With the current wave of new gTLDs that have recently been launched, Nathalie points out that these new strings are a “revolution on the Internet”, particularly because they now convey meaning. She illustrates the point by citing a recent UDRP case which examined whether to take the string into consideration when comparing similarities between the trademark and the name. Nathalie added that the Trademark Clearinghouse “can also be a good thing” in the sense that rights holders can more easily warn offenders in the case of litigation over names, and also benefit from this service by using Donuts’ Domains Protected Marks List (DPML). In this way they control the reservation of domain names identical to their trademarks.
Concerning recent developments in France, Nathalie points out that since 2011, cases have been heard and examined more rapidly by the courts, but that there are “fewer oral pleadings and fewer specialist judges for Intellectual Property”. Cases are also judged “on their own merits, which is very favourable for trademark owners”.
Nathalie completes her observations by highlighting the fact that since the offices of the INPI were relocated outside Paris, an online service for trademark renewal would be a welcome addition in 2014 since specific trips have to be made to these offices and there is no postal address anywhere in the capital.
Nathalie then outlined the reasons for starting her law firm. Ten years ago she noticed that many Companies were concerned by the protection of their trademarks “in countries where they didn’t even have a business” whereas, in the case of their domain names, these were visible right around the world. Growing ever since, the firm now employs over 15 people and created a platform entitled Dreyfus IPweb to “consolidate and summarize all the information available to [her] clients”.
Nathalie Dreyfus finished the interview by stating that “domain names are becoming as important as trademarks” but that they will never replace them since the Law requires that a trademark be registered if rights are to be defended on the Internet, not only with domain names but also on social networks. Trademarks are “tools for actions – the king of the distinctive sign”.
The full interview (in English) is available here.