark and that the defendant’s goal is to usurp the complainant’s identity via the domain name, a major argument without proof. Between 2017 and 2018, the complainant offered to buy the “STARLINK” trademark from the defendant, which was refused. Furthermore, the complainant argues that they have tried for several years to stop the defendant’s infringement of its “STARLINK” trademark. Indeed, in view of the facts, the company StarGroup seems to be the first to have commercially exploited the term “STARLINK” or at least to have secured this sign as a trademark. 

This “STARLINK” trademark is at the heart of the dispute since the contested domain name is <starlinkmx.com>, with the mark registered on June 8, 2018, by StarGroup. StarGroup, the defendant, operates in the entertainment and telecommunications sector. This company, located in Mexico, owns a family of trademarks around the term “star”: STAR TV, STAR GO, STAR LINE, and STAR GROUP. The company has also filed two “STARLINK” trademarks in Mexico. One of which, registered in November 2015, was canceled following an action brought by the complainant. The second, registered in January 2016 for online entertainment services in class 41, is still in force. The defendant’s arguments shed more light on the situation. He alleges that his “STARLINK” trademark continues with the numerous StarGroup trademarks: STAR GROUP, STAR LINE, and STAR GO. He specifies that his “STARLINK” trademarks are prior to those of the complainant and that the domain name in question is operated in connection with his activity. Finally, the defendant explains that during the action in Mexico, his “STARLINK” trademark was canceled, not because of the complainant’s prior rights, but because the list of services was not specific enough. Given the context, it seems that this was more of a “counter-attack” by the complainant against a competitor who refused to sell its trademark. 

In a decision of September 21, 2022, the UDRP complaint filed by the company Space Exploration Technologies against the company StarGroup was logically rejected given the context of the case. On the one hand, the complainant’s trademarks are registered in the European Union. It does not invoke any Mexican trademarks in its favor. In addition, the complainant provides no evidence that the defendant would seek to deceive Internet users by passing itself off as the complainant. The decision does not mention the complainant’s actions to defend its rights against the defendant (apart from the Mexico circumstance). Finally, why buy the defendant’s trademark if the latter acted fraudulently on the complainant’s rights?

In support of their decision, they note that on the day of registration of the disputed domain name, the Respondent could not have known that the Complainant intended to register or use the trademark “STARLINK”, in Mexico or elsewhere. In our view, this is not entirely correct, since the Respondent had been approached by the Complainant – first anonymously in 2017 and then revealed in May 2018 – to propose, among other things, the purchase of the “STARLINK” trademark. However, this does not mean the Respondent targeted the Complainant by preserving the domain name in question, since this name merely reflects its trademark (which the experts note). Finally, experts note that StarGroup has registered a separate domain name for each of its “STAR” marks. The Respondent registered its “STARLINK” mark in November 2015, proving its intention to commercially exploit this mark, well before the Complainant. Consequently, it is impossible to conclude that the defendant acted in bad faith. Finally, as of 2019, the disputed domain name pointed to a website promoting the sale of satellite data packages, i.e. a year before the public launch of the Complainant’s business under its STARLINK trademark. 

This decision seems consistent with the purpose of the UDRP procedure: its aim is to prevent cybersquatting, not to settle disputes between two players operating in the same market. In this case, the respondent, owner of several trademarks including the word “STAR” and the trademark “STARLINK”, was perfectly entitled to register the domain name <starlinkmx.com>.

Trademark applications are not sufficient to demonstrate prior rights  

On November 10, 2022, a court decision reaffirmed some fundamental UDRP rules: the complainant must prove they own a trademark and that the disputed domain name violates it. This can be a registered trademark (a completed registered or filed trademark application) or an unregistered trademark (which acquired distinctiveness through use in a common law country). However, arguing such rights without backing them up with evidence will, of course, lead nowhere.

In the case at hand, the UDRP complaint was filed by Black Foodie Company. Since April 2015, the complainant has been operating a culinary platform offering recipes, events, and food guides, along with the sale of “goodies” (such as t-shirts, sweatshirts, etc.) at www.blackfoodie.co, in connection with gastronomy seen through Black people. The complainant maintains that its platform reaches millions of people, has won several awards, and enjoys media recognition. The proposed domain name, <blackfoodie.com>registered anonymously on June 17, 2009. The disputed website notably features recipes and information on restaurants owned by Black people (the site was not yet in place at the time of the complaint). The name was later acquired by Braxton Richmond in 2022, CEO of Black Foodie Finder, and registered in 2020. The defendant also operates the domain name <blackchef.com>. Indeed, the defendant alleges that they use the disputed domain name for a website and a mobile application. This is serving as a directory for businesses and culinary events. They also hold a 2020 trademark “BLACK FOODIE FINDER” registered on the Supplementary Register in the United States, demonstrating their legitimate interest in said name. 

However, the complainant does not hold a registered trademark. Due to unclear wording, risk of confusion with prior rights, and the description of the sign, the company’s two US trademark applications have been suspended. The complainant should have known that their complaint had no chance of success, and this was for each of the conditions of the UDRP complaint. The Canadian trademark application also received a provisional refusal concerning its wording. Notably, these three applications are dated from 2021. The complainant boasts, in particular, of having over 220,000 social media followers. However, it is clear from reading the decision that the complainant did not document its arguments, which is both necessary and all the more significant when the invoked sign is descriptive, and the defendant operates under a very similar name for their own activity. They also note that the claimed trademark is inherently descriptive as the terms “black foodie” designate food and Black people. Furthermore, several other websites like www.theblackfoodies.com are used for the same products and services as those of the complainant.

As a result, the expert rejected the complaint because the complainant cannot assert trademark rights. The USPTO’s reasoning is also echoed, which concludes that a trademark “that describes a user or group of targeted users of a product or service is simply descriptive.” The purpose of a trademark is to indicate the origin of products and services. Nevertheless, even if Black Foodie had a registered trademark, it is highly likely that an expert would oppose the complaint. Common law rights remain possible. As the expert recalls, several factors demonstrate these rights: the nature and duration of use; the volume of sales made; the nature and extent of the brand’s promotion; the degree of public knowledge; consumer surveys. 

Securities and Exchange Commission (SEC): Verisign Domain Name Brief : Increased Registration Filings despite pandemic outbreak

In 2022, Verisign, the global provider of domain name registry services, announced new statistical and analytical data on the level of domain name registrations. Despite the 2021-2022 COVID pandemic outbreak, data depicts that domain name registrations were considerably rising. For example, 349.9 million domain name registrations transpired during the closed third quarter of 2022. Specifically, the .com and .net TLDs had a combined total of 174.2 million domain name registrations compared to a decrease of 0.1% and 0.2 million domain name registrations in the second quarter of 2022. Given the surge of registrations, the average price of domain names and registry fees increased. The statistical data provided by Verisign reveals that despite the internal business damage done to small-business and corporations worldwide from the pandemic, such as closure and bankruptcy, due to the rise of remote and work-from-home options in demand, registrations on trademarks and domain names were relevantly rising. 

In addition, new .com and.net domain name registrations totaled about 9.9 million by 2022 compared to 10.7 million domain name registrations at the end of the third quarter of 2021. The top ten ccTLDs, such as .cn, .de, .uk, .nl, .ru, .br, .au, .fr, .eu, and .it, toppled to about 132.4 million domain name registrations at the end of the third quarter of 2022, compared to decrease filings of 1.7 million domain name registrations or 1.3%. CCTLDs are estimated to increase by 5.7 million domain name registrations or 4.5% annually. In further analysis, regular filings such as these support companies by limiting common problems such as material misrepresentations, acts of deception, and limiting fraudulent practices. Following the SEC protocol, regular filing registrations allow small businesses and multinational corporations to enhance their knowledge of identity risk and provide sustaining evidence in defending interests in the face of a legal dispute.

Origins and limitations of  “.brand”

On November 10, 2022, AFNIC addressed the announcement of ICANN’s official ten-year developed <.marque> program during the corporation’s 10th anniversary. The program allows successfully filed ICANN applicants and generally well-established industries or inventors to administer its domain name extension identical to its trademark. The proposed domain name’s beneficial development will strengthen trademark assets, increase Internet users and usage, and improve customer relationships. For example, the French corporation Banque Nationale de Paris et de Paribas (BNP) wanted to cluster its domain names like <.bnpparibas>, identical to its mark. Such actions allowed the corporation to make its trademark “stronger” and gain the trust of new Internet users to promote online banking. Domain name managers of large corporations believe such updates to <.trademark> extension stand out from the traditional <.com> extension. These new updates enhance the company’s legitimate identification and provide additional security for Internet users. Conversely, the <.marque> program lacks visibility and understanding to the general public in variety and top-level domain name extensions. As a result, there is a lack of capacity to support the system of introducing a variety of domain name extensions.

Given the current state of the internet ecosystem, taking such an expensive route will require the community to become informed and prepared for new developments and upcoming challenges.

Nathalie Dreyfus was appointed as an expert in industrial property and trademarks by the French Court of Cassation (French High Court) in December 2022 (specialty E.09.02). This prestigious title recognises her work and the highest level of expertise in this field. To fully understand the significance of this appointment, it is necessary to understand the roles and responsibilities of the Court of Cassation.

The Court of Cassation

The Court of Cassation is France’s highest court, responsible for ruling on appeals filed against decisions made by appeal courts and tribunals. Located in Paris, it consists of six specialised chambers that make decisions regarding disputes based on the underlying law. Its primary mission is to ensure the unity and consistency of case law by controlling the application of the law by lower courts. The Court rules on form rather than substance, which means that it only makes legal decisions and does not re-examine the facts of the case.

Positioned at the apex of the French judicial hierarchy, the Court of Cassation plays a critical role in safeguarding the overall integrity of the nation’s legal system. The decisions it makes are critical to ensuring consistency and legality within the legal system; they are binding on lower courts as precedents, and their weight in the law is substantial.

The Court of Cassation’s decision to appoint Nathalie as an expert in trademark law is a testament to her extensive knowledge and contributions to this area of industrial property law. In this role, she provides expert insight and knowledge on trademark law cases handled by courts, as well as at the request of lawyers or private parties seeking information on trademark law and intellectual property law more broadly. This can involve providing evidential expertise, brand evaluation, or design and model assessment. Nathalie also works as an expert to provide private opinions to trademark owners about potential infringements of their rights, as well as to compare brands, models, or websites. Additionally, she handles domain name and Web 3.0 issues and is frequently asked for her legal and technical opinion on a point of intellectual property law or a particular situation in the field.

The Court of Cassation has acknowledged Nathalie Dreyfus as an expert witness, attributing this recognition to her expansive knowledge and substantial experience in trademark law, design and model law, copyright law, and domain names. Impressively, she is presently the only female expert endorsed by the Court of Cassation under the specialty E.09.02 industrial property and, uniquely, the sole specialist in France focusing on brand-related matters.

Introducing Nathalie Dreyfus

Nathalie Dreyfus, the founder of Dreyfus Law Firm, is an intellectual property law specialist, Industrial Property Consultant, and European Brand Consultant who provides comprehensive advice on all facets of intellectual property law, encompassing the registration, defence, and evaluation of diverse intellectual assets such as trademarks, designs, models, copyrights, patents, appellations of origin, plant varieties, and domain names. Her expertise enables her to provide clients and the industry with comprehensive advice on all aspects of intellectual property law, including the registration, defence, and evaluation of various intellectual assets such as trademarks, designs, models, copyrights, patents, appellations of origin, plant varieties, and domain names. Dreyfus Law Firm has been recognised as a leading authority in its field by some of the most prestigious international law firm rankings.

Nathalie is also well-known for her expertise in the internet and new technologies, specifically phishing, cybersquatting, social networks, domain names, NFTs, Web 3.0, and online sales platforms. She counsels businesses on best practices in compliance and intellectual property, particularly with regard to domain names. She also actively participates as a speaker at numerous seminars and conferences in France and abroad, where she shares her insights and expertise on the aforementioned subjects as well as trademark law. 

The Role and Mission of the Judicial Expert in Trademark Law

Judicial experts play a crucial role in providing specialised opinions and evaluations on technical, scientific, or professional matters related to their area of expertise, and may be requested by the judge during a proceeding or by one of the parties directly. Every year, a number of national lists of experts by specialty are compiled and updated, one of which is compiled by the Court of Cassation and the others by each Court of Appeal. The selection of judicial experts is the responsibility of the Court of Appeals judges, who evaluate applications based on a variety of competence and morality standards.

A judicial expert in trademark law is a qualified and experienced professional who is well-versed in the field’s laws, regulations, and practises. Their responsibilities include providing technical clarifications, interpreting evidence, and forming informed opinions on trademark-related issues such as trademark similarity, trademark validity, and trademark infringement.

To become a judicial expert in France, several requirements must be met. To begin, they must have a certain level of professional expertise and be recognised in a specific field. Second, a solid academic background and relevant professional experience are required. Finally, it is vitally important for them to stay informed about developments and new regulations in their field of expertise.

In conclusion, should you need assistance with trademark protection, intellectual property management, or have any related inquiries, we invite you to contact us at Dreyfus. Nathalie Dreyfus and her team of internationally renowned experts are ready to give you the advice and assistance you require. You can reach us at contact@dreyfus.fr or call (+33) 1 44 70 07 04.

Allow us, the professionals at Dreyfus, to guide you through the complexities of intellectual property law, ensuring your rights and assets are comprehensively protected.

On the 1st, 14th, and 15th of March, the third audit of the European Union Intellectual Property Office (EUIPO), known as the “SQAP audit,” took place concerning trademark cancellations. More recently, on the 14th and 15th of June, the SQAP audit on trademark opposition procedures was held. This serves as an opportunity to review this initiative from the European Union Office for Intellectual Property (EUIPO).

Trademark cancellation: a step towards better rights protection

Forfeiture is an action inherent in trademark law. Forfeiture can be obtained on several grounds, such as lack of serious use, becoming a generic term, or the deceptive nature of the trademark.

The trademark is subject to an obligation of use and exploitation. Naturally, it can subsequently be canceled if it is not subject to this serious use for an uninterrupted period of five years. This ground for forfeiture can be established both five years after registration and during the lifespan of the trademark.

A trademark that becomes the common name in trade for the product or service for which it is registered can be canceled. To avoid this, the holder must fight against any deviant use of their trademark. To do this, they must be able to initiate legal action. Examples of names that have become common are Sopalin, Thermos, Caddy, Perfecto, etc.

Deceptiveness is another reason that can lead to the cancellation of the trademark. This is the case for a trademark that is likely to mislead the consumer about the quality, origin, or nature of the designated product or service. Forfeiture is established upon the request of a third party following deceptive use of the said trademark.

Since April 1, 2020, a new action has been opened to economic actors: the nullity procedure against trademarks. The goal is to enhance and simplify the protection of rights, and this action is subject to no limitation period. A successful action makes it possible to render unexploited trademarks available immediately or to bring down a monopoly on a potentially invalid trademark or one contrary to public order. For its implementation, the action can be based on two distinct causes: relative grounds and absolute grounds.

Absolute grounds can be invoked by anyone who believes that at the time of filing, the applicant was acting in bad faith, that the trademark lacked distinctive character, was contrary to public order, was likely to mislead the public about the nature, quality, or origin of the designated products and services, or even if the trademark is composed of the necessary designation of a product or service.

Only the owner of an earlier right, such as a trade name, trademark, or unregistered right, may use relative grounds. The holder must prove a risk of confusion between the signs.

Trademark opposition: an option for prior rights holders

Whether it is before the INPI (National Institute of Industrial Property), the EUIPO, or even the WIPO (World Intellectual Property Organisation), opposition reiterates the relative grounds for refusing a trademark. A third party’s second trademark application may be subject to opposition from the owner of an earlier trademark. The existence of earlier rights is considered as a relative ground for refusing registration of a European Union trademark. These grounds for refusal are not systematically verified by the Offices. As a result, trademark oppositions are becoming increasingly popular.

The European procedure has served as a model for the French procedure. As a result, it is possible to oppose a European Union trademark and European Union designations in an international trademark. The publication of the trademark in the European Union Trademark Register initiates a three-month period during which it is possible to file an opposition with the opposition division. At the end of this period, the applicant for the subsequent trademark is notified, and a so-called cooling-off period (a period for reflection and amicable resolution of the dispute) is initiated.

The applicant for the trademark opposition action must be able to prove several elements.

On the one hand, they must demonstrate the use of their trademark, specifically indications concerning the location, duration, importance, and nature of the earlier trademark’s use for the products and services for which it is registered and upon which the opposition is based.

They must also be able to prove the identity or similarity of the designated signs, products, or services. The goal of these is to highlight a risk of confusion or association between the two trademarks in the public’s mind.

State of the SQAP audit programme of the EUIPO

The review of all the conditions and requirements of the various procedures carried out within the EUIPO requires a considerable amount of attention for the concerned examiners and specialized lawyers. European initiatives are constantly moving towards harmonization of the mechanisms used, the necessary costs, and the simplification of the procedures practiced. Despite the fact that the Office is keen to improve the transparency of the law at  a community level, there is still a significant gap between the expectations of economic actors and the actual quality of the decisions rendered.

It was thus in 2017 that the European Office launched its project related to stakeholder quality assurance panels, also known as “Stakeholder Quality Assurance Panels” (SQAP). The aim was to bridge the gap between the users’ perception of the decisions made by the EUIPO and their quality, and the Office’s own perception of its decisions. To do this, it decided to invite associations to carry out external audits of its decisions.

These audits can include the review of internal processes, the accuracy of decisions, and compliance with applicable regulations and policies. During an SQAP audit, there could be an evaluation of how decisions are made, an analysis of documentation, interviews with staff, and recommendations for improving the quality of the service.

User panels represent user associations. During the 2023 audits, the following are represented: APRAM (Association of Practitioners of Trademark and Design Law), INTA (International Trademark Association), AIPPI (International Association for the Protection of Intellectual Property), ANIPA (Association of National Institutes of Intellectual Property Consultants), ASIPI (Inter-American Association of Industrial Property), ECTA (European Communities Trade Mark Association), BUSINESSEUROPE, FICPI (International Federation of Intellectual Property Counselors), GRUR (German Association for the Protection of Industrial Property and Copyright), the ICC (International Chamber of Commerce), and MARQUES. The panels verify decisions based on the quality criteria applied by the Office.

The audit unfolds in several stages. During the audit, each auditor first undertakes the individual inspection of the decisions assigned to them. After this, they submit their observations to the committee. As the committee members begin a debate, Office specialists are present to clarify any uncertainty concerning the Office’s procedures. At the end of these exchanges, an audit report containing all the conclusions is drafted and approved by the committee. Following the audit, the Office’s specialists scrutinize the conclusions in order to identify opportunities for improvement and to determine the actions to be taken. The auditors, as well as user groups, are kept informed of the improvements made thanks to SQAP on a regular basis.

Sample Size and Evaluation Criteria

The SQAP audit on cancellation decisions is based on a representative sample of cases selected at random from the EUIPO’s recent decisions. The sample size is large enough to ensure the reliability of the results and reflect the diversity of situations encountered in cancellation procedures. The evaluation criterias are based on the EUIPO’s quality standards, which aim to ensure consistent application of the rules and legal principles.

Audit Results

The results of the SQAP audit on cancellation decisions are classified into three main categories: “excellence,” “compliance,” and “actions needed.”

“Excellence” decisions are those that demonstrate a high level of quality and consistency in the application of legal criteria. These decisions are considered to be examples of good practice and serve as a reference for improving future decisions.

“Compliance” decisions meet the quality standards established by the EUIPO. They are considered satisfactory but may require certain improvements to reach the level of excellence.

“Actions needed” decisions are those that have more significant legal compliance gaps or errors. These decisions are subject to a more detailed analysis to identify the causes of the problems and implement appropriate corrective measures.

The results of the SQAP audit on cancellation and opposition decisions allow for feedback from the represented associations. Consequently, they enable the implementation of corrective actions or the adaptation of EUIPO’s decision-making mode since they allow it to discern the strengths and weaknesses of its processes by identifying the deficiencies within them. Corrective actions are taken to address the problems identified, and best practices are shared with intellectual property agents and users to improve the overall quality of cancellation decisions.EUIPO’s 2023 SQAP Audit

By improving decision-making mechanisms and establishing quality criteria, the establishment and development of this type of audit suggests the possibility of soon witnessing even more satisfying and high-quality decisions.

Dreyfus IPWeb

The digitization of businesses has been significantly propelled by the European “eIDAS” Regulation No. 910/2014, enacted on July 24, 2014. Riding this wave of digital advancement, Dreyfus is thrilled to present its latest eco-friendly initiative, Dreyfus IPWeb. This new platform is a secure, web-based solution, providing clients easy accessibility through any internet browser.

Our clients will be able to monitor the status of their cases online, communicate with our team, and participate in their legal follow-up without negatively impacting the environment thanks to this initiative, which is in line with our commitment to reducing our carbon footprint and our transition towards a “zero paper” approach.   

Enhancing client experience 

Dreyfus IPWeb is transforming the way clients interact with our firm by providing a dynamic and transparent platform for an enhanced user experience. Our clients can now easily manage their cases online, gaining an in-depth understanding akin to that of our attorneys. Furthermore, the platform provides simplified options for submitting instructions, editing documents, and uploading materials directly online, paving the way for efficient communication and effortless collaboration.

Fewer trips, better communication 

The introduction of Dreyfus IPWeb significantly reduces the need for our clients to travel, as they no longer need to visit the firm to drop off or sign documents. Moreover, Dreyfus IPWeb has enhanced communication within our organisation, enabling seamless collaboration between teams. For instance, our team in Paris can work effortlessly with colleagues in Belgrade without anyone needing to hop on a plane. 

A step towards becoming a ‘zero paper’ law firm

By adopting Dreyfus IPWeb, we proudly affirm our unwavering commitment to reducing our carbon footprint and actively supporting the “zero paper” initiative. Our firm commitment is to reduce our carbon footprint through the widespread adoption of digital processes and the significant reduction of paper usage.

Conclusion 

In summary, we are proud to announce the launch of Dreyfus IPWeb, a secure client platform that not only enhances the client experience but seamlessly integrates with our end goal of achieving a “zero paper” workplace. We invite all our clients to discover the advantages of this innovative platform and to join us in this green initiative. Together, we can make a difference and help preserve our planet.

Introduction

A patent gives its owner the exclusive right to prohibit others from manufacturing, using, selling, or offering for sale the invention in the country where the patent is granted, as well as, in some cases, importing the invention (1).

The European Unitary Patent entered into force on Thursday, June 1, 2023, after a decade of delays from the original schedule and a laborious alignment among the various European states. This article will provide an overview of the milestone’s history, implications, and practical implications.

History of a laborious adoption process

The concept of a European patent first appeared in the 1960s. The idea has re-emerged in 1999, and by 2003, a proposal for a unified Jurisdiction had been made. The Unified Patent Court (UPC) Agreement was established ten years later. However, it took another decade for this project to become a reality.

The political and legal context has not helped the situation, especially with Brexit and the UK’s withdrawal of ratification. The UK played a significant role in supporting this crucial project. Indeed, the Agreement originally included provided for several UPC divisions, including one in England, so its withdrawal caused a stalemate. As a result, it will not be possible to bring in Great Britain when the European Unitary Patent is granted, as the country is no longer part of the enhanced cooperation.

Furthermore, obstacles arose in Germany, which deemed the project unconstitutional because it exceeded the scope of the German Constitution. It included rules and articles that took precedence over national laws. This obstacle has now been overcome, and the UPC has established a specialised division in Germany with expertise in life sciences and chemistry.

Despite these challenges, 17 European Union member states had ratified the original Agreement signed in 2013 for the creation of the UPC through enhanced cooperation as of March 2023. The primary objective of this adoption is to make it possible to obtain protection for an innovation in all member countries participating in the enhanced cooperation, by filing a single application with the European Patent Office (EPO).

Countries included in the harmonisation of protection 

Due to the aforementioned delays, it is important to note that the EPO has 39 members. Among these, 25 participate in the enhanced cooperation (2), and 17 are part of the Unitary Patent (3). These 17 countries are: Germany, Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden.

Key Features of the European Unitary Patent

The Unitary Patent is based on the European Patent Convention (EPC), with no changes to the pre-grant phase. This refers to the acts performed prior to grant, such as filing, designation, and examination. These acts must still comply with the EPC’s requirements.

To obtain the unitary effect, the applicant checks the corresponding box during the grant and printing payment stage. In this sense, a unitary patent is a European patent granted by the European Patent Office (EPO) for which the holder has applied for registration on the basis of the unitary effect. Therefore, the EPO serves as a one-stop service.

The implementation of the Unitary Patent will do away with the need for time-consuming and expensive national validation processes. Validation and maintenance of European patents previously required separate procedures in each member state, a time-consuming and potentially costly process that scaled directly with the number of countries involved. In comparison to a traditional European patent, the EPO will not charge any additional procedural fees with the unitary patent. As a result, unitary patents are no longer subject to the fragmented system of annual fees. The need for appointing a representative has been removed and replaced by a streamlined process, a single currency, and a single deadline. In addition, expenses and paperwork are minimised because the EPO deals with everything after a grant has been issued.

The unitary patent regulation does not affect the right of member states to grant national patents. It is not intended to replace national or regional patent laws. Patent applicants continue to have the option to obtain either a national patent, a unitary European patent, or a European patent that has effects in one or more contracting states of the EPC.

To encourage innovation, the online register includes information on the legal status of unitary patents, such as licences and transfers. This promotes the transfer of technology and investment in innovation (4).

Unified Patent Court (UPC): Simplifying European Patent Disputes

The patent system is inextricably linked to the formation of the UPC (5). Without exception, the UPC has exclusive jurisdiction over Unitary Patents. 

However, the UPC does not have exclusive jurisdiction over traditional European patents, and national courts retain their jurisdiction. Patent holders can opt out of the UPC’s jurisdiction by using an opt-out system. This is only possible during a 7-year transition period, which can be extended to 14 years, if no proceedings have been initiated before the UPC.

In terms of structure, the UPC consists of a Court of Appeal in Luxembourg and a Registry. Additionally, it has a first-instance court comprising a central division based in Paris, a division in Munich, and several local and regional divisions.

With the establishment of the UPC, there is no longer a need to initiate actions in different countries (6). Previously, national courts and authorities had jurisdiction over patent infringement and validity disputes (7). A patent dispute involving multiple member states necessitated the rights holder taking parallel action in all relevant national courts.

Another goal of the UPC’s creation is to simplify and improve the efficiency of the judicial procedures it handles. Its decisions, as well as the sanctions imposed, have an impact throughout Europe.

However, it will be necessary to wait a few months to assess the developments and consequences in practical community practise…

Dreyfus & Associates, a law firm specializing in industrial property, leverages its expertise to assist clients with any inquiries regarding the new procedure for filing a European Unitary Patent.

References 

1. https://www.dreyfus.fr/expertise/droit-de-la-propriete-industrielle/droit-des-brevets

2. https://www.wipo.int/wipolex/fr/text/309606 et https://www.wipo.int/wipolex/fr/text/309628

3. https://www.epo.org/applying/european/unitary/unitary-patent_fr.html

4. & 5. https://www.epo.org/applying/european/unitary/unitary-patent/start_fr.html#:~:text=en%20extension%2Fvalidation-,Quand%20le%20syst%C3%A8me%20du%20brevet%20unitaire%20commencera-t-il%20%C3%A0,les%20brevets%20europ%C3%A9ens%20%22classiques%22

6. https://www.epo.org/archive/epo/pubs/oj013/05_13/05_2873.pdf

7. https://www.epo.org/archive/epo/pubs/oj013/05_13/05_2873.pdf

WIPO, D2022-3002, October 27, 2022, Fenix International Limited c/o Walters Law Group vs. private registry operator, Privacy Protect, LLC (PrivacyProtect.org), privacy service provided by Withheld for Privacy ehf, Global Domain Privacy Services Inc. (PrivacyGuardian.org), Andrew Rew, Okoth Nigel, Chaker Ben Smida, sofma, John Harbin, Keith Allan, Amar Bizwer, Najib Lakhdhar, Bouabdellah, Jamal McMillan, Atay Rabby Chisty, IVAN KOBETS, MINERAL, maddis jones, Philipp Muller (1).

When you own a highly fabricated brand, it is tempting, for economic reasons and dispute management, to target as many domain names as possible in a UDRP complaint, in order to get a response to the various infringements encountered with a single decision. However, it is important to remain vigilant about the strength of the link between the designated domain names and to demonstrate it precisely so that the consolidation is accepted.

Thus, in a decision of October 27, 2022, the UDRP complaint filed by Fenix International Limited (“Fenix”) seeking to be awarded 14 domain names that are believed to be imitating its ONLY FANS brand was rejected.

The complainant owns the domain name <onlyfans.com> and several “ONLYFANS” trademarks registered in 2019, including European Union and United Kingdom trademarks.

The www.onlyfans.com website has experienced rapid growth in recent years: with more than 180 million registered users, it now ranks 177th in the Alexa Top ranking the most popular websites in the world. It is a platform for posting and subscribing to audiovisual content. Erotic and pornographic content proves successful there.

The disputed domain names, registered after Fenix’s trademarks, have some apparent links to the platform, such as <onlyfans-leaked.com> or <celebrityonlyfans.com>, whilst others reproduce only parts of the brand: the initials “O” and “F”, the term “ONLY” or the term “FAN”.

These domain names point to websites offering services similar to those of the complainant, namely adult video content. The UDRP procedure states that when several disputed domain names appear to have a link, they can be studied through a single procedure.

In order for the acceptance of a complaint targeting multiple defendants, it must be proven that the domain names are subject to common control, whether it be a single person or a group of individuals acting together , and that consolidation serves the interests of each parties, leading to a fair and equitable decision. It is the complainant’s responsibility to provide proof on the issue of common control of the disputed domain names. Therefore, in order to demonstrate this link, the complainant has put forward numerous arguments.

The complainant bases its request for consolidation on several arguments: the disputed domain names direct to websites offering pirated content from its www.onlyfans.com website; the various sites have a general design strongly similar to its official site, whether in terms of header, font, or logos used; they offer the same services and prices; the names are registered through three registration offices; and they have a common structure: some are made up of a generic terms followed by the “ONLY” part of the earlier brand, whilst others interchange these elements.

In addition, the complainant alleges that, given the addresses indicated during the registration of some of the disputed domain names, located in Tunisia, the probability of common control was all the more conceivable. The complainant further states that lots of the contact information was incorrect during the registration of the domain names. However, the expert notes that the mere provision of incorrect information does not prove common control, particularly given the regularity of such occurrences.

Lastly, the complainant mentions that one of the defendants had already been the subject of a UDRP complaint, for which Fenix had been granted its consolidation request.

Two defendants responded to the complainant’s arguments. The holder of the domain name <baddiesonly.tv> explained that the websites have a similar appearance because they are based on a “KYS” script, which provides a typical layout that will be very similar from one site to another. They explained that their domain name was reserved through an agency, so they did not choose the registration office and that nothing connects them to the other domain names, such as the registrant information or the registration date.

A second defendant, holder of the name <hornyfanz.com>, also explains that they have no connection with the holders of the other names targeted by the complaint.

To ground its decision, the expert notes that the complainant has not proven the common control of the different domain names, even though it was their responsibility to substantiate their allegations.

Essentially, the presented annexes only showed websites with adult entertainment content. Therefore, according to the expert, they were not enough to prove that the disputed domain names were linked. In fact, looking at the sites in detail, the expert noticed that they all more or less differ from each other. The expert explains that even if some of the sites could be considered to be very close and therefore under common control, it does not prove that the other invoked names are linked to this group of names.

Moreover, the expert notes that the complainant contradicts themselves by stating at one point that three registration offices are involved when in the amended complaint, they mention five. In any case, this does not show common control between the names.

Furthermore, the combination of the term “ONLY” with another generic term cannot demonstrate common control of the domain names since “ONLY” is also a generic term. To this point, one could argue that the complainant could have argued the fame of their “ONLY FANS” brand in connection with erotic and pornographic content, to argue that the terms “ONLY,” “FANS,” and the initials “OF” can evoke their brand.

Finally, the expert notes that the names were registered over a two-year period and that the defendants all have different email addresses.

All these reasons led the expert to simply reject the complainant’s complaint, while reminding them that the admission of a complaint against multiple defendants is not automatic. The constitution of such a complaint significantly increases the burden of proof on the complainant, which must be taken seriously. In this case, Fenis’ analysis indeed seemed fanciful.

References

1. https://www.wipo.int/amc/en/domains/decisions/pdf/2022/d2022-3002.pdf