Dreyfus

From April 15 to June 15, a priority registration period had been opened for trademark holders wishing to register their dedicated Frogans networks and to create Frogans addresses capable of containing their trademark.

Since June 15, the entrepreneurs now have the possibility, for a period of 4 months, to register their Frogans networks and addresses in priority.

OP3FT, a non-profit organisation, launched a new type of website under Frogans Technology, called Frogans Sites.
Those sites are based on a new software layer, which is very simple to use, in the form of a platform for the publishing of content on the Internet.

This software layer is secured by the preliminary allocation of a “.frogans” TLD which allows servers to be renamed. The “.frogans” TLD is a “Dot Brand” with the sole purpose of securing the technical infrastructure of the addressing system of Frogans sites.
Only OP3FT is the holder of domain names in the “.frogans” extension and their registration is closed to third parties.
The “.frogans” should therefore not be confused with the classic top-level domains.

Access to Frogans Sites is given via a Frogans network composed of Frogans addresses, which are easy to remember and comparable to web domain names.
Those addresses comprise the Network Name and the Site Name, separated by an asterisk character (*) in the following form: NetworkName*SiteName.

Each Frogans address thus refers to a Frogans network, which can be of three types:
– Dedicated Frogans Networks: used on the Internet beginning with a customised network name.
– Public Frogans Networks: used on the Internet beginning with the network name “Frogans”.
– Internal Frogans Network: used on the intranet beginning with the network name “Intranet”.

For example, a Frogans address could be in the form “Dreyfus*Contact”, referring to a site dedicated to getting in touch with Dreyfus law firm (telephone numbers, address, email…).

The Frogans sites are accessible via a free software, called Frogans Player, which is similar to a web browser. Their form is not predefined and they are small enough to be loaded with a slow connection or on cheap devices.

This feature helps to reduce costs both for the customer and the website developers because the Frogans sites will be available in a single and unique version irrespective of the platform or device.

The Frogans sites are also multilingual, since the Frogans addresses may contain international characters and therefore write in over 170 languages, using the writing orientation that we prefer (right to left or left to right). This feature was vital for developers who particularly wanted to open the Frogans technology to the Asian market.

The aim of Frogans technology is to make Internet sites easier for the average customer and the future developers to use and to develop, but also to allow them to express their creativity through those sites. Those new sites will also allow their creators to have a total control on their content through its unique display version, and thus guarantee them a better security.

On 15 April 2015, the priority registration period for registering addresses which are part of the dedicated Frogans networks was opened to trademark holders for a period of 2 months, that is, until June 15, 2015.

The allocation of addresses is based on the “first-come, first-served” principle, and the duration of the registration period can be between 1 and 10 years.

To be accepted in the process, the trademarks need to be registered either:
– With a national office, as NIIP or USPTO for the United States
– With a regional office, as OHIM or OAPI
– With an international office of WIPO

These can also include non-registered marks provided that they are validated by a court decision, or that they are protected by a statute or a treaty.

The following types of trademarks are however not eligible to Frogans Addresses:
– figurative or sound trademarks
– unregistered trademarks
– trademarks registered with offices of federated states or with local offices
– cancelled, invalidated, opposed or rectified trademarks
– trademarks which have not been definitively registered

The availability of Frogans Addresses can be verified in the Whois database which can provide information relating to FCR (Frogans Core Registry) operators or to holders of Frogans networks.

This system thus blocks the access to reserved names, and a list of all registered Frogans addresses can be downloaded on the Operator’s site.

A specific UDRP procedure (UDRP-F) has also been made available to all trademark holders wishing to institute proceedings against potential cybersquatters.

Aggrieved third parties can equally trigger an “abusive report” capable of resulting in the annulation of dedicated Frogans Network, if they succeed to produce proof of their ownership of the reproduced mark.

The priority period for the trademark holders having ended on 15 June, the latter have now given priority to entrepreneurs for a period of 4 months, that is, until October 15, 2015.

Any person, individual or organisation, irrespective of his initiative, his country or his occupation, and who wishes to develop an initiative based on the publication of Frogans Sites, can then register Dedicated Frogans Networks with the name of their choice: generic term, geographical name, a community name, trademark, etc.

Following the priority period for the entrepreneurs, developers will be the next ones to benefit from it, before the opening of the Frogans technology to the general public.

Dreyfus offers to assist you during this priority registration period by taking into account the best strategy for promoting and protecting your rights with respect to this technology.

2014 was a successful year for the European Patent Office (EPO). In its report published on February 26, 2015, the EPO witnessed a rise of 3.1% of patents filings submitted to the EPO. A new record number of 274,174 patent filings was reached in 2014, from around 266,000 in 2013.

This significant rise was observed in France, the Netherlands and the United Kingdom.  The number of patent filings declined, however, in Finland, Switzerland, Spain and Japan. The United States and China witnessed a spectacular rise although they already had a high volume of applications in the previous years.

In 2014, the largest number of filings in the most active technological sectors at EPO came from European companies, such as Philips, Siemens, BAS, Robert Bosch and Ericsson. This rise shows both the economic strength of the European economy in terms of technological innovation and the stability and variety of its patent portfolio. It is worth noting that several US and Asian companies are amongst the top 10 of these rankings.

The largest increase of applications with the EPO occurred in the biotechnology, transport, IT, digital communications and measurements industries.

An ambitious program to modernize and reform the EPO in various key areas of operations was launched with a view to managing effectively the rise in patent filings. The EPO will upgrade its IT infrastructure, its human resources policy as well as cooperation with Member States to keep costs down. The program was already implemented successfully in 2013 and the EPO will pursue it in the next few years.

Rapport annuel 2014

Whilst art and right are apparently two opposed universes, they are in reality deeply connected as artists usually care much about the recognition and respect of their works. Legally, moral rights currently are the most efficient tool to ensure the respect of their works. In France, these copyrights are based on property rights and moral rights. Whilst property rights are often assigned to editors, producers and other professionals, moral rights however belong to their author until her death and then to her heirs. According to article L. 121-1 al. 2 of the Intellectual Property Code, the moral right is perpetual, not subject to statutes of limitations and inalienable.

Recently the architect Jean Nouvel, who created the cultural building Philarmonie de Paris, deemed that his moral rights on the work were violated because of certain works that apparently were incorrectly performed.  After an opinion page in the Monde newspaper relating his disappointment concerning the project whose inauguration to the public seemed to be premature, he decided to sue the Philarmonie de Paris in order for the final deliver to correspond faithfully to his original view.  His lawyer indicated that he requested the Court to order that « modified works» be made in order for the twenty six « non-compliances » to be corrected with reference to the initial drawing.  However, the architect does not claim for any compensation, which strengthens the symbolic character of the moral right.

While the building which is dedicated to music opened on 14 January, its construction is in fact not completed. Jean Nouvel has himself confirmed that «the building has been opened within a timeline that did not allow architectural and technical requirements to be met ». After the project, which has been financed entirely with public funds, ran into significant financial difficulties, the architect also added that the architecture of the building was « martyred, the details sabotaged, so taxpayers will have to pay, once again, to correct these absurd decisions ». Therefore, the architect wished to assert his moral right, particularly the right to respect of his work.

On this matter, the Court of Cassation has already brought several elements of appreciation to lower courts in many matters pertaining to moral rights on architectural works. In a case of 11 June 2009, the Court stated that: « it was up [to the Court of Appeal] to determine whether, by way of their nature and importance, the changes made did or did not exceed what was strictly necessary and were or were not disproportionate to the aim pursued by the owner». The rule was not new as a decision of 7 January 1992 already confirmed that « the utilitarian nature of a building commissioned from an architect forbids him to try to impose an absolute intangibility of his work, to which its owner has the right to bring amendments when it is necessary to adapt it to new requirements; however the judicial authorities must assess whether the alterations made to the architectural work are legitimate, in terms of their nature and importance, with regards to the circumstances which constrained the owner to make them ».

The Tribunal de Grande Instance de Paris, which will probably rely on these precedents, will therefore have to decide the fate of the Philarmonie de Paris whose design had been attributed to Jean Nouvel in 2007.

The Luxembourg tax regime applicable to earnings deriving from intellectual property rights is evolving to combat “tax dumping”. It will be adjusted to comply with the new standards of the OECD and the European Union Code of Conduct.

In 2007, the new Article 50a of the Income Tax Act of December 4, 1967 exempted up to 80% of all income generated from the licencing of Intellectual Property. This tax relief system, known as “IP Box”, was introduced by a dozen of EU Member States.

However, the States competing to attract businesses in their territories have been under the scrutiny of the OECD and the G20 for several years. To prevent these jurisdictions from using the IP box for tax dumping, the Member States have approved a Code of Conduct listing six criteria to identify tax dumping situations, including the absence of “real economic activity” of companies benefitting from an IP box on the  affected State’s soil.

According to the OECD and the EU, there are two main approaches to explain the criteria of “real economic activity”:

• The approach of the “nexus of evidence”, founded on the existence of a link between research and development expenditures (R&D) and the income generating from the patents developed (as supported inter alia by Germany);
• And the approach in terms of assignment pricing, based on the prices charged by the company benefitting from the IP box when it commercializes its intellectual propriety rights in the country (supported inter alia by Luxembourg and the United Kingdom).

Following a publication of an OECD report in September 2014 that recommended the “nexus” approach to assess the criteria of the real economic activity, a consensus emerged around a proposal made by Germany and the United Kingdom and it was decided that the Code of Conduct would be amended to include this “nexus” approach by the end of 2015.

Luxembourg, together with the other affected Member States will therefore have to modify their “IP box” regime accordingly. A progressive application of the new regulations, with a transitional implementation period, is expected. All taxpayers covered under the current regime will be able to retain their prerogatives until June 30, 2021 at the latest. After this date, taxpayers will no longer enjoy the benefits of the former regime. Furthermore, no new taxpayer will be sign up for the existing regime after June 30, 2016.

The Governmental Advisory Committee (GAC), which represents governments in relation to ICANN, published its last communiqué following the ICANN meeting held in Buenos Aires on June 20, 2015.

The GAC issued recommendations regarding the policies underlying domain names and new gTLDs in particular. Here are the highlights:

1/ gTLD Safeguards

One of the subjects broached by the GAC was the safeguard mechanisms of domain names, an issue which it had already raised with the “New gTLD Program Committee” of ICANN (NGPC) during the ICANN meeting that was held in Beijing in 2013.

However, and despite the instructions published in its last 2015 communiqué in Singapore, contracts with new applicants of gTLDs have continued to be entered into without taking into account the GAC recommendations. These recommendations involved requiring the verification of the credentials for domain names registered in highly regulated sectors (such as those concerning children, the environment, health and fitness, education, finance, intellectual property, government functions and professional services).

Nonetheless, certain registries and applicants voluntarily submitted these credentials for verification and validation in line with the recommendations of the GAC.

This shows that satisfactory solutions can be achieved. However, the GAC demands that the NGPC makes its position clear with regard to the implementation of these recommendations.

2/ Recommendations for the NGPC.

In this regard, the GAC also recommends that the NGPC set up a list of commended public interest commitment (PIC) examples related to the verification and validation of domain names used in highly regulated sectors.

These commitments would serve to demonstrate best practice for other gTLD registry operators, and consequently give reassurance to users regarding the good faith of registrants for such extensions.

Relevant stakeholders must be identified and encouraged to set up a list of PICs that could be of relevance to the protection of public interests in each of the new gTLDs related to these highly regulated sectors.

Furthermore, in its communiqué, the GAC also highlighted the necessity for ICANN to create a harmonised methodology to determine the number of abusive domain names in the context of the current exercise of assessment of each new gTLD.

3/ Protection for Intergovernmental Organisations

Finally, and in accordance with a prior communiqué on this subject, the GAC highlights the progress made by the informal “small group” which was created for the development of mechanisms relating to the protection of intergovernmental organisations’ (IGOs) names and acronyms at the top and second level.

The GAC calls upon the small group to meet in the near future with a view to effectively contribute to the development of these mechanisms before the next meeting to be held in Dublin.

This meeting, which is to be held later this year, will shed light on whether the recommendations set out in the last communiqué of the GAC have really been implemented. Stay tuned!

Three years after the launch of the new gTLDs in June 2012, ICANN finally seems ready to launch the second round of new gTLDs.

The GNSO (Generic Names Supporting Organization) has caused a stir in the movement due to its latest resolution dating back to a few days.

The GNSO is an organization under the wing of ICANN comprising stakeholder groups from different sectors, particularly, representatives of domain name registrars and registries, business entities, stakeholders in the field of intellectual property, representatives of Internet service providers and non-profit organizations.

These representatives meet as a Council, according to a pre-established schedule, to develop, make recommendations and amend the procedural rules relative to gTLDs.

These recommendations on the ICANN policy concerning new gTLDs are the product, at least in part, of the resolutions of the GNSO and are often crucial in organizing the system of top-level domain names, in particular, for the upcoming launches of new gTLDs.

In its latest recommendations, the GNSO planned, amongst other matters, to prepare a report on the problems encountered after the first launch in 2012, thus paving the way for reshaping the policy relating to the new gTLDs, which was initially implemented in 2007.

While the upcoming launch was not expected before 2018, some already envisaged the announcement of a premature second round in view of the initiative taken by the GNSO.

However, there is nothing alarming in this case since as four years had elapsed between the adoption of ICANN’s policy in 2007 and the first launch of the new extensions.

The GNSO merely advocates the drafting of a report which may lead to amendments and adjustments to the procedures applied previously to gTLDs.

This report would identify both the difficulties encountered in the implementation of the ICANN policy relating to the new gTLDs and the new proposals conveyed, in particular, by the New gTLD Subsequent Procedures Discussion Group (DG), created specifically by the GNSO with the aim to reflect on this issue, so as to prepare the upcoming launch of new gTLDs in the best manner possible.

This project is to be followed in order to better anticipate the second round which is materializing gradually.

The recent French Law enabling the government to streamline relations between public administration and the public (loi n° 2013-1005 du 12 novembre 2013, habilitant le gouvernement à simplifier les relations entre l’administration et les citoyens) amended article 21 of the Law on the rights of the public in its relations with public administration (loi n° 2000-321 du 12 avril 2000 relative aux droit des citoyens dans leurs relations avec l’administration), to the effect that the lack of reply of any government agency amounts to acceptance of the request made to such agency. However, the 2013 Law authorized the government to provide for exceptions to this principle. The Decree (décret n° 2014-1280) of 23 October 2014 thus provided that for certain decisions regarding industrial property titles (in particular applications for trademark registration and renewal as well as oppositions) the lack of reply of the administration is tantamount to rejection. This Decree raised some uncertainties as to its enforcement and compliance with the provisions of the Code de la propriété intellectuelle (CPI). Fortunately, a Decree (décret n° 2015-511du 7 mai 2015), modifying the CPI, has addressed these uncertainties.

Regarding the registration of trademarks, the new articles R. 712-24-1 and R.* 712-23-2 of the CPI provides that trademark registration requests result in an implied decision of rejection at the end of a 6 months’ period starting from the request, which may be interrupted in the case of an opposition or notification of irregularity. Until now, the National Institute of Intellectual property (INPI) had to decide upon substantive objections within 4 months (R 712-11 CPI), which remains unchanged. But the INPI is now also subject to a deadline for the establishment a formal objection.

It would appear that receipt of the certificate is required to validate the application. As for the INPI’s implied decisions of rejection, they do not need to be substantiated. In order to know the reasons why the request was rejected, applicants will have to refer the matter to a judge who will order INPI to render a decision. However, this should not happen since INPI will normally manifest itself before the 6 months’ deadline to formulate objections. These objections will interrupt the 6 months’ period at the end of which the INPI’s silence would imply rejection. It is deeply unfortunate that said reform has brought no modifications regarding the rest of the procedure. In fact, the INPI is not subject to any deadline when deciding about the response to the applicant’s objection. Yet the INPI’s response times often exceed 2 years.

Regarding trademark renewal requests, the Decree inserts, after article R. 712-23 CPI, articles R. 712-23-1 and R.* 712-23-2 which provide that trademark renewal requests lead to implied decisions of rejection at the end of a 6 months’ period starting from the renewal request which can be interrupted in the case of a notification of irregularity, in the same way as for trademark applications.

As a result of these new provisions, the strategy regarding the applications and renewals of trademarks should be modified and the receipt of application and renewal certificates should be systematically checked before the 6 months’ deadline. The Decree of 7 May 2015 entered into force on 9 May 2015 and is applicable to prior requests that have not been subject to any express decision yet. Great carefulness is thus recommended regarding these requests. Whilst this reform helps accelerating procedures, its disadvantage is that it increases the amount of time required to properly manage each trademark.

Similarly, it is now provided that in the absence of an express decision within 6 months, the design registration or renewal applications are deemed to be rejected.

As regards patent,, to ensure consistency between legislations, this Decree abolishes the 4 months period after which the silence of the INPI amounts to rejection of the patent application. Indeed, the CPI provides for the publication of applications 18 months after filing, which is incompatible with an implied decision of rejection within 4 months of the request. However, the silence of INPI kept during 12 months continues to equals rejection in respect of waiver or limitation requests.

Appropriate strategies now have to be adopted in line with this clarified legal framework.

Cambodia became the 95th member of the Madrid System on March 5, 2015, following the deposit of its instrument of accession to the Madrid Protocol.

The Madrid Protocol concerning the International Registration of Marks was signed to facilitate access to some countries where the trademark registration procedure did not tally with the previous Madrid System for the International Registration of Marks (European Union, United States).

The international trademark system allows trademark owners to protect their products in a very wide range of countries by filing a single application.

Henceforth, trademark protection in Cambodia can be achieved directly through the international mark system in an easier and cheaper procedure.

As you know, “BYOD” is an acronym for “Bring Your Own Device”. More specifically, it is an emerging practice in companies whereby employees use personal computing devices for business purposes, including personal computers, tablets and smartphones. These devices may therefore be used in order to access professional information or applications such as client databases and e-mails.

This recent phenomenon originated from the United States and has started expanding in France. Although most companies are still reluctant, France is however one of the European countries which is most focused on BYOD.

Companies have good reasons to be concerned. The use by an employee of his personal computer to have access to the company’s information system may in fact present alarming risks of security. The employee’s personal device may not feature any protection and its use may result in virus infecting the company’s information system. In addition, the risks of disclosure of confidential data are significant.

As the employer is solely responsible for his information system, he only, can decide whether to prohibit or on the contrary, to organise and control BYOD. The employee can never impose the use of his personal devices to perform his professional duties.

The practice must be organised as soon as the employer decides to admit it, which requires at least minimal controls on employees’ personal devices. However, this control should not disproportionately infringe the employee’s privacy.

This is why the French Commission Nationale de l’Informatique et des Libertés (CNIL) issued on February 19, 2015, guidelines on the best practices for the use of BYOD, in order to reconcile the security of corporate data with the protection of employees’ privacy.

Firstly, the CNIL reminds that the use of personal computing equipment of employees for professional duties should not be their only way to access the information system of the company. Employer are required to provide employees with all the means necessary to perform their professional duties and this use should therefore be an alternative only. It consists more of an extra that makes things easier for the employee.

The CNIL then reminds that the employer is also responsible for the security of personal data, including when it is stored on personal devices which the employer granted leave to use. Therefore, the employer is required to safeguard against security risks by identifying the risks in the first place, then by determining the necessary measures to be implemented in a security policy and by raising employees’ awareness regarding the risks.

Finally and foremost, in order to protect the employee’s privacy, the employer cannot just take any measure. It cannot access private data of the employee which are stored on the device.

The CNIL specifies that the standard declaration on the management of employees or the appointment of a Data Protection Officer (“Correspondant informatique et liberté”) is enough to implement BYOD and that there is no need for a special declaration.

Finally, employer opting for BYOD must ensure, by means of proportionate measures, the correct balance between the security of its information system and the protection of his employees’ privacy.