Dreyfus

The real world and the Internet have long been segregated. Today however, these two worlds tend to overlap and as paradoxical as this may sound, registering your trademark can prove to be quite a useful protection on the Internet.

The reasons for the importance of trademark registration are increasing with the rise of cybersquatting. This has led to registered trademark owners enjoying new benefits in relation to the protection of their rights over the Internet.

Firstly, it has become increasingly important to protect trademarks on social networking sites. Since 2009, Facebook allows its members to create user names which are easily accessible and which can include trademarks. Before 2009, Facebook allowed a short period of time for registered trademark owners to identify their trademarks and to prevent their use by other members.

Most social media platforms secure usernames on a “first come, first served” basis. As far as rights enforcement is concerned, it is easier to be the owner of a registered trademark to be able to notify a breach of trademarks rights in accordance with the platforms’ terms of use.

Secondly, all trademarks on the Internet must be protected on search engines and particularly in sponsored links. Through its AdWords system, Google allows advertisers to select keywords so that their advertisements become visible to web surfers when they enter these words in the search engine. Conflicts arise when advertisers buy keywords containing trademarks whilst having no rights to them.

Holding trademark rights thus becomes an important factor in countering unfair competition practices.

Thirdly, trademark owners must also pay attention to the increasing number of new domain name extensions gTLDs. To date, more than 300 new gTLDs have been delegated, and hundreds more are soon to follow. In view of the potential conflicts with protected trademarks, a new mechanism has been made available to trademark owners: the Trademark Clearinghouse. It is a centralized database for all registered trademarks. Once the trademark is registered there, trademark owners can participate in the Sunrise Periods for newly-launched gTLDs and are informed when third parties register domain names that are identical or similar to their trademark. The person filing for the domain name in question is also informed that he may be infringing on the rights of a trademark owner.

Finally, if a domain name identical to or containing a trademark is registered, specific administrative procedures such as the Uniform Rapid Suspension (URS) and the Uniform Domain Resolution Policy (UDRP) can assist trademark owners in taking action against cybersquatters. These specific procedures are only accessible to trademark owners.

 

Thus, being a trademark owner is now almost a requirement to protect and defend your rights on the Internet, even if your company does not have a strong Internet presence.

Dreyfus is specialized in the protection of rights over the Internet. Please do not hesitate to contact us for any information.

On March 21, 2014, the Crimea was annexed by Russia. Formerly a part of Ukraine, this region now has a dual legal status, particularly as concerns intellectual property rights.

On 22 July 2014, the Ukrainian government met to discuss intellectual property protection in the Crimea. This region was then conferred the legal status of an occupied territory and will remain subject to the Ukrainian regime in intellectual property matters.

On the same date, Russian President Vladimir Putin signed a new law to regulate IP protection in the Crimea. The new law provides for the protection of inventions, utility models, industrial designs, service marks and appellations of origin originally registered in Ukraine by persons who are permanent residents of the Crimea, provided that these rights are revalidated in Russia prior to January 1, 2015. Trademarks rights which are already protected in Russia will be automatically protected in the Crimea. There will be no requirement to register anew.

To ensure a blanket protection of trademarks in the Crimea, it is henceforth imperative to hold a registered trademark in both Ukraine and the Russian Federation.

While the free reproduction of works in the public domain is allowed, e.g. Auguste Rodin’s notable sculpture, The Thinker, it is imperative that any such reproduction respects the moral rights of the author. The latter is indeed “perpetual, inalienable and imprescriptible” in accordance with Article L. 121-1 of the French Code de la Propriété Intellectuelle.

One of the most seminal counterfeit lawsuits witnessed in the French legal landscape in the recent years is being tried in the Criminal court – Tribunal correctionnel de Paris. The action is based on counterfeiting and false advertising in relation to the sale of several copies of Rodin sculptures which have since lapsed into the public domain. The judgment has been reserved for November 20. This decision is particularly awaited in the art world as concerns moral rights. Moral rights may be transferred upon death to the heirs of the author or to a third party under the provisions of a will. August Rodin bequeathed all his works to the French government, more precisely to the Musée Rodin which is now holds the moral rights in these works by a  by decree of February 2, 1993. It is in this capacity that the Musée has exercised its rights and filed suit.

Gary Snell, an American businessman, bought plasters of Rodin’s sculptures from merchants, including the Thinker and The Age of Bronze in various dimensions. He then mass-produced a series of copies. According to a court-appointed expert, more than 1,700 copies were sold, thus warranting the qualification of “quasi-industrial” production by the Prosecutor.

In addition, the right to the author’s name was violated as some reproductions flaunted a Rodin signature and sometimes even the mark of the foundry used by Rodin, the Rudier foundry, in lieu of the mark of the Italian foundry which actually manufactured these copies. Yet, according to Article 8 of the Decree of March 3, 1981 on fraud prevention in art and collectibles, “any facsimile, molding, copy or other reproduction of a work of art or a collectible must be designated as such.” Therefore, while reproduction of Rodin’s works is not prohibited under French law, it is imperative that they are clearly identified as such, for the purchaser to take cognizance of the low value of the work – something that was lacking in the present case. Similarly, some of the reproductions were so poor that they were a violation of Rodin’s moral right in respect of his works, which all the more betrayed the artist’s vision. As a result, the Prosecutor argued that these reproductions should be treated as counterfeits under French law.

The argument put forward by the accused party, namely that French law does not apply because the reproductions, according to the latter’s Counsel “were never offered or sold in France,” is inadmissible since the it was established that the copies were advertised on an site that could be accessed from France at the time.

The Prosecutor requested the Court to levy a fine of 150,000 euros on Gruppo Mondiale, a company incorporated in Liechtenstein headed by Gary Snell, and accused of having displayed or sold, the counterfeit works of Rodin which it manufactured on a “quasi industrial” scale, by presenting them as originals. Moreover, the Prosecutor also prayed the Court for a suspended sentence of eight months and a 30,000 euro fine against the businessman. Stay tuned!

Advertising agencies arguably care more about their image than any other business, particularly in terms of their logo. In its judgment of 30 September 2014, the Court of appeal of Paris ruled on the likelihood of confusion between two trademarks belonging respectively to Graphèmes and Graphéine, two companies operating in the field of graphic design.

The trademarks were inclusive of a logo namely:

Earlier trademark: 

Contested trademark

As graphics professionals tend to focus on the presentation of trademarks, the Court of appeal held that the two disputed trademarks were indeed distinct. Indeed, while the Graphème company argued that the mark “Graphéine” was an imitation of its earlier mark, the Court held that “the logos used by Graphéine are visually very different from that adopted by Graphèmes” and that “the mere reproduction of the colour does not generate the likelihood of confusion in the case.” Likewise, when taken as a whole, and given the distinctive visual and phonetic elements, the likelihood of confusion could not be proven with regard to the logo of “Graphéine.”

In their assessment of the likelihood of confusion, the judges took into account the technical details and various references to the graphic design industry. The services were intended for an informed public, namely design professionals. Usually judges must make a general assessment by examining the evidence as a whole and determine the “overall impression” made upon average consumers. This method of assessment is derived from several judgments of the Court of Justice of the European Union[1].

Yet in this case, the Court of appeal focused primarily on design professionals, which could perhaps be challenged. In their address to graphics professionals concerned with the visual rendering of their logos​, the judges exhaustively analyzed the particulars of both trademarks including fonts and differences of pronunciation. For example, the court phonetically scrutinized the two terms to reveal their differences, so that, ultimately, “strong differences in pronunciation” are not necessarily discernible by a layman, as the court itself noted.  Indeed, if any individual was to see the logos at issue from afar, he could easily be confused (same size, same length, same prefix and a similar suffix). Furthermore, with regard to colors, tonal differences are not as evocative they appear to be. One wonders in this respect whether the decision would not have been different had the court focused on consumers, to whom the two terms may look similar.

Nevertheless, the assessment of the likelihood of confusion while keeping in view the professionalism of the stakeholders involved in the trial is not a trivial one since both advertising agencies cater mainly to other professionals or clients. Therefore, in light of the case law, this decision, although it is questionable in espousing a strict assessment of the likelihood of confusion in the design sphere, makes a lot of sense.

 

[1] Sabel/Puma CJCE, 11 November 1997, aff. C-251/95, Canon CJCE, 29 September 1998, aff. C-39/97, Llyod CJCE, 22 June 1999, aff. C-342/97.

In this dynamic business world, trademark registration is an imperative. And yet, it is not enough merely to own a trademark. Trademarks need to be used to avoid any loss of rights for non-use. The issue of genuine use of the trademark in the business sphere arose before the English Court and the Court of Justice of the European Union (CJEU) in a long running dispute between Specsavers and Asda for the past five years. Specsavers registered the two logos shown below, but developed its marketing strategy by using the Shaded logo.

In October 2009, Asda launched an advertising campaign for optical products and targeted the Specsavers group by using similar logos to those of the latter. Specsavers filed an action against Asda for infringement of both the word trademark and figurative trademarks before the High Court of Justice of England and Wales. The High Court of Justice rejected the infringement argument, but held that the trademark associated with the wordless logo had lapsed due to lack of use. Specsavers appealed, upon which the Court of Appeal asked the CJUE for a preliminary ruling on the following question (Case C- 252/12): “Is the condition of genuine use of a Community word trademark satisfied when a graphic device Community trademark is used only in conjunction with a Community word trademark which is superimposed over it?” The ECJ said that the requirement of “genuine use” can be satisfied even if the Community figurative trademark is used in conjunction with a Community word trademark which is superimposed over it. However, the distinctive character of the said trademark as registered should not be altered. The matter was referred back to the English Court of Appeal. Applying the guidance provided by the CJEU, the Court considered whether the wordless trademark used without the logo being a composite part of the shaded trademark is perceived by average consumers as indicating the origin of products and services. First of all, the court was not convinced that the use of the shaded trademark with the term “Specsavers” affixed to it is a strong argument showing the genuine use of the wordless trademark. However, the assessment must be undertaken in relation to all uses made of the shaded logo and the perception of average consumers. The Appeal judge noted that the shaded trademark had been used extensively and that none of the logos used by competitors resembled the Specsavers’ logos. It was clear from the evidence adduced that Asda knew of the association made by the average consumer between the superimposed ovals and Specsavers. Moreover, it was shown that, from a distance, consumers identified the two ovals as belonging to Specsavers. This satisfied the Court that the wordless logo was genuinely used, which was registered without any colourlimitation. As a result, Specsavers kept its valid figurative trademark. It is to be noted however that the English Court sought to curtail the potential ramifications of this decision and pointed out that each case would be decided on its own facts. This precedent is not devoid of risks, since it opens the floodgates to applications for the registration of standard shapes similar to registered trademarks. To be followed.

The Governmental Advisory Committee (GAC), which represents states at ICANN, primarily advises on public health issues and the interplay between ICANN policies and national or international law standards. At the draw of each ICANN meet, GAC issues a Communiqué summarizing the latest developments and requests. The GAC Communiqué of October 16, 2014 mainly addresses issues related to the transition of the US Stewardship in overseeing the functions of the Internet Assigned Numbers Authority (IANA) and recommendations concerning safeguards applicable to new gTLDs.

The first recommendation submitted to ICANN concerns Internet governance and considers how the IANA stewardship transition should be structured. The GAC is also committed to work on ICANN’s governance and accountability. Thus, this process should be guided by consensus based decisions taking into account the public interest. The goal is to cater for a more general interest rather than that of the communities or groups immediately affected by Internet governance. This process should include all stakeholders in order to be legitimate for all everyone.

The second part of the recommendations reflects the concerns of GAC in relation to the manner in which the New gTLD Program Committee (NGPC) managed the previous recommendations made in the Beijing, Singapore and London Communiqués as regards consumer protection, sensitive strings and non-discriminatory registration policies. These recommendations are set out extensively in the Beijing Communiqué where the safeguards are classified into two categories.

Category 1 sensitive strings raises concerns as regards consumer protection and regulated markets. The GAC advises that registries should include, in their terms of use, the obligation on registrants to comply with all applicable laws and to assure that sensitive data is stored securely. It also establishes a non-exhaustive list of extensions to which these safeguards should be applied, such as .kids, .university, .care.

Category 2 comprises generic extensions which are for restricted use. With reference to registration policies, GAC recommends that registration limits be proportionate to the types of risks associated with TLD extensions. These include extensions such as .tires or .hotel.

GAC insists that ICANN should focus on implementing WHOIS related safeguards and transparency measures and on complementing the existing assessment on this issue.

The GAC also recommends that an interim mechanism be put in place to respond to security issues. The PICDRP (Public Interest Commitment Dispute Resolution Process) should be amended to address urgent cases more expeditiously. The GAC deems that the NGPC should verify the credentials of registrants in an effort to supplement the safeguards for Category 1 Strings.

For extensions falling under Category 2 safeguards, the GAC recommendation emphasizes the need to ensure that nondiscriminatory registration policies are enforced for new gTLDs.

 

To be followed…

The greatly anticipated launching phase of TLD .paris is ongoing since September the 9^thand will end on November the 11^th at 1pm (UTC). The activation of the names and general availability will occur starting from December the 2^nd at 1pm (UTC).

The launch of .paris will proceed during a period of 63 days for which five categories of applications will be accepted, following the present order of priority:

 

• category 1 : rights holders of TMCH-registered trademarks ;
• category 2 : public authorities from the Greater Parisian ;
• category 3 : rights holders of local French trademarks or geographical indication holders ;
• category 4 : other rights holders ;
• category 5 : landrush period.

Applicants must satisfy the following criteria of eligibility established by the .paris:

• Residing in the Parisian region ;
• To pursue professional, personal, commercial or cultural activities in the Greater area of Paris ;
• Justify of any other affiliation be it direct or indirect with the Greater area of Paris.

The applicants under all five categories will be simultaneously accepted and allocated at the end of the Launch Phase by order of priority of each category.


Category 1 : trademarks registered in the TMCH and protected in France

The Sunrise period is open for trademarks validated by the TMCH system. Local Trademark holders, international trade marks registered in France or community trademarks that are validated by the said system will have priority over non-local trademarks.
In the assumption of multiple eligible applications for the same domain name, the following criteria of attribution will be applied:

1. The application corresponding to a local trademark (operating in France) will have priority over non-local trademarks.
2. For trademarks sharing the same category, the oldest registered trademark will succeed.
3. If two trademarks from the same category were registered on the same day, the attribution will be resolved by auction.

Category 2 : public authorities from the Parisian region

This category allows public authorities from the Parisian region to reserve three types of names:

• Their own names, including any variation or alias generally used to describe them;
• The names of public services they are responsible for ;
• Geographical names that can be related to any location of the Parisian region, its monuments, symbols, noticeable places or any locally-relevant or iconic name for which they are the relevant authority. This condition is also applied to variations and abbreviations of such names.

This category is still awaiting a validation from Icann.


Category 3 : trademarks protected in France not validated in the TMCH

Are entitled to this category:

• Local trademark holders that are not validated in the TMCH, which includes French trademarks, community trademarks and international trademarks registered in France ;
• geographical indications recognized by International treaties, EU regulations or French legislation.

In the assumption of multiple eligible applications for the same domain name, the applicant holding the oldest trademark registration will succeed.


Category 4 : legal entities established in the Parisian Region

Are entitled to this category:

• corporate names, trade names including clear variations and/or abbreviations with a legal seat or place of business in the Greater area of Paris ;
• non-for-profit legal entities with a legal seat or place of business in the Greater area of Paris.

In the assumption of multiple applications for the same domain name in this category, attribution will be resolved by auction.


Category 5 : landrush period

This period enables all eligible applicants to apply for one or multiple domain names with the .paris extension that were not claimed by category members from 1 to 4. In the assumption of multiple applications for the same domain name in this category, attribution will be resolved by an auction.
 
It is advisable to make applications as soon as possible given the unusual nature of the Sunrise. Take this opportunity to register your personal domain name under the new .paris extension. Dreyfus can assist you in the reservation of domain names and in strategies regarding the new gTLDs.

On May 14, 2014, Japan announced the adoption of new amendments pertaining to trademark law. These provisions, which will be effective from April 1, 2015, will broaden the scope of trademark protection in Japan.

The following are covered by the latest amendment:

– trademarks consisting of sounds, colors, holograms, motion and position;

– regional collective trademarks.

 

1. The new trademarks

New distinctive signs can be protected namely sounds, colors, holograms, motion and position trademarks.

 

Sound marks, which can be composed of musical or non-musical sounds, were already acknowledged by the former Japanese law. The protection provided to sound trademarks will now be extended to very brief sound clips. Colours, even if primary or plain, may be protected given that they are sufficiently distinctive.

 

The protection of figurative marks will encompass moving objects and animated images. The Japanese Ministry of Economy, Trade and Industry (METI) will be responsible for defining the scope of the applicable provisions.

 

Touch, olfactory, taste or multimedia marks are not mentioned in the new provisions, but may be added later by METI without resorting to an amendment.

 

2. Regional collective trademarks

Japan has moved towards an increased protection of regional collective trademarks.

 

Composed of a regional appellation appended to the name of the product, such signs were rejected, due to their lack of distinctive character. Only some associations which meet specific criteria could overcome the ban.

 

As from April 2015, a greater number of associations and companies can file an application for a regional collective mark, such as chambers and societies of commerce and industry, or even some foreign legal entities.

 

This new amendment denotes Japan’s determination to align its legal regime with international trademark law.

In April 2013, the Government of the British Virgin Islands adopted a new law to revamp its trademark regime established in the 19th century.

A year later, the draft Trademark Rules has finally been released. The passage of the new Rules is expected later this year.

 

The draft Rules aims to implement the following changes:

– Electronic filing at the Registrar’s discretion will be possible;

– The Registrar will be required to provide a notice of irregularities for each application, should there be any.

The applicant will have to respond within 2 months of the receipt of the notice, failing which his application will be deemed abandoned;

 

– An immediate opposition period of three months. If the applicant does not respond, the application will be deemed canceled. The Registrar may require security for costs from the opponent, however this could be done only if the latter does not reside or carry on business in the British Virgin Islands;

– The Registrar may, at its sole discretion, reclassify the specification of a registered mark if it is not in accordance with the Nice Classification. The applicant must then submit any objections he may have within 2 months; after that period the Registrar will proceed with executing the changes it considers appropriate. Third parties may object to the filing of the trademark within one month in the case of a new application, or within 2 months if the trademark was already registered.

Once again, the Registrar may require security for costs if they do not reside or carry on business in the British Virgin Islands;

 

– The Registrar may order extensions of time up to two months for opposition procedures;

– The Registrar may restore non-renewed trademarks within 6 months of their expiration date upon payment of penalty fees;

– In addition to all that, the draft Rules provides instructions on the procedure for approval as a trademark agent.

These provisions are likely to be amended before the final Trade Mark Rules are passed in the British Virgin Islands.

“You may create what you wish as long as you respect the trends…”

It is expected from stylists to make dramatic changes to the fashion world through evermore extravagant clothing lines, yet it is common for their inspiration to be restrained by the commercial pressure of ongoing trends. And by doing so, this can blur the line between imitation and original creations. A conference will take place to discuss the legal issues regarding this paradox on Friday 7^th of November at the Library of the Paris Bar Association.

The conference will be chaired by the Joseph Ltd legal director Catherine Palmer, as well as many participants.

Most notably, Nicolas Martin Director of Intellectual Property Hermès, Fabrizio Jacobacci, Attorney-at-law and founder of the firm Jacobacci & Associati as well as an expert on issues relative to the protection of fashion products. But also Nathalie Dreyfus, Founder of the firm Dreyfus & Associés, and expert of the Arbitration and Mediation Centre , WIPO and the National Arbitration Forum (NAF), Alexander Rozycki, Barrister specializing intellectual property law, 4-5 Gray’s Inn Square and finally Annabelle Gauberti, Founder of Crefovi law firm, specializing in fashion and luxury law (Paris and London), and president of the International Association of Lawyers for Creative Industries (ialci).

It is safe to say that the future of fashion, on the intellectual property perspective but also its creativity may become a serious concern…