Dreyfus

To fight against cybersquatting, the UDRP procedure was first implemented more than 10 years ago to fight against these practices. It is an effective procedure. It has enabled more than 31,000 disputes to be handled since its inception in late 1999. Subsequently, and as part of the launch of the new gTLDs, ICANN created the URS procedure to supplement the UDRP procedure. This new simplified procedure is cost effective and provides a faster alternative to trademark owners. The question is what elements differ from both procedures?

While the URS procedure has the advantage of speed and simplicity, the objective of the UDRP is the complete removal of the disorder. The choice between these two procedures will then take on the establishment of a strong and effective strategy, in line with the real value of the domain name to the trademark owner and the objective to achieve.

Dreyfus proposes to assist you with any URS or UDRP and worldwide considering the best strategy for recovery and protection of your rights.

The Economic Interest Group (EIG) Prop and the company Groupe Paredes, owners of several trademarks, granted the company Raynaud, also a member of the EIG, the right to use their trademarks.

A compulsory liquidation proceeding had been opened against Raynaud. A judgment of June 28, 2013, resulted in a compulsory liquidation plan ordering the transfer of all commercial agreements and their accessories concluded between Raynaud (initial licensee) and the owners of the trademarks, to company Orapi, then substituted by company Raynaud hygiene (subsequent licensee).

Following the decision on October 24, 2013, which overturned this transfer, the EIG and Groupe Paredes sued Orapi and Raynaud hygiene for trademark infringement, invoking in particular article L713-2 of the French Intellectual Property Code: “the following shall be prohibited, unless authorized by the owner: a) the reproduction, use or affixing of a mark, even with the addition of words such as: “formula, manner, system, imitation, type, method,” or the use of a reproduced mark for goods or services that are identical to those designated in the registration; b) The suppression or modification of a duly affixed mark”.

The issue was whether the transfer of the license agreements and the use of the trademarks between June 28, 2013 and October 24, 2013 by Orapi and Raynaud hygiene, constitutes an infringement under the provisions of article L713-2 of the French Intellectual Property Code.

In a decision dated September 15, 2015, the Commercial Chamber of the Court of Cassation (the French Supreme Court) confirmed the Court of Appeal’s decision to reject the qualification of trademark infringement.

According to the Court of Cassation, the judgment approving the assignment plan should be enforceable by operation of law and should take effect from its pronouncement. The Court specifies that because Orapi and Raynaud hygiene had benefited from the transfer of all commercial agreements and their accessories, the same also benefited from EGI membership. Therefore, the actions resulting from the transfer couldn’t be qualified as counterfeit.

Thus, the law on collective procedures can limit the rights of the trademark owner to choose its licensee. Indeed, in determining the compulsory liquidation plan, the Tribunal may order the transfer of license agreements without the licensor’s consent.

However, even if in this specific case the licensor cannot choose its new licensee, the agreement’s provisions can always be invoked in order to bind the subsequent licensee. Particular attention should therefore be paid to the drafting of such provisions.

Pursuant to certain provisions of the Hamon law[i] which increases the opportunities offered to local authorities and to public institutions for intercommunal cooperation (EPCI) to protect their rights, Decree No. 2015-671 of June 15, 2015 sets the conditions for an alert request in case a trademark which contains their name is filed.

In fact, some local authorities had been subject to appropriation of their names by third parties. Yet, they could only oppose the appropriation for products and services in relation to public service tasks entrusted on the account of the administered[ii].

For example, the city of Laguiole attempted to prevent the use of its name by a third party as a trademark. This third party was trading products which were not manufactured in the city. The Paris Court of Appeal, confirming a judgment at first instance, reversed the city’s claims for nullity of the trademark and deceptive marketing practices. According to the Court, “the reputation of the term “laguiole” is attached to specific products which are knives and cheese named after the city and it has not been shown whether the client has been misled regarding the geographical origin of the range of products whose trademarks include the term “Laguiole” when reading the catalogue thinking that they all originate from a small rural city of some 1,300 residents”.[iii] The Court of Appeal therefore not only upholds that the risk of confusion between the origin of the products and the city has not been proven but also and above all that the commune was not showing an infringement of its existing rights.

To overcome those difficulties, the Hamon law introduced the possibilities for economic actors of the craft and industrial industries and for the local authorities to request the protection of their industrial and craft products under geographical indications. The complex procedure requires amongst other things sending a homologation file.

The law also introduced the possibility for local authorities to make observations or to oppose the registration of a trademark which is likely to infringe the geographical indication or name, image or the reputation of the authority or institution according to Article L711-4 h) of the French Intellectual Property Code (CPI).

Without monitoring, this opportunity could risk falling into nonexistence. This has been accomplished since Article L712-2-1 of the CPI introduced by the Hamon law provides that: “all local authorities and public institutions for cooperation between local authorities can request the national Institute of Industrial Property to be alerted whenever a request for the registration of a mark bearing its name is filed according to the terms and conditions set out in the decree”. More than one year had to pass for this decree to set its conditions.

This alert procedure makes it possible to rapidly address an infringement and to benefit from the opposition procedure before the INPI.

In fact, it is very important today that local authorities and the EPCI protect their rights against the appropriation of their name. In this way, the opposition prevents the registration of a trademark before its exploitation if this trademark infringes the name, the image, the reputation of the local authority or of the EPCI.

Nonetheless, the opportunity to oppose a trademark and the chances of success of such a procedure should be examined. It is for local authorities and the EPCI to prove, during an opposition to the registration of a trademark, the infringement of their existing rights (for example the reputation or the image of the authority) or of their geographical indications.

Dreyfus offers to assist you in any claim for the protection of industrial and craft products with respect to geographical indications, in setting an alert or opposition to registering a trademark by taking into account the best strategy for promoting and protecting your rights in relation to those possibilities.

[i] Law N 2014-344 of March 17, 2014

[ii] TGI Paris, 3rd chamber, 3rd section, March 14, 2007, Cnosf, City of Paris / Gilbert L.

[iii] CA Paris, Avril 4, 2014, No. 12/20559

In a dispute concerning the use of third party trademarks to advertise one’s own products, the Cour de Cassation, in a decision of 10 February 2015[1], illustrated the scope of the exception of necessary reference.

Whilst trademark holders can prevent third parties and especially competitors from using their trademarks without their consent, there exists however an exception to this monopoly for manufacturers of accessories. Article L.713-6 b) of the French Intellectual Code states that the registration of a trademark “does not preclude the use of the same symbol or that of a similar symbol as necessary reference to indicate the intended purpose of a product or a service, in particular as accessory or spare part, provided that there is no confusion as to their origin.”

In this case, a company selling degradable bindings for viticulture had used, during the demonstration at a trade exhibition, an electric linker sold under another trademark to demonstrate the compatibility of its product with this kind of device, which is widely used in that industry. The trademark owner had then acted on it and claimed infringement of their rights.

But while case law abounds on accessories as such, for which the reference to a third party trademark is required, it is less common in regards to the use of a third party product to praise the attributes of one’s own product. Actually, in the meaning of the law/strictly speaking, the said bindings are not an accessory to the electrical linker of this trademark in particular. The purpose of the company was only to demonstrate the compatibility of its products with this kind of device.

The Cour de Cassation ultimately dismissed the claim after having examined, on one hand the necessity of using a third party product in a public demonstration and on the other hand, the absence of any risk of confusion as to the origin of the products.

The judgment notes first that the sole purpose of the demonstration was to convince wine industry professionals that the bindings could be severed with an electrical linker. Since the company does not manufacture such a device, it had to use the electrical linker of a competitor. Choosing this particular competitor was not questionable since it is the world leader in its field. The court concluded that “the comprehensible and complete information regarding the compatibility between the bindings and the use of electrical linkers could not have been transmitted to the public without using the trademark of a third party”. Ultimately, what justifies this usage is the fact that the company didn’t have any other choice. It is still necessary, in accordance with the provisions set out in the Article L713-6 b), for the use of the symbol not to be such as to create a risk of confusion over the origin of the products. However, the trademark of the third party was reproduced “neither on their products, nor on their packaging, not even on their commercial documentation”, on the contrary it was the trademark of the company selling the bindings which was visible so that no risk of confusion was established.

In conclusion, according to the Court’s ruling, it is allowed to use the products of a competitor to demonstrate the attributes of one’s product, without its consent; provided that such use was necessary and that it is not likely to mislead the public as to the origin of the products.

[1] Cour de Cassation, Commercial Division, February 10, 2015, 13-28.263

In a judgment dated January 30, 2015, the General Court (Case T-278/13) rendered an interesting decision on the appreciation of the use of a mark in revocation proceedings.

In this case, the registration in 2004 of the mark “NOW + logo” in respect of the services in classes 35, 41 and 42 was in issue. Now Wireless Ltd, apparently interested in this mark which partly relates to its company name, filed an application for revocation of the mark, claiming that the latter had not been put to genuine use in the European Union for a continuous period of 5 years.

In fact, Community law provides that when the proprietor of a trademark has not been puting it to genuine use in connection with the goods or services listed in the registration, within a continuous period of five years, the result is the revocation of their rights.

Trademark law allows companies to identify their products and services from those of their competitors and since, in contrast to copyright law, it requires no creativity, protection is not justified anymore when the mark is not exploited.

It is therefore natural to give third parties interested in the mark the opportunity to obtain the revocation of the rights owned by the company which monopolizes a trademark without exploiting it.

The proprietor of the mark should then establish that the mark has been exploited in relation to the goods or services in respect of which it is registered, during the relevant period.

In fact, the Cancellation Division declared the revocation of the mark with regard to classes 35 and 41 only whereas the validity of the registration of the mark was upheld for services in class 42.

Consequently, the applicant filed a notice of appeal with the Office for Harmonisation in the Internal Market (OHIM), against this decision in so far as it upheld the registration of the mark in class 42. Since the OHIM dismissed the appeal, the General Court  then had to decide this case and shed more light as to the appreciation of the genuine use of a mark for the goods and services for which it is registered.

In this case, the proprietor of the contested mark proved that he had affixed the mark on modems and 3G keys and also provided services for access to electronic networks, services for rental of equipment and software as well as information to its clients under the contested mark, during the relevant period.

However, the issue was to know whether those services fell under those specified in the application for registration. Indeed, only the evidence of use of the mark relating to the goods or services for which it is protected makes it possible to dismiss the revocation. The applicant claimed that those services fell under only one of the two sub-categories for which the mark is registered and that the revocation should be declared with respect to the other sub-category of services in class 42.

In fact, it all depends on the products and services for which the mark is registered in the registration certificate. If the goods and services for which the mark is registered form part of a broad category, it is well-established case-law that independent sub-categories within this category and evidence of the use of each of those categories need to be identified. However, the products may also be divided into sub-categories otherwise than in an arbitrary manner.

In this case, the Court considered that it was not necessary to define a sub-category of services to the extent that “the services concerned all meet the same need”. In this connection, it has been highlighted that “the end-user of each of the services concerned is the same consumer wishing to access the electronic networks and who relies on all of those services for that purpose”.

What can we finally conclude from such a decision on revocation proceedings? Firstly, it appears that the description of products and services listed on the registration certificate is essential and must not be chosen lightly since it determines the obligation of effective exploitation of the mark. This first finding is however far from being new. It also appears that the products and services of the same class need to be classified according to their purpose and their end-use for the consumer. Hence, if it appears that the goods or services listed aim at the same consumer, they cannot objectively be separated and the evidence of use of one of them will be enough to prove the use for the whole.

It remains unclear what the Court understands by “services meeting the same need” and how to apply this case-law to other categories of services as well as to goods.

The French Highest Court (cour de cassation) has recently reaffirmed the well-established principle that “the likelihood of confusion must be globally assessed, with regard to the content of the trademark registrations regardless of the consumer of the designated goods and the conditions under which the trademarks are used or the goods are marketed”. (Cour de cassation, chambre commerciale, 23 juin 2015, pourvoi n°14-13011)

In this case, a company commercializing vitamin products for kids under the trademark « Min’ours » (“our” meaning “bear” in French) sued for trademark infringement a competitor for the sale of similar products under the trademark in colors « Kid’ours ».

The Court of Appeal of Rennes considered that the similarity between the marks was diminished by the differences in the colors and the dactylography, as well as by the differences between the packaging of the goods at issue and the way the trademarks were displayed on such goodsverturning this judgement, the French Court recalled in a very clear decision that only an in abstracto assessment of the signs shall be conducted for the determination of the likelihood of confusion. This decision is the line with the Court’s traditional jurisprudence. In compliance with French law, the scope of the protection granted to the trademark is limited to the contents of the application filed with the Office.  Use or packaging of the products should have no influence on the Court’s findings on the issue of likelihood of confusion. By this decision, French Supreme Court shows it plays strictly its role of gatekeeper of the trademark system where rights are acquire through registration, not use.

The decision Specsaver of the Court of Justice of the European Communities of 2013 had opened a door to the inclusion of the actual use of a trademark when assessing the likelihood of confusion. This decision hold that “where a Community trademark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.”

However, the facts of the particular matter were different. Besides, packaging and actual use of the marks are traditionally examined by the courts in the light of unfair competition or free riding.

Presenting her best wishes from Ducasse cooking school, Nathalie Dreyfus delivered the present speech.

Good evening all,

 

It is a great pleasure to have you all here at the firm’s annual dinner tonight.

 

I always look forward to this event, one which gives us the opportunity to come together and share a wonderful feast and some celebratory drinks prior to the New Year.

 

This year was a difficult one for France, a year which commenced with the Charlie Hebdo and kosher supermarket attacks and is ending following a series of attacks on the Stade de France, the outdoor cafés of Eastern Paris and the Bataclan concert hall.

 

Throughout the year, we were humbled by the large number of messages of solidarity and support which were sent to us by our colleagues from all around the world. We were also lucky to witness strengthened relationships within the firm itself; it is important to feel part of a strong and solid community at such turbulent times.

 

We as a group at Dreyfus have held firm and have even gone ahead to develop despite these unsettling times in which we now find ourselves.

 

This development was made possible by all of you and all of your hard work, as well as the outstanding display of mutual support you have all shown each other during this past year.

 

The firm has and continues to develop further in the field of Intellectual Property and the digital economy.

 

For better or for worse, these technologies are omnipresent throughout the economy and our daily lives. Naturally the law needs to evolve alongside these changes in order to ensure a certain degree of regulation in a world which we often see as free of any rules.

Even if on a relatively small scale, this is what our firm’s work contributes to.

 

We work in order to protect companies as well as business founders and innovators. France’s current difficult economic situation highlights a key importance of our work: to contribute to the country’s economic development.

 

The financial success of some companies is often displayed on the internet. But we also know that the success of these companies derives from hard work, details of which are kept discreet and behind the scenes. One might say, ‘in the kitchen’.

 

Our firm is in fact one of those kitchens.

 

We help to protect influential entrepreneurs and businesses, those who make up France’s identity and contribute to its diversity. In particular the catering industry!

 

You all already know how important this is to me: you need to eat well and appreciate what goes on in the kitchen. That is why I am very happy to welcome you here this evening to the Ducasse cooking school.

 

However before we eat lets toast to a wonderful New Year ahead. I wish all of you and your loved ones happy holidays and a joyous new year.

 

Nathalie Dreyfus

You may follow the video taping here : youtube

Since January 1, 2015, companies conducting local business can file their trademark applications in Sint Maarten via the online filing system.

On March 20, 2014, the Benelux Office for Intellectual Property (BOIP) and Sint Maarten (the Dutch portion of the Saint Martin island) agreed on their respective roles as regards the implementation of the trademark laws of Sint Maarten.

This agreement provides that the Intellectual Property office of Sint Maarten (BPI SXM) is responsible for executing legal obligations arising from trademark law while the BOIP performs the back-office tasks for the BPI SXM. The BOIP is also responsible for administering the online filing process and creating an electronic trademark registry.

This agreement allows the BOIP to further expand its cooperative network globally.

The Eiffel Tower is the most visited (paying) monument in the world and attracts many tourists every year. In the digital era, it is becoming easier for every tourist to immortalize the Eiffel Tower and publish photos on their Facebook or Instagram account. The question which springs to mind and which has been amidst much polemic is whether photos of the Eiffel Tower can be freely published or whether there is copyright infringement.

The Tower, as a work of architecture, has been in the public domain since 1990. Thus, in theory, anyone is free to use a picture of the Eiffel Tower for personal or commercial purposes. The issue became more complicated when the tower was illuminated at night.

The Société d’Exploitation de la Tour Eiffel (SETE) announces, on its website, that the various illuminations are subject to copyright. Thus, [usage of] any nighttime image of the Eiffel Tower is subject to a prior request from the SETE.

The originality of the illuminations is no longer challenged for a long time. This was confirmed by the Cour d’Appel of Paris in a judgment dated June 11, 1990. The Court held that the composition of the lighting effects intending to reveal and highlight the lines and shapes of the monument was an original “visual creation”.

Yet, during the transposition of the Directive of the European Parliament and of the Council, known as Infosoc, France has had the opportunity to craft an exception to copyright in architectural works located in public places. The Directive provides for this exception, but it is optional, which allows Member States of the European Union to elect whether or not to transpose the clause in their domestic law.  Alongside with Belgium and Italy, France has chosen not to allow the use of images of architectural works for private purposes.

Thus, the photographs of the Eiffel Tower taken during daytime are free of any prior intellectual property rights, while those taken at night require the authorization of the SETE.

The World Intellectual Property Organization (WIPO) may modify the international trademark registration system in the near future so as to allow the registration of trademarks comprising Chinese or Japanese characters.

Japan and China are both members of the Madrid Protocol which allows for the submission of requests for international protection covering those two jurisdictions. However the current system only enables submission of figurative, semi figurative or verbal trademarks consisting of Roman characters. It was impossible to register international trademark consisting mainly of Chinese or Japanese characters with WIPO until now.

The director general of WIPO, Francis Garry, stated that the institution will work on these reforms over the next five years. The first changes pertaining to Chinese characters should be approved as early as next autumn.

These changes are supported, in particular, by Asian and Middle East countries and reflect the growing importance of Asian economies globally. A Chinese or Japanese company wishing to undertake an international registration will no longer have to give up its original trademark and register a mere translation of its trademark. According to Zhao Hu, a lawyer who specializes in intellectual property law, this reform will also reduce the number of free riding cases.