The concept of trade secrets is far from being uniform in different EU countries. Some countries have never penalised trade secrets infringement. Consequently, offences increase constantly and nearly one in five companies have suffered from at least one infringement to secrets in the last ten years. Therefore, in the framework of UE 2020 strategy under the “Innovation Union”, the European Commission has proposed a Directive to harmonise the definition and the sanctions of trade secret misappropriation.
The protection of trade secrets is particularly significant since it impacts on small and medium sized enterprises. Indeed, larger companies do not have difficulties in defending their innovations because they possess tools like industrial property rights (patents, trademarks…). However, their costs are often excessive for SME who attempt to protect their secrets more traditionally.
The European Directive aims at offering a more adequate protection and effective remedies for European enterprises. The displayed objective is to facilitate common and collaborative projects within the Union in order to allow the new knowledge. This directive will reinforce the trust of enterprises, inventors and innovation researchers.
The challenge will be found within the means to harmonise with the past; the measures must adhere to a modern approach and propose innovative solutions. The response to dishonest practices concerning trade secrets within the Union must be strict and dissuasive.
The protection of trade secrets seems to be a relevant leverage of growth limiting the danger for small enterprises which will no more fear investing in innovative researches.
By an application of Swiss law, a WIPO expert has made an innovative decision by requiring the transfer of a domain name pointing to an inactive website (DCH2012-0021 Cash Converters Pty Ltd. against Mr. Botana Adolfo Miguel Rojo).
In the Expert’s opinion, the fact that the website attached to the litigious domain name has not yet been activated does not diminish the risk of confusion. Its registration could indeed presuppose imminent activation, which could lead to a preventive action for counterfeiting in accordance with the article 55. litt (a) of the Swiss Trademark Act.
Moreover, even if he does not apply these dispositions, the Expert notes that the Swiss Unfair Competition Act could be applicable to this kind of situation. Indeed, article 2 of this law asserts that is “unfair and unlawful to allow any conduct or any commercial practice which is misleading or which infringes the rules of the principles of good faith and affects relations between competitors or between suppliers and customers“.
However, it seems that there may be a difference between inactive domain names which are identical to a registered trademark and those which are only similar. While the first category can effectively obstruct the commercial development of a competitor by preventing the latter from offering goods and services via a domain name which reflects its own trademark, this is not the case in the second category.
In France, the Courts have made a very different ruling. Indeed, the Supreme Court has stated on numerous occasions since the Locatour decision (Commercial Division, December 13, 2005) that a domain name must be active before infringement can be recognized, unless in the case of a well-known brand (TGI Paris 3rd, 3rd Sec, October 29, 2010, Free c / Osmozis).
As for the UDRP process is concerned, the Experts are divided. If some adamantly refuse to consider that an inactive domain name may infringe a trademark right, others consider that it is appropriate to take all the elements into account to assess possible infringement, including public awareness of the brand.
This week, the Sunrise periods for the new gTLDs .DOMAINS, .LIMO and .CAB will end, but other strings are coming such as the .BLUE, the .WED, or the .移动 which means “mobile” in Chinese.
The Indonesian registry has recently made second-level domain names available. A Sunrise period for Indonesian trademark owners is already opened since January 20th and will run until April 17th, 2014. It will be followed by a Grandfather period where third-level domain names owners (.CO.ID or .WEB.ID) will be able to claim their corresponding .ID names.
We remind you that a Trademark registered in the Trademark Clearinghouse along with the corresponding SMD file is required to register a domain name during a Sunrise period.
On November 26, 2013, the town of Paris has launched a pioneer program. It revealed the first 100 domain names bearing the extension .PARIS on February 21, 2014.
The candidates for the new extension have been chosen according to their editorial project. Businesses, associations or even bloggers could submit their applications. The Paris City Hall has announced its intention to acquire a strong digital identity and to make the town become a digital territory conducive to innovation.
Among the lucky winners, the town has selected the RATP which has acquired the domain name <metro.paris> and which intends to display a “revolutionary” map of Paris transports on its website. The inevitable <toureiffel.paris>, the Grand Palais or the Fauchon grocery will also aim at improving the virtual image of the town.
“This extension reflects innovation in Paris, and has a symbolic value, where we are opening a new cycle”, said Jean-Louis Missika, deputy mayor of Paris in charge of innovation who chaired the Jury responsible for the screening of the 310 applications. And, during his visit to Paris, the chairman of ICANN, Fadi Chehadé, added: «I am pleased to see the energy deployed by the town of Paris. This achievement must be a model for all the towns around the world”.
The first websites using the extension .PARIS will be accessible in Spring and will be available to the general public at the end of this year. The list of the 100 pioneer domain names is available on the website of the town of Paris.
The .GURU is available to the general public since February 5 2014.
This extension, intended for gurus of all kinds, is at the forefront and still breaks records among the new gTLDs. Indeed, according to the website registrarstats.com, the number of domain names registered in .GURU stands today at 39139 names!
For comparison purposes, here is the list of the first 10 new extensions classified according to the number of registrations:
GURU
39139
PHOTOGRAPHY
23488
TODAY
10308
TIPS
8019
TECHNOLOGY
7951
BIKE
7915
CLOTHING
7803
DIRECTORY
6906
GALLERY
6804
LAND
6356
Some names are already on sale. On sedo.fr, the website for the purchase/sale of domains, the names are available as from 45GBP and the offers are up to nearly 20000 USD, but there are also many names for which we can propose an offer.
Our firm is available to register your domain names in .GURU or in any other extension.
WHOIS databases are particularly useful for finding information on domain name holders. Their name (who is) clearly indicates their purpose, which is to provide essential information about protagonists with regards to a domain name and especially concerning the name reservation date, the registrant, the administrative contact details or the registry office of the domain name. In summary, WHOIS is the database of domain names registered with a registrar or a registry.
In application of the Affirmative of Commitment (AoC) of 30 September 2009, ICANN is responsible for implementing existing policy regarding the WHOIS, under the auspices of applicable legislation. To this effect, the Registrar Accreditation Agreement (RAA), a contract by which ICANN accredits a registry office, outlines their obligations, especially concerning the accuracy of WHOIS data. The latest accreditation contract, the RAA 2013, came into effect on 1st January 2014. The registry office is required to take all reasonable measures in the event that inaccuracies within the WHOIS database are notified by “any parties”.
The present WHOIS service has a number of weaknesses and needs to be reformed to adapt to the digital world and e-commerce in particular. An Expert Working Group was formed by ICANN in 2013 to examine the registration service for gTLDs. The aim is to replace the current service with another, the Aggregated Registration Data Service (ARDS), by which the data would only be collected, validated and shared for authorized purposes such as spot checks, domain name research or to protect personal data. In addition, only certain data would be available to authorized enquirers who would be held accountable for its use.
Currently this project has not been finalized since questions remain outstanding relating to costs and implications. The Group is awaiting community feedback on their initial proposals before going further. And already a number of contentious issues have been raised…the project will need time to be developed and adapted before being launched.
Online harassment has developed from the web 2.0 as well as from the advent of the social networks, thus differentiating from physical harassment.
In “The 51%”, Nathalie Dreyfus relates on the particularities of virtual harassment and the means to solve it with Olivia Salazar-Winspread. Harassment suffered by woman is alarming. However, procedures currently set up by social networks are inadequate and unclear. Changes are afoot, but will not be instantaneous.
The broadcasts of the programme are scheduled as follows:
On 14 May 2013, the German Federal Court of Justice found the search engine Google guilty on the grounds that the autocomplete function that reflects the search activity of web users can be detrimental to individuals and companies. Indeed, when a user enters a term in the search bar, a series of key words are presented to him in the form of predictions, which can sometimes have negative connotations.
In the case at hand, a German company and its director sued Google, claiming infringement of their personality rights when their names were associated to the terms “fraud” and “scientology”. They thus sought compensation as well as the removal of such predictions.
The Court of Appeal of Cologne did not side with the company and its founder. It considered that the average user understands that predictions are the outcome of Google’s algorithm-based software process.
The German Federal Court of Justice however, took a different stand and considered that there was an infringement of personality rights due to the negative connotation attached to such an association. Based on this, the Court held Google to be liable and requested that the related predictions be removed as they did not bear any relevance to reality.
Google will thus be liable in Germany as soon as infringement is communicated by a plaintiff and no measures are taken by the search engine to prevent such happenings. Thus, the cancelation of Google’s autocomplete function is not required by the Court. There is no obligation to monitor predictions for infringements of personality rights.
The stand of the German Federal Court of Justice requires the search engine to set up a monitoring and evaluation procedure in order to remove all predictions infringing personality rights. One can envision the difficulties that such a task would entail.
A harmonization of European case-law on the autocomplete function will most likely not be achieved (Cass. 1st civ 19 February 2013, TGI Paris 23 October 2013) until a decision of the European Court of Justice.
Applications to register the trademarks “distinctive flavor of peppermint” and “a peppermint scent” for a nitroglycerine spray have recently been rejected by the Trademark Trial and Appeal Board (TTAB) of the US Patents and Trademarks Office (USPTO). In the event, the TTAB highlighted the fact that the peppermint substance comprises a functional matter of the product and that the applicant had provided no proof as to the distinctive nature of the trademarks.
Peppermint as a functional characteristic of the product
The examiner held that peppermint has an exclusively functional characteristic within the product and is not a distinctive sign that could qualify it as a trademark. To clarify this “functional” notion, reference was made to the US Supreme Court case of Inwood Laboratories, INC v Ives Laboratories, INC in 1982 in which it was ruled that a characteristic of a product is “functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article”.
In this case, the defendant argued that it is an inactive ingredient of the medication that has no therapeutic properties. Thereby, according to him, it could not be considered to have a functional characteristic.
However, the examining attorney demonstrated by producing the description of an American patent granted for a nitroglycerine spray that the use of menthol improved the medicine’s effectiveness and limits its side effects.
The peppermint is therefore not superfluous but a truly useful ingredient of the medication.
The distinctive character
Distinctive character is an essential condition for obtaining a trademark. The mark must not only enable customers to distinguish the product from those of its competitors, but it must also be sufficiently different from the product or service designated.
The examining attorney stated that the use of peppermint in a nitroglycerine spray by the Company is not exclusive because it is also used in other sprays. He also underlined that aromas and scents have never intrinsically been of a distinctive nature and that therefore the applicant must demonstrate how this scent could fulfill the requirements of a trademark.
In the event, the applicant had provided no convincing proof as to the distinctiveness of the trademark.
Counterfeiting is an economic and social curse: according to the OECD, counterfeiting accounts for 5 to 7% of world trade, or an approximate value of 200 billion euros.
Contrary to common beliefs, it is not limited to the trade of cigarettes or luxury goods.
Counterfeiting evolves in parallel to the legal market and affects all sectors: food, clothing, personal care or medication. Some seizures made this year highlight this phenomenon. For example, on May 17, 2013, the Customs of Le Havre’s port seized 1.2 million packets of counterfeit aspirin from China. In another case: on May 15, 2013, an inspection at the port of Marseille resulted in the interception of 10,000 packets of biscuits counterfeiting the famous brand “BN”.
Although significant, these seizures are not enough to bring a smile back to the face of French customs. Despite a growing influx of counterfeit goods, mainly from Asia (70%), seizures collapsed in 2012. Constantly increasing, they had reached 8.9 million items seized in 2011 to then fall to 4.6 million the following year. A drop of… 47 % !
If budget cuts also affect the French Customs, they attribute this decline rather more to the effect of the European Court’s decision Nokia-Philips (EUCJ, December 1, 2011, aff. C-446/09 and C-495/09, Koninklijke Philips Electronics NV c/ Lucheng Meijing Industrial Company Ltd and a. and Nokia Corporation c/ Her Majesty’s Commissioners of Revenue and Customs).
Indeed, the approach taken by the Nokia-Philips decision limits the intervention of Customs on goods suspected of infringement in transit or transshipment, including requiring official evidence justifying its action. Thus, since early 2012, the French Customs has stopped working on suspected counterfeit goods in transit or transshipment. This case clearly exposes Europe to the risk to become a platform for counterfeit redistribution!
However, the Nokia-Philips case law is not yet set in stone. The EU Regulation No. 608/2013, which comes into force on January 1 2014, does not proscribe the detention of goods in transit or transshipment. In addition, the European Commission, via its proposals of March 27 2013, has stated its desire to make EU regulations more effective on this point.
French Customs also report an exponential increase in the sales of counterfeit goods on the Internet. These items seized by postal or express freight involved 1% of the items seized in 2005 (35,000 items) and 15% in 2011 (1,421,773).
In 2012, counterfeit items sold on the Internet represented a total of 1,428,281 or 30% of the seizures! Having realized the extent of trafficking in counterfeit goods on the Internet, French Customs launched in March 2009 a special operations unit called “Cyberdouane” (“Cyber Customs”). These findings are also due to the increased activity of this unit.
Thereby, to face counterfeiters in constant evolution, the French Customs has sought to adapt. To be effective, this adaptation by Customs must rely on the ongoing cooperation with all stakeholders directly or indirectly involved.
Among them, are other Customs Services, both Europeans and foreign. If greater harmonization at European level is in progress, including through the EU Regulation No 608/2013 and the proposal of the “packet mark” of the European Commission dated 27 March 2013, it remains a long-term process. As for cooperation with foreign customs services, the French Customs has realized the extent of its importance, and is constantly trying to reinforce ties, mainly with Chinese and Hong Kong services.
In addition, partnership with rights holders improves the efficiency of services. For instance, rights holders can make intervention requests. Free and valid for one year, the intervention requests allows Customs to detain any suspect goods for 10 days and enable them to better target their controls. It also allows holders to successfully protect their intellectual property rights in court.
Between the protection of intellectual property rights on the one hand, and the freedom of circulation of legitimate goods on the other hand, the French Customs is constantly seeking a balance without always having the means to achieve its ambitions.
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The concept of trade secrets is far from being uniform in different EU countries. Some countries have never penalised trade secrets infringement. Consequently, offences increase constantly and nearly one in five companies have suffered from at least one infringement to secrets in the last ten years. Therefore, in the framework of UE 2020 strategy under the “Innovation Union”, the European Commission has proposed a Directive to harmonise the definition and the sanctions of trade secret misappropriation.
