Dreyfus

Today, the 8th of March, Dreyfus joins in the celebration of the extraordinary power and strength of women all over the world. Today, we recognize the women of the Dreyfus team, our colleagues, families and partners, and their outstanding dedication to the global community.

“This should bring reinforced legal protection not only to the users of Facebook, but also to those who use other online services for which general terms include similar stipulations”

Nathalie Dreyfus, Founder, Dreyfus

No user of the internet can avoid being bound by the general terms and conditions of social media. These conditions determine the rules of interaction between the provider and user of a service. As to social media, these provisions will provide for IP rights, the use of personal data, and the content created by users, among others.

By allowing access to the social media network, the user accepts all of the provisions of the general terms and conditions of use, without being able to negotiate them effectively.

Questions must be asked of the binding force of these rules. What about their validity under French law?

The judicial nature of social media terms and conditions

Terms and conditions are, first of all, a contract determining the rules of the game on the social media network. It forms the law of the parties on the platform, and in France, Article 1134 of the French Civil Code applies: “Agreements legally entered into operate as law for those who made them.”

The particular formal requirements of this type of contract, namely the fact that the terms and conditions are agreed upon online, does not challenge their validity. It is an online contract.

Finally, the terms and conditions are pre-formulated standard contracts in the sense that, in practice, they do not allow the user to negotiate the terms of the contract.

Therefore, the terms and conditions of social media are binding contracts. However, in practice, the questionable accessibility and lawfulness of the clauses in the terms and conditions of social media can raise issues about their binding force.

The reliability of terms and conditions

Terms and conditions are often criticised for being hard to understand. Indeed, in practice these conditions are often reproduced in documents other than the contract and it is not always easy to prove that the contracting party knew of and accepted them. The terms and conditions are deemed to be acknowledged and accepted only if a clause in the contract makes reference to them.

For certain conditions pertaining to the protection of personal data, the accessibility is even more tenuous because the policies or confidentiality requirements can be opened only by clicking on a link in the terms and conditions.

Hence, this system of clauses can be compared to a Russian doll: the opening of one condition leads to another, and so on.

Furthermore, the terms and conditions of social media are modified on a regular basis, but that does not necessarily mean that the users are expressly informed about these modifications.

Some social media say they will only bring modifications that they deem to be ‘substantial’ to the attention of users. Hence, the lack of access to the content of terms and conditions and the lack of transparency concerning their modification seem to breach the protective provisions of French consumer law.

The lawfulness of social media terms and conditions

This is an issue when it comes to the usage licence of intellectual property rights as well as to clauses pertaining to personal data.

Social media are not unaware of the contents posted by the user and terms and conditions secure a licence for the use of this content. The issue is on the validity, under French law, of these clauses that secure the licences for the use of this content.

A May 2012 judgement of the first instance court given in TFI v YouTube indicated that the licence found in the terms and conditions of YouTube is questionable under copyright law because the temporal and spatial limits of the free transfer are not specified.

In addition, with regards to the formal requirements and compulsory indications imposed by Article L 131-3 of the French Intellectual Property Code, the shortcomings in the identification of the rights that are the subject of the licence, or even of the comprehensive licences for future works, are questionable under copyright law yet nonetheless feature in the licences for the use of social media.

It therefore seems that the licences for the use of content are not in line with the statutory requirements of French law.

When it comes to personal data, terms and conditions are criticised for their lack of transparency on the use of personal data and its appropriation by social media.

Some clauses, including those that provide for the conservation of personal data of the user for an indeterminate period, or for a period exceeding the time required to process the operation, are deemed to be abusive.

The potential abusiveness of T&C clauses under French law

The clauses that are presented here create a significant imbalance between the rights and obligations of the parties. Hence, public and consumer associations regularly target these clauses that they term as ‘abusive’.

The commission in charge of dealing with abusive clauses, through an order issued in November 2014, recommended eliminating the various clauses that are found in social media terms and conditions.

This commission, which falls under the remit of the minister responsible  for  consumers,  issues  recommendations  to eliminate or modify clauses that have, as their purpose or effect, the creation of a significant imbalance between the rights and obligations  of the parties to the contract  that is detrimental to the amateur or consumer.

The majority of these clauses are about the protection of privacy and personal data.

The commission recommends that clauses, having as object or effect, the clarity of the contract, the formation of the contract, intellectual property rights or even the modification of the terms and conditions, be removed from the contracts proposed by the providers of the social media.

The recommendations of the commission only serve as guidance. However, their impact should not be underestimated because they can be an implicit basis for the courts when they assess the abusive nature of a clause in a legal dispute.

In practice, until very recently, it was not possible to file class actions in France. The Hamon Law of March 2014, which introduced class actions for the first time in the Consumer Code, will undeniably give consumer associations the right to seek compensation for consumers who have, as common ground, social media that have breached their legal or contractual obligations.

The position of social media terms and conditions when it comes to conflicts of jurisdiction

The rules applicable to legal and jurisdictional disputes are in conflict with the terms and conditions of social media and are currently attracting the attention of French case law and authors.

In 2012, the Court of Appeal of Pau explained the scope of application of the terms and conditions in relation to an action against Facebook.

A user was contesting a clause in the terms and conditions that confers jurisdiction to courts in California.

The judges had ignored the application of Facebook terms and conditions, taking into consideration that they were written in English and that the font style made the text too difficult to read.

Given that the conditions  imposed  by Article 48 of the French Code of Civil Procedure, which is ‘loi de police’ (a mandatory rule with which compliance is regarded as crucial by a country for safeguarding its public interests, such as its political, social or economic organisation, to the extent that they are applicable to any situation falling within their scope), had not been respected, the internet user could not have consented to a full awareness of the facts,  and so the clause conferring  jurisdiction was null and void.

This case therefore confirms that the parties to a contract can choose which courts will have jurisdiction but the choice of the parties can sometimes be contrary to the provisions of ‘lois de police’ that must necessarily apply.

More recently, an order of the High Court of Justice of Paris, issued  at  the  outset  of  the  trial,  deemed  the  jurisdiction  clause found in Facebook’s terms and conditions to be null and void after the judge found himself competent to decide on this plea in before commencement  of  the  litigation, which concerned the abusive nature of the clause.

This reasoning differs from the one used three years earlier by the Court of Appeal of Pau.

Indeed, the court did not rely on the prohibition of the abusive clauses but relied on the fact that the jurisdiction clause is extremely hard to identify and unclear, especially since it was written in English at the time.

The debate here is on the concept of abusive clauses. This solution should bring reinforced legal protection not only to the users of Facebook, but also to those who use other online services for which general terms include similar stipulations.

Nevertheless, this solution applied does not solve all the practical difficulties faced by the users of social media who want to have their rights recognised before the French courts.

Indeed, in practice, many obstacles limit opportunities to go before a judge, such as the extreme dependence on social media users accepting the pre-formulated standard contracts of these platforms, or the low financial implications of these legal disputes, which are too insignificant to justify a long and costly trial.

One should however congratulate the French courts for standing up to the providers of social media and ensuring that the fundamental values of French law are enforced. IPPro

Between 1954 and 1989, the newspaper Le Figaro published a magazine under the trademark “Jours de France” registered on June 16, 1988. As of 2011, Le Figaro relaunched the publication as an online magazine under the domain name <joursdefrance.lefigaro.fr>. Only on August 7, 2013 did Le Figaro also relaunch the distribution in hard copy.

After receiving a letter of formal notice from the company Entreprendre, owner of the French trademark “Jour de France” registered on February 25, 2003, Le Figaro sued Entreprendre in a counterfeit action for trademark infringement. Thus, Entreprendre argued the revocation of Le Figaro’s rights on its trademark for non-use, invoking article 714-5 of the French Intellectual Property Code: “An owner who has not put his mark to genuine use in connection with the goods or services referred to in the registration during an uninterrupted period of five years, without good reason, shall be liable to revocation of his rights”.

The issue was whether the use of a trademark on the Internet constitutes a genuine use or not, in accordance with article 714-5 of the French Intellectual Property Code. In a decision dated November 20, 2015[i], the Paris Court of Appeal overturned the Court of First Instance’s decision[ii] to forfeit Le Figaro’s rights to its trademark.

According to the Court of Appeal, the reports provided by the bailiff, demonstrating that the number of single visitors (on average 1 700 per month, during off-peak periods) is not significantly lower than the number of visitors, proved the existence of the magazine’s publication on the Internet and consequently the effective and genuine use of the “Jours de France” trademark, irrespective of the trademark’s quantitative use.

Indeed, the Court of Appeal, in line with the ECJ’s decisions Ansul[iii] and La Mer Technology[iv], considered firstly, that the quantitative criterion does not constitute a defining assessment and secondly, that the online dissemination of the magazine is likely to broaden the audience reach of the product.

The Court of Appeal also specified that the publication of hard copies of the magazine, even at a low distribution rate, supported the genuine use of the trademark.

[i] Paris Court of Appeal, 5^th Division, 2^nd Chamber,  November 20, 2015, RG No. 15/00522

[ii] Court of First Instance, 3^rd Chamber, 4^th Section, December 18, 2014, RG No. 14/00649

[iii] ECJ, Ansul BV v Ajax Brandbeveiliging BV, March 11, 2003, Case-40/01

[iv] ECJ, La Mer Technology Inc. v Laboratoires Goemar SA, January 27, 2004, Case-259/02

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

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