Dreyfus

Shortly after Detroit filed for bankruptcy in July 2013, Judge Rhodes made it clear that its lawyers shouldn’t be charging the struggling city for first-class flights, alcoholic beverages or movies in hotel rooms. His instructions are the most detailed legal-fee instructions given to a city or county in a modern municipal bankruptcy case.

In Detroit’s case, some firms said they refrained from making unnecessary or overly aggressive moves that would have run up the bill for the 680,000-resident city. Lawyers at Dentons U.S. LLP who spoke for the city’s 23,500 retirees said that they also cut their bill by $3.4 million. The firm charged $14.6 million for helping explain the claims and voting process to retirees who were unfamiliar and “largely hostile” to the bankruptcy, firm officials said in court papers.

The 204 ABA-approved law schools reported total J.D. enrollment (full-time and part-time students) of 119,775. This is a decrease of 8,935 students (6.9 percent) from 2013 and a 17.5 percent decrease from the historic high total J.D. enrollment in 2010. The 2014 total enrollment is the lowest since 1982, when there were 169 ABA-approved law schools.

The Corporate LiveWire Global Awards highlight those businesses that display exemplary standards and an incredible performance in their chosen fields right across the globe. They are awarded by the Corporate LiveWire team for showing an unending commitment to excellence in their field.

Winners are chosen based on referrals from readers and clients, representation on high profile cases, significant deals closed, peer reviews, speaking engagements and articles produced.

The Corporate LiveWire Legal Awards considers that its acknowledgment stems from the fact that Dreyfus is an innovative Intellectual property firm with expertise in the digital economy and internationally recognized.

This prize rewards the seriousness, rigor and dynamism of the Dreyfus Team and its innovative technology platform known as “Dreyfus IPWeb®” for the management of trademark and domain name portfolios.

Here at Dreyfus we endeavor to strive and exceed our innovative ambition.

We are truly honoured to have received the award for the Most Innovative Intellectual Property Law Firm. We are especially grateful to our clients; we could not have achieved such an award without their faith and trust in our firm.

Recently alerted by the cruel practices endured by crocodiles during their slaughter for the production of the famous Birkin bags from the Hermès fashion house, the singer Jane Birkin informed Hermès about her intention to rename the crocodile-skin handbag bearing her name. The singer no longer wishes her name to be associated with such practices.

The Birkin bag, created in the early 1980s following a meeting between the singer and Jean-Louis Dumas, the chief executive of Hermès at that time is, however, one of the leading bags from the Hermès fashion house since its inception date.

Alongside arousing the curiosity of fans of the luxury brand Hermès, this news has also piqued the interest of lawyers. Indeed, in the face of such news, the question that arises is whether Jane Birkin can legally rename the crocodile-skin bag.

The fact of renaming a designer bag bearing the name of a star is not an isolated practice since there is a myriad of bags bearing the name of their muse. To cite only the most famous, it is noteworthy to mention the following designer handbags namely: So Kelly from Hermès as a tribute to Grace Kelly, Jackie from Gucci, Lady Dior, or B. Bardot from Lancel.

Since these names are associated with handbags, i.e. with goods, they were obviously registered as trademarks. This is the case, for example, for the name Birkin, filed and registered both as a French and international trademark by HERMES INTERNATIONAL since 1997 and the “So Kelly”, filed in 2009. The same holds true for the “Jackie” handbag, which refers to Jackie Kennedy and was filed by the Italian company GUCCIO GUCCI in 2008.

The practice of registering a surname as a trademark has been upheld by legislation and the French courts for a long time.

The surname is a personality right which is inalienable and indefeasible. Yet Article L.711-1, paragraph 2 a) of the French Intellectual Property Code provides that surnames can be registered as a trademark. Moreover, since the 1985 case of Bordas (Cass. Com. March 12, 1985, No. 84-17163), it is settled law that there can be an agreement to the effect of the commercial use of a surname.

Subsequently, the cour de cassation specified the conditions under which a surname could be registered as a trademark. In a judgment datedMay 6, 2003 (Cass. Com. No. 00-18192) the cour de cassation held that a founding partner who has agreed to the inclusion of his name in the company name must also expressly waive his ownership rights and allow the company to register the said surname as a trademark. In other words, the use of the surname of a third party is limited to what has been expressly authorized by the name holder.

Thereafter, the cour de cassation intervened in the Inès de la Fressange case regarding the use of her surname as a trademark by the fashion company bearing her name. After being dismissed from the company, the fashion designer had sought to recover the rights affiliated with her name by invoking the potentially misleading nature of the trademark on the basis of Article L. 714-6 b) of the Intellectual Property Code. She claimed that consumers would be misled into believing that they were buying clothes designed by her. But this was not the stance taken by the cour de cassation which, on the basis of Article 1628 of the Civil Code and the implied warranty against eviction principle, dismissed the designer’s claim (Cass. Com. January 31, 2006, N ° 05-10116).

A few months later, the Court of Justice of the European Union also faced a similar question in the Elizabeth Emanuel case (ECJ March 30, 2006. Aff . C-259 /04. Elizabeth Florence Emanuel v Continental Shelf). The issue in that case concerned the sale by the designer Elizabeth Emanuelof her fashion company bearing her name and the assets attached thereto, including the ELIZABETH EMANUEL trademark. However, following the sale, the fashion designer filed a claim for the revocation of rights against the trademark which was transferred accordingly, deeming that, just as was the case with Madame de la Fressange, the public was confused since she was no longer the designer of the clothes marketed under the trademark.

The Court held that the ELIZABETH EMANUEL trademark was not, in itself, likely to mislead the public as to the origin of the clothes. But the Court opined that it is for the national court to verify whether there is, on behalf of the company holding the trademark, an intention to make the consumer believe that the designer is still involved in the design of clothes. This would thus be tantamount to fraudulent tactics likely to make the company liable.

In the present case, since Jane Birkin is not associated with the design of the handbag, she cannot rely on this approach for the crocodile-skin handbag to be renamed.

It therefore remains to be seen whether the intention to rename the Birkin crocodile-skin handbag can materialize to the extent that the surname of the singer, registered as a trademark, could be considered as part of the assets of the Hermès company. The outcome of this case shall enlighten us.

Furthermore, on 11 September last, the saddler welcomed in a press release that Jane Birkin seemed to be satisfied by the measures adopted by the Hermès house following the controversy appeared this summer.

In today’s enhanced digital age, the establishment of a Digital Law was only a matter of time. Indeed, although France already possesses a Digital Law, this law dates back to 2004 and does not therefore take into account several innovative technologies such as social media, big data or smartphones.

It is against this background that the government announced, in early 2013, at a seminar on digital technology, its decision to submit a bill on digital technology during its parliamentary term.

To this end, the involvement of several special advisors as well as the French National Commission for Information Technology and Civil Liberties (Commission Nationale de l’Informatique et des Libertés – CNIL) was sought; they gave their views on the subject and also made proposals with regards to areas for improvement. The government even went further by setting up an online consultation platform, inviting everyone to give their opinion on the bill on digital technology.

The first contribution was made by the National Digital Council (Conseil National du Numérique – CNN), which presented, on June 18, 2014, its report entitled “Digitial Ambition” (“Ambition numérique”) to the Prime Minister, Manuel Valls.

The report outlines 70 proposals and the bill on digital technology is expected to incorporate many of them. Amongst these proposals, the creation of a net neutrality principle for ensuring equal access to all networks regardless of the operator is to be particularly noted. Net neutrality ensures equal treatment of all data flows on the Internet and thus serves to deter any kind of discrimination against the source, destination and content of the information transmitted.

It is worth noting here that the principle of “net neutrality” is not an innovation of the CNN. Quite the contrary, it is a principle which has been the subject of intense debate and lobbying in the United States before being adopted by the Federation Communications Commission (FCC) on February 26, 2015. This principle has also been a topic of discussion within the European Commission since 2011.

Another major point addressed by the CNN is the need for platform loyalty which would take the form of new obligations imposed on the major digital players like Google and Facebook.

In addition and as it is difficult to contemplate a revision of the digital law without taking into account the protection of personal data, the CNN also proposed to strengthen the data personal protection policy, particularly in order to establish a right to be digitally forgotten.

The CNIL consequently took over the reins by making public its reform proposals regarding the protection of personal data on January 13, 2015. The primary focus of these proposals is on reinforcing the effectiveness of people’s rights, aiming particularly to strengthen the right of access or the “right to know of one’s data”, which, although essential, has hardly been used so far. However, the CNIL also wishes to establish special provisions for minors who are often the targets of data theft due to their increased use of the Internet in general and of social networks in particular.

The CNIL also proposes to simplify the formalities and rules relating to companies, especially as regards the formalities relating to international data transfers, which are currently particularly bulky.

In light of all these proposals, the Prime Minister, Manuel Valls announced on June 18, 2015, during a presentation of the government’s “digital strategy’’ before an assembly of experts, his aim to make public the new bill in July 2015. During this presentation, the Prime Minister and Secretary of State for the Digital Economy, Axelle Lemaire, notably announced that the long-awaited principle of net neutrality would be included in the law and also that the Personal Data Act would be amended.

Other measures were revealed, particularly the will of the government to set up a grande école for digital technology, to control, through inspections by competition services, the terms of use of major sites operating in France as well as to create data of public interest. Furthermore, the Secretary of State for the Digital Economy revealed the future collaboration between the French government and the Council of Europe in order to draft a citizens’ rights and digital charter.

To conclude, the government’s digital strategy highlights awill to integrate digital technology in all aspects of French people’s life, including economic, tourism, educational and health sectors. The government thus wishes to “boost France five years ahead in time to make our country a digital republic” and at the same time to provide a model to the Council of Europe for the drafting of the European regulation for 2018 on the use of personal data.

The new gTLD <.paris> has been available to everyone since 2 December 2014, making it the first gTLD in France to be specifically dedicated to a city.

While it has become difficult to stand out on the web with now classic domain names such as <.fr> or <.com>, <.paris> represents a great opportunity for those who wish to gain more visibility.

The new gTLD <.paris> attaches to the domain name all that the city of Paris is known for: quality, elegance and innovation throughout the world.

Its many attractions have not gone unnoticed, as, by the end of 2014, more than 2,000 companies had already purchased a domain name ending with <.paris>, especially those in the luxury, gastronomy and innovation sectors. These figures rapidly increased and according to statistics from May 2015, there are now more than 18,000 domain names ending with <.paris>.

I. The distinctive features of <.paris>

The distinctive feature of <.paris> is that one has to belong to the community of Paris to qualify for registration. Indeed, under Article 2.1.1 of the registration policy of .paris, in order to register for or to renew a domain name ending with <.paris>, one should be a natural or legal person, established, in what could be considered as good faith, in the Paris region, at the time of, as well as after, registration. The applicant must be able to prove that it resides in the Paris region, or that it carries out professional, personal, commercial or cultural activities there, or it must be able to prove a direct or indirect link to the Paris region.

This requirement should not be taken lightly, because Article 9 of this registration policy specifies that “the registry operator has the right to reject, revoke or annul, at any time, any application for domain name, or any related registration, if it is found that the applicant has not satisfied the eligibility requirements in whole or in part”.

Interestingly, this requirement is exclusive to <.paris>. Indeed, applicants for the <.london> or <.tokyo> gTLDs, for example, do not have to prove belonging to the region.

II. Disputes surrounding .paris

Since <.paris> is still very new, there has been little in the way of case law, although there have been out-of-court decisions, and various disputes, including the cases of <match.paris>, <briochedoree.paris>, <laposte.paris> and <eleven.paris>.

Danone was able to obtain the suspension of the domain name <groupedanone.paris> on 5 June 2015, in a Uniform Rapid Suspension (URS) proceeding at the National Arbitration Forum (No 1618861). In this case, the fact that the domain name included the entire name of the company and the Danone trademark and associated it to the city of Paris, which is precisely where the company was founded, served to show that the applicant knew of the company and that it was acting in bad faith.

In another case, held this time before the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center, Société du Figaro obtained the transfer of the domain names <le-figaro.paris> and <lefigaro.paris> (D2015-0094). In this case, the applicant had tried to prove that the term ‘Figaro’ was a common word used to designate an opera character. But when linked to Paris, which is where the Figaro Company is headquartered, it became clear that the applicant had registered and used this domain name in bad faith. The fact that the ‘Figaro’ trademark was linked to Paris demonstrated the identity of the domain name with the trademark and therefore, the likelihood of confusion.

The same argument relating to the head office of the holder of the trademark was raised in URS proceedings on 31 March 2015 (FA1503001608773) concerning <lasamaritaine.paris>.

The <.paris> gTLD may, where there is a dispute, constitute an additional argument to demonstrate a domain name applicant’s bad faith where the holder of the trademark whose rights have been infringed is situated in Paris.

However, this is not always the case and experts do not yet agree on whether new gTLDs should be considered during the comparative examination of a domain name and a trademark in Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings.

When UDRP proceedings were instituted in 1999, TLDs were extremely limited and were restricted to the original five and 247 country-code TLDs. Experts have therefore rapidly established a principle according to which TLDs must not be taken into consideration while assessing the identity or the similarity between the domain name and the trademark in question. It was generally accepted that the TLD should not be taken into consideration when comparing the signs due to its exclusively technical nature and it being an inherent part of the domain name system.

However, this principle is now being questioned in the wake of the new gTLD programme. In the first UDRP proceeding following the introduction of the new gTLDs, experts had to determine whether the domain name <canyon.bike> was identical or similar to the ‘Canyon’ trademark, registered for bicycles (D2014-0206). On this occasion, the experts pondered whether, in the context of new gTLDs, it is correct to take into consideration the TLD when assessing the identity or the similarity of the name with the trademark, although, in this case, they did not directly address this question, given that the domain name consisted of the ‘Canyon’ trademark in full in such a way that the identity was clear.

In another case, this time a dispute concerning the domain names <statoil.holdings> and <statoil.venture> (D2014-0369), the experts examined both cases: namely, the comparison of the signs without considering the gTLDs, and the comparisons with the gTLDs. However, the experts again declined to comment on whether it was relevant to consider them since in both cases, the signs were similar in such a way that the requirement in Paragraph 4 (a)(i) of the UDRP principles was fulfilled.

In a case concerning the domain name <zionsbank.holdings> (D2014-0269), the experts examined at length the relevance of taking new gTLDs into account. In that case, however, it was considered that the term “holdings” at the end of the domain name at dispute made it impossible to establish that the domain name was identical or similar to the ‘Zions Bank’ trademark. Nevertheless, they specified that, depending on the case at hand, the examination of the gTLD could impact on the analysis of the requirement set out in 4(a)(i).

Several URS proceedings relating to new gTLDs have revealed the experts’ willingness to take into account the new gTLD in examining the likelihood of confusion between the domain name in dispute and the trademark.

In this light, a 1 April 2014 case of 1 April 2014 regarding the registration of the domain name dior.clothing (FA140201546033) is noteworthy. In this case, the experts took into consideration the fact that the disputed domain name was registered in a gTLD (.clothing) which explicitly refers to the business that the complainant is active in.

Similarly, an 11 June 2014 case, where the issue was the registration of the domain name parissaint-germain.club (FA1406001563159), the experts said: “The generic word ‘club’ which serves as a gTLD does not distinguish the domain name. Furthermore, it rather increases risk of confusion since the complainant’s main activity is maintaining a football club.”

To conclude, it is impossible for the time being to state that new gTLDs should be taken into consideration during the examination of the identical or similar nature of domain names in relation to trademarks during UDRP or URS proceedings. Indeed, the experts seem reluctant to enunciate such a principle and have until now, especially in UDRP proceedings, not been clear on the issue of whether and to what extent these gTLDs should be taken into consideration. This is not surprising since the new gTLDs, publicly accessible since 2012, represent a significant evolution from the classic TLDs around which case law has been constructed. The situation is now expected to evolve.

Owner of an unregistered trademark cannot sue under the US Lanham Act unless he or she can prove its use on the US territory, ruled the US District Court of the Eastern District of Virginia on February 6, 2015, in a case opposing the companies Bayer and Belmora.

This decision overruled the first judgment held by the TTAB in 2009 (Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623) which ordered Belmora’s trademark cancellation.

Bayer has sold an analgesic product in Mexico under the FLANAX registered trademark.  However, Bayer has never marketed or sold a product under the FLANAX mark in the United States nor does he own a U.S. registration for the FLANAX mark.  In parallel, Belmora has started selling in 2004 an analgesic tablet in the U.S. under the name FLANAX, which it registered in 2005.

Bayer eventually took legal action against Belmora before the TTAB based on Section 14(3) of US Lanham Act prohibiting the use of a trademark as to “misrepresent the source of the goods or services on or in connection with which the mark is used”.

Bayer’s claim was relying on Section 14(3) of the Act, and also Section 43(a) which allows a trademark owner to take civil action for infringement of an unregistered trademark (S. 43(a)(1)(A)) and false advertising (S. 43(a)(1)(B)).
The TTAB held that Bayer has legitimate interest in protecting its Mexican mark and it had shown that Belmora misused the FLANAX mark in a manner that traded off the reputation and goodwill of Bayer’s mark.

Belmora appealed and the case was eventually brought to the District Court, of the Eastern District of Virginia which pointed forward three major reasons why Bayer did not have a legal standing under Lanham Act.

First, with regards to Section 43(a)(1)(A) of Lanham Act, i.e. infringement of an unregistered trademark, the Court ruled that Bayer did not have any cause of action as its interest did not fall within the “zone of interests” Congress intended to protect, and that its trademark needed to be used in the US commerce in order to establish standing to sue for confusion.

Furthermore, the court reasoned that Bayer failed proving that he suffered an economic injury to its sales or reputation as a result of Belmora’s use of the FLANAX trademark. In particular, the court held that Bayer only plead harms that amounted to “mere confusion,” which “by itself does not constitute reputational injury.”

The court concluded that the plaintiff lacks standing to sue under to Section 14(3) and thus under Section 43(a)(1)(B) of Lanham Act (false advertising).
Finally, the court affirmed the TTAB’s earlier dismissal of Bayer’s claim under Article 6 bis of the Paris Convention protecting “famous” and “well-known” unregistered trademarks, as it is not self-executing and Sections 44(b) and (h) of the Lanham Act do not render Article 6bis of the Paris Convention a ground for contesting trademark registration.
Therefore, this case clearly reaffirms that protection of an unregistered trademark on the US territory under the Lanham Act is recognized under limited circumstances; and clearly banned any possible cause of action under Article 6 bis of the Paris Convention.

The blue sky of Skype seems to be overcast by a few clouds! Skype filed the semi-figurative and word community trademarks of Skype in classes 9 and 42. The company British Sky Broadcasting Group filed a notice of opposition to that registration by claiming a likelihood of confusion with its earlier community trademark SKY for similar goods and services.

Semi-figurative mark and word mark requested:

SKYPE

Earlier trademark cited:  SKY

The Community Trademark Office (OHIM) agreed to the opposition and Skype appealed to the General Court of the European Union (EGC). But the EGC confirmed the risk of confusion between the trademarks.

The EGC considers that there exists an undeniable visual, phonetic and conceptual similarity between the trademarks. The first syllable “Sky” is the dominant part of the word phonetically and visually and it is similar to the earlier trademark SKY. Conceptually, “Skype” reminds of “Sky” and hence the sky. Furthermore, the cloud drawn around the word reinforces the intellectual similarity since the cloud reminds of the sky.

However, Skype raised a good point derived from the highly distinctive characteristic of the trademark because of its reputation. It is true that the Court of Justice of the European Union (CJEU) has repeatedly deemed that the distinctive characteristic of a trademark can result from its reputation. Hence, for example, in a ruling of 11 November 1997, the CJEU considered in a case, Sabel, that “the earlier trademark had a particular distinctive characteristic, either intrinsically, or because of the reputation it has before the public”. And yet, the EGC decided that the risk of confusion is not discarded because of the reputation of the trademark on the grounds that “assuming that the term “skype” would indeed acquire its independent meaning to identify the services designated by the trademark applied, it would then be a generic term and, consequently, detailed, for these kinds of services”. Admittedly, “skype” is sometimes used as a verb to indicate a mode of audio-visual communication. Hence, many of us have heard “We shall skype tomorrow”. Skype appears to be a victim of its own success. However, shouldn’t we demonstrate its use for any kind of audio-visual communication and not just those through “skype” to consider this term as generic?

Finally, Skype raised the peaceful coexistence of these designations in the United Kingdom as its last argument. But the EGC considered that this coexistence did not last long enough to show the absence of any risk of confusion between the trademarks.
This ruling seems harsh towards Skype, which made numerous investments for its trademark to become renowned and is ultimately unable to safeguard the outcome of its labours. The future shall tell us whether Skype shall choose to appeal against the ruling before the CJEU and what would be its stance on the matter.

Decree No. 2015-595 of 2 June2015, on the application of Article 73 of the Loi Hamon, has broadened the scope of Geographical Indications (GIs) to include industrial and artisanal products. Limoges porcelain, Calais lace, Lyon silk industry or Marseille soap for example may now enjoy this protection.

The aim of adopting these new GIs is not only to promote traditional products and French know-how but also to provide specific protection against parasitic passing-off of the image or reputation of a geographical region on account of its know-how.

These provisions were, in fact, enacted in the midst of the legal dispute over the name ‘Laguiole’. The village of Laguiole is well-known for the manufacturing of knives. However, the trademark was filed by an entrepreneur who sells knives imported from Asia. Pursuant to Article L 711-1 a) of the Intellectual Property Code (IPC), it is possible to file a geographical indication as trademark. However, Article L 711-4-h) of the IPC provides that a trademark shall not infringe the name, image or reputation of a local authority. The village of Laguiole initiated legal proceedings on this basis but its claims were unfortunately dismissed on the ground that it failed to demonstrate how the registration of such trademark might create a risk of confusion with its own attributes or violate public interests or cause prejudice to its inhabitants. Such a situation should not happen anymore, since following the creation of these GIs protecting industrial and artisanal products, the know-how of a geographical region in the manufacturing of artisanal and industrial products is now protected.

As for all geographical indications, one of the prerequisites to the protection of these GIs protecting industrial and artisanal products is the certification of the specifications. The National Institute of Intellectual Property (INPI) is the competent authority with regard to the certification procedure. Following the decision on the certification application, it will be published in the Bulletin of Intellectual Property. The newly created GI for industrial and artisanal products will then constitute a prior right to challenge the registration of a trademark. Any infringement of a GI protecting industrial and artisanal products is a counterfeit.

The newly created GIs for industrial and artisanal products enjoy an enhanced protection since this decree has also broadened the procedure for opposing the registration of a trademark bearing GIs. Since the 4th of June, it is possible to challenge on the ground of a previously registered or well-known trademark but also on the ground of the name of a local authority, of an appellation of origin, of an existing GI or of a new GI protecting industrial and artisanal products. The expansion of the scope of the opposition procedure allows the protection of these prior rights while avoiding the costs related to a lawsuit.

In light of these new provisions, it is important to incorporate in prior searches for the registration of a trademark these newly created GIs protecting industrial and artisanal products in order to avoid an opposition procedure or a subsequent lawsuit.

Does the URS procedure benefit trademark owners? The situation two years later after its implementation

Since its creation and according to the report on the protection mechanisms of ICANN, updated in September 2015, over 300 URS proceedings have already been initiated. Most of the complaints are filed during the first months when the domain name is created. 68% of the decisions rendered were due to a lack of response from the domain name holder after formal notice was served. 94% of the decisions rendered have resulted in the suspension of the domain names involved. The speediness and reduced cost boasted by the URS procedure thus appears to be appealing.

However, the choice between URS and UDRP should not be merely limited to an assessment of these elements. Everything will depend on the facts and circumstances of each case and on the results that trademark holders wish to obtain. Is the domain name genuinely of value to them? What are the commercial stakes? Do they wish to merely block the domain name? To cancel it? To transfer it? If trademark owners opt for the URS procedure, they can only secure a temporary suspension of the domain name. But, if it turns out later that the domain name was of value to them, they will have to wait until it falls back into the public domain to be able to register it, all the while hoping that a third party does not do so before them. And while it is still possible to backorder (offer proposed by some registrars to register a domain name as soon as it falls back in the public domain), the results are not guaranteed and therefore, the URS procedure is no substitute for the UDRP procedure which allows domain names to be transferred. Therefore, if trademark owners wish to use the domain name, they will have to resort to the UDRP procedure. Other factors are also to be taken into account.

Does the trademark owner meet all of the requirements of the URS system? It is interesting, in choosing between the URS and UDRP procedures, to analyze the reasons behind the dismissal of some complaints. Thus, in a decision dated April 10, 2014, the NAF dismissed the complainant’s claim on the ground that the latter was not able to prove ownership of the trademarks which it claimed to own. Indeed, the expert held that the company which was the trademark holder was not the applicant company and that no link was established between the two.[i] Similarly, a complaint was dismissed due to the inability of the complainant to demonstrate the absence of legitimate interest and the bad faith of the domain name holder. In that case, it was not established that the domain name used was associated with the trademark since the website page did not include any reference to the said trademark.[ii]

It is also to be noted that the URS procedure offers no possibility of correcting irregularities. In such cases, the complaint is simply dismissed. Complainants must, therefore, be particularly attentive to details when drafting their complaints. Thus, in a case dated April 12, 2014, Wolfram Research, Inc. invoked the rights held by Wolfram Group, LLC against the domain name < wolfram.ceo>. The complaint was dismissed due to the fact that no link was established between the two companies.[iii] Three days later, Wolfram Group, LLC rectified its mistake by filing a new URS complaint, leading to the suspension of the domain name at stake.[iv]

The choice of the URS system must really be a strategical one. Under this procedure, the infringement must be manifest and the evidence of that infringement must be clear and convincing. For example, a URS proceeding initiated in June 2014 led to the domain name <stuartweitzman.email> being blocked.[v] Yet, on appeal, the experts considered that the condition which was previously satisfied and according to which the domain name holder should not have had any interest in the domain name, was no longer fulfilled following the filing of additional evidence. There is no safe bet as concerns the outcome of a URS proceeding. Indeed, the holder of the domain name <stuartweitzman.email> had also registered the domain name <lufthansa.email>. Despite the similitude in the facts, the examiners upheld, on appeal, the suspension of the domain name.[vi] It is equally very interesting to note that, in the case of the domain name <stuartweitzman.email>, following the URS proceedings which was lost on appeal, UDRP proceedings initiated in November 2014 led to the transfer of the domain name.[vii] The choice of out-of-court proceedings is therefore not an obvious one and the implementation of a strategy is essential to ensure an effective defense of trademarks.

To make it more difficult to choose between the URS and the UDRP procedures, trademark holders must also take into consideration the domain name itself. The URS procedure will constitute a real challenge for generic or descriptive domain names. It will be more complicated for applicants to demonstrate a lack of legitimate interest on the part of defendants, the more so since complaints will be limited to 500 words in terms of arguments. In contrast, it will be easier for defendants to prove this legitimate interest by the very nature of the domain name. In addition, trademark owners will have to assess whether the risk of re-registration of the domain name by third parties is low or high. In the event of a URS procedure, the blocked domain will fall back into the public domain. Depending on the domain name, trademark owners may thus potentially expose themselves to the risk of cybersquatting.

Due consideration must therefore be given to all of these elements and issues when deciding between the UDRP and URS procedures, the latter procedure producing positive effects only in very specific circumstances. Nevertheless, and irrespective of the outcome of an out-of-court URS or UDRP procedure, it will still be possible for parties to initiate proceedings before a national court.

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

[i] NAF, April 10, 2014, case n° 1550933, Aeropostale procurement Company, Inc c/ Michael Kinsey et a.

[ii] NAF, March 20, 2014, case n° 1545807, Virgin Entreprises Limited c/ Lawrence Fain

[iii] NAF, April 12, 2014, case n° 1553139, Wolfram Research, Inc. v. Andrew Davis et al.

[iv] NAF, April 30, 2014, case n° 1554143, Wolfram Group LLC v. Andrew Davis et al.

[v] NAF, June 24, 2014, case n° 1554808, Stuart Weitzman IP, LLC v. yoyo.email et al.

[vi] NAF, April 28, 2014, case n° 1552833, Deutsche Lufthansa AG v. yoyo.email et al

[vii] WIPO, November 6, 2014, case n° D2014-1537, Stuart Weitzman IP, LLC v. Giovanni Laporta , Yoyo.Email Ltd

The New Trademark Act 2013 and the Trademark Rules 2015 have since September 1, 2015, effected sweeping changes to the local trademark regime of the British Virgin Islands (BVI).

Already in 2004, the subject had stirred up Dreyfus’s interest. Indeed, previous articles have mentioned the adoption of those two laws which aim to update the UK law that was in force since the 19^th century. Two years later, those laws are finally published.

Thanks to this amendment, the BVI are now moving away from the UK system which required the prior registration of a UK trademark to be able to register a trademark in the BVI.

The BVI are thus finally building an autonomous and independent system.

This new law is applicable to all trademarks registered or renewed as from September 1, 2015, while trademarks registered or filed before this date will continue to be governed by the former law, meaning the UK law.

What does this change in the law mean for the registration of trademarks in the BVI?

• First and foremost, this new system means that it will no longer be possible to extend the protection of trademarks registered in the UK to the BVI. For a trademark to be registered in the BVI, the trademark would need to be filed locally at the Registry of Corporate Affairs.

• Equally important will be the fact that from now on it will be possible to register service marks. Indeed, under the former UK law, trademarks could only be registered for goods; which were moreover classified according to a somewhat obsolete system.

• The system will now be based on the latest version of the Nice Classification (45 classes of goods and services).

• It will also be possible to make a foreign priority application for a trademark in the BVI in accordance with the Paris Convention or the WTO agreement (TRIPS agreements).

• The registered trademark will be protected for a period of 10 years, renewable every 10 years as from the registration date with a grace period of 6 months.

• It will be possible to oppose the registration of a trademark in the BVI within the three months following the publication of the application – which will be available on the website of the local Gazette.

The only question that remains to be answered in the wake of this new amendment relates to the trademark registration fees in the BVI. Relatively cheaper under the former law, like the designation of  French Polynesia for trademarks registered in France, trademark holders fear a rise in the registration fees following the coming into force of this new law.

Watch this space for further developments…And do not hesitate to contact us for any question relating to the protection and defence of trademarks worldwide.