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Fragrance and intellectual property: how can a perfume be legally protected?

Written by Dreyfus27/07/2021

Introduction

Fragrance represents a major economic asset for perfume, cosmetics and luxury companies. Yet its legal protection remains paradoxical: although a perfume formula may embody years of research, investment and expertise, the scent itself is currently neither satisfactorily protected by copyright nor, in practice, registrable as an olfactory trademark in France or before the EUIPO.

Why is a perfume fragrance difficult to protect by copyright?

French courts do not recognise fragrance itself as a copyright work

French copyright law protects original works of authorship regardless of their genre, merit or intended purpose. The principal difficulty with fragrance is therefore not its ephemeral nature, but whether the protected subject matter can be identified with sufficient legal certainty.

In 2006, the French Cour de cassation held that the fragrance of a perfume resulted from the implementation of know-how and did not constitute a form of expression eligible for copyright protection (Cass. 1re civ., June 13, 2006, No. 02-44.718).

The Court confirmed its position in 2013, in the case Lancôme Parfums et Beauté & Cie, GA Modefine and Prestige et Collections International (Cass. com.,December 10, 2013, No. 11-19.872), holding that copyright protects creations in a perceptible form only where that form can be identified with sufficient precision to permit its communication. A fragrance did not meet that requirement.

This reasoning is consistent with the broader European requirement that copyright subject matter must be identifiable with sufficient precision and objectivity. The CJEU adopted a comparable approach concerning the taste of a food product in Levola Hengelo ((CJEU, November 13, 2018 , C-310/17).

Accordingly, a fragrance in itself remains outside French copyright protection, although many elements surrounding a perfume may benefit from separate intellectual property rights.

Can a fragrance be registered as an olfactory trademark?

Removing the graphical representation requirement did not solve the problem

European and French trade mark law no longer require a sign to be represented graphically since the EU Trademark Law reform. However, the sign must still be represented on the register in a manner that allows the subject matter of protection to be determined clearly and precisely. Under French law, the representation must notably be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

This reform initially appeared capable of opening the door to olfactory trademarks. In practice, it has not done so.

The French INPI expressly states that the technical requirements for representing smell and taste signs cannot currently be satisfied and that an odour or taste is therefore not protectable as a trade mark at present. The EUIPO takes the same position: chemical formulae, written descriptions and physical samples do not provide a sufficiently clear, precise and objective representation of a smell.

The previous version of this article therefore requires an important update: abolishing graphical representation did not make olfactory marks effectively registrable in France or at EU level.

Protect the signs through which consumers identify the perfume

Trademark law nevertheless remains central to a fragrance protection strategy. Businesses can protect the perfume name, range name, logos and visual identifiers, and, subject to the relevant requirements, certain distinctive product or bottle shapes.

The filing strategy should be coordinated with monitoring of prior rights and commercial uses.

The bottle and packaging may also qualify for design protection. French Intellectual Property Code expressly provides that the appearance of a product, including packaging, may be protected as a design where the applicable requirements are satisfied.

How can a perfume formula and manufacturing process be protected?

Trade secrets are often the most commercially valuable form of protection

For perfume houses, the principal confidential asset is frequently the formula itself, the proportions of ingredients, manufacturing processes, testing data and research information.

Under Article L.151-1 of the French Commercial Code, information may qualify for trade secret protection where it is not generally known or readily accessible, has commercial value because it is secret, and is subject to reasonable measures designed to preserve its secrecy.

Access to formulas should therefore be restricted, confidential information securely stored and appropriate non-disclosure obligations imposed on perfumers, laboratories, manufacturers, suppliers and commercial partners. WIPO itself identifies the process of making a perfume as information potentially capable of trade secret protection.

Patent or trade secret: a strategic choice

Perfume-related innovation may also qualify for patent protection where it constitutes a new technical invention involving an inventive step and capable of industrial application. Purely aesthetic creations, by contrast, are not patentable as such.

Patents may therefore be relevant to new fragrance molecules, compositions producing a specific technical effect or innovative manufacturing or delivery processes. Patent applications relating to fragrance compositions continue to be filed and published internationally.

The choice between patent and secrecy requires careful assessment: a patent involves disclosure of the invention, whereas a trade secret may potentially remain confidential indefinitely but cannot prevent independent development or certain lawful methods of obtaining the underlying information.

What remedies are available against perfume imitations?

For a perfume house, an effective strategy relies on several complementary tools:

  • trade secrets to protect the formula;
  • patents for technical innovations;
  • trade marks for distinctive signs;
  • design rights for the bottle and packaging;
  • monitoring and actions based on unfair competition or parasitic conduct to address copies.

This combined approach helps protect all the assets that contribute to the perfume’s value.

Conclusion

Fragrance and intellectual property protection therefore require a nuanced strategy. While the scent itself remains difficult to monopolise, the formula, manufacturing process, name, bottle, packaging and commercial investments surrounding it can each benefit from effective legal protection.

Protection should be organised before disclosure and commercial launch and supported by ongoing monitoring to identify copies, counterfeiting and parasitic practices as early as possible.

Dreyfus Law Firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Is it lawful to chemically analyse a competitor's perfume in order to identify its formula?

It may be. French trade secret law expressly recognises observation, study, disassembly or testing of a product made available to the public or lawfully possessed as lawful means of obtaining information, subject in particular to applicable contractual restrictions. Chemical analysis of a commercially available perfume does not therefore automatically constitute unlawful acquisition of a trade secret.

2. Who owns a formula developed by an independent perfumer for a perfume house?

Payment for the development work should not be assumed to resolve every issue concerning ownership, confidentiality and further use. The agreement should identify the results of the assignment, confidential information, any rights relating to technical inventions and the conditions under which the formula or underlying know-how may subsequently be reused.

3. Can a “dupe” brand state that its fragrance is equivalent to a famous perfume?

As a matter of principle, a “dupe” brand may not present its fragrance as the “equivalent”, “imitation” or “reproduction” of a fragrance marketed under a protected trademark. Such a presentation is liable to go beyond the limits of lawful comparative advertising, even in the absence of any likelihood of confusion. The comparison must also remain objective and non-misleading and must not take unfair advantage of the reputation of the competing trademark.

4. Does the trade mark of a discontinued perfume remain protected indefinitely?

Not necessarily. Under French law, a trade mark proprietor may face revocation where the mark has not been put to genuine use for the relevant goods or services for an uninterrupted period of five years, without proper reasons for non-use. Discontinuing a fragrance should therefore be accompanied by a review of the relevant trade mark portfolio and available evidence of use.

5. Can an e-Soleau filing protect a perfume formula?

An e-Soleau filing may be useful for establishing a certain date and preserving evidence that a formula, R&D development or related documentation existed at a particular time. It does not, however, create an exclusive intellectual property right and cannot replace either patent protection or an appropriate trade secret strategy.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

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How does the new Civil Code of the People’s Republic of China facilitate the protection of IP rights?

Written by Dreyfus21/07/2021

The Third Session of the 13th National People’s Congress (NPC) voted and passed the “Civil Code of the People’s Republic of China” on May 28, 2020. This law came into force on January 1, 2021.

The fundamental objective of this Civil Code is to facilitate the protection of people’s extensive civil rights and provide sufficient remedies for right holders whenever their IP rights are infringed upon especially when it comes to counterfeiting.

Apart from serving as a policy instrument for stimulating innovation, intellectual property (IP) rights have always been considered a significant category of private rights. The intellectual property regime, thus, is deeply rooted in and closely related to the civil law system.

While referred to by the Chinese press as the Encyclopedia of Social Life, the new Civil Law includes many provisions related to intellectual property (IP).  At first read, the most striking IP provision is for punitive damages for intentional infringement, which will be potentially most valuable in patent infringement cases and especially in cases related to counterfeiting.

Article 1185 (out of 1260 articles) states, with reference to IP, “if the circumstances are serious, the infringed person shall have the right to request corresponding punitive damages”. This actually aligns with the newly amended trademark law that provides for increased punitive damages.

Article 63 of the trademark law, as amended in November 2019, increased punitive damages from three times to five times the amount of assessed damages when infringement is “committed in bad faith and the circumstance is serious.”

The United States has called China the “world’s principal IP infringer”. In a 2017 report, the US bipartisan Commission on the Theft of American Intellectual Property estimated that counterfeit goods, pirated software and the theft of trade secrets cost the US economy between US$225 billion and US$600 billion annually, not including the full cost of patent infringement.

China, meanwhile, has signaled that IP protection is a priority in its 14th five-year plan for 2021 to 2025, as part of its strategy to move towards self-reliance in critical technology.

Government economic planners detailed how they intended to strengthen the protection of IP and raise high-value patent ownership over the next five years, and Beijing is this year set to reveal its strategic plan to make China a global IP power by 2035.

In both the Chinese Patent Law and the Copyright Law, which will come into effect on June 1 2021, the applicable elements of punitive damages are “intentional infringement” and “aggravated circumstances“ according to the China Civil Code.

Therefore, punitive damages will be more actively applied by the Chinese courts when handling IP cases in the future.

The introduction of punitive damages into IP infringement disputes will help improve the protection of intellectual property rights, promote technology progress and innovation, and build a healthier market for investment. 

The implementation of the Civil Law in China is not just a declaration to strengthen the protection of civil rights. It opens a new era by protecting IP rights.

 

The new Civil Code is demonstrating China’s resolute attitude toward malicious IP infringement, concrete articles and complementary civil principles could enhance the protection of IP rights in China.

 

In order to provide our clients with a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues with our articles written by the Dreyfus legal team.

 

About this topic…

 

♦ Fragrance and intellectual property : which protection ? 

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

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Reverse domain name hijacking

Written by Dreyfus09/07/2021

domain name administrative processReverse domain name hijacking constitutes an abuse of procedure. On this topic, the WIPO issued on April 4, 2021 a decision reminding Complainants of their failings: it was their duty to proceed to relevant checks before initiating the complaint and to build their case properly. The examiner was all the more severe given that Complainants were represented by counsel.

The complaint in question was filed by three applicants.

 

 

First Complainant is an Indian company notably specializing in the manufacture and sale of sanitary products and kitchen appliances. First Complainant was originally known as Hindustan Twyfords, but later changed its name to HSIL Ltd. in 2009. Second Complainant, Somany Home Innovation Limited, was incorporated in 2017. It manufactures and sells, among other goods, air and water purifiers, water heaters, air coolers. Like Second Complainant, Third Complainant, Brilloca Ltd, results from the split of First Complainant.

Having detected the registration of the domain names <hsil.com> registered on November 16, 1999 and <shil.com> on December 9, 1999, Complainants filed a complaint with the WIPO Arbitration and Mediation Center to request the transfer of the domain names.

 

 

Respondent is a UK registered company, established on October 7, 1998, which provides web development services to help small businesses gain visibility on the Internet, initially focusing on the health club and leisure equipment market. In addition to the main site « health-club.net », Respondent has registered a number of short acronymic domain names.

First Complainant owns trademarks for the sign « HSIL », the first of which dates from 2004. Complainants further argue that Somany Home Innovation is widely known by the sign « SHIL », the acronym that corresponds to its corporate name.

 

 

First and foremost, the panelist notes that the applicants have not submitted any evidence showing the use of the sign « SHIL » to the point of making it a distinctive identifier for their benefit. Therefore, the latter considers that they are in default concerning the proof of likelihood of confusion between the <shil.com> domain name and an earlier trademark in which they potentially have rights. On the other hand, the likelihood of confusion was recognized for the name <hsil.com>.

 

 

Then, regarding the issue of legitimate interest and/or rights in the domain names, the panelist takes into account the fact that Respondent registered the disputed domain names in 1999, before the alleged filing and use of Complainants’ « HSIL » and « SHIL » marks. As opposed to Complainants, Respondent has provided evidence to support its claims that the names were used as acronyms for « Sports / Health in London » and « Health / Sports in London ».

Besides, the disputed domain names were registered in 1999, many years before the filing of the HSIL marks and the registration of domain names containing « HSIL ». In addition, the Complainants have no trademark rights for the sign « SHIL ».

Also, Respondent has demonstrated a use of the disputed domain names in connection to a bona fide offering of goods and services.

 

The complaint is therefore dismissed.

In addition, the panelist found that the complaint constituted reverse domain name hijacking, an attempt to obtain a domain name by artificially proving infringement.

Complainants, who are represented by counsel, should have anticipated the weakness of their argument and the fact that the acronyms « Hsil » and « Shil » could not refer exclusively to them, as alleged in the complaint without any evidence.

The panelist also notes that Complainants tried to make it look like trademarks were rejected in India because of the « well-known status and enormous goodwill » acquired by their earlier marks. This, despite the fact that the defendant has proven that third parties have been able to obtain registration of trademarks for the sign « SHIL » in India.

 

The panelist also targets Complainants’ representative and denounces an « unfamiliarity with the UDRP » and raises the fact that the latter has listed the registrar as respondent simply because it had allowed the registration of an available domain name, even though it is not in its power to decide whether or not to allow a registration.

 

Source: WIPO, Arbitration and Mediation Center, April 4, 2021, Case No. D2020-3416, HSIL Limited, Somany Home Innovation Limited v. SHIL Ltd, Brilloca Limited v. GOTW Hostmaster, Get on The Web Limited, India

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The Public Interest Registry creates an institute specialized in the fight against DNS abuse

Written by Dreyfus06/07/2021

lutte anti DNSThe Public Interest Registry (PIR), registry for the .org top-level domain, launched the domain name system Abuse Institute on February 17, 2020. The purpose is to help protect Internet users from the threat of domain name system abuse.

The institute’s mission includes helping to identify and report DNS abuse, establishing best practices in the area of domain name system abuse and funding domain name system research.

The Institute’s activities cover three main areas:

– Innovation: Developing best practices for registries and registrars and funding research on cyber security and domain name system abuse;

– Education: Through the development of a library of available information and practices;

– Collaboration: The Institute will operate as a networking forum and sharing centre for stakeholders interested in these issues.

 

A hotline has also been created to assist registries and registrars with questions about DNS abuse.

 

 

Sources :

https://dnsabuseinstitute.org/about-the-dns-abuse-institute/

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What are the suggested modifications to the UDRP?

Written by Dreyfus06/07/2021

UDRP principlesFollowing the UDRP ‘s new gTLD program, new Rights Protection Review Mechanisms (RPM) have been implemented to protect trademark holders, such as the Uniform Rapid Suspension System (URS) procedure.

 

ICANN has now decided to address changes suggested by trademark holders and intellectual property experts regarding the UDRP. For instance, one of these suggestions is that a domain name should be considered abusive if it is registered OR if it is used in bad faith, instead of requiring that both these conditions are met. The idea is to lighten the burden of proof on the rights owner to take into account a more up-to-date reality. Another suggestion is to provide for an accelerated procedure in case of abusive conduct and to get a decision more rapidly if the defendant fails to respond to the complaint.

 

It has also been proposed to provide for a presumption of bad faith if the registrant has lost three UDRP complaints and to require any repeat offender to pay a response fee to defend the case. The central issue at this stage of the study is to understand the extent to which the UDRP principles should be changed in favour of trademark owners, while knowingt hat it may weaken the UDRP principles.

 

 

Sources:

Overview: The Rights Protection Mechanisms (RPM) Review https://newgtlds.icann.org/en/reviews/cct/rpm

Phase: 1 Initial Report of the Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process :

https://www.icann.org/public-comments/rpm-initial-report-2020-03-18-en

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The Vinci’s case: how to set up an effective domain name strategy?

Written by Dreyfus29/06/2021

Noms de domaine, stratégie, entreprise, VINCI

On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.

In 2019, the US news agency Bloomberg appealed a decision of the AMF’s sanctions commission. The hearing before the court of appeal will be held this Thursday. Bloomberg was sentenced to 5 million euros for relaying information from a false Vinci press release.

 

A fake press release from Bloomberg

The American news agency Bloomberg is accused of having disseminated, in 2016, false information about Vinci without having verified it.

On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.

The false statement also indicates that the chief financial officer was fired. Less than a minute later, between 4:06 p.m. and 4:07 p.m., Bloomberg picked up the information and disclosed it on his terminal.

This press release had even been signed with the name of the real person in charge of Vinci’s press relations, while referring to a false cell phone number.

In defense, the defendants point out before the commission that the tone, the absence of spelling errors, the careful layout, the exact references to certain directors of Vinci or to its auditors, the mention of the real spokesperson for Vinci as well as the plausibility of the foot of the press release, which contained a link to unsubscribe from the Vinci mailing list and alerted the recipient to the automated processing of data, mentioning the contact details of the real correspondent Cnil de Vinci , did not differentiate this press release from a real press release established by Vinci.

 

The domain name issue in the false press release

The only inaccuracies in the false press release: the domain name of the false Vinci site to which the press release referred and the false mobile phone number of the “media contact”.

The fraudulent press release was also received by AFP, which did not follow up after realizing that this document had been posted on a mirror website, very similar to the real site but with a separate address (vinci.group and not vinci.com).

 

How to protect your domain name?

Domain names represent an essential intangible asset for companies since they allow access to websites related to their activity. Now, protecting the domain names associated with the trademark or the business of the company has become almost as important to the company as the protection of its brands.

In addition, domain names are the preferred medium for cyber-attacks which calls for increased vigilance on the part of owners and Internet users.

 

Phishing, fake president fraud, identity theft, fake job offers, theft of personal or banking data, whaling… frauds are numerous and are constantly adapting to technological progress;

 

Fraud is facilitated by the very protective provisions of the GDPR, which prevent the direct identification of the domain name registrant; technical service providers tend to rely upon the provisions of the GDPR and the LCEN to justify their inaction and allow fraud to continue;

There is a great risk of damage to the company’s image and reputation. Such fraud also has a significant financial impact, given the risk of embezzlement and money laundering.

The AMF’s Guide to Periodic Disclosure for Listed Companies (dated June

To protect your domain name from cybersquatters or competitors, it is recommended to also register the domain name as a trademark in addition to the reservation of the domain name.

It is possible, before making a domain name reservation and trademark registration, to check its availability, to avoid conflicts between domain names, trademarks or corporate names.

Domain names are now an integral part of the international economic landscape. Like industrial property rights and traditional distinctive signs, they are instruments of competition and intangible assets of companies. It is of course essential to have it for anyone who wants to exist in a market.

But care must be taken not to come into conflict with one’s competitors by using, even in good faith, distinctive signs close to theirs. Conversely, it is also necessary to enforce its own distinctive signs by not allowing third parties to appropriate signs close to its own in order to offer the same or similar services.

 

How to mitigate the risks regarding domain names ?

– Proceed to an audit of the corporate trademark and the company’s flagship trademarks among domain names, in order to map the risks;

– Set up a 7/7 watch of the corporate trademark among domain names, and a 7/7 or at least weekly watch on the company’s trademarks dedicated to goods or services;

– Set up watches on social networks such as Facebook, Instagram, Twitter and LinkedIn;

– Proceed with the preventive registration of domain names in risky extensions (such as .COM, .CO, .CM, .GROUP);

– Take preventive action(s) against potentially dangerous domain names;

– Define procedures and set up a crisis management unit to quickly react to infringements in case of emergency;

– Draft or update the company’s domain name policy (registration procedures, compliance with legal obligations, best practices) to be shared internally and with the company’s service providers and suppliers.

Cyber ​​threats are more numerous and more complex and it has also become increasingly difficult to take action against registrants of disputed domains. More than ever, monitoring is required with the implementation of risk mapping and a defense strategy.

 

Dreyfus advise you in setting up the appropriate strategy to limit the risks related to domain names and to integrate industrial property assets in your compliance plans.

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Domain name right : bona fide offer of goods or services

Written by Dreyfus18/06/2021

Rayonnage de vêtements de mode.  A right or legitimate interest in a domain name may be demonstrated by its use in the context of a bona fide offer of goods or services. This assessment requires to take into account how the domain name has been used, but also the space-time framework: When was the domain name registered? By whom? In which country?

Founded in 2003, Ba & sh is a French company operating in the field of design, manufacturing and distribution of women’s ready-to-wear clothing and fashion accessories.

Having detected the registration of the domain names <bashshitever.com> registered in 2014 and <bashclothing.co> in 2020, Ba & sh filed a complaint with the WIPO Arbitration and Mediation Center in order to obtain the transfer of these domain names.

While the construction of the <bashshitever.com> domain name is somewhat intriguing, the fact that the <bashclothing.co> name contains the term “clothing” may have led Ba & sh to consider that its rights were being infringed.

In any event, since the domain names include the sign “BASH” except for the ampersand, the panellist acknowledges a likelihood of confusion.

Nevertheless, the panellist deems that Respondent has chosen these domain names independently of Complainant’s trademark and has used them in the context of a bona fide offer of its goods on the corresponding websites.

Indeed, Respondent is from Malaysia, where the company was founded in 2015, while Ba & sh has provided no evidence of actual use of its BA & SH mark in that territory. Khor Xin Yu, Respondent, explains that he co-founded “BASH CLOTHING” in 2013 when he was 18 years old and that the mark was also used in Singapore in 2017. Initially, the sign used was “Bash Shit Ever”, later changed in 2020 to “Bash Clothing” as part of a branding update.

Similarly, Respondent provided an explanation and documentation justifying the selection of the sign BASH because of the meaning of the dictionary term “bash”. Finally,  Respondent used a logo that differs from that of Complainant.

Complainant has not shown that  Respondent registered and used the disputed domain names in bad faith.

Indeed, when the first disputed domain name <bashshitever.com> was acquired by Respondent, Complainant had been operating in France and worldwide for about 11 years and had owned an international trademark for about 7 years, designating Malaysia. However, Complainant has not presented any evidence of actual use of its BA & SH trademark in Malaysia at the time of registration of the first disputed domain name.

In addition, a Google search for “bash” shows several results unrelated to Complainant or its trademark. Respondent has also provided a plausible explanation as to why he chose the term “bash”, an English dictionary term related to the idea of a party insofar as its initial target was female students.

Finally, although the parties operate in the same market segment (i.e. ready-to-wear and accessories), Respondent’s use of the disputed domain names does not show an intention to compete with Complainant and its trademark, given the different logos/layouts, the significantly lower prices at which the Respondent’s clothing is offered for sale, and the absence of any information on Respondent’s website that would lead users to believe that the website is operated by Complainant or any of its affiliated entities.

The complaint is, therefore, dismissed.

Ba & sh should have investigated Respondent’s motives before initiating a UDRP proceeding, including whether its trademark was known in Respondent’s country when the first domain name was registered. It should also have determined for how long  Respondent had been using the “Bash” sign for fashion activities. An investigation could have revealed these elements. Respondent explains that he first marketed the Bash clothing on social networks. And, depending on the answers to these two questions, write a proper letter to the defendant

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What are the challenges of zombie trademarks?

Written by Dreyfus15/06/2021

Propriété intellectuelle, marques The protection of intangible assets as well as the efficient management of zombie trademarks or patents  portfolio contribute to the proper development of a company and its business.

Building a reputation is the very goal of any brand. This reputation is normally attached in law to the sign and to the company that filed and operates it. However, in the context of zombie trademarks, the mark does not symbolize the reputation of the current owner but that of the original owner.

Indeed, these zombie trademarks are signs that have been abandoned but still have marketing potential, a reputation.

A zombie trademark presupposes an indisputable relinquishment, that is to say an abandonment both in fact and legally. It then falls into the public domain.

As long as a brand continues to be used and is renewed every ten years, it can exist perpetually, contrary to patents and the author’s economic rights. However, sometimes a company discontinues the use of some of these signs.

This abandonment can occur any time, whether while the filing is still under review or even when the sign has been in use for a long time. In terms of non-use, a sign is abandoned when a holder stops using it without the intention of resuming its operation, for five consecutive years according to Article L 714-5 of the French Code of Intellectual Property.

Although perpetually renewable, in practice the vast majority of brands have a limited lifespan. They are born and they die. However, it happens that some experience a different fate. They are resurrected.

 

As we can see with the zombie trademarks, abandonment doesn’t have to be permanent.

A company that has given up its rights to a trademark cannot normally prevent a newcomer from bringing a trademark “back from the dead”. Indeed, the disputed sign has returned to the public domain, which theoretically allows anyone to be able to dispose of it freely.

An abandoned trademark is in principle available to everyone.

In France, it is possible to take action against a so-called deceptive brand. Article L. 711-3 c) of the French Intellectual Property Code provides that signs “likely to deceive the public, in particular as to the nature, quality or geographical origin of the product or service” cannot be adopted as a trademark. The former owner also sometimes has the opportunity to initiate ​​unfair and parasitic competition claims.

Resurrecting a brand can thus be of major asset for a company wishing to take advantage of the notoriety of a distinctive sign that has returned to the public domain. However, some of these marks are not legally neither quite dead, nor quite alive, and it is advisable to be very careful, given that the case law is still rare and uncertain on this subject.

Dreyfus is experienced in anticipating, securing and optimizing IP portfolios, which ultimately adds value to our clients’ businesses.

 

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues with our articles written by  Dreyfus’ legal team.

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Why is the well-knownness of an earlier trademark not enough to qualify bad faith?

Written by Dreyfus09/06/2021

Marques, Noms de domaineLa notoriété d’une marque ne suffit pas à garantir le transfert d’un nom de domaine similaire

 

  1. Rémy Martin & C fait partie du groupe Rémy Cointreau, une grande entreprise de cognac. Fondée en 1724, cette maison est l’un des principaux acteurs de la production et de la fabrication du cognac en France.

Le groupe détient un large portefeuille de la notoriété d’une marque comprenant les éléments verbaux « louis » et « louis xiii » en lien avec son cognac Louis XIII le plus célèbre et le plus cher.

Suite à la détection du nom de domaine < louisthirteen.com >, E. Remy Martin & C a déposé une plainte auprès du Centre d’Arbitrage et de Médiation de l’OMPI, afin d’obtenir le transfert de ce nom de domaine.

Le nom de domaine est composé de « louis » qui est identique à la première partie de la marque et est suivi de « treize ». Un nom de domaine qui consiste en une traduction d’une marque est généralement considéré comme identique ou similaire à cette marque . « Treize » est la traduction littérale en anglais du chiffre romain « xiii », comme l’a reconnu l’expert.

Or, en examinant les différentes pages du site Internet de l’intimé, le panéliste constate que le nom est utilisé pour une véritable offre de produits en marque blanche, notamment des masques de protection contre les bactéries et les virus dans le cadre de la lutte contre le Covid-19. Bien que le Défendeur n’ait pas répondu à la plainte, des mentions légales sont présentes sur le site et une recherche rapide sur Internet des sociétés britanniques montre un enregistrement de la société Louis Thirteen Group Limited en juin 2019, soit 18 mois avant le dépôt de la plainte.

Même si la marque antérieure bénéficie d’une large protection, l’expert précise qu’il n’est pas évident que le Plaignant puisse s’opposer à l’utilisation d’un nom commercial « louis thirtheen » pour des activités aussi différentes des siennes.

 

 

La lourde charge de la preuve incombant au Plaignant pour s’opposer à l’usage de la notoriété d’une marque.

 

Dans l’Union européenne et au Royaume-Uni, le titulaire d’une marque notoirement connue ne peut s’opposer à l’utilisation d’une marque similaire/identique que si l’utilisation par le tiers tire indûment profit de ladite marque ou porte atteinte au caractère distinctif ou à la renommée. de cette marque.

L’expert constate que le Plaignant a manqué à sa charge de la preuve dans la mesure où il existe une possibilité réelle que le nom correspondant au nom de domaine ait été utilisé dans le cadre d’une offre de bonne foi de biens et de services antérieure à la notification du litige.

Dès lors, l’expert considère qu’il n’est pas prouvé que l’intimé n’ait aucun droit ou intérêt légitime sur le nom de domaine. Ainsi, il n’a pas à établir que le nom de domaine a été enregistré et utilisé de mauvaise foi.

 

 

La possibilité de saisir la justice reste ouverte

 

Pour les motifs qui précèdent, la plainte est rejetée. Cependant, l’expert déclare que cette décision n’affecte pas le droit du Plaignant d’intenter une action en contrefaçon de marque contre le Défendeur devant les tribunaux.

 

 

Une recherche rapide sur Internet aurait dû permettre au Plaignant d’identifier l’existence de Louis Thirteen Group Limited et de conclure que l’UDRP n’était pas un for approprié pour ce litige, qui devait être abordé de manière globale et non limité au seul nom de domaine. .

Par ailleurs, Louis XIII est le nom d’un roi de France et la marque antérieure n’est donc pas fantaisiste , élément que le panéliste a pu prendre en compte dans son analyse, même s’il ne l’a pas mentionné explicitement.

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

Written by Dreyfus07/06/2021

INPI, procedure, intellectual property, trademarks

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

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

 

 

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

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

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

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

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

 

 

Who can request the invalidity of the trademark?

 

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

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

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

 

 

What are the characteristics of the procedure?

 

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

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

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

 

 

Can we appeal the decision?

 

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

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

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

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

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

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

 

What is the current state of this new procedure?

 

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

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

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

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

 

 

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

 

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.

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