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 1st, 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.
The legislation of the Republic of Belarus has recently evolved through a law adopted on January 5, 2016. The law will allow Belarusian law to advance its current practices in the field of trademark law. Further opportunities for trademark applicants have also been implemented. The amendment came into force on July 15, 2016.
First and foremost, with the new law, trademark registrations with the National Intellectual Property Center can now be filed not only by companies but also by citizens, including foreign citizens. Indeed, before this law was adopted, it was impossible for a foreigner to register a national Belarusian trademark.
Some of the other significant changes in the law adopted on January 5, 2016, include:
Grounds for refusal of registration
A list of grounds for refusal of registration was added and amended by the law of January 5, 2016. Before the law was enacted, the registration of trademarks exclusively composed of symbols or indications used to designate the following was not authorized:
– kind,
– quality,
– quantity,
– property,
– value of the goods,
– process of their manufacturing or selling.
According to the amendment, registration will now be refused only if the abovementioned symbols or indications are dominant components of the trademark being registered, rather than on grounds of their mere presence.
Also, if a sign is identical or confusingly similar to a design or a plant variety protected in Belarus, and if the goods or services are themselves identical of similar, it is impossible to register such a sign as a trademark.
Integration of the International Classification for goods and services (Nice Classification)
From now on, the trademark registration application must bear reference to the Nice Classification for goods and services. Before the law was adopted on January 5th, 2016, such an indication was optional.
What we have here is clearly a desire for the Republic of Belarus to harmonize its IP law with international law standards.
Restoration of expired time limits
It is now possible to restore a number of expired time limits:
– the time limit for responding to a preliminary examination request;
– the time limit for responding to an expert examination request;
– the time limit for submission of a petition for conducting an expert re-examination;
– the time limit for lodging a complaint with the Court of Appeal.
However, it is only possible to restore the abovementioned time limits within three months of the date of their expiration. In addition, time limits will only be restored in exchange for payment of the restoration fees. Finally, the applicant needs to provide proof of a reasonable justification for missing the deadline.
Additional changes have been introduced by the law adopted on January 5th, 2016, such as the prohibition of voluntary licenses between commercial entities. These amendments have allowed the Republic of Belarus to bridge the gap between its legislation and that of other countries, having signed international conventions such as the Nice Agreement.
A hashtag is a word or phrase (“tag” in English) preceded by a symbol similar to the hash (“hash”), used to thematically classify content on social networks.
In a notice published in the Official Journal of January 23, 2013 , the General Commission of Terminology and Neology defined “hashtag”, or “mot-dièse” in French, as: “A meaningful sequence of characters without spaces starting with # (hash), which indicates a topic of interest and is inserted in a message by the author to facilitate the identification thereof.”
The hashtag was first used on Twitter in August 2007. Technically, the hashtags allow the author to contextualize a publication and consolidate the contents consisting of the same keywords. Therefore, in the same manner as the domain name, the hashtag has become a real communication tool and a significant, intangible asset for companies. Faced with the extensive use of the hashtag, it is necessary that limitations on its use are set and it therefore seems legitimate to question its legal status.
The hashtag and fundamental freedoms
Under French law there is no express provision relating to hashtags. However, if some hashtags are considered illegal such as ” #UnBonJuif”, “#AntiNoir” or more recently ” #JeSuisKouachi”, it falls both within the scope of the Law on the Freedom of the Press of July 29, 1881 on racial defamation offences as well as the recent counter-terrorism law of November 13, 2014 .
Use of such hashtags is unfortunately common in that social networks do not review messages published by users until after they are published and often, only if they are subject to a specific report. This suggests that the derogatory liability, according to which the host of the publication will not be held liable if the latter is not aware of the message before it has been posted (Article 6 I. 2 of the Law of June 21, 2004 regarding Confidence in the Digital Economy ), applies to social networks and cannot be questioned in cases of disputed hashtags. Thus, there is no doubt that a user who shall commit an offence or tort through the use of a hashtag that is provided for by the law could be prosecuted and convicted by the French courts, alone or along with the social network.
However in most cases, the disputed hashtags originate from, or are taken up by persons using a pseudonym, thus making their identification complicated. One can take the example of the hashtag ” #UnBonJuif”, for which Twitter had been served a notice by various associations to take prompt action to remove them and to reveal the identity of the authors of the impugned words. Having faced controversy over the res judicata of the decision on account of the international nature of the social network, in July 2013 the associations finally managed to obtain – through mutual agreement with Twitter – the identification details of the authors of the contentious tweets.
As such, the hashtag which is used as a tool for expression and communication, falls under various criminal and civil law provisions on the protection of fundamental freedoms. Any abuse is therefore legally actionable. Despite numerous requests for the removal of tweets, so far, only Twitter has been subject to very few convictions in France, due to the abusive nature of hashtags. France alone accounts for 87% of requests worldwide.
Considering that a hashtag may enjoy legal protection under intellectual property law is a significant advantage for companies as they could avail themselves of civil and criminal law provisions to protect their trademark and image on social networks. However, no legislation has established the legal framework for this symbol yet or provided for penalties in the event of abusive practices.
Is the hashtag a work of the mind and can it be protected by copyright?
Article L. 112-1 of the Intellectual Property Code provides protection for “all works of the mind, “whatever their kind, form of expression, merit or purpose.” The following article provides a non-exhaustive list of works that can be considered works of the mind. This list allows any new creation to be considered as a work of the mind provided that it fulfills the conditions for copyright which are: originality (the imprint of the author’s personality) and physical layout of the work. It would seem that case law with respect to copyright protection can be transposed to the hashtag. However, the appreciation of originality remains subjective and case law may vary.
The tangent character of the concept of originality contributes to the uncertainty of protecting a title by copyright. A hashtag composed of a single word can hardly be protected by copyright unless it is particularly original.
Moreover, one must dissociate the hashtag symbol from the word or words that follow it. The hashtag symbol does not seem to bring originality in itself inasmuch as it has been trivialized since its first use in 2007. Therefore, the content in its entirety will not necessarily be original only because it has been attached to a word or to a group of words.
Is the hashtag a distinctive symbol or a symbol subject to trademark protection?
As with domain names or usernames, the legal nature of the hashtag is not confirmed. Indeed, the symbol is chosen and used freely and openly on social networks. In order to prevent misuse of their trademark, increasingly, trademark owners are applying for the registration of their trademark or their slogan accompanied by the symbol, “#”. The law is silent on this issue and case law is inconsistent. If it was admitted a few times that a hashtag can be protected by trademark law, it is not automatic and hashtag will only be protected by trademark law provided that they meet the criteria of a trademark which are: to be available, to have distinctive character and to be lawful.
In 2015, there were 1,398 application requests worldwide for the registration of trademarks including a hashtag, among which 159 were in France. Companies register hashtags as trademarks when developing an advertising or marketing campaign and when they want to enjoy legal protection. In the US, the operator T-Mobile USA registered in January 2015 the trademark “# 7NIGHTSTAND CHALLENGE.” At community level, one will note the application for registration of the trademark “#LOVE” by Sony Pictures. In France, the trademark “#CLIENT ADDICT” was applied by Future Telecom on June 6, 2014 and the registration was accepted by the National Institute of Industrial Property.
When registering its trademark, a company protects that trademark against any illegal reproduction or imitation and thus has legal means to fight against competitors who could, using an identical hashtag for their own trademark, generate commercial gains and thus resort to practices of economic parasitism.
In the US, in Fraternity Collection, LLC v Fargnoli, a decision dated March 31, 2015, a designer, after terminating business relations with its manufacturer, used hashtags adopting the manufacturer’s trademark (“#fratcollection” and ” #fraternitycollection”) on Instagram to sell his own creations. The Southern District of Mississippi considered that the use of a competitor’s name or of any of its products on social networks as a hashtag can in some circumstances lead to the consumers being misled.
In addition, companies have the opportunity to buy “sponsored tweets” on Twitter thus allowing them to gain better visibility on the social network. These tweets will indeed be emphasised and will normally be seen by Internet users who use that hashtag. A parallel can be drawn between hashtags used in these tweets and Google AdWords. The CJEU case law tends to consider that the use of a trademark as AdWords can amount to infringement if its use causes prejudice to the functions of the trademark, that is the specific image that the company wants the customers to have in mind.
The hashtag “#Rio2016” widespread on the Internet during the summer Olympic Games of 2016 has notably been subject to conflicts in Europe. Indeed, the German Olympic Committee banned the use of the hashtag to non-Olympic sponsor companies, citing an appeal to counterfeiting and an infringement of their intellectual property rights. However, with reference to the CJEU case law, use of this hashtag can only be prohibited if it causes prejudice to the functions of the trademark. A company is entitled to use this hashtag if it simply wants to support its country in the context of the competition, and no commercial link is established between the Olympic Games and the company (i.e. if the hashtag is not used in connection with the company’s goods and services). The hashtag “#Rio2016” was also subject to discussion in the US to the extent that the Olympic Committee has prohibited the use of the hashtag by non-Olympic companies. Some companies however, responded by confronting the Committee on the grounds of an excessively strict prohibition on social networks and therefore reminding the CJEU of its code of conduct.
If some companies have managed to protect trademarks containing the hashtag symbol, a decision of the Court of Appeal of Paris has nevertheless asserted its secondary character. The French Institut National de la Propriété Industrielle (INPI) also considered that due to its frequent use, the symbol “#” is secondary (CA Paris, December 5, 2014, No. 14/14773). The assessment of a trademark containing a hashtag is therefore made without this symbol, as a traditional trademark.
The United States does not agree with this since the trademark “#” has indeed been registered on November 25, 2014 at the USPTO. The USPTO stated that a trademark which consists wholly or partly of the character “#” or “hashtag” can be registered as a trademark if it indicates the origin of the goods or services of the applicant and provided they meet the traditional criteria of validity of a trademark. However, the California Central District Court ruled against this view in the case of Eksouzian against Albanese on August 7, 2015. The dispute concerned two competitors between whom there was an agreement prohibiting them from using the association of certain words as a trademark to promote products. The judge found that the hashtag was descriptive and as such, could not be considered as a trademark. The registration of a trademark including a hashtag is thus not automatic.
Therefore, if previously the registration of trademarks could result from a preventive exercise on the part of the holder in order to prevent a third party in bad faith from registering a hashtag infringing the trademark, the assessment of the validity of a trademark with a hashtag is now exclusively on the word or expression following the “#”. The best way to protect a hashtag will depend on its intrinsic characteristics. Whether by copyright or trademark law, the mechanisms are however not absolute and the case law remains inconsistent.
Following “@” and “.com” what is the future of “#” ?
While the impact of the Brexit on intellectual property rights is still uncertain, the state of designs is similar to that of trademarks in various ways, but some differences still exist.
The mechanism of the exhaustion of rights applies in the same way to trademarks and designs. The scope of the applicability of the exhaustion mechanism clearly depends on the decision of the United Kingdom to be a party to the EEA or not. Currently, once a good has been put on the EEA market with the consent of the rights holder, the rights relating to the designs are “exhausted”, meaning that the rights holder can no longer oppose its free circulation in the domestic market. Therefore, once the United Kingdom leaves the EU, the principle of the exhaustion of rights will no longer apply to the first goods marketed in the United Kingdom. If the United Kingdom decides not to be a party to the EEA, the government may still decide to apply the principle of international exhaustion, according to which the rights are exhausted when the good has been sold in any country.
While a mechanism of conversion of European trademarks and of RCDs would most certainly be implemented, the consequences are not the same for the European Community trademarks and designs. Such a mechanism does not currently exist for designs.
Furthermore, unlike trademarks, the designs do not involve any consequences in relation to the revocation for non-use.
It is to be noted that national British designs do not provide the same protection as RCDs. In fact, British designs do not protect the product’s decoration. Further, British titles do not have to fulfil the novelty criteria (the criteria is that of originality, meaning that the design must not have been copied or must not be similar).
Finally, a design can be registered in the United Kingdom even though it is functional.
The unregistered community design (UCD) makes it possible to enjoy protection when marketing a design without registering it .
Designs disclosed for the first time on the European Union territory (as of March 6, 2002), enjoy protection status. This protection lasts 3 years from the date that the design was first disclosed on the European Union territory. It is applicable only if the first disclosure occurs on the European Union territory.
Therefore, will a disclosure in the United Kingdom deny protection of unregistered community designs (UCD)?
It is necessary to provide legislation on this subject in order to define the limits of the protection of UCDs in the United Kingdom for the forthcoming years.
Once the exit of the United Kingdom from the European Union is finalised, community designs will no longer cover the United Kingdom. As advised in our previous article relating to trademarks “Brexit: facing the consequences”, if the United Kingdom represents a significant market for your company, it is advisable to register a British design in addition to a RCD.
Dreyfus & associés can assist and advise you on the best strategy to enhance and protect your rights.
On December 2nd, 2015, Brazil acceded the Hague Convention of October 5, 1961, also called the “Apostille Convention”, which abolishes the requirement of legalization for foreign public documents. This Convention entered into force on August 14th, 2016 in Brazil, thus making it the 111th signatory state to the Convention. This date difference is due to the mandatory period of six months and sixty days after which the Convention officially becomes effective.
What is an apostille ?
An apostille is a certification issued by a competent authority to confirm that the signature, seal or stamp on a public document was performed by a public officer in the exercise of its functions. It aims to remove the legalization chains required in the past. However, it does not recognize the validity of the document content.
The apostilles are affixed by the countries that joined the “Hague Convention” in 1961, abolishing the requirement of consular legalization. All public documents drawn up in these countries and destined to foreign countries must contain the apostille (extracts of civil status documents, criminal records, certificates of any type issued by official bodies, notarial deeds and notarial attestations of signature, certificates issued by public institutions, etc.).
What is the purpose of the Apostille Convention?
The Convention aims to facilitate the movement of public documents from one country to another. Thus, the documents from signatory states to the convention are no longer subject to a diplomatic or consular legalization requirement in order to be valid and effective with other signatories. These legalization actions are replaced by a simple system with unique verification, through the affixing of an apostille to the document, contributing to a significant reduction in time and costs. In France, the Courts of Appeal issue the apostille for public documents.
The US, China, Japan, Germany, the United Kingdom, France, India and Italy are some of the states already signatories to the Convention.
Brazil: a different legal system
Brazil is a presidential, federal republic, consisting of 26 states and one federal district (Brasilia) which has its own legislative assembly and therefore, legislates independently. The President and the Congress share legislative power, indicating that many powers come into play between the two.
Brazil also has a wide variety of legal rules and texts: for example, the 1988 Constitution is one of the world’s longest texts, given that it is here that a large number of principles guaranteeing the fundamental rights of Brazilian citizens and establishing the presidential federal system are provided for.
The Brazilian legal system is specific and the use of the apostille will prove extremely useful so as to ensure the authenticity of a criminal record or a certified proxy.
A simplified authentication of Brazilian legal documents
The originality of the Brazilian legal system lies thus in the difficulty of finding a balance between federal powers and the numerous principles laid down in the national constitution.
The Brazilian administration/bureaucracy?? is complex because of the multiple procedures, in particular with regard to the translation and authentication of documents for companies wishing to conduct business with Brazilian companies or to be set up in Brazil. The specificities of the Brazilian language are an additional hurdle to the relevant translations.
Adherence to the Hague Apostille Convention will simplify the bureaucratic procedures for foreign investors wishing to set up a business in Brazil and Brazilian companies wishing to export abroad, as well as the validation of foreign company documents in relation to public invitations to tender.
As of the 1st of January 2017, German shoemaker Birkenstock will no longer sell its products on the website Amazon.com.
David Kahan, CEO of Birkenstock USA announced the news in a letter dated July 5th, 2016 sent to several retail partners of the trademark. As of January 1st 2017, it will no longer be possible to find Birkenstock sandals on the Amazon.com website. Not only will Birkenstock USA withdraw its products from the website but the company also directed its official retailers to withdraw the products of the trademark.
What are the reasons for this decision?
According to David Kahan, CEO of Birkenstock USA, Amazon is an “open marketplace” where Birkenstock experienced unacceptable business practices that would have jeopardized its trademark. Moreover, it would not be possible for the company to resolve the matter by policing either internally or in collaboration with Amazon.
According to the company, there seem to be too many counterfeits of its shoes from China. It is thus be possible to buy counterfeit sandals at a much lower price than the retail price of Birkenstock sandals.
While several other companies had the same problems and have parterned with Amazon to solve them, this is not the case for Birkenstock. Indeed, it would imply that the company would sell its entire catalog to Amazon, which would lead to some loss of control over its products. The company preferred to no longer sell its products through Amazon.com and stop battling counterfeit on a case-by-case basis.
Counterfeiting in the US
In the US, trafficking in counterfeit goods or services is punishable by the Trademark Counterfeiting Act, 18 USC § 2320. An individual can be fined two million dollars or be imprisoned for ten years while a corporation can be fined five million dollars.
However, in respect of the infringement of intellectual property rights, there is no specialized court in that disputes are brought before ordinary federal courts (the Federal District Courts and Circuit Courts of Appeal which sit below the United States Supreme Court).
The amount of counterfeits made in the US is estimated to be relatively low. In contrast, the US is dealing increasingly with cases of infringement of the intellectual property rights of their nationals committed abroad (such as China, Russia, Chile, Egypt, Thailand, etc.).
What are the possible consequences of the withdrawal of Birkenstock US?
But for several years now, Chinese counterfeit persists and grows on the website. More and more trademarks are affected, ranging from world-renowned trademarks to small-scale jewelry designers. It is also very difficult to determine on the website which products are fake or legitimate products of the trademark. In 2015, Chinese sellers have increased their sales on the website. While there are not only counterfeit products, criticism towards Amazon is consistnt, both from sellers and buyers, urging the company to fight harder against such practices.
Yet Birkenstock USA will leave the Amazon ship on the 1st of January, 2017. It will be interesting to see how a company can survive without relying on the widest and best known online marketplaces. A matter to be followed.
On June 8th, 2016, in Vietnam, the Ministry of Information and Communication and the Ministry of Science and Technology issued a joint memo concerning the recovery of domain names with the <.vn> ccTLD that infringe the Vietnamese Law of 2005 on Intellectual Property.
However if the memo establishes several administrative procedures to resolve disputes on domain names, it nevertheless still failed to mention several important points of dispute and in particular those concerning cybersquatting and typosquatting.
An update on Vietnamese legislation on intellectual property rights
In Vietnam, two laws are important for intellectual property rights and <.vn> domain names: the Law of 2005 on Intellectual Property and the Law on Information Technology 2006. The Law on Information Technology 2006 regulates disputes relating to domain names by providing for four dispute settlement modes (Article 76 of the memo): negotiation, conciliation, arbitration and litigation before the competent courts for each procedure. The Law on Intellectual Property adds that dispute settlement can be done through administrative proceedings before the Ministry of Information and Communication and the Ministry of Science and Technology. These procedures are faster, less expensive than a lawsuit, and they allow an intellectual property rights holder to request cancellation or transfer of the disputed domain name.
However, the “VNNIC” (Vietnam Internet Network Information Center) is based on the Law on Information Technology, which does not recognize the cancellation or transfer of a domain name and which advocates dispute settlement through courts or arbirtration and not through administrative proceedings.
This difference in legislation is a challenge for intellectual property rights holders who wish to exercise their rights.
This explains the need for such a memo to be released by the Vietnamese ministries.
Developments in the Vietnamese Law on Intellectual Property
The circular of June 8, 2016 includes positive measures for intellectual property rights holders.
Indeed, deadlines have been set to force offenders to stop their illegal activities and to transfer domain names to their rightful owner. Also, if the deadline is not met, the administrative authorities can now take action against those offenders who have refused to comply.
Thus, these administrative proceedings make it possible to request the removal of website content linked to the disputed domain name. According to Article 8 of the Circular, the offender will have to respond to the injunction within thirty working days of the administrative decision and remove the relevant content. It is also possible to request the transfer of the domain name to its rightful owner within thirty days (Article 9).
Finally, if the deadline is not met, the relevant ministries can send a request to VNNIC in order for the infringed domain name to be transferred to the legal owner.
However, even though such developments are positive, they are not sufficient since the conditions to access them are too restrictive. Thus, according to Article 7 of the memo, in order to request the transfer of a domain name, it is necessary to have:
a domain name identical or similar to a trademark confusing for Internet users;
the disputed domain name must be associated with a website that contains infringing data;
finally, the domain name should direct to infringing content.
These infringing data and content include:
advertisements, new product launches and offers for goods and services identical or confusingly similar to those of the rights holder which damaged their reputation and business;
slanderous and libelous information against the legitimate owner of the goods and services.
It is unfortunate that this new circular was not sufficiently far-reaching in regulating disputes involving infringing domain names. However, it is a step forward in the fight against cybersquatting in “.vn”.
Cybersquatting and Typosquatting overlooked by the new memo
The memo released on June 8th, 2016, fails to include disputes involving cybersquatting or typosquatting where administrative proceedings are required.
As a reminder, cybersquatting refers to a situation in which a person has consciously registered a domain name in bad faith which is identical or similar to a company’s goods and services or its trademarks in order to resell the domain name to that same company, at an inflated price. Typosquatting involves typos, misspellings, voluntary typographical errors so that a domain name is similar to a company name or trademark.
Whether for cybersquatting or typosquatting, the offender does not create a complete website with the infringing information automatically. Consequently the condition of the new Vietnamese memo for a domain name to direct to an infringing website is not met. Therefore, it is not possible for an intellectual property rights holder to benefit from the administrative procedures in these cases. It is possible for them to go through a UDRP procedure since <.vn> is not in the list of ccTLDs involved in the procedure (unlike <.com > or <.fr>).
On April 28th, 2016, the Senate adopted a so-called “panorama” exception to copyright law.
What is freedom of panorama?
On January 21, 2016, the National Assembly adopted, at first reading, the bill for a Digital Republic , an amendment that introduced the new legal exception to copyright law, also known as “freedom of panorama”. Today, this exception has also been adopted by the Senate after several amendments and will be further incorporated into Article L122-5 of the French Intellectual Property Code.
For French positive law, the panorama exception is a new exception to copyright law for “reproductions and representations of architectural works and sculptures, located permanently in public places, carried out by physical persons, excluding any commercial use.”
The representation of works located in public places
This issue of the reproduction of works located in public places is not a novelty.
There is currently a ban on publicly disseminating any reproduction or representation of a graphic or plastic work located in a place accessible to the public if the work is the main object without the author’s permission. The commercial exploitation of such reproduction or representation is also forbidden.
There are exceptions however. The 2001/29/CE EU directive of May 22, 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, provides the possibility for every Member State to include copyright limitations and exceptions in its domestic laws. One of the possible exceptions is for someone to reproduce and broadcast by any means architectural works, such as sculptures located permanently in public places.
The French Intellectual Property Code refers also to certain exceptions allowing some uses of works located in public places without prior authorization from the author. Article L122-5 stipulates that the author cannot prohibit the reproduction of a graphic, plastic or architectural work if this is done through the press and made exclusively for immediate information puposes and directly linked to the work.
French case law has clearly established under the “theory of the accessory” (théorie de l’accessoire), that a plastic work located in a public place may be reproduced where it does not constitute the main subject of the reproduction. In 2005, the Cour de Cassation had confirmed the court of appeal’s decision to authorise the reproduction of a memorial located at Place des Terreaux in Lyon. The court considered that it was part of the location’s overall architecture and therefore in a photograph, it was only an accessory.
A limited exception
The implementation of this exception, to a larg extent, was initially challenged by associations who aim to protect the rights of authors, in particular by the French Society of Authors in Graphic and Plastic Arts (ADAGP) which denounced the fact that architects and sculptors were deprived of their copyright. On the contrary, Wikimedia, an organisation supporting free information sharing that also promotes Wikipedia, has been in favour of the exception since it was first adopted in the French National Assembly.
Consequently, freedom of panorama was amended and limited to meeting three cumulative conditions. ADAGP also welcomed the balance found between copyright and the freedom of expression of Internet users.
First of all, the legislation provides that the exception applies to architectural works and sculptures “located permanently in public places.” Thus, the exception does not include temporary structures located in a public place.
The exception is also limited to individuals and therefore excludes associations or companies. In fact, legal persons have no legal standing in light of the freedom of panorama.
It is stated in the legislation that the reproduction of an architectural work must be done not for profit. Nathalie Martin, the Executive Director of Wikimedia France, believes that this exception is unenforceable because the licenses of Wikimedia websites allow for the commercial use of images. No photography of work located permanently in public places can therefore be distributed on these sites without the author’s prior authorisation.
The advantage of this new panorama exception appears to be relevant as it is restricted to very specific conditions. In addition, other exceptions already allow for the dissemination and private use of photographs of monuments located in public places (lit. 1 and 2 of Article L122-5 of the IPC).
In December 2015, the European Commission announced that it would prepare a report to modernize European copyright rules, including reviewing the online broadcast arrangements of reproductions of architectural works located in public places. This report provided mainly for imposing the panorama exception on all Member States, while the application is currently optional. The consultation period ended on June 15, 2016, and no further information has been received to date.
The launch new domain name extensions in 2013 gave birth to a new alternative dispute resolution process: the Uniform Rapid Suspension (URS) system. Three arbitration centres have jurisdiction to decide URS cases today: Italy’s MFSD, the ADNDRC and NAF.
Each proceeding is administered according to the guidelines enacted by the Internet Corporation for Assigned Names and Numbers (ICANN). The policies constitute a common set of rules for all arbitration centres to follow. They refer to a set of supplemental rules that are defined by the centres themselves, and govern the points that have deliberately not been covered by ICANN.
As a result, each centre has adopted its own rules, which evolve over time. Which proceedings do you choose: URS or UDRP? And which centre do you go for?
Here is a list of key points to take into consideration when choosing the most appropriate centre:
Domain name extension: Depending on the domain name is a gTLD, a newgTLD or a ccTLD, it is important to choose between the UDRP or URS proceedings. Legacy TLDs such as .com, .org, and .edu are not eligible for the URS proceedings. They only apply to new TLDs. Moreover, only some country-code TLDs can be the object of a UDRP complaint, if the entity responsible for the concerned country-code TLD voluntarily adhered to the UDRP proceedings. Other special proceedings regarding specific domain names will be governed by specific alternative dispute resolution proceedings by centres different from those mentioned above, for example, the SYRELI proceedings administered by the registrar AFNIC for .fr.
Also, according to UDRP proceedings rules, the complaint may involve several domain names, provided that they have all been registered by the same person. The URS proceedings (and some UDRP centres, namely the CAC) allow group actions against the disputed domain name holder but only if the applicants are related.
Geographical location of the centre: Thanks to the many authorised UDRP and URS centres spread worldwide, selecting a centre, which, due to its geographical location, will be better suited than another for a specific case for reasons such as location of the dispute, different time zones, language and bank transfer costs, is wise. Moreover, the ADNDRC is itself composed of four centre located in Asia. The applicant is free to opt for the centre of its choice.
Complaint formalities: Complaints are sent by electronic means to the chosen centre. The ACDR is the only centre that still authorises parties to file a complaint by post or fax. The new UDRP proceeding rules provide that the centre itself will be responsible for sending the complaint to the defendant. Some UDRP and URS centre allow parties to submit new documents after receiving the defendant’s response. This is generally accompanied by financial compensation. For example, a review in URS proceedings costs $300 at the ACDR. The centre, such as NAF, may even allocate an additional time if required by the proceedings, against remuneration. Special attention should be paid to the drafting and sending of the complaint.
Length of the complaint: The common UDRP proceeding rules allow the centres the freedom to set themselves the maximum number of words or pages that a complaint may contain. So, most centre limit the number of words to 5,000 (ACDR, CAC and WIPO). Only 3,000 words are allowed for a complaint filed with the ADNDRC. NAF accepts complaints containing a maximum of 15 pages (including appendices). However, each centre provides a standard complaint form allowing the applicant to gain time and efficiency. URS complaints are all limited to a maximum of 500 words by the common rules (Article 1.2.7).
Communications: The parties cannot contact panel members directly. An administrative officer is provided by every centre to whom all papers and documents relating to the dispute will be forwarded throughout the proceedings. However, the administrative officer does not have any decision-making powers. Therefore, this is a similar factor in all centres.
Language of the complaint: Depending on the centre, the language of the complaint may vary. Theoretically, it shall be the language used in the registration contract of the disputed domain name(s), unless otherwise agreed by the parties or otherwise decided by the panel. Moreover, it may be ordered that any document submitted in a language other than that of the proceedings be accompanied by a translation into the language of the administrative proceedings (to WIPO, for example).
However, NAF adopts a stricter requirement compared to other centres by requiring that the language of the proceedings shall only be the language used in the domain name registration contract. URS complaints must always be drafted in English and will be translated into the language of the country of the holder by the centre. This question regarding the language of the proceedings is essential as it might significantly increase the costs of proceedings.
Identity of panel members: Each centre provides a list of its experts publicly available on its website. At the very least, their names and qualifications must appear. This transparency gives information on the members who have been chosen by the centre to arbitrate on the dispute, and it allows the verification of any conflict of interest, as well as their impartiality. Moreover, when a panel of three experts is requested by the parties, the latter can, under certain conditions, propose three experts from the centre’s list to arbitrate the dispute. However, where only one expert is requested, the choice will be made by the centre.
The number of experts available for each centre depends on the size of the centre and parties can make the best choice based on the expert’s experience, the nature of the dispute, the language of the parties, and so on. It may therefore be interesting to consult the list of experts before opting for a centre.
Length of the proceedings—suspension: The duration is set by the rules established by ICANN in order to ensure a speedy process and foreseeable deadlines. The response time, or that relating to the appointment of the panel, the decision-making, or even the publication, does not really differ from one centre to another, regardless of the type of proceedings.
The suspension of ongoing UDRP proceedings is an option open to the parties to enable them to find an amicable settlement. The terms and condition regarding this point vary according to centres. NAF allows parties to seek a suspension of up to 45 days after filing the complaint and before the panel of experts is appointed, while the CAC allows a 14-day suspension upon written request by both parties, which can be renewed twice.
Appeal: It is not possible to appeal UDRP decisions, but a lawsuit remains possible. All URS centres provide a right to appeal and such proceedings are regulated in the same way. The only significant difference would be the costs of appeal. There is a fixed price for NAF, based on the number of domain names, and on the number of panel members for the ADNRC and the MFSD.
Cost: The cost of proceedings is probably the most significant factor in distinguishing centres from one another. Indeed, for UDRP proceedings, depending on the centre, on the number of members in the panel and the number of domain names involved, the cost of proceedings can vary greatly. Therefore, costs need to be carefully considered. UDRP proceedings involving five domain names and a panel of three members will cost $2,900 before NAF, $3,300 before the ADNRC, $4,000 before WIPO, $3,700 before the ACDR and $3,100 before the CAC.
For URS proceedings involving five disputed domain names, they will cost the applicant $375 before the NAF, $225 before the MFSD and $360 before the ADNDRC. However, the MFSD will take into account, in its pricing structure, the type of applicant (individual, public or private company, association, and so on), and the price varies according to this criterion. Finally, we must not forget that additional costs may be charged due to a suspension request, a re-examination of the case or an appeal from the URS decision. Selecting an arbitration centre can therefore be tricky and requires careful deliberation in each case according to the context of the dispute.
At Dreyfus we have considerable experience worldwide in this area and have successfully acted for many clients considering the best strategy for the promotion and protection of your rights. If you come accross a domain name which you believe is taking advantage of your brand, or is causing harm, please contact us and we would be happy to discuss with the option available to you.
The June 2016 vote in favor of Brexit was a game-changer for the protection of trademark rights within the European Union.
Three options for trademark protection
Today, when a trademark owner wishes to protect a trademark and exercise his/her rights as owner, three options are available to him/her. The owner may, first of all, decide to register the trademark with the National Intellectual Property Office of the country in which he/she wants to protect the trademark. In the UK, the registration of a trademark is done with the IPO (Intellectual Property Office), and protects the trademark in the UK (England, Wales, Scotland and Northern Ireland) but also on the British Indian ocean territory, the Falkland Islands and the Isle of Man.
For all other British territories under British sovereignty bu which do not form part of it, namely the British Overseas Territories, it is necessary to file a local application in the territory’s jurisdiction. The trick is that some local applications must necessarily be performed by UK trademark owners. For example, it is impossible to register a trademark in St. Helena or the Solomon Islands without registering it in the UK.
Another possible solution is to use the EU approach to trademark protection. Thus, by filing a trademark with the EUIPO (the Office of the European Union for Intellectual Property), the owner enjoys protection for the trademark within all EU member countries.
Finally, a trademark owner can register his/her trademark in the 97 member countries of the Madrid Union, through an international trademark. The filing is done with the WIPO (World Intellectual Property Organization), and each trademark is examined according to the national jurisdiction concerned.
End of protection for the English-speaking territories
The second option, namely filing an a EU trademark application, will probably undergo important changes in the next two years, following the vote of the United Kingdom in favor of Brexit on June 23 this year.
Indeed, the European Union trademark is a single title that offers protection in the 28 Member States of the European Union and, automatically, any attached territories of the latter provided they are members of the EU as well. But this qualification, which was called “community trademar” before the entry into force on March 23, 2016 of the new Regulation (EU) 2015/2424 regarding the European Union trademark, might not have any legal effect in the UK in the future.
Before the Brexit vote, territories attached to the UK which are member of the EU were therefore subject to the regulation on the Community trademark. Trademark holders who filed their trademark with the EUIPO therefore enjoyed protection in the UK but also on the Isle of Man and the Falkland Islands. Thus, anyone who currently owns a EU trademark may lose their rights to the trademark in the UK and in these territories.
In addition, within 2 years from now, trademark owners wishing to file a European trademark will no longer enjoy automatic protection of their trademark in the UK. They will need to file two trademark applications: an application for a European trademark with the EUIPO and a national request in the UK with the IPO.
Given the unpredictability of the UK trademark protection, it is important that all trademark owners in the UK having used the national approach be proactive to safeguard their rights.
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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 15th, 2016 (Decision n°2016-69 of 15 April 2016 ) on the trademark registration opposition procedure.
