Since July 1st 2013 the European Union has been enlarged following Croatia’s signing of the Accession Treaty on December 9th 2011. It now comprises 28 member States.
Croatia is thereby included in every demand for a Community trademark or model.
Since Community trademarks(1) and models(2) were put in place, it is now possible to protect industrial property rights throughout the European Union territory thanks to a single registration procedure.
Community trademarks and models registered or filed before July 1st 2013 will automatically be extended free of charge to Croatia without any further formalities or costs.
Concerning potential problems that may arise between national and European rights holders, the Trade Mark Office has adopted the following temporary measures:
A degree of co-existence with existing rights: holders of Community trademarks or models filed or registered before July 1st 2013 cannot have their rights nullified in Croatia, even if seniority is proven in that country.
A point of mitigation: A Community trademark or model filed or registered between January 1st and June 30th 2013 may be subject to opposition based on earlier Croatian rights(3).
A measure of prohibition: The holder of a Croatian trademark does not have the right to have a Community mark or model nullified, but may only obtain an exploitation ban on their territory.
This mechanism is framed by the notion of good faith. For example, a request for opposition or invalidation filed by the holder of an existing title in Croatia is only possible on condition that the rights claimed were acquired in good faith! In this way the OHMI is attempting to curb the practice of fraudulent registrations, a practice which often occurs in cases of transitory rights.
This system is advantageous for all Community trademark or model holders in the sense that it offers automatic and free protection in the new Member States of the European Union. It would be a shame to miss the opportunity!
Our firm is at your service to guide you on your registration strategies and advise you appropriately.
(1) Regulation of Community Trademarks (CT) no 40/94 adopted on March 15 1994 and EU regulation no 2868/95, providing application procedures for CT regulation.
(2) EU Council regulation no 6/2002 of December 12th 2001 on Community designs and models.
(3) Article 165§3 of the Register of EU Community Trademarks
Restricted only to companies until now, Employ Media intend to liberalize the “.jobs” in a very near future.
For the first time, an actual live TLD will have its conditions for registration changed from a restricted status to a public one. This evolution is very important as any natural or legal person will be allowed to register a domain name in “.jobs”.
Before the opening of this “General Availability” period, Employ Media plans to offer, as for the new gTLDs, a “Sunrise period” in order to allow trademarks owners who have registered their trademarks in the Trade Mark Clearinghouse Database (TMCH) to register corresponding domains.
ICANN has welcomed this initiative with great enthusiasm. Indeed, this unprecedented approach will be a real challenge for the TMCH which will be able to trial the efficiency of its process set up for New gTLDs.
There is still no date scheduled for the launch of the Sunrise Period. Employ Media has not specified if the trademarks owners who have not registered their trademarks in the TMCH will be allowed to benefit from this Sunrise Period either. Nonetheless, the TMCH is already the center of all attention.
The last ICANN (1) meeting took place during the week of July 13. 59 GAC Members and 4 Observers met in Durban, South Africa to take stock of the new gTLDs, discuss the evolution of the whois and the relations between ICANN and governments.
The GAC, which is the Governmental Advisory Committee of the ICANN, has just published its Communiqué (2) to make recommendations to the ICANN Board on some specific disputed applications:
The GAC officially objects to .amazon (also in Chinese and Japanese) and to .thai because of the potentials conflicts due to their geographical meaning.
The GAC advises the ICANN Board not to proceed beyond initial evaluation until the agreements between the relevant parties are reached for the applications for .spa, .yun, .guangzhou and .shenzhen.
The GAC allows the two strings .vin and .wine and, due to the complexity of the matter, to take 30 additional days to conclude on the matter.
The GAC does not object to the .date and to the .persiangolf while some though that those strings would be problematic.
Then, the GAC reaffirms its previous advice from the Toronto and Beijing meetings that Inter-Governmental Organizations acronyms warrant special protection by ICANN. The same applies for Red Cross and Red Crescent Committees and Federations acronyms’ protection. A discussion between members of the GAC and NGPC (New gTLD Program Committee) and Inter-Governmental Organizations representatives is under way to find an adequate protection to these acronyms.
Finally, the GAC reiterates its advice to promote Community applications.
The next meeting of the GAC will happen during the 48th ICANN meeting in Buenos Aires, Argentina.
(1) Internet Corporation for Assigned Names and Numbers
(2) http://durban47.icann.org/meetings/durban2013/presentation-gac-communique-18jul13-en.pdf
The liberalization of the domain name sphere will be accompanied by major changes regarding the registration of domains.
After acrimonious negotiations between the different protagonists, the “final proposition” for a new accreditation contract between ICANN and registry operators was opened for public consultation from April 22 to May 13. It will be compulsory for new extensions to be administrated by this proposed contractual Agreement. As for existing extensions established under previous RAA versions (2001 and 2009), the application of “RAA 2013” changes in their case is under negotiation.
As a result, to register a domain name, companies will have to modify certain behaviors:
The accuracy of data will be monitored
The domains registered can be suspended or terminated if the e-mail address or telephone number has not been confirmed with the registrar within 15 days. This rule will also apply to registrants of existing domain names who modify previous data;
Contact information must be kept up-to-date
The registrar must be notified of any change in contact information within 7 days. The failure to reply to a request from the registrar for up-to-date information within 15 days can lead to the domain name(s) being suspended or terminated.
Data will be preserved
After the deletion of a domain name or its transfer to a different registrar, the data will be retained for 2 years by the former registrar. However, this provision may need to be adjusted if it infringes national laws relating to the protection of personal data.
Rules will now apply – at last – to proxy or privacy services
Until now, no rules governed these privacy services. From now on, where a proxy registration is concerned, the registrars will be required to forward a copy of the operator’s data to a fiduciary agent. This preserved data may only be accessed in the event of the possible bankruptcy of a registrar or their loss of accreditation. In reality, it is not uncommon in the event of registrar bankruptcy for ICANN to be totally unaware of the operator’s identity, with the same being true for the new registrar in charge of the domain name.
However, the new Agreement could still be modified after the period of public consultation if deemed necessary. The ICANN board will then have to approve the text before registry offices can sign contracts linking them to ICANN. Furthermore, the American Authority wishes to see these new rules in force by January 1st 2014.
For all further information, our firm remains entirely at your disposal.
The WIPO Arbitration and Mediation Center has rejected a legal rights objection filed against registration of the term .tunes as a new generic top-level domain (1).
In this case, the applicant for the TLD “.tunes” was Amazon EU Sarl and the objector was DotTunes Ltd.
Two reasons have conducted the panelist to reject the objection.
On the one hand, the objector’s figurative trademark “.TUNES” is phonetically similar to the gTLD “.tunes” but “the word tunes is, however, a generic and descriptive mark when used in relation to music”.
On the other hand, “the objector has produced very little evidence of use of .TUNES in trade or commerce”. The panelist does not consider that consumers seeing the gTLD “.tunes” would relate it to the objector. In the fourth LRO ruling to date, the WIPO panelist ruled that DotTunes’ European Community trademark wasn’t famous enough to warrant rights protection under the LRO.
DotMusic Ltd, another company of the objector’s group has applied for “.music” and also filed objections against all the other applicants for “.music”. Besides, the panelist has outlined that he “is not making findings in relation to distinctiveness of “.music” which is “the subject of other LRO proceedings”. We will continue to keep you posted !
This revision project is based on a proposition from the 2011 European Commission and will introduce certain changes to current legislation(1). It is presently awaiting a second reading by the European Parliament.
The reappraisal of this legislation has shown the need to introduce improvements to the legal framework in order to reinforce the monitoring by customs officials of intellectual property rights abuses, as well as guaranteeing better legal safeguards.
What are the most significant changes?
The legislation concerns the question of goods in transit or transshipment across European Union territory, and reviews the disputed CJEU(2) ruling on this subject. As a reminder, the current situation limits the possibilities afforded to customs officials regarding non-EU goods in transit or transshipment across the Union which are suspected of being counterfeit. These cannot currently be retained by customs unless proof of commercial exploitation on European Union territory is obtained.
The current project reverses the onus of proof, in that items would be considered as destined for the European market unless otherwise proven by either the owner or transporter of the goods. The goal is obviously to enable customs authorities to act as soon as merchandise enters European Union territory, so that any goods suspected of being counterfeit can be immediately intercepted.
Greater powers would also be granted to customs officers to improve collaboration with destination countries in order to inform them that contraband products are heading their way so facilitating confiscation on arrival.
In a further amendment, the Ruling overturns the solution proposed by the Sopropé(3) judgment
at the European Court of Justice and instigates a plenary “right to be heard”. Before any detention of goods, contact must be made with either the expeditor or the recipient to allow them to explain their intentions and avoid confiscation if appropriate.
However, this new Ruling will not apply to personal goods held by an individual in transit. This loophole will not be closed unless national legislation specifically provides for sanctions.
Concerning the seizure of small packages(4), a specific procedure is envisaged which would allow goods to be destroyed without the consent of the rights’ holder, once he has authorized the application of this procedure.
The merchandise would be destroyed when it is beyond dispute that the products are counterfeit and when the future recipient either accepts the verdict or fails to respond within ten working days.
The present Ruling amendment will certainly provide more efficient protection for rights’ holders, thereby stimulating creativity and innovation whilst offering consumers high-quality, reliable products.
(1) Ruling n°1383/2003 of 27 July 2003 modified by Ruling n°1891/2004 of 21 October 2004.
(2) Joint cases: European Community Court of Justice, 1st December 2011 Philips (C-446/09) and Nokia (C-495-09)
(3) Court of Justice of the European Union, 19 December 2008, case C-349/07 Sopropé Organizações de Calçado Ldac/Fazenda Publica.
(4) A small package is defined by the Commission as being a postal item containing three units or less, and weighing less than two kilograms.
First LRO decisions have just been published on the WIPO website (1).
As you know, the WIPO is the exclusive provider of the LRO which is a way for trademark owners to file a complaint against a new gTLD’s application which appears to constitute in particular an infringement to its trademark. The objections were relating to the following new top-level domain (TLD).
The objections were relating to the following new TLD:
SC Johnson’s .rightathome
Vipspace Enterprises’ .vip
Google’s .home
Objectors to .home, .vip, and .rightathome all lost their cases.
SC Johnson’s .rightathome:
The applicant is a subsidiary of the well-known cosmetics company SC Johnson, which uses “Right@Home” as a brand since 2008. SC Johnson is a manufacturer of various household products. The objector is Right At Home, an international provider of in-home elderly care services which uses “RIGHT AT HOME” as a brand since 1995.
Complainant argued that the applicant’s use of its proposed .rightathome TLD would cause confusion among consumers.
In this case, the panelist has discussed each of the 8 points described in ICANN’s new gTLD Applicant Guidebook, and had to decide whether the evidence favors the objector or the applicant. Panel concludes that the applicant won on five out of the eight criteria.
The panelist rejected the objection on three main elements.
Firstly, the parties target their services to separate types of customers. There is no likelihood of confusion in different markets because it’s unlikely internet users will think the gTLD belongs to Right At Home. Secondly, the term “Right At Home” is also used by other companies in addition to the Complainant and Respondent. Finally, the applicant did not apply for .rightathome in bad faith.
Vipspace Enterprises’ .vip:
The objection was filed by one .vip applicant against another.
The respondent is Vipspace and the objector is I-Registry. The latter’s parent company, I-content Ltd, is the registered proprietor of the VIP word mark. The parent company granted the objector an exclusive license to use the mark. Vipspace Enterprises is the registered proprietor of the DOTVIP Community Trade Mark.
The panelist’s decision focuses on the generic nature of the string in question. Both trademarks were filed for the word “VIP” meaning “Very Important Person” for services activities providing to “important persons”. These trademarks are thus descriptive trademarks.
The panel found that the intended use of the gTLD will lead to it being seen “first and foremost as a descriptive term describing the purpose and characteristics of the domain”, adding that confusion with the objector’s mark was not likely.
Google’s .home:
The objector, Defender Security Company, is a home security company and has also applied for .home and objected to nine of its competitors for the string. The applicant was Charleston Road Registry which is Google’s domain registry.
The panelist considered each of the home-related marks identified in the complaint and concluded that the objector failed for lack of evidence that complainant held valid rights to the said marks.
Indeed the Community trademark cited in the complaint did not belong to the objector but to one of its subsidiary and the Complainant was not able to demonstrate a subsidiary link between the companies. For the US trademarks cited in the complaint, which are not registered, objector “fails to attach any evidence of the factor that would tend to established secondary meaning in support of rights”. Indeed Panel noticed that in cases involving claimed common law or unregistered trademarks, the said mark may have a secondary meaning or distinctiveness. Objector failed for lack of evidence that he is the rightholder of the said marks.
Moreover, the panelist considers that: “The attempted acquisition of trademark rights appears to have been undertaken to create a basis for filing the objection, or defending an application. There appears to have been no attempt to acquire rights in or use any marks until after the New gTLD Program had been announced”.
More than 60 LRO are actually pending before the WIPO Arbitration and Mediation Center, and additional decisions are expected soon.
On March 27 the European Commission presented a package of initiatives in order to make the trademark registration system throughout the European Union “cheaper, quicker, more reliable and predictable”(1).
This package contains three elements: a recast of the 1989 Directive (codified as 2008/95/EC) approximating the laws of the Member States relating to trademarks, a revision of the 1994 Regulation (codified as 2007/2009/EC) on the Community Trademark, and a revision of the 1995 Commission Regulation (2869/95) on the fees payable to the OHIM.
The proposed trademarks’ reform plans to remove the existing structure of ‘three classes for the price of one’ to replace it by a ‘one class per fee’ system that would be applicable both for the application of Community trademarks and for national trademark applications in Member States. Thus it would enable companies, and particularly SMEs, to apply for trademarks according to their actual needs. Currently, the present system allows for the registration of trademarks for up to three classes for a single fee. According to the proposal, applicants should be able to apply for the registration of a trademark for a single class. Thus, the fees payable would be lower for an application in only one or two classes, whereas a three-classes application would remain the same. The aim of this proposal is to allow access to trademark protection to all companies. As such, the Reform’s purpose is to increase legal certainty, to limit the risk of litigation and to enhance the competitiveness of the European Market.
This new fee system would equally reduce the costs of trademark renewal. It would also limit the potential congestion of trademark registers, which would no longer have to deal with trademark applications for goods and services classes, which are not actually needed by the applicant.
In practical terms, whereas the current fees payable for a three-classes application are € 900, a single-class application would cost € 775. A separate class fee would be paid for each additional product or service class applied for beyond the first one (€ 50 for the second and € 75 for the third class). Application fees for fourth and subsequent classes would remain unchanged (€ 150).
The European Union aims to adopt the amended Fees Regulation hopefully before the end of 2013. The Commission should adopt it after prior endorsement by the competent Committee on OHIM fees.
On June 4 2013, the White House released a memo detailing 7 legislative actions for Congress to take in order to tackle “Patent Assertion Entities” (PAE) or so-called ‘Patent Trolls’. The Administration is also going to take immediate executive actions designed to protect innovators from frivolous litigation and ensure the highest-quality patents in the American system.
Additionally, a report published by the National Economic Council and the Council of Economic Advisers takes the same position.
In 2011, the Leahy-Smith America Invents Act (AIA) was signed into law to make the patents system more efficient and reliable. Innovators continue to face challenges from ‘Patent Trolls’, that, according to President Obama “don’t actually produce anything themselves” and instead develop a business model “to essentially leverage and hijack somebody else’s idea and see if they can extort money out of them”.
The memo outlines changes to bring much more transparency to patent disputes, including new PTO (1) rules that will require patent applicants and owners to provide accurate identify information.
The White House wants to condamn the cases of manifest abuses and helps the ITC (2) to get rid of an excessive files number.
Some highlights from the report include:
Legal recommendations such as disclosure of “Real Party-in-Interest” when filing a patent claim.
Make it easier for defendant companies that win patent suits to get attorneys’ fees.
Changing the ITC standard for obtaining an injunction and better transparency to curb abusive lawsuits.
Ensure the ITC has adequate flexibility in hiring qualified Administrative Law Judges.
Executive actions include:
Tighten functional claiming: requiring patent applicants to explain their invention better and to limit those inventions to a specific way of accomplishing a task.
Empower downstream users: ending the abuse associated with targeting end users, such as small business, startups, and even individuals who find themselves facing lawsuit threats.
According to President Obama and all the belligerents, these issues are crucial for the economy of America, American jobs and innovation.
(1) Patent and Trademark Office
(2) International Trade Commission
Sources: Fact Sheet: White House Task Force on High-Tech Patent Issues
As is common knowledge, each European country is currently developing its own structure for the sale of medicinal products on the Internet.
This was made possible for member countries of the European Union by a European directive in 2011 (1). This stated that member countries must allow on-line sales of medicinal products to the public, whilst allowing them to prohibit mail-order selling of medication sold on prescription, either for reasons of public health or safety.
In France, the directive became an Order on 19 December 2012 (2) which authorized the on-line sales of medicinal products.
The primary goal is to combat fraud and counterfeit medication. Across the world more than 18,000 illegal sites for on-line sales of medicinal products have been identified and shut down. 3.75 million potentially lethal medications have been seized. In France, seizures by customs have increased by 290%. This figure is a very significant increase compared to the previous statistics released in 2011 (3). In addition, according to the World Health Organization (WHO), approximately 50% of medicinal products sold on the Internet are counterfeit. The regulation of pharmaceutical on-line sales had therefore become essential in order to ensure consumer safety.
Which medicinal products can be sold?
Initially, the Order limited the sale of on-line medicinal products to the category of medication known as “medicinal medication”, in other words medicinal products sold over the counter in pharmacies. Then, in a further development, restricting on-line sales to only one category of pharmaceutical products that required no prescription was suspended by a decision of the State Council (4). This thereby widened the on-line market to include all medicinal products that could be purchased without a mandatory medical prescription. As a result, over 3,500 referenced products can now currently be sold on-line.
France: who can sell medicinal products on the Internet?
Since the sale of medicinal products on-line must comply with public health and safety requirements, this market is not open to every sales channel on the web. Only pharmacies registered in France as licensed medicinal pharmacies can sell medicinal products on-line. The same goes for the managers of mutual pharmacies or rescue services who may sell exclusively to their members. It is mandatory for the internet site to be part of a medicinal pharmacy. Any termination of the pharmacy’s medicinal activity would automatically lead to the closure of its internet site. Pharmacists are responsible for the content of the internet site that they edit and the context in which the electronic sales of medicinal products are made.
In France the ‘Conseil national de l’Ordre des pharmaciens’ (National Council of the Order of Pharmacists) maintains a list of authorized on-line pharmacies. There are currently 32 on this list as of June 24, 2013.
Under what conditions can an on-line pharmacy be opened?
Firstly, pharmacists must be authorized by the Local Health Authority to which they are affiliated. Then they must inform their local Order of Pharmacists of the launch of their internet site within the15 days following authorization. Finally, French sites that are authorized to sell on-line medicinal products must display the following compulsory elements:
contact details for the ‘ANSM’, the French national agency for the safety of medicinal and health products.
links to the websites of the Order of Pharmacists and the French Ministry of Health.
the European logo to be used by all member States of the European Union which relates to the electronic sales of medicinal products that is currently being established by the European Commission.
How is the situation being monitored and controlled?
Currently, the fight against illicit sales of medicinal products on the Internet is the result of international cooperation involving powerful agencies such as the International Institute of Research against Counterfeit Medicines (IRACM), Interpol and the World Customs Organization.
The Directive stipulates (5) that monitoring and control should be ensured by member States who must take all “necessary measures” so that counterfeiters incur “penalties that are stringent, proportionate and dissuasive.”
At a national level, the major player is ‘ANSM’, the French national agency for the safety of medicinal and health products which is involved in every stage from the production to the marketing of medicines. However, the ANSM’s main role is to monitor its territory. Up to now there has been no specific French organization established for the monitoring of the medicinal market on the Internet. The fight against fraud and counterfeit medication on the Internet is the result of collaboration between the OCLAESP (a centralized office that combats environmental hazards and risks to public health), the ANSM, and the services of the police, national gendarmerie and customs.
It is now essential that monitoring organizations should be established at a national level who would be fully specialized in internet surveillance. The ANSM needs assistance in its struggle against the sale of counterfeit medicines on Internet on French soil.
The Health Minister is shortly due to publish a decree defining best practice for sales distribution by electronic means. However, on May 15 2013 the French Competition Authority expressed its concerns about this ministerial order defining best practice (6), considering that the restrictions that it contains “are not warranted by public health considerations” and that they would limit the development of the on-line sales of medicinal products in France. In particular, according to the Authority, pharmacists should be able to propose medicines and parapharmaceutical products on the same internet site. The Authority equally takes issue with the compulsory alignment of sales prices on the Internet with products sold over the counter.
What sanctions can be imposed?
Pharmacists who fail to comply with regulations could face the temporary closure of their site plus the possibility of a fine. In addition, the distribution, marketing, offer of sale, act of sale or the importing of counterfeit medicinal products is punishable with 5 years imprisonment and a 375,000€ fine (7).
Both vigilance and swift action are required in order to identify internet sites selling illicit medicines. With the development of the legal sale of medicinal products on the Internet, there is even greater risk that consumers may be misled. Moreover, a survey indicated that 80% of French people were fearful that medication purchased on the Internet would be counterfeit (8), which clearly reflects the lack of consumer confidence as regards this new distribution channel.
This confidence will only be restored if there are adequate sanctions and appropriate surveillance. If a Google search is made for “on-line pharmacy” or “medicinal products on the Internet”, it becomes clear that illegal on-line pharmacies are still operational.
In theory, any advertizing for pharmaceutical dispensaries is illegal (9). In reality it is clear that on-line pharmacies do not hesitate to use tools for on-line advertizing or referencing such as Google Adwords.
As a start point, the use of a surveillance system for Google Adwords would appear to be essential in order to improve the monitoring and control of this market.
(1) Directive 2001/62/UE of the European Parliament and Council of June 8, 2011 having modified the prevention of the introduction of counterfeit medicinal products in the authorized supply chain, Directive 2001/83/CE of November 6 2001 that instituted a Community Code concerning medicinal products for human consumption.
(2) Order 2012-1427 of December 19 2012 confirmed by Decree 2012-15 of December 31 2012 and codified via articles L5125-33 and following, and R5125-70 and following of the Public Health Code.
(3) Source: internet site of the ‘Ordre des pharmaciens’.
(4) Referred Order of the State Council, February 14 2013 no 365459.
(5) Article 85, sixth quarter.
(6) Opinion no. 13-A-12 of 10 April 2013 on a draft resolution regarding good practice in the dispensation of medicinal products by electronic means published on May 15, 2013.
(7) Dispositions made by Order on December 19 2012 enforced by articles L5125-39 and L5421-13 of the Public Health Code.
(8) Survey by the ‘Pasteur Mutualité/Viavoice’ group on “the French and the sale of on-line medicinal products”. Sample of 1007 people, representative of the French population aged 18 and over, surveyed on February 28 and March 1 2013 by telephone.
(9) Articles L5125-31 and R5125-29 of the Public Health Code.
Our site uses cookies to offer you the best service and to produce statistics, and measure the website's audience. You can change your preferences at any time by clicking on the "Customise my choices" section.
When browsing the Website, Internet users leave digital traces. This information is collected by a connection indicator called "cookie".
Dreyfus uses cookies for statistical analysis purposes to offer you the best experience on its Website.
In compliance with the applicable regulations and with your prior consent, Dreyfus may collect information relating to your terminal or the networks from which you access the Website.
The cookies associated with our Website are intended to store only information relating to your navigation on the Website. This information can be directly read or modified during your subsequent visits and searches on the Website.
Necessary cookies are absolutely essential for the website to function properly. These cookies ensure basic functionalities and security features of the website, anonymously.
Dreyfus is concerned about protecting your privacy and the Personal Data ("Data"; "Personal Data") it collects and processes for you.
Hence, Dreyfus complies every day with the European Union legislation regarding Data protection and particularly the European General Data Protection Regulation Number 2016/679 of 27 April 2016 (GDPR).
This Privacy Policy is aimed at informing you clearly and comprehensively about how Dreyfus, as Data Controller, collects and uses your Personal Data. In addition, the purpose of this Policy is to inform you about the means at your disposal to control this use and exercise your rights related to the said processing, collection and use of your Personal Data.
This Privacy Policy describes how Dreyfus collects and processes your Personal Data. The collection happens when you visit our Website, when you exchange with Dreyfus by e-mail or post, when exercising our Intellectual Property Attorney and representative roles, when we interact with our clients and fellow practitioners, or on any other occasion when you provide your Personal Data to Dreyfus, in particular when you register for our professional events.
Written by Dreyfus22/08/2013 
Since July 1st 2013 the European Union has been enlarged following Croatia’s signing of the Accession Treaty on December 9th 2011. It now comprises 28 member States.
