Dreyfus

Since 2015, the trademark system in the Middle East has undergone substantial reform. Trademark fees in The United Arab Emirates, Kuwait, Syria and Bahrain have increased significantly.

This rise in prices is worrying for professionals in the Middle East, who forecast a decrease in the number of trademark filings by foreign companies.

A significant rise in prices

The initial changes appeared in the United Arab Emirates in July 2015. Six months later, Kuwait made a similar move, except that the rise in price is even more significant. More recently, Bahrain and Syria increased their prices for the formalities required to complete the registration of a trademark.

In addition to the prices, one should also consider a special feature of these Middle-Eastearn countries: a trademark application is only possible for one class of goods or services. Thus, if a trademark covers several classes, a separate trademark application has to be filed for each class and each trademark filing must be paid for.

Furthermore, the procedure for filing an international trademark is complex in the Middle East. Applications usually have to be accompanied by several supporting documents such as a power of attorney or documents in support of a priority trademark claim. The strict submission timelines must also be adhered to in order to avoid the application for trademark registration being refused. Finally, accompanying documents will usually require notarisation or legalisation. The formalities can take several weeks to process.

Why such an increase?

The Gulf states are now amongst the countries with the highest trademark filing fees. Trademark fees had not increased for the past ten years. No official reason has been issued to justify this change. However, developing countries need to improve their domestic services. Thus the new fees could be attributed to the fact that these services have been digitised, making it possible to make online applications and to grant access to all to specialised databases.

Another reason could be the coming into effect of a regional trademark law in the Gulf Cooperation Council States. Published in 2006 and revised in 2013, it is still  to be reviewed and should be enacted in 2016. The new law would give way to unifying laws in Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. It does not provide for a single registration (to get the “GCC mark”, registering a trademark in all six GCC states will still require filing six separate national trademark applications). However, there may be opportunities to file multi-class applications, which would compensate for the rise in prices in these countries. The Law would thus help modernise and improve the trademark registration and protection system in GCC states.

Still, these increases could result in far-reaching consequences for corporations as well as for local industrial property firms holding trademarks, who might witness a decline in their revenue if trademark holders no longer file trademark applications, especially in these countries.

However, there is one option left for international trademark holders to avoid payment of the new fees. In Bahrain, Oman and Syria, one can opt for the Madrid System which allows for the filing of one application, in one language by paying one set of fees for the 97 member states. Unfortunately, this is not possible for the other countries mentioned because while they are parties to the WIPO Convention, they are not parties to the Madrid System.

A company must strategically manage its trademark portfolio. Dreyfus & associés aims to assist you by selecting the best approach to enhance and protect your rights.

Compliance of Zambian law with the Paris Convention, the TRIPS Agreement and the Harare Protocol.

On June 6, 2016, a new design law was introduced to Zambian intellectual property law , thus repealing the Registered Design Law of 1958.

The major contribution of this law resides in the possibility to enjoy protection afforded by design law once the said design has been registered. Under the Law of 1958 , the registration of a design only gives the registered proprietor the copyright (Article 14 of Registered Designs Law of 1958).

The notable features of the law of 2016 are as follows:

Amendments to the criteria for protection

The law now provides for the principle of “absolute novelty”, thereby modifying the criterion of novelty.

In addition to the traditional criterion of novelty, the 2016 law introduces the requirement of the design’s individual character into Zambian law.

The individual nature of a design will be recognised where “the overall impression it produces on an informed user differs from the overall impression produced on an informed user by any earlier design differs from the overall impression produced on such a user by any earlier design, which has been made available to the public before the release date of such a design” (Article 18 of the Industrial Designs Act of 2016).

Introduction of an opposition period

It is now possible for a third party, including the State, to oppose the registration of a design within a period of two months from the date an application is published (Article 43).

Duration of protection

The duration of the protection of a design has been modified. It is no longer possible to renew the registration of a design for more than two consecutive periods of 5 years, but only for one, thus bringing the total duration of the protection of a design to 10 years rather than the initial period of 15 years.

Licences

Licencing contracts must be registered with the Registrar. The Registrar can refuse the registration of a licence if it imposes unjustified restrictions on the licensee. Furthermore, the licence contract shall not have effect against third parties until it is registered and a certificate of registration is issued in respect thereof (Article 78).

Creation of designs by employees

A whole section devoted to designs by employees has been introduced by the new law.

In principle, the designs created by employees during the course of their employment contract belong to the employer. However, where the design acquires an economic value much greater than that the parties could reasonably have foreseen at the time of concluding the contract, the employee shall be entitled to an equitable remuneration to be agreed upon by the parties or in default, to be determined by the court (Article 45).

Guatemala’s accession to the “multi-class” trademark application system 

In addition to being the most populous country, Guatemala is also the the largest economic power in Central America.

Since the conclusion of an Association agreement between Guatemala and the European Union in 2013 , intellectual property law has become a major point of discussion for the country.

Indeed, the agreement has led to a number of reforms, particularly in relation to intellectual property law. New types of trademarks such as holograms, olfactory and sound marks have emerged in Guatemala. In addition, the creation of an online newsletter published on the website of the Registry for Intellectual Property now allows individuals to view the trademarks which are registered in Guatemala online.

The year 2016 therefore marks a further step in the development of Guatemala’s intellectual property law.

On March 31^st, the Government of the Republic of Guatemala issued Decree No. 20-2016 concerning the country’s accession to the Trademark Law Treaty (TLT) signed in Geneva on October 27, 1994.

The Trademark Law Treaty is expected to enter into force on December 12, 2016.

The accession of Guatemala to the TLT results in the harmonization and simplification of the procedures for the registration and renewal of trademarks in Guatemala (except for holograms, sound, olfactory and collective trademarks).

Simplifying trademark registration applications 

It will be simpler in the future for a foreign trademark holder to register a trademark in Guatemala given that the same power  can now be applied to one or more applications or to one or more trademark registrations.

The adoption of “multi-class” trademark applications 

Another important development is the introduction of “multi-class” trademark applications in the intellectual property law of Guatemala. 

According to Article 6 of the TLT, a single trademark registration may designate goods and services belonging to several classes.

This system has many advantages, including a simplified management of trademark applications and the reduction of examination time for trademark applications. It also facilitates the monitoring of trademark renewal procédures.

Dreyfus & associés can assist you with your applications for Guatemala trademark registration by selecting the best strategy for promoting and protecting your rights.

Created in 2011, Snapchat is a fast growing social media platform which now counts more than 150 million daily active users  across the world while Instagram, founded in 2010, has more than 300 million users.  These applications can prove to be effective marketing tools for businesses.

Snapchat: the perfect outlet for users’ spontaneity

There are many advantages to companies having a Snapchat account. Firstly, Snapchat reaches the younger audiences. In fact, 71% of Snapchat users are under the age of 25. Snapchat is widespread amongst teenagers and young adults because of its spontaneous and quirky characteristics. The originality of the application lies in the limited lifespan of its content which is between a few seconds and up to 24 hours.

Given the entertaining nature of the application, Snapchat can also be beneficial for the corporate image of a company. If the company builds on this and posts engaging content, it will promote its a friendly image and will show its willingness to engage with clients via different and innovation communication tools. The speed and ease of publication on the application are just some of its defining characteristics. For example, a company will be able to film its interior premises and reveal the work environment of its employees, thus opening up to its community of followers, by allowing them to relate to the company on what some might consider a deeper level, with the ultimate goal of enhancing and strengthening customer relations.

The ephemeral aspect of the application prevents users from posting negative comments on business accounts. Thus, there is very little risk of damage to a company’s corporate image.

Instagram, a popular social network now offering dedicated business accounts

Instagram is another social media network that has become a ‘must’ for a company’s corporate image. Instagram is an effective communication tool for introducing a trademark and associated products to internet users. Moreover, 46% of active users follow trademarks. For example, Louis Vuitton, the French luxury brand for luxury leather goods has 13.4 million Instagram followers.

Hence, through this network, a business can improve its ranking by making content it posts more visible and by targeting an audience more likely to be interested in its publications. By increasing its number of followers and reactions to its content, the business will gain more visibility on Instagram since this social network works by following an algorithm which puts forward the publications which have the most likes and comments. Instagram had announced on March 15, 2016 that “the order of photos and videos in the feed will be based on the likelihood that the internet users will be interested in the content, their relationship with the person posting and the timeliness of the photo or video”.

Like Snapchat, communicating with internet users via Instagram allows a company to be closer to its clients. By taking advantage of this innovative aspect of social media, brands can enhance their image, which helps to develop the interest of internet users for the trademark and associated products and/or services.

Furthermore, since May 2016, it is possible to create “professional accounts” on Instagram. Creating these types of accounts is free of charge as they are designed for companies to be able to have access to similar features already available for example, on Facebook company pages. Companies can display not only their contact information (telephone number, address, email address etc.) but also have access to statistics and can therefore obtain detailed information on the success rates of their publications.

Visual communication plays a leading role in today’s world. Snapchat and Instagram are bold and effective choices for businesses and their corporate image.

A success which can prove to be dangerous for company trademark rights

Success gives rise to imitation. Snapchat and Instagram are popular social media networks with hundreds of millions of registered users. However, like any other successful social media network, these networks are not safe from attacks on trademarks. Therefore, cybersquatters, already present in large numbers to attack trademark laws via domain names, attack these new social networks.

Companies thus need to adopt an appropriate strategy to protect themselves from such attacks and to defend themselves against internet scammers. Dreyfus specializes in the protection of online intellectual property rights and can assist you in your undertakings related to the protection and defence of your rights on social media networks.

Dreyfus may initially study the possibility of recovering usernames reserved by third parties. Indeed, these attacks on your rights should not be tolerated. However, if the names matching your trademarks are available, Dreyfus can reserve them. There are currently only a few judicial decisions relating to Snapchat and Instagram but lawsuits can be complex and expensive. It is therefore recommended that companies adopt preventive action before any of your rights are infringed.

Do not hesitate to enquire further about our wide range of services aimed specifically at protecting your IP rights on the Internet.

As content sharing on the Internet has become common practice for individuals as well as professionals (Facebook, Twitter, Pinterest, LinkedIn), the Court of Justice of the European Union gradually develops relevant jurisprudence on the matter of hypertext links.

When a hyperlink to copyright-protected content is made available online by the owner of the copyright (or with his/her authorization), it does not constitute an act of “public communication” as it does not address a “new public”.

What if the online content has been published without the authorization of the rights holder?

The Advocate General of the ECJ delivered his Opinion on this issue to the ECJ in the GS Media case C-160/15. The dispute is between Sanoma, editor of Playboy magazine, and GS Media, operator of the website GeenStijl.

GS Media published a hyperlink on the GeenStijl website directing viewers to an Australian site where Sanoma’s photos were published without its consent. Despite demands from Sanoma, GS Media refused to remove the hyperlink in question. When the Australian website removed the photos upon Sanoma’s request, GS Media published a new hyperlink to another website on which the same photos could be seen, published again without the consent of Sanoma. That site also complied with Sanoma’s request to remove the photos. Users of the GeenStijl forum posted new links to other websites where the photos could be viewed. Sanoma then sued GS media for copyright infringement.

The case escalated all the way to the Hoge Raad der Nederlanden, the Supreme Court of the Netherlands, which considered that it could not infer from the current ECJ case law that there was “communication to the public” when content is made freely available online without the authorization of the copyright owner. The European Court of Justice has therefore been asked to give a preliminary ruling.

Isn’t there a risk of “communication to the public” when placing a hyperlink to protected content without the authorization of the copyright owner?

The Advocate general of the ECJ, Melchior Wathelet, published his Opinion on April 7, 2016. The Opinion of the Advocate General is not binding on the Court of Justice but intends to propose a legal solution to the Court. According to the Advocate General, once the protected content is freely accessible on the Internet, hyperlinks placed on a website cannot be classified as an act of communication within the meaning of the Directive 2001 on the harmonization of certain aspects of copyright and related rights in the information society. Whilst the photos were possible to find, this was not necessarily easy. The photos were “freely accessible” on third-party sites. Initial “communication to the public” had already taken place and as a result, the hyperlinks only allow users a faster and more direct access to the content. The hypertext link thus only facilitates the discovery of websites where those photos are already published.

The actual act of “public communication” is made by the person who effected the initial communication. The hypertext link only leads to a website where the photos are already published without the authorization of the copyright holder. Consequently, hyperlinks cannot be classified as “acts of communication”. The intervention of the owner of the site who inserts the link is not indispensable for the photos in question to be made available to Internet users. In this case, GS Media’s intervention was merely to reiterate the content already online and is not indispensable to the provision of these photos being made available on the Internet. Moreover, the Advocate General considers that GS Media’s intentions and the fact that it knew or should have known that the initial communication of the photos had not been authorized by Sanoma are not relevant. Thus, the posting of a hyperlink to a website which published photos without authorization does not in itself constitute a copyright infringement.

An approach in line with the European case law

The approach of the Advocate General is in line with the ECJ case-law that gradually develops its decisions on the legal status of hyperlinks. In the Svensson case, judgement of February 2014, the CJEU had ruled on the legal status of a hypertext link. The Court considers that a website can place a hyperlink to protected content freely accessible on another website, without the authorization of the copyright holder. The creation of an Internet link which redirects a user to a protected content authorized by the copyright holder does not constitute “communication to the public” since there is no “new public”. Indeed, the work has already been communicated to the public beforehand. The hyperlink only “directs” towards this work.

In an Order of the Court of October 2014 in the BestWater case, the CJEU adopted the same legal reasoning concerning the hyperlinks by using the framing method. The CJEU held therefore that there was no “communication to the public” if the content concerned is neither directed at a new public nor communicated by using specific technical means different from that used for initial communication.

Please read our article “European Union: the legality of a YouTube video integrated into a third party site (Framing)”.

A surprising French amendment to ban hyperlinks

In France, an amendment to the bill for a digital Republic was filed by two MPs who would like to see a large number of hypertext links to disappear. The amendment is not in line however with the Svensson case which established the principle that clickable links to copyrighted works do not need authorization from the owner. As for the amendment, it intends to ensure that all hyperlinks are subject to authorization prior to publishing protected content.

Hyperlinks: central to the functioning of the Internet

As the Advocate General emphasized in his Opinion, interpreting this matter in the wrong way would entail far-reaching consequences in terms of the responsibilities of Internet stakeholders. It is important to strike a balance between disseminating information and enforcing copyright law. Any other interpretation of the notion of “communication to the public” would infringe one of the principal objectives of the Directive, namely the development of a European information society.

Furthermore, the Advocate-General notes that the above, would considerably impede the functioning of the Internet. Users visit sites and create hyperlinks to access such content. Internet users lack the knowledge and the means to verify whether the initial communication to the public of a protected work freely available on the Internet was done with or without the consent of the copyright holder. If Internet users risk liability for copyright infringement every time they place a hyperlink to content which is freely accessible on another website, they would be much more hesitant to post these links.

Until then, don’t be concerned, the trend is pushing towards the unrestricted use of hyperlinks!

As of  October 1^st, 2016, ICANN (The Internet Corporation for Assigned Names and Numbers) is no longer linked to the U.S. Government.

ICANN’s role

ICANN manages the global resources of the Internet, that is to say it handles the management and coordination of Internet addresses such as IP address allocation, DNS and IP Protocols. Such functions are referred to as IANA: Internet Assigned Numbers Authority function. This particular function, managed by ICANN, was carefully guarded by the U.S. government since it is a critical function.

The emancipation of ICANN

Since October 1^st, 2016 ICANN is no longer under the control of the U.S. government and in particular, the U.S. Department of Commerce or the NTIA (United States Department of Commerce National Telecommunications and Information Administration).

The U.S. was committed to preserving the IANA function since the creation of ICANN in 1998. When the internet was handed over to the private sector, the U.S. government was awarded a contract placing the federal courts as the final arbiter of disputes. The U.S. thus had the final say on every ICANN decision and could block decisions perceived as contrary to its interests.

While this emancipation was a long-term stated objective since ICANN’s inception in 1998, the project materialised only after the revelations of Edward Snowden in summer 2013 and the surveillance scandal involving the NSA. Weakened with respect to global diplomacy, the U.S. had to give in to pressure from over 150 countries including China, Russia and France along with the Afnic association (Association Française pour le Nommage Internet en Coopération, historic operator of .fr). It was not only the U.S. who had control over the internet however: Chinese companies like Alibaba, Tencent or even Baidu hold the same value as GAFA(Google, Apple, Facebook and Amazon).

ICANN’s independence project, aiming for 2016, was announced at ICANN’s 55th International Public Meeting in Marrakech in March 2016.

After two years of hard work and significant obstruction from US Republican Senators, negotiations finally resulted in a new arrangement, welcomed by numerous industries, prominent figures, governments, organisations.

What does this mean for the Internet and its users?

Prior to the expiration of the contract, ICANN was under the control of the U.S. Department of Commerce which had the power to force ICANN into bankruptcy. But the U.S. control over the Board of Directors has now been eliminated.

Henceforth, all Internet stakeholders will have a say and can participate in decisions. A general assembly alongside counter powers was thus created.   This general assembly is made up of four groups:

 –      the private sector, involving stakeholders like GAFA, large companies and SMEs;

–       the technical community;

–       governments, composed of 160 members with one vote each;

–       the civil society: consumer protection associations, civil rights associations.

If there is a consensus, this assembly may block a decision of the Board.

 Americans are not excluded from any decision of ICANN. They form part of the general assembly, have a voice and can oppose any decision of the board. But with time and changing power relations, they could lose their influence.

ICANN’s main concern will therefore be to implement this new multi stakeholder model. The organisation must introduce changes in its culture so that it duly takes into account differences in culture, age, gender, language, career paths. Each community should be able to voice their concerns fully and be capable of influencing the organisation.

On its website, ICANN was pleased to announce this “historical moment”.

Needless to say that we will obtain more information during the next ICANN Congress, the 57^th, to be held in India in early November 2016.  Dreyfus will keep you updated about developments related to ICANN and internet governance.

A new law will be passed soon in the Cayman Islands making it mandatory to file a trademark registration application with the Cayman Islands Intellectual Property Office (CIIPO).

A significant change in the trademark law of the Cayman Islands

Previously, under The Patents and Trade Marks Law 2011, it was possible to gain trade mark protection in the Cayman Islands by way of an application for a UK or Community trade mark registration. With only a registration number, extension of that trademark protection could be requested in the Cayman Islands. The CIIPO would then conduct only a minimal examination of the trademark.

Furthermore, since the Cayman Islands is not a signatory of the Paris Convention, priority could not be claimed and trademark protection would be effective as of the registration date. The International Classification system was used and multi-class applications were allowed to the extent that these classes were requested for the registration of a UK or European Community trademark.   Previsouly, the law also required the payment of maintenance fees payable to the Government of the Cayman Islands in January of each year. These fees could be paid up until March 31^st of that year. Failure to pay annual fees would result in the suspension of protection of the trademark until payment was received. Beyond twelve months, the Registrar may cancel the record of the trademark.

What changes does the new law bring about?

As of now, the CIIPO will only accept national registration applications made directly to the Registrar.

In addition, the examination process will not be minimal, as applications will be examined on both absolute and relative grounds. There will also be a provision for opposition to the registration of the trademark.

The requirement to pay annual maintenance fees in order to maintain a valid trademark registration has however been retained.

Recommendations for registering your trademark

With the new law, which should enter into force during 2017, the timeframe to obtain a trademark registration will be extended.

We encourage you to register your trademarks directly with the Cayman Islands Registrar so as to prepare for the coming into force of the new law and for the potential issues that could arise. It is better to take prompt action in order to anticipate delays and the difficulties that the national Registrar will encounter in order to adapt to the new law.

Dreyfus & associés will certainly inform you of the developments in trademark law in the Cayman Islands. We remain available should you require any additional information.

The blockchain from a technical point of view

The blockchain refers to data storage and transmission technology which is transparent and secure and operates without a central governing body nor any intermediary. It is an unalterable database that contains the history of all exchanges between its users, since its inception. Each transaction is encrypted and becomes a ‘block’ which is then validated automatically by the network.   It operates with a digital currency; the bitcoin is the most common form. This currency allows for the creation a dematerialised settling of transactions.

A new type of organisation

The blockchain is thus based on a fundamental principle: the removal of an intermediary between two people involved in a transaction. There is therefore no need for trust among people interacting since the entire process is automated. While since its inception in 2007, the blockchain has been limited to financial transactions, it continues to grow and is now more widespread. It is therefore important to instill trust and confidence back in to interactions that involve more than one human individual.

What we are witnessing is the emergence of a new type of organisation. The central body that coordinates the interactions between individuals and recovers the generated value has disappeared. In these new systems, individuals themselves work together directly, without the intermediary. The operation system is indeed much more collaborative.

With this kind of decentralised collaborative application, the question now is whether to remove not only the intermediary but also the administrator, the “trusted third party” who certifies the validity of authentic deeds (for example, a notary).

The legal issues surrounding the blockchain

Henceforth, new legal challenges have begun to crop up, in particular the issue of liability. Indeed, if all actions are performed independently and anonymously, who will be liable for opening an illicit network? Even if the creator of the blockchain is identified (which seems difficult in view of the principle of anonymity which is omnipresent in such technology), the operations cannot be stopped since they are carried out independently of the blockchain.

Clearly, it is unreasonable to apply traditional legal rules to this new and expanding digital environment. It is therefore essential to establish a new legal framework that can support, in particular, the development of the blockchain. The expression “code is law” illustrates the need for a new techno-legal revolution for the digital world, independent of the physical one.

As to the regulation issue, one may wonder what position the government will adopt vis-à-vis the blockchain. While the blockchain can afford to evade the rules in force as well as State  control, it can also lose its potential if the States seek to have too much influence on it.

The legal status of the blockchain

Discussions have already been held at the National Assembly in France. On May 13, 2016 an elected representative of Eure-Et-Loir département, filed an amendment  to the recognition of the blockchain in payment systems and conferring upon it the same legal status as a deed. Although the amendment was rejected and the Minister of justice  stated that the blockchain would not replace a notarial deed, this proposition proves that the blockchain and its legal status undoubtedly stirred debate within the government.

Another interesting debate is the legal recognition of smart contracts that are based in the blockchain. These standalone software automatically predefine certain conditions without the need for any human intervention. The advantage of this is that the conditions cannot be modified while the contract is running, thus preventing abuse or contractual fraud. Therefore, the cost of verification, enforcement and arbitration are reduced. This in turn, relates back to the idea of avoiding intervention from a “trusted third party”.

Smarts contracts are software, rather than contracts, and like the blockchain itself, do not possess any legal status. They are not binding on third parties (or at least not yet).

These technical applications of contracts could be applied to many areas: tax (collection and automatic deduction of value-added tax), insurance (traveller compensation system in case of flight delays on the Ethereum  platform), real estate (registration of title deeds), health (management of patients’ information), transport (decentralised carpool service) or even online voting (secure system preventing fraud).

In any case, we are still at the beginning of what is likely to become a revolution in the coming decades. All current decisions will influence the future of the blockchain, that of our society and its organisation. Implementation of a legal framework for the blockchain is key and it is the government’s role to provide legislation on the subject.

You will find below an update of the ongoing and upcoming launches of new gTLDs.

Sunrises starting soon
.art       07/12/2016   07/02/2017

Sunrises ending soon
.baby   02/11/2016 – 02/12/2016
.cam    06/10/2016 – 05/12/2016
.goog   11/10/2016 – 10/12/2016
.クラウド 01/11/2016 – 31/01/2017
.ストア 01/11/2016 – 31/01/2017
.セール 01/11/2016 – 31/01/2017
.ファッション 01/11/2016 – 31/01/2017
.家電 01/11/2016 – 31/01/2017
.書籍 01/11/2016 – 31/01/2017
.食品  01/11/2016 – 31/01/2017
General availability
.moi     29/11/2016
.cam    07/12/2016
.goog   13/12/2016
.storage 10/01/2017
.クラウド 15/02/2017
.ストア 15/02/2017
.セール 15/02/2017
.ファッション 15/02/2017
.家電 15/02/2017
.書籍   15/02/2017

Motivated by the desire to facilitate access to intellectual property and modernize its mechanisms, the Director of the French National Trademark Institute  (INPI) issued a decision on April 15^th, 2016 (Decision n°2016-69 of 15 April 2016 ) on the trademark registration opposition procedure.

According to the decision, from now on, anyone wishing to file an opposition must do so via an E-service, therefore fully accepting the Institute’s terms of use regarding the electroning filing of an opposition against a trademark registration as well as the use of E-Procedures. It is no longer possible to file such an opposition by any other means than the E-service.

In short, since May 1^st, 2016, the French National Trademark Institute has made the online filing of an opposition  to a trademark registration on the INPI website mandatory.

Futhermore, all subsequent exchanges and the submission of observations must be done exclusively via the online service of the Institute.