Dreyfus

Article 4 of the Convention of Paris dated March 20, 1883 provides that the right of priority allows the trademark owner of the first trademark application duly filed in one country to benefit from a period of six months to extend its protection in other countries by means of filing known as priority claim. It has been incorporated in Article L 712-12 of the French Intellectual Property Code.

Contrary to traditional beliefs, the function of the right of priority is not to retrospectively trace back the priority claim as from the date of the first filing of the application. Indeed, acts of use during the priority period by a third party cannot be qualified as an infringement. It is only from the date of the filling application of the priority claim that the trademark owner will be able to sue counterfeiting third parties for infringing his rights or for illegal exploitation its trademark. However, during the priority period, the trademark owner is protected against all applications or usages of similar or confusing signs. Intermediary rights claimed by third parties cannot be invoked during this period.

Nowadays, the right of priority encounters uncertainties concerning its applications and effects. The diverging solutions proposed by Offices and Courts evidence this fact. For economical and practical reasons, the right of priority is nonetheless relevant since it assures the protection the holder’s rights and balances between the interest of the applicant and third parties.

On February 13, 2014, the Court of Justice of the European Union issued a long-awaited judgement in the field of copyright law(C-466/12). The issue concerned whether the use of hyperlinks towards protected works available on another website constituted a copyright infringement of the content.

The Court has clearly ruled in favour of free movement of contents online. Indeed, it considered that a website owner can use hyperlinks to redirect protected works freely available on another website without authorisation of the copyright holders.

According to the Court, it is not an act of communication to the public or a disclosure of a work for the public to have access. The communication should indeed have been addressed to a new public; in other words, a public who was not targeted by the copyright holder upon the authorisation of initial communication. However, as per the assumption raised by the Court, different links may target same categories of users as those targeted by the copyright holder upon the authorisation of initial communication. There is no new public.

In the contrary, if the hyperlink found on a website enables users to divert the restrictions set up by the website to a protected content limiting access to restricted public, an action for infringement can be filed. In fact, it does not concern the targeted public upon the authorisation of the initial communication and consequently, copyright infringement must be claimed.

Following this judgement, one can speculate in which circumstances the responsibility of a hyperlink provider can be engaged when the hyperlink directs to contents infringing copyright.

Watch this space…

Outstanding client service has always been a core value at Dreyfus. We have followed closely technological developments and successfully adapted to offer ever more innovative services over the years.

The Dreyfus IPweb platform allows you to better manage your trademarks and domain names portfolios, to instruct and monitor the progress of your files on a daily basis. Dreyfus also offers cutting edge trademark and domain name monitoring services.

Did you know? New gTLDs are replacing the conventional .com and, .fr gTLDs. Register the names of your corporate executives with the .ceo gTLD before it is too late! You may also want to register domain names with gTLDs that have a strong and relevant marketing impact. A .club extension may thus help foster customer loyalty and integrate them around your trademark.

Current news: Over a third of all new gTLDs will be trademarks (e.g. .chanel). ICANN, the Internet regulatory authority, recently authorised these trademarks to sign the registry agreement. They will be exempt from the Sunrise period reserved specifically to trademarks. As a second round for applications for new gTLDs is planned, it is recommended to consider opportunities to hold a new TLD and to think about its positioning with regards to existing TLDs.

In this digital world, trademark infringements are increasing and ever shifting. To enable you to manage your digital presence, Dreyfus now offers trademark monitoring on various social networks and on mobile app stores.

Registering a trademark with the Trademark Clearinghouse (TMCH) enables you to be notified of any cybersquatting of your domain names and grants you a preferential right in the Sunrise period for the registration of your trademark with the new gTLDs. Dreyfus is accredited by TMCH and can assist you with the registration and monitoring of your trademarks within the new gTLDs.

Did you know? Over 1000 new gTLDs will soon be available which will revolutionise the Internet. It is thus essential to establish an appropriate defence strategy to ensure that you always remain visible online.

Current news: the NTIA, a U.S government agency which manages part of the Internet has announced its intention to transfer its powers to a new multi-stakeholders global governance scheme, which will be more open and transparent.

The foundations of the digital revolution have been in place for more than 20 years and the technological advances are well known. But they will have an economic and social impact for many years to come and will revolutionise our society In order to have a better understanding of tomorrow’s world and to better anticipate your needs, Dreyfus regularly attends ICANN meetings. Find news on all these current events on our blog or on Facebook or Twitter.

With a dynamic team of experienced and specialised lawyers, Dreyfus is known as one of the best law firms worldwide in the field of Intellectual Property. The firm was recently honoured by the World Trademark Review and The Legal 500 and it was designated as “Boutique IP Law Firm of the Year” by Legal Awards 2013.

Did you know? The UDRP procedure allows you to easily recover a domain name reproducing or imitating your trademark. Dreyfus specialises in these procedures and has successfully won several hundreds for its clients thanks to its high expertise in the matter.

The entire Dreyfus team and I would like to thank you for your continued interest in our services and for the trust that you place in us everyday for the protection and promotion of your innovations.

In the forthcoming years, Dreyfus will endeavour to assist you in all your projects with the same level of expertise, responsiveness and passion.

Nathalie Dreyfus

Still at the project stage, the Unified Patent Court must ultimately be exclusively competent in matters of European patent and unitary European patent. On that principle, an agreement has been reached between all the Member States of the European Union with the exception of Spain and Poland, but the consistency of the project still has to be improved. That is why the States work on that project which has been approved since more than 40 years. They are currently working on the 15th amendment.

This amendment is particularly at the heart of the debate as it would encourage patent trolls, these companies whose main or sole activity is to sue other companies whether there has been patent infringement or not in order to obtain significant damages. For instance, in 2006, the company RIM which manufactures Blackberry telephones has paid $ 612.5 million to the company NTP in order to terminate a dispute filed with the US Courts.

Two provisions of the actual version of the agreement establishing the Unified Patent Court are problematic in that regard.

First, article 42 gives to the Unified Patent Court a discretionary power particularly important pertaining to the degree of patent infringement, which the Patentee needs to prove in order to obtain provisional measures. Thus, the different divisions of the Unified Patent Court could apply these criteria with more or less negligence. Therefore, it would be easy for all patent owners, including the patent trolls, to obtain such provisional measures even if these measures are not objectively justified.

Then, article 33 establishes a mechanism for the separation of actions. Thus, if disputes relating to patent infringement are filed with the local divisions of the Unified Patent Court, the counterclaims for revocation of the patent may be handled by the local division or referred back to the central division of the Unified Patent Court at the Court’s discretion. In the latter case, the actions become independent and the local Judge will not have to stay proceedings. It will then be possible to obtain convictions on infringement of invalidated patents!

The giants of innovation such as Google or Apple call for a radical change in the agreement which “enables to concentrate on innovation rather than on litigation”.

It will be interesting to see whether the next review of the agreement will include measures to combat patent trolls because the European institutions have never envisaged a system that encourages abusive procedures in patent matters.

The 31st session of the WIPO Standing Committee on Trademarks, Industrial designs and Geographical Indications was held in Geneva between March, 17 and 21 2014. WIPO reviewed the Draft Recommendation proposal on the protection of country names, prepared by Jamaica delegate in December 2013.

This proposal has been ongoing pending since 2009, however to date the attempts to broaden the scope of article 6ter of the Paris Convention [for the Protection of Industrial Property] have proven unsuccessful. This article outlines the prohibitions regarding the use as a trademark of State emblems, official signs and hallmarks of intergovernmental organisations. The Standing Committee has noted that “the protection that currently exists internationally for country names is inconsistent internationally. Therefore there is need for internationally consistent protection for country names.”

Trademark protection may be useful for a country in international trade and in export markets for specific goods and services. This should protect States from misleading trademarks using the name of their country.

If the country name is used as a trademark, the government will become the brand owner and will be responsible for all that it entails (acquisition, maintenance and enforcement of rights). In practice, this also means that the government must have competent lawyers to manage the brand both domestically and abroad.

The US has submitted various questions to the Committee, including with respect to States that may decline to manage their trademark. South Africa also expressed its reservations with regards to the draft recommendation.

The Twitter account @JamesDean is at the heart of a legal battle which has just begun. Launched in 2009 by an anonymous fan, it gathers the biography, quotations and photos of the actor who deceased more than 60 years ago.

The licensing agency CMG Worldwide requested Twitter to take down the account in issue. To support its request, CMG argued that the account user is infringing the mark James Dean and that it violates its “right of publicity”. The licensing company obtained a categorical refusal from the social network. Indeed, Twitter considered that the simple use of a pseudonym does not constitute an infringement of trademark rights because messages sent by some 8,000 followers did not have any commercial character.

Consequently, the company GMG Worldwide went before the courts and has sued the social network for trademark infringement. The request relies on the ground that by allowing a user to infringe the mark JAMES DEAN, Twitter is itself a counterfeiter.

However, it shall be an uphill battle for CMG. The protection granted to trademarks does not extend to all use of names. Furthermore, the general conditions of use are clear. Twitter does not prevent the creation of an account under a fake name be it the name of a celebrity. The only limits to this freedom are infringement to public order and to intellectual property rights.