Dreyfus

The image of property cannot be subjected to an exclusive right. This is also valid for public domain properties, as stated in the Council of State’s decision dated April 13, 2018. (CE  13-4-2018 n°397047, Etablissement public du domaine national de Chambord c/ Société Kronenbourg). In this case, the Kronenbourg company used a photography of Chambord castle as one of its advertisements. Chambord’s public facility then asked for a fee. In lower court, Orleans’s administrative tribunal gave reason to Kronenbourg by rejecting the fee demand. The court declared that only Chambord castle belonged to the public domain, not a photography representing the castle.

The public facility then appealed before Nantes’ administrative Court of Appeal on December 16, 2015. The Court rejected the public facility’s pecuniary claims, because it didn’t have jurisdiction on such issues, but nevertheless recognized that the Chambord castle had the power to manage the castle’s image, as a public domain’s administrator. The Chambord castle then lodged an appeal in cassation before the Council of State. The Council of State recalled that, according to article L1 of the General Public Property Code, the image of public properties is not part of the State’s concern. In addition to that, it also highlights that a public property’s image is likely to be a property. Furthermore, the Council of State also brought some clarifications concerning the terms of use of public domain properties’ image. As such, it was stated that the use of public properties’ image is not subjected to any prior administrative control. Commercial use is thus available to all and free of charge, as long as the image does not lead to a private use of public property. If it isn’t the case, then an administrative authorisation will be necessary. The Council of State appears to agree with the Court of Cassation’s position. Indeed, as a matter of private law, the question surrounding properties’ right to image has often been the centre of multiple judgments. Those same decisions have led to significant jurisprudential evolutions. The first judgments found their origins in article 9 of the Civil Code, the right of private life’s respect. It was about proving that the publication of a building’s image constituted an infringement to private life, which turned out to be more difficult to demonstrate than expected. (Cour de Cassation, Chambre civile 2, du 29 juin 1988, 87-10.463). Other judgments then relied on article 544 of the Civil Code, concerning property right. Property right is a fundamental right with a constitutional value (Cons. const., n° 81-132 DC, 16 janv. 1982 ). According to the Declaration of the Rights of Man and of the Citizen’s article 17, it relates to an “unavoidable and sacred right”. Since then, and in accordance also with article 544 of the Civil Code, property right is regarded as an absolute, exclusive and perpetual right. At first, the Court of Cassation recognized on March10, 1999 that “only the owner owns the right to exploit his property, however he wishes to do so.” (Cour de Cassation, Chambre civile 1, du 10 mars 1999, 96-18.699, Café Gondré). But afterwards, the Court of Cassation stated that the commercial exploitation of a property’s image does not in itself constitute an infringement to the right of use. It is only the case when there is a “noticeable disorder of an owner’s right of use”. (Cour de Cassation, Chambre civile 1, du 2 mai 2001, 99-10.709, l’îlot du Roch Arhon).

Following this judgement, the Court of Cassation strengthened its statement by affirming that “The owner of a property does not have an exclusive right on its image; however, they can still oppose itself the use of the image by a third-party when it causes an abnormal inconvenience”. (Cour de Cassation, Assemblée plénière, du 7 mai 2004, 02-10.450, Hôtel de Girancourt). Since then, article 544 of the Civil Code has been replaced by ancient article 1382 of the Civil Code (now known as new article 1240 after the obligations law’s reform), in order to define the term “abnormal inconvenience”. For instance, a winegrower affixing images of a castle belonging to a competitor on his bottles is now recognized as an abnormal inconvenience. (Cour de cassation, civile, Chambre civile 1, 28 juin 2012 10-28.716).

Ultimately, it is no longer possible to stop a third-party from using someone else’s image of a property, unless one manages to prove that the broadcasted image causes an abnormal inconvenience to the property’s owner. Such an inconvenience can be related to free-riding, disloyal competition, or even infringement of private life.

The last ICANN meeting of the year was held in Barcelona, Spain between October 20nd and 25th, 2018. ICANN Meetings provide a forum to discuss internet-related issues that affect brand owners. It is therefore critical for brand owners to follow and participate in discussions. Several topics were discussed during the meeting that are of particular relevance to brand owners, including the impact of the GDPR on the WHOIS, Rights Protection Mechanisms (RPMs) and new gTLD subsequent Procedures. Dreyfus attended ICANN63, and this article highlights the key takeaways from the ICANN 63.

Whois : the Temporary Specification

One of the major topics of discussion at ICANN63 was, of course, the impact of the European Union’s General Data Protection Regulation (GDPR) on the WHOIS. As a result of the entry into force of the EU’s GDPR in May registrars have redacted domain name registrant’s details, making it difficult for brand owners to enforce their rights. As a result, ICANN adopted a Temporary Specification to allow registries and registrars to continue to comply with their ICANN contractual requirements and with the GDPR.

The Temporary Specification still allows collecting registration data (including registrant information, administrative and technical contact). However, it restricts the access to personal data. Users who have a legitimate interest to get access to the information will have the possibility of contacting the registrant or administrative and technical contacts through an anonymized email or web form.

The Expedited Policy Development Process (EPDP) created to develop permanent policy to comply with the GDPR, met at ICANN in Barcelona to continue discussions on this topic in order to decide whether to confirm the Temporary Specification (becoming ICANN Consensus Policy) or modify it by May 25th, 2019 (the date on which it will expire). The EPDP published the Initial Report on the Temporary Specification on November 21rst, 2018 which was open for comment (until December 21rst) Following the review of public comments, the EPDP will work on the Final Report on final adoption of the temporary specification.

The unified Access Model

ICANN also initiated a separate process for a « Unified Access Model », a centralized WHOIS system managed by ICANN. They will be sending their feedback to the EPDP working group. The idea behind the Unified Access Model is that ICANN will assume responsibility and liability from registries and registrars for disclosing registrant data to third parties with a legitimate interest. Whilst this concept is still in very early stages of development, it was welcomed by many stakeholders. Brand owners therefore should keep an eye on this very important topic.

The analysis of all rights protection mechanisms

Another important matter for brand owners is the GNSO (Generic Names supporting Organization)’s Review of all Rights protection Mechanisms (RPMs) in all gTLDs by the PDP (policy development process) Working Group. The working Group is still in phase 1 –  reviewing all RPMs developed for the new gTLD program, including the Sunrise and Trademarks Claims services offered through the Trademark Clearinghouse (TMCH) and the Uniform Rapid Suspension (URS), a dispute resolution procedure similar to the UDRP specifically designed for new gTLDs. At ICANN63, the Working Group met to present its initial survey findings on the TMCH. It also met to present and discuss its initial review of the URS proposals for operational fixes and policy recommendations. The Working Group also discussed the timeline and next steps for developing the Initial Report. It is expected that phase 2, which consists of a review of the UDRP, will begin in mid 2019. The UDRP is one of the most effective tools for brand owners to tackle infringing domain name registrations, and so it is also an important issue for brand owners that needs to be closely monitored.

New gTLD subsequent procedures

Finally, the New gTLD subsequent procedures Working group was created to review the 2012 round of new gTLDs (generic Top-level domains) and identify recommendations. The working group published its Supplemental Initial Report at the end of October 2018, which was open for comment. It covered several topics, including ICANN auctions as a last resort.

Approval given for ‘.amazon’

The ICANN approved the ‘.amazon’ new gTLD despite the opposition of the Amazon Cooperation Treaty Organization (ACTO). In return, the Amazon corporation agreed to implement special measures, so called “public interest commitments”, in order to avoid any confusion between the new gTLD and the Amazon geographical region or with the Amazon Cooperation Treaty Organization.

The approval of ‘.amazon’ as a new gTLD may open the way to a future new gTLD application rounds.

In a decision of 10 July 2018 (no. 16-23694), the judges of cassation clarified the criteria for assessing unfair commercial use as well as the concept of just cause with respect to the usage of a well-known trademark, all within the scope of the disputed employ of the Taittinger surname. The affair opposes a member of the Taittinger family and the company Taittinger CCVC which acquired shares in the family-run company. For the Taittinger family sold all of the shares of this company, which owns a brand of champagne of the same name. One of the clauses in the transfer agreement was a hold harmless clause which stipulated that the members of the family undertook not to use the “TAITTINGER” trademark to designate products that would be in competition with the transferred business, namely the marketing of champagne. Later, one of the members of the Taittinger family filed the trademark “Virginie T” to designate various products and in particular champagne. To promote her activity, the applicant reserved the domain name but also several names reproducing her surname in full, including and . These latter redirect to the website attached to the domain name , where, moreover, the name Taittinger appears a number of times. As a consequence, Taittinger CCVC invoked the use of the Taittinger sign to promote and sell the champagne called “Virginie T” but also the “implementation of communication systematically oriented on the surname” Taittinger and summonsed the owner of the “Virginie T” trademark on the basis of breach of the transfer of securities contract, infringement of the reputed trademark “TAITTINGER” and unfair commercial use

The hold harmless (against the actions of the seller) clause 

While this point does not constitute the heart of the judgement, it nonetheless provides clarification on the scope of a mandate within the framework of the sale of securities. In the case at hand, the owner of the “Virginie T” trademark had mandated her father, with a substitution option, that he had moreover exercised, to sell her shares to Taittinger CCVC. In this respect, the Court of appeal had convicted Mrs Taittinger for having violated the hold harmless clause. The Supreme court of appeal recalled that the mandate encompasses only administrative acts, the agent can do nothing beyond what is included in their mandate. If the sale mandate authorised the agent to “subscribe to any undertaking or guarantee”, this did not imply the power to grant a prohibition or limitation on the principal’s use of the surname insofar as it constitutes a disposal of assets. The Supreme court of appeal therefore censored the judgement of the Court of appeal on this point.

Infringement of the reputed “Taittinger” trademark

One of the two main contributions of the judgement of 10 July 2018 lies in the appreciation of the concept of just cause vis-à-vis the use of a reputed trademark. Taittinger CCVC invoked article L713-5 of the Intellectual Property Code which stipulates that “the reproduction or imitation of a well-known trademark for products or services not similar to those designated in registration engages the legal liability of the author if it could be prejudicial to the owner of the trademark or if this reproduction or imitation constitutes an unjustified exploitation of the trademark”. While the reputation of the “TAITTINGER” trademark is not in dispute, Virginie Taittinger replied however by invoking the exception of just cause taken from article 5, 2° of the European directive 89/104/EEC of 21 December 1999 and in the light of which the French judge must interpret the French legislation. Consequently, the Court of appeal noted that the consumer was led to establish a link between the trademark transferred and invoked and the promotion of the products of Virginie Taittinger. However, the Court of appeal did not convict Ms Taittinger insofar as, recalling her family origin, she was not taking unfair advantage of the reputation of the “TAITTINGER” trademark, nor did she prejudice its distinctive value. The Court had then added that her name sufficed to identify her career path or her past experience, even with added photographs. In its order of 10 July 2018, the Supreme court of appeal therefore censored the judgement of the Court of appeal on this point. The Court emphasised that, in the light of the European directive, article L713-5 must be applied in two stages. The owner of the reputed trademark must first of all demonstrate that unfair advantage had been taken of the reputation of the trademark, then the third party must establish that there is just cause for the use of this reputed trademark, or a similar sign. Consequently, the Court of appeal should not have assessed the unfair advantage taken of the trademark in relation to the possible existence of just cause but should have assessed the unfair advantage once the infringement had been established. The novelty contributed by this judgment therefore resides in the fact, for the Supreme court of appeal, to indicate that the exception of just cause is not an element of the infringement against the trademark noted, but a fact that exonerates and applies once the infringement has been established. No further details were given, however, as to a possible definition or application of the concept of just cause. The fact that a well-known trademark is identical to the surname used by the third party could have been the occasion for the Supreme court of appeal to use this concept and, consequently, to clarify it.

Unfair commercial use

The Supreme court of appeal’s assessment of unfair commercial use in the judgement of 10 July 2018 constitutes its second contribution. In this respect, as recalled by the Supreme court of appeal, unfair commercial use “consists, for an economic operator, of placing itself in the wake of another in order to take advantage, at no expense, of their efforts and know-how, the recognition acquired or investments made”. The Court of appeal had thus also rejected the claims of Taittinger CCVC on the basis of unfair commercial use. According to the judges, the company had not established how adopting a corporate name or a commercial name as such would alone express the efforts and investments, in particular promotional, necessary to establish an act of unfair commercial use. Here again, the Supreme court of appeal therefore censored the judgement of the Court of appeal. According to the judges of cassation, the latter should have taken into consideration the prestige and recognition acquired, and not disputed, of the corporate name and of the commercial name of the company to examine whether or not an instance of unfair commercial use was present in the case in hand.

This judgement is therefore not only to be placed among the affairs dealing with a well-known trademark that is a homonym of a surname, but also provides a better understanding of the use of the concept of just cause in the context of the infringement of a well-known trademark, as well as the criterion of recognition in the framework of what constitutes an instance of unfair commercial use. Taking advantage of the reputation of a trademark does not necessarily therefore constitute infringement of a well-known trademark, but this can be a decisive factor with regard to establishing an instance of unfair commercial use for which there is no exception for just cause.

The new version of the French Data Protection Act (law n ° 2018-493 of June 20, 2018) was adopted on June 20, 2018. The first version (entered into force on January 6, 1978) was modified twice: in 2004 following the transposition of Directive 95/46 on the protection of personal data, and in 2016 following the French digital republic law. The latest version was adopted following  the General data protection Regulation 2016/679 on the protection of data (GDPR). The GDPR was adopted in May 2016 and implemented on May 25, 2018. The GDPR is directly applicable to all the EU member states. The new French Data Protection Act facilitates an effective application of the RGPD and the directive (UE) 2016/680. The new version is composed of 72 articles and includes the changes made to the previous French Data Protection Act. The GDPR replaces the national law in some areas like rights of data subjects, legal bases of the treatments, security measures, transfers, etc..

In other areas, the new French Data Protection Act integrates the GDPR. It applies to health data, criminal convictions and offense records, data processing for journalistic purposes, etc. Moreover, the GDPR includes 56 references to national laws of the EU member states. Thus, Data Protection legal framework is a mixed legal framework composed of national and European laws.

To reinforce the legibility of the composite legal framework, a Government Ordinance was adopted to add more details to the French Data Protection Act within six months. A new decree implementing the Data Protection Act is also expected to be adopted in the coming weeks. In the meantime, it is recommended by the French Data Protection Authority (CNIL) to pay particular attention to the legal framework applicable in each processing.

Respect Zone is a French nongovernmental organization that protects freedom of expression on the Internet through non-violent communication methods. The organization developed a cyber-violence prevention program that includes children protection as the most vulnerable group.

Dreyfus is an intellectual property boutique firm focusing on digital economy issues. The firm participates in the program and proudly displays Respect Zone ethical label on its website!

We support the initiative and encourage Internet users to moderate disrespectful comments, insults and bullying.

By displaying the Respect Zone label our firm affirms its’ commitment to online dignity and respect on our website and social media channels.

In an ever more complex digital environment, it is now imperative to effectively protect victims of cyber-violence and defend our right to freedom of expression.

For more information: http://www.respectzone.org/en/

After joining forces with Respect Zone in the fight against cyber violence, Dreyfus continues the pro bono initiative by participating in an event organized by the “Mieux Vivre Ensemble 16.93” group.

The group’s aim is to help middle school students who live in the Seine-Saint-Denis department, in Paris region finding their first internship and actively contribute to their career development by offering them new perspectives.

The group organizes the first Internship Forum event on December 8^th, 2018 at the Chamber of Trades and Crafts in Bobigny for 9^th grade students.

The students will get a chance to participate in a variety of workshops and activities including discovering trades, getting access to internship offers and coaching and mentoring programs. The event also includes a workshop for parents as well as a Parcoursup presentation.

Dreyfus is proud to be among the companies that offer internship opportunities for students. Our firm looks forward to welcoming a young intern who will learn about the importance and the means of protecting innovation.

On November 14th, 2018 Theresa May’s   draft withdrawal agreement was approved by the British Government after 5 hours of deliberation by the Council of Ministers. A step has been taken towards securing a smooth withdrawal from the European Union (EU). However, two more steps need to be taken: obtaining an agreement of the 27 UE’s countries and, most importantly, the ratification of the agreement by the British Parliament.

If the withdrawal agreement is able to overcome both of these hurdles, what will be its impact on trademark rights?

There is no need to worry about intellectual property rights as EU directives have already been transposed into British legislation, and the level of protection remains unchanged.

For industrial property  rights, on the other hand, the withdrawal agreement intends to preserve the EU legal framework. Therefore, the transition of the protection of EU law to UK law will be ensured by several measures.

• European trademarks and designs registered before December 31st, 2020 (the date EU treaties will no longer apply to the UK) will be automatically, converted into UK national rights, without re-examination or additional costs,
• EU trademark and design rights declared invalid or revoked in proceedings that were initiated prior to December 31st, 2020, will also be declared invalid or revoked in the UK.
• The holders of trademarks and designs registered before EUIPO (European Union Intellectual Property Office) with a pending application status at the time of the UK’s exit, will have 9 months as of the exit date to file a national application in the UK.
• Applications filed through the UK national office will benefit from the same filing date and priority date as the original application filed with EUIPO.
• Furthermore, the withdrawal agreement stipulates that IP rights exhausted both in the EU and in the UK before the end of the transition period shall remain exhausted.
• However, European trademark owners will not lose their UK trademark rights due to lack of use of the European trademark in the UK before the end of the transition period.

The great innovation of the withdrawal agreement lies in a procedural clarification. The question that until recently remained unanswered by the withdrawal agreement was the process for obtaining protection in the UK. The new agreement now provides for  a cooperation between European and UK authorities. Therefore, all the information necessary to renew rights, held by EUIPO, must be transmitted to the UK authorities. Thus, European IP rights holders do not need to submit any documents or  pay additional fees.

These measures allow right holders to maintain protection in the EU by preserving an equivalent level of protection in the UK. . Nevertheless, if Brexit takes place without agreement, these transitional measures will not enter into force. For the moment such a possibility cannot be ruled out. That is the reason why every decision on EU trademark strategy must be considered very carefully. Dreyfus, trademark law experts, is able to assist you in the decision-making process in order to protect your intellectual property rights in this current climate of uncertainty.

On 9 October 2018 the French National Assembly passed the bill entitled “Action Plan for Growth and Transformation of Enterprises” says PACTE. The purpose of this bill is to foster economic growth by giving businesses the means to innovate, transform, grow and create jobs.

In concrete terms, this action plan has been developed around six themes: “Creation, Growth, Transmission and Rebound”, “Value Sharing and Corporate Social Engagement”, “Financing”, Digitisation and Innovation “,” Simplification “and” Conquering of International markets”.

Innovation at the heart of the debates

On each theme, and this is the originality of this action plan, parliamentary/business leader pairs have been formed to formulate proposals suited to the economic reality. It is in this context that the National Company of Industrial Property Attorneys  or “Compagnie Nationale des Conseils en Propriété Industrielle” (CNCPI) was consulted, in particular with the National Intellectual Property Institute or “Institut National de la propriété intellectuelle” (INPI), regarding “Digitisation and Innovation”.

Introduction of provisional patent applications in French law

The provisional patent application is based on the US “provisional patent application” which makes it possible to apply for a patent at reduced cost without having to respect the imposed formal requirements. This provisional application must be regularised within 12 months subject to being deemed abandoned.

The aim is to encourage companies, especially SMEs, to access patent applications by giving them the possibility to submit, on a provisional basis, their application in the form of a draft and to regularise it within one year. The advantage for companies would be to be able to continue to develop their patent while benefiting from the earlier date of this first filing of the patent application.

This measure is widely criticised because of its dangerous nature since the patent can only protect what is in the provisional application and not future developments. This proposal, far from encouraging innovation, may increase companies’ reluctance to file patents.

This measure, removed from the PACTE bill, will be introduced by regulatory means.

Towards revitalisation of the utility certificate

The aim of the PACTE law is to extend the period of validity of the Utility Certificate and to promote its use among companies, particularly SMEs.

Article 40 I.1 of the bill passed by the National Assembly extends the period of validity of the utility certificate from six to ten years.

Article 40 I. 3°, for its part, creates a new bridge between the utility certificate and the patent by allowing the transformation of an application for utility certificate into a patent application.  Up until now, only the opposite was possible.

Introduction of the rejection of a patent application for lack of inventive activity

Another novelty, Article 42 bis of the bill amends points 5 and 7 of Article  L612-12 of the French Intellectual Property Code (CPI) to provide that a patent application may be rejected on the grounds of a lack of inventive activity.

The opening of a right of opposition to patents

This measure, provided for in Article 42 of the bill aims to create a right of opposition to patents in order to allow third parties to obtain the withdrawal or amendment of a patent by administrative means.

This proposal is intended to prevent abusive proceedings without, however, specifying what would be abusive proceedings or sanctions. It remains to be determined whether the common law system will be applied (i.e. civil liability) or whether a special system will be provided.

These provisions will be implemented by means of a ministerial order.

Next step: examination of the PACTE bill in January 2019 by the Senate. To be continued…

Dreyfus is an intellectual property consulting law firm offering a wide range of services designed for businesses involved in the digital revolution.  Dreyfus takes on the challenges of tomorrow’s world and will be present at LegalTech the 27^th and the 28^th of November at the Cité des Sciences in Paris.

LegalTech is a major event catered to legal professionals who need one meeting place where they can discuss all the issues related to law practice.

We are excited to announce a presentation given by the founder of Harbor Technologies, Emmanuel Harrar, that will take place on November 28^th at 10:15 at the level S2, booth 223.

You will get an opportunity to ask questions concerning intellectual property rights protection and innovation in the domain of trademarks, industrial design, patents, models, copyrights, domain names, social networks, and much more!

Dreyfus expertise

Dreyfus assists companies managing, valuing and defending their intellectual property in the digital and analog worlds.

 Dreyfus approach

The firm has developed comprehensive online trademark monitoring services that include a domain name monitoring service. Dreyfus provides consulting services for acquisition, maintenance, valuation and defense of Intellectual Property rights in France and abroad.

Do you have any questions regarding intellectual property rights management? Meet us at the booth 223, lelev S2 !

We are proud to announce that Dreyfus was ranked as one of the most innovative French IP firms in a recent study conducted by Xerfi group.

The research titled “Trademark and Patent attorney firm perspectives for the year 2021. Internationalization, digital transition, inter-professionalism: what are the growth factors?” refers to Dreyfus as an exemplar IP law firm in many areas including domain names and defense strategies for companies and individuals on the Internet. The study also mentions the Dreyfus IPweb platform as one of the firm’s competitive advantages as it facilitates communication by offering our clients the ability to track all the information related to their file in real time.

Our award-winning IP law firm continues to invest in research and development to provide clients with top-notch services.