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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.

Terrorism remains a constant and ever increasing threat. Following the terrorist attacks that took place in Paris earlier this year and on the November 13^th, the French government wishes to increase its cooperation with the Internet’s key players; this, in order to fight terrorism on the Web and prevent the dissemination of Jihadist propaganda. It was in light of this initiative that Manuel Valls, the French Prime Minister met with representatives of Facebook, Twitter, Google, Apple and Microsoft. No concrete measures have been put into place at present but Valls aims to set up a counter-speech strategy against the Islamic State within the next two months.

Bernard Cazeneuve therefore launched a series of initiatives in order to raise awareness among Internet players about these challenges, by meeting with leading Internet companies to discuss the implementation of concrete solutions.

However, the French government does not intend to amend its legal arsenal in the near future. Currently, the “Cazeneuve” bill dated of November 13, 2014 already provides for a number of mechanisms to strengthen the fight against terrorism through Internet surveillance and to promote cooperation between authorities and Internet users in the identification of and fight against content related to terrorism.

The law provides that hosting providers have the obligation to implement simple and accessible mechanisms allowing users to report content which encourages people to commit acts of terrorism or their glorification. Nevertheless, the real innovation of this bill lies in the possibility for administrative authorities to order hosting providers to withdraw such content, failing which they may even block those websites by compelling Internet providers to ban the access to them. These authorities may also request search engines to dereference these websites.

In some cases, the administrative authority may even block the website directly without prior request to editors or hosting providers. The judicial control will be minimal since it will intervene only when the matter will be referred to the relevant administrative court by a “qualified person” appointed by the French data protection authority, la Commission nationale informatique et libertés (CNIL) to monitor these cases of website blockings.

France thus has a particularly tough legal arsenal to fight against terrorism on the Internet and on social networks since the November 2014 bill. The recent statements and efforts made by the Prime Minister and the Minister of the State Affairs are proof that the government is determined to implement these measures.

Following January’s attacks, several measures were put into place in order to fight Internet extremism. A website by the name of “Stop-djihadisme” was launched, allowing families and close relatives to signal cases of extremism and consequently battle extremist propaganda.

Presently, the French authorities consider that the Internet, prisons and prayer centres are all locations from which extremism can originate from.

On 26 June 2008, the ICANN (Internet Corporation for Assigned Names and Numbers) confirmed its decision to provide the public with the opportunity of creating new top level domains. Several hundred generic top level domains have been created since 2012.

What is the purpose of these new top level domains? – As the range of available top level domains became increasingly limited, the creation of top level domains unlocked the opportunity of choosing preferential domain names and to increase the size of the market.

What’s in it for business? – The creation of new generic top level domains raises considerable stakes for businesses. Henceforth, each entity can benefit from a top level domain in its name. These top level domains allow a better exposure on the Internet, bringing real added value to businesses, as a clear and definite top level domain allows Internet users quickly to identify the owner of the website. As the name of the domain is the gateway to e-commerce, an informed choice of the top level domain should be carried out to guarantee cyber traders all chances of success. The acquisition of a new generic top level domain is in effect an advertising investment.

What are the risks? – The first issue raised is that of the identity or similarity between a new top level domain and an earlier right. But the ICANN has introduced a legal system of protection to prevent giving rise to unmanageable legal uncertainty. The next issue is the  registration of generic terms as top level domains. The domain name does not have to be distinctive. A generic, necessary or usual term may be registered as a top level domain if the applicant has a justified interest to proceed with such a registration. Yet monopolising such a top level domain provides for a competitive advantage which is difficult to defend.

Furthermore, the increase in potential domain names may give room for increased cybersquatting activities, which consists in purchasing a domain name to subsequently resell it at an inflated price to companies that need it. Yet a report called The Name Sentry Abuse by Architelos chambers, which specialize in the management of domain names, in order to evaluate the amount of abusive registrations, shows that the number of registrations of new generic top level domains is inferior to that of abusive registrations of domain names comprising of a pre-existent generic top level domain. This outcome should be qualified nevertheless since the number of abusive registrations comprising a new generic top level domain has increased substantially.

Besides these legal problems, there is the issue of the reaction of Internet users towards the creation of these new top level domains. A survey carried out on a thousand of American consumers by Interbrand during October and December 2014 shows that these new top level domains have a lesser influence than .com on Internet users. Firstly, it is shown that people remember the name of domains with .com more easily than the name of domains in a new top level domain. The rate of “clicks” also shows that users are more likely to steer towards an address with .com than towards a new top level domain even if the name of the domain with .com appears lower in search results. It would thus seem that  e-commerce websites run the risk of losing visitors and hence, potential customers. Nonetheless, the outcome of such a survey have to be put into context. The emergence of these new top level domain is still relatively recent. Internet users should be given time to adapt before the attractiveness of these new top level domains can be assessed.

In a ruling delivered on 20 January 2015[1], the commercial division of the Cour de Cassation drew attention to the application of the limited liability regime of technical service providers in relation to their hosting services and on the absence of any infringement of third party trademarks if used as keywords on the Internet.

SNCF found that eight of its trademarks were used as keywords on the Internet in order to draw the attention of clients towards the websites of competing companies. The Paris Court of Appeal grants the pleas of SNCF which first claimed that the company leasing the servers on which the competing websites are hosted, should be held liable as it was not merely passively involved in the hosting of data. SNCF then claimed that its well-known trademarks were infringed as they were used as keywords leading Internet users to competing websites. Finally, it claimed that this qualified as misleading commercial practice as it suggested that there was a business relationship between SNCF and the defendants to the dispute.

However, the Cour de Cassation disagreed and rejected the three grounds admitted by the Paris Court of Appeal.

Entitlement to the limited liability regime

Article 6, I, 2 of the Law on Confidence in the Digital Economy (LCEN) states, as a matter of principle, that technical service providers are not liable for their data storage activities on the Internet. In fact, the assumption that these technical service providers could monitor all the contents placed online by web surfers would be deceptive. However, there is a risk that they consistently raise their capacity as hosts, even for their publishing or business activities, in order to benefit from the limited liability regime. This would grant them a protection which would go beyond that intended by French law. Therefore, courts must assess each service in order to determine whether the limited liability regime applies.

In our matter, the Court of Appeal held the technical service provider liable by characterizing its services as publishing activities. According to the Court of Appeal, the service provider did not only store the data, but was also actively involved in inserting and removing the keywords. The Cour de Cassation disagreed and held that the technical service provider acted as a host. The inserting and removing of keywords are not enough to account for an active involvement.

The use of trademarks as keywords on the Internet

On this matter, the Cour de Cassation refers to the leading case law of the Court of Justice of the European Union of 23 March 2010 (Aff. Google France; C-236/08). It is now settled that the trademark holder is entitled to forbid the use of the trademark when such use infringes the trademark’s functions.

Dismissal of any misleading commercial practice

The Cour de Cassation dismissed the last ground based on a misleading commercial practice considering that the clients were not misled by the fact of knowing that they were on a business relationship with SNCF.

Parasitism?

Unfortunately, SNCF failed to claim any parasitic action, which may have existed as the use of trademarks as keywords on the Internet could provide a benefit from their recognition and their attractiveness.

Finally, this judgement is in line with earlier decisions and the case law on this matter may be deemed to be as settled.

[1] Cass. Com., 20 janvier 2015, n°11-28567

A corporation cannot have authorship of software, according to the judgment of the Cour de Cassation rendered on January 15, 2015 (Cass. Civ. 1, January 15, 2015, No. 13-23566). In this case, a computer engineer and a professor of medicine together founded a company editing cephalometric analysis software. Differences emerged regarding the ownership of the rights arising from the creation of the software and from its later developments.

The Professor of Medicine became the majority manager of the aforesaid company which filed suit against two companies managed by the engineer, petitioning the Court to declare that the two software programs were collective works. The Professor also wished it to be recognized that the authorship rights belonged solely to the company.

 The Cour d’Appel of Rennes held that the company which was originally incorporated by the two protagonists is the sole author, since the development of the software was the result of the work of its partners (CA Rennes, May 28, 2013, No. 11/05770).

Yet, the Cour de Cassation opined that a corporation cannot hold authorship rights. Indeed, Article L113-1 of the French Intellectual Property Code provides that “authorship belongs, unless proven otherwise, to the person or persons under whose name the work has been disclosed.” Accordingly, the Cour de Cassation held that it can only cover one or several individual(s) and quashed the decision of the Cour d’Appel of Rennes. The reasoning behind this judgment is crucial from a legal point of view: the corporation cannot be the author of the software, but it is vested with [its] copyright rights.

The French Parliament passed a Law on February 20, 2015 (n°2015-195) transposing three different European directives in the fields of copyright and related rights and the return of cultural goods.

These transpositions reflect a significant improvement in respect of protection of certain related rights and of orphan works and a strengthening of the European cooperation for the restitution of national treasures.

Three European directives have been transposed by the Law n°2015-195:

• Directive 2006/116/CE of September 27, 2011 extending the term of protection for phonogram performers and producers
• Directive 2012/28/UE of October 25, 2012 on the new regime of orphan works
• Directive 2014/60/UE of May 14, 2014 on the interstate cooperation for the restitution of cultural goods.

1. Directive 2006/116/CE: increased protection of phonogram performers and producers.

The Law of February 20, 2015 amended Article L.211-4 of the French Intellectual Property Code (FIPC), extending, for the performers and producers of phonograms, the term of protection of 50 years to 70 years after the 1^st of January of the calendar year following the moment when the work was made available or communicated to the public.  However, the protection for performers and producers of videos would remain at 50 years.

The Law also inserts new articles in the FIPC (L.212-3-1 to L.212-3-4) which grants performers the right to terminate the agreement whereby the performer assigned his/her rights to a phonogram producer, if the latter does not sufficiently exploit the work.  Hence, the revised law brings a more favorable environment for performers of phonograms. The 20-year extension term   is accompanied with the introduction of an additional yearly compensation for those performers remunerated on a lump-sum basis by producers of phonograms in exchange for the assignment of their rights. .The second amendment will enable them to find a way out in case of a detrimental contractual relationship with a producer.

These new guarantees will probably lead to an increase of the number of new performers and producers in France.

2. Directive 2012/28/UE: new regime of orphan works.

The Law introduces a new Chapter in the FIPC, enabling the public libraries, museums, archives, depositary institutions of cinematographic and audio heritage and educational institutions to make works considered as orphan available to the public, i.e where their owner cannot be reasonably identified and located after extended researches.

This amendment represents a major legislative progress considering the difficulties that legislation about orphan works had caused in the past.

3. Directive 2014/60/UE: restitution of cultural goods.

Finally, the revised Law embeds new provisions in the French Heritage Code to guarantee the return of cultural goods which are considered national treasures and which present a major interest for the national heritage in matter of History, Art and Archeology, and that have been unlawfully removed from their national territory after December 31, 1992. This new process facilitates the restitution of the goods and contributes to the enhanced cultural cooperation at the European level.

On September 18, 2015, the Republic of Gambia joined the Protocol relating to the Madrid Agreement concerning the international registration of trademarks (known as the Madrid Protocol). The country thus has become the 96^th member to join the Madrid system.

It is to be noted that the Madrid system makes it possible for applicants to simultaneously protect their trademarks in the 112 territories, which represents more than 80% of the world’s trade.

This system thus simplifies the protection of trademarks by streamlining the registration process on an international level as it makes it possible for holders of a trademark to submit an application for registration in a large number of countries, by filing a single document, in only one language (French, English or Spanish) and by paying only one set of fees.

The relevant treaty will enter into force on December 18, 2015. Trademark owners will then be able to include the Republic of Gambia when registering an international trademark and will be able to therefore extend their existing international registrations to Gambia.

On October 6, 2015, the government of the Republic of Gambia notified the Director of the World Intellectual Property Organization of specific measures to be put into place in virtue of article 5(2)(b) and 8(7)(a) of the Protocol.

Thus it was stated that the deadline of one year for raising a provisional refusal of protection is to be replaced by a delay of 18 months. A provisional refusal based on an objection can be raised however even after the 18 month period.

The government also requested to be able to receive an individual fee, in the event that the Republic of Gambia is designated under an international filing application and where the designation is related to a prior international registration or international renewal.

These measures will come into force in the Republic of Gambia on the January 6, 2016.

The Madrid system has many advantages to offer trademark owners and the number of members increases every year. However, certain countries, including Canada, have still not joined the system.

Dreyfus can assist in all procedures relating to the registration of your trademark by devising the best strategy to enhance and protect your rights.

Like the phenomenon “Je suis Charlie” during the tragic events of last January, the recent attacks in Paris dated November 13, 2015 were also an opportunity for spreading messages of support such as “Je suis Paris” or “Pray for Paris”.

Since the attacks, the INPI (France’s trademark office) counted more than ten attempts to file these slogans. In fact, as the slogans have since been shared worldwide and across numerous social networks, some people sought to seize the opportunity and take advantage of this phenomenon. In the aftermath of the attacks on the offices of the magazine, Charlie Hebdo, some fifty trademark applications “Je suis Charlie” were received.

However, like trademark applications relating to the attacks of Charlie Hebdo, INPI stated on Friday November 20, 2015, that it would not register as trademarks, signs such as “Je suis Charlie” or “Pray for Paris”.

In fact, according to INPI, such signs or variants thereof, appear to be contrary to public policy. Pursuant to Article L 711-3 of the French Code de la Propriété Intellectuelle, a request for registration indeed should be rejected if it appears that “its publication is likely to cause prejudice to public policy or morality”. The components of the signs in question cannot be taken up by an economic actor, due to the global perception of the terms, in light of the events that took place on Friday, November 13, 2015.

The basis for INPI’s decision to reject as trademarks, the slogans “Je suis Paris” and “Pray for Paris” is different however from its decision regarding the slogan “Je suis Charlie”. In fact, on January 13^th 2015, INPI refused to register this slogan as a trademark on the grounds of the descriptive character of the terms used, as per Article L 711-1 of the French Code de la Propriété Intellectuelle.

Furthermore, INPI’s decision regarding the refusal to register the slogans, “Je suis Paris” and “Pray for Paris” as trademarks, is founded on a different legal basis: the prejudice to public policy or morality.

The concept of public policy is traditionally used to justify the registration of trademarks referring to drugs or profanities, but it can also be invoked in respect of the refusal to register slogans as trademarks.

For example, in 2003, the Director of the INPI decided to reject as a trademark, the slogan “Non à la Turquie en Europe” as it was contrary to public policy.

Thereafter, the Cour d’Appel de Paris confirmed the decision of the Director of the INPI by concluding that the sign was “a slogan which, contrary to the objective of trademark law, does not aim at distinguishing the goods and services of a company from those of another in order to guarantee the source or origin to a customer, but rather to establish to the advantage of the association […] operating a purely political privilege of the use of this sign”. (CA Paris, 4e ch., sect. A – June 9, 2004). According to the Court, the association tried “to obtain, through a misuse of trademark law, an exclusive right on one of the terms of this debate”.

In the same way and following the previous refusal to register as a trademark the slogan “Je suis Charlie” by the INPI, the Office For Harmonization In The Internal Market (OHIM), reported in a statement dated January 16, 2015 that the same sign will most likely be rejected as a trademark on the basis of Article 7(1) (f) of the Council Regulation on the Community trademark. Indeed, this article provides that trademarks which are contrary to public policy or morality shall not be registered.

The slogans “Je suis Paris” or even “Pray for Paris” are compositions which have been appropriated by both French citizens and the rest of the world. Used in multiple forms on social networks and through various expressions, the combination of these terms cannot be perceived by potential customers as a sign fulfilling the function of a trademark.

Thus, INPI’s refusal to register these signs is entirely in accordance with the stance that applicants for the trademarks, “JE SUIS PARIS” and “PRAY FOR PARIS” have tried to appropriate slogans benefiting from a strong popularity and which were not originally created for commercial purposes.

The slogan widely used both in and outside France since the attacks, conveys a message of support and therefore cannot be perceived by the public as a trademark guaranteeing the origin of the applicant’s goods and services.

Other than the legal basis, the stance taken by the INPI is most welcomed. Indeed, no one can be authorised to gain commercial advantage from such tragic events.