Nathalie Dreyfus

Introduction

As the world becomes increasingly interconnected, the legal frameworks governing the protection of intellectual property rights are continuously evolving to keep pace with this global integration. Intellectual property laws in place ensure that the creators of these works are properly recognized and compensated for their efforts. International intellectual property laws are designed to protect the rights of creators and inventors around the world.

The main international treaties and conventions

The most widely accepted international intellectual property law is the World Intellectual Property Organization (WIPO) Convention. This treaty was signed by 169 countries in 1967 and updated in 1996. It outlines the rights of inventors, authors, and other creators of intellectual works. WIPO is the international authority that administers the Convention, which sets out the basic principles and rules of international intellectual property law. It also provides a framework for international cooperation on intellectual property issues and seeks to harmonize the different national intellectual property laws.

The WIPO Convention is supplemented by other treaties, such as the Paris Convention for the Protection of Industrial Property (1883), the Berne Convention for the Protection of Literary and Artistic Works (1886), and the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (1961). These treaties are designed to help protect intellectual property rights in different types of works, such as artistic works, designs, and sound recordings.

Learn more about the Paris Convention or visit the WIPO website

Another key instrument for patent protection is the Patent Cooperation Treaty (PCT) (1970). Administered by WIPO, the PCT allows inventors, through a single filing, to submit one. single patent application to seek patent protection in multiple countries simultaneously, thereby greatly simplifying procedures and reducing costs.

The TRIPS Agreement and trade-related intellectual property

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is another important international intellectual property law. This agreement, which was developed by the World Trade Organization (WTO), sets out the minimum standards for intellectual property protection that must be met by WTO member countries. It requires countries to provide certain levels of protection for patents, copyrights, trademarks, and other forms of intellectual property.

Learn more WTO-TRIPS.

The regional and national dimensions

In addition to these international intellectual property laws, there are also regional agreements that provide protection for intellectual property rights. The European Union, for example, has its own set of laws that protect intellectual property rights. The European Union Intellectual Property Rights Directive seeks to harmonize the rules governing the protection of intellectual property in the EU (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights).

Conclusion

In summary, a body of international, regional, and national rules governs the protection of the rights of authors, inventors, and other creators of intellectual works. These legal frameworks aim to ensure the effective recognition of their rights and to provide fair remuneration in return for their creations.

Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property. Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property. Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1.What is the WIPO and what is its role ?

The WIPO (World Intellectual Property Organization) is a United Nations authority responsible for promoting the protection of intellectual property worldwide. It administers several international treaties, including the Paris Convention and the Berne Convention.

2.What is the difference between the Berne Convention (1886) and the Paris Convention (1883) ?

The Berne Convention protects literary and artistic works (copyright), while the Paris Convention focuses on the protection of industrial property (such as patents, trademarks, and industrial designs).

3.Are intellectual property rules harmonized worldwide?

Not exactly. There are international treaties to harmonize the rules, but each country has its own national legislation. The TRIPS Agreement sets minimum standards that must be followed by all WTO member countries (World Trade Organization).

4.Where can the various legislative texts and international treaties on intellectual property be consulted ?

The TRIPS Agreement can be accessed on the World Trade Organization (WTO) website.

Overview and legal framework

Spare parts

Spare parts are components that replace or restore the appearance of complex products, such as vehicles, electronic devices, or household appliances.

Evolution of legislation

Under the Climate and Resilience Act No. 2021-1104 of August 22, 2021, whose provisions came into force on January 1, 2023, certain articles of the French Intellectual Property Code have been amended:

• Article L.513-6, 4°, of the French Intellectual Property Code : this article now specifies that the rights conferred by the registration of a design cannot be invoked against acts aimed at restoring the original appearance of a motor vehicle or trailer, when such acts concern glazing-related parts or are carried out by the equipment manufacturer who manufactured the original part.
• Article L.122-5, 12°, of the French Intellectual Property Code : this article provides, in particular, that once a work has been disclosed, the author may not prohibit the reproduction, use, or marketing of parts intended to restore the original appearance of a motor vehicle or trailer.

These articles enable the creation of a repair clause that exempts “essential spare parts” from design and copyright protection in order to promote competition and support the objectives of the circular economy.

As a result, independent suppliers are allowed to manufacture and sell spare parts (such as headlights, rearview mirrors, and bumpers) without infringing on registered designs, provided that no logos or protected signs remain affixed.

For further information on the legal framework applicable to spare parts, we invite you to consult our previously published article

Application of the repair clause

The facts and procedure              

In a decision dated June 11, 2025 (n°23-83.474), the Criminal Division of the Court of Cassation handed down a major decision clarifying the temporal application of the repair clause.

In this case, a subsidiary of a Spanish group specialized in the manufacture of original equipment for three French car manufacturers, resold rearview mirrors produced by this group without authorization. The car manufacturers then sued the company, which was found guilty of infringing designs, copyright, and trademarks by the criminal court. The Court of Appeal acquitted the defendants on the following grounds:

• Regarding the infringement of design rights, the judges applied Article L. 513-6, 4°, of the Intellectual Property Code as amended by the aforementioned law of August 22, 2021.
• Regarding the infringement of copyright, the judges applied Article L. 122-5, 12°, of the Intellectual Property Code, as amended by the aforementioned law of August 22, 2021.
• Regarding trademark infringement, the judges specified that the Spanish group itself had removed the reference to the trademarks or logos of the French car manufacturers from the rearview mirrors.

Retroactivity of the repair clause

Application of the more lenient criminal law

The Court of Appeal noted that the Climate and Resilience Act of August 22, 2021, , constitutes a criminal law when it has the effect of modifying the constituent elements of the infringement.

In this decision, the judges applied the provisions of the Climate and Resilience Act of August 22, 2021, even though the events took place before it came into force (scheduled for January 1, 2023). The judges then specified that Articles L. 513-6, 4° and L. 122-5, 12° of the Intellectual Property Code reduced the scope of the offense charged against the manufacturer of spare parts, which constitutes a more lenient criminal law that can be applied immediately in accordance with the principle laid down in Article 112-1, paragraph 3, of the French Criminal Code.

The legitimacy of retroactive application of the repair clause

The judges specified that this retroactivity is not contrary to the protection of property rights, guaranteed by Article 1 of the First Additional Protocol to the European Convention on Human Rights and Article 17 of the Universal Declaration of Human Rights. Indeed, the amendments made by the aforementioned law of August 22, 2021, constitute a proportionate infringement of the legitimate aim pursued, as demonstrated by the parliamentary proceedings, which sought through this law to open up the market for visible spare parts to competition.

Furthermore, the judges legitimately considered that these provisions were applicable not only to the original equipment manufacturer, i.e., the Spanish group, but also to the commercial chain linking the latter to the consumer, and in particular the subsidiary being prosecuted, without disregarding the principle of strict interpretation of criminal law.

Conclusion

This decision therefore provides further clarification on the repair clause:

• The repair clause may be applied retroactively and may apply to acts committed before January 1, 2023
• The repair clause applies to the entire commercial chain linking the original equipment manufacturer to the consumer

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Does the repair clause only apply to motor vehicles, or can it be extended to other sectors (household appliances, electronics, etc.) ?

Currently, the repair clause provided for in the Intellectual Property Code only applies to motor vehicles and trailers. An extension to other sectors is not ruled out, but it would require specific legislative or regulatory reform.

2. Does the repair clause exist in other European countries?

Yes, several EU Member States, such as Germany, already have similar exceptions for visible parts, and harmonization is planned under European law to ensure the free movement of spare parts.

3. What must companies do to comply ?

They must verify that distinctive signs have been removed, ensure that the parts concerned fall within the scope of the exception, and adapt their contracts and internal procedures to this new regulation.

4. Does the repair clause only benefit independent suppliers ?

No. It benefits all operators, including original equipment manufacturers and the entire commercial chain, provided that the legal conditions are met.

5. What are the advantages for consumers ?

The repair clause promotes competition, reduces the cost of visible spare parts, stimulates the circular economy, and broadens the range of spare parts available on the market.

Introduction

The rapid advancement of artificial intelligence (AI) has revolutionized various sectors, including the creative industries. AI systems are now capable of producing artworks, music, literature, and more, raising a pivotal question: Can artificial intelligence hold copyrights? This inquiry delves into the core of intellectual property law, challenging traditional notions of authorship and ownership.

Understanding Copyright Law

Definition and purpose

Copyright law is designed to protect the rights of creators over their original works, encompassing literature, art, music, and other creative expressions. It grants authors exclusive rights to reproduce, distribute, and display their creations, thereby incentivizing innovation and cultural development.

Criteria for copyright protection

For a work to qualify for copyright protection, it must meet specific criteria:

• Originality: The work must be independently created and possess a minimal degree of creativity.
• Fixation: The work must be fixed in a tangible medium of expression, making it perceptible for more than a transitory duration.

The role of human authorship

Human creativity and originality

Traditionally, copyright law has been predicated on human creativity. The concept of authorship is intrinsically linked to human intellect and personality, reflecting the creator’s unique expression.

Legal precedents emphasizing human authorship

Various legal systems have underscored the necessity of human involvement in authorship. For instance the French Intellectual property code states that only natural persons can be recognized as authors, thereby excluding non-human entities from holding copyrights.

AI-Generated works: A legal perspective

The process of AI creation

AI systems, particularly those employing machine learning algorithms, generate content by analyzing vast datasets and identifying patterns. While the output may resemble human-created works, it is produced through computational processes without human creativity.

Case studies and judicial decisions

The legal status of AI-generated works has been the subject of judicial scrutiny:

• United States: The U.S. Copyright Office has consistently denied copyright protection to works lacking human authorship. In a notable case, the Office refused registration for a work created by an AI system, emphasizing that copyright law protects “the fruits of intellectual labor” grounded in human creativity.
• China: Contrastingly, the Beijing Internet Court, on November 27, 2023, recognized copyright in an AI-generated image, attributing authorship to the individual who provided the input prompts to the AI system. The court reasoned that the person’s selection and arrangement of prompts constituted sufficient intellectual contribution to warrant copyright protection.

International approaches to AI and Copyright

The U.S. maintains a firm stance that human authorship is a prerequisite for copyright protection. The Copyright Office’s Compendium explicitly states that works produced by a machine or mere mechanical process without creative input or intervention from a human author are not registrable.

The EU has not yet established a unified position on AI-generated works. However, the emphasis remains on human creativity, with current directives implying that AI-generated content without human authorship does not qualify for copyright protection. This position was recently reaffirmed by the Municipal Court in Prague, which ruled on October 11, 2023, that an image created using the AI tool DALL-E could not be granted copyright protection under Czech law. The court reasoned that, as AI-generated content lacks human creative intervention, it does not meet the necessary requirements for copyright eligibility. This decision reinforces the notion that, within the EU, copyright remains inherently tied to human authorship.

As previously mentioned, China’s judiciary has shown a willingness to extend copyright protection to AI-generated works under certain conditions, particularly when there is demonstrable human involvement in the creation process.

Challenges and Considerations

Defining authorship in AI creations

The emergence of AI-generated content challenges the traditional definition of authorship. Determining who holds the rights to such works—be it the developer of the AI, the user who inputs prompts, or the AI itself—remains a contentious issue.

Implications for Intellectual Property Law

The current legal frameworks may require adaptation to address the complexities introduced by AI. This includes re-evaluating concepts of originality, creativity, and authorship to ensure that the law continues to incentivize innovation while protecting creators’ rights.

Conclusion

While artificial intelligence has made significant strides in creative fields, it cannot hold copyrights under existing legal frameworks. Copyright law is fundamentally designed to protect human creativity, and AI, lacking consciousness and intent, does not meet the criteria for authorship. As AI technology continues to evolve, it is imperative for legal systems to re-examine and possibly redefine concepts of authorship and creativity to address the challenges posed by AI-generated works.

The Dreyfus Law Firm partners with a global network of IP-specialized lawyers.
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Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

1. Can artificial intelligence (AI) have copyright?

No, artificial intelligence (AI) cannot hold copyright. Under French, European, and most international copyright laws as in United States, protection is granted only to works created by a human author. Copyright requires originality, which is legally defined as the result of human intellectual effort. Since AI operates autonomously, works generated by AI alone are not eligible for copyright protection. However, if a human plays a significant role in the creative process, they may claim rights over the AI-generated content under certain conditions.

2. Why does AI pose a threat to copyright law?

AI challenges copyright law in several ways. First, AI models are trained on vast datasets containing copyrighted works, often without permission from rights holders, raising concerns about copyright infringement. Second, AI-generated content (such as text, images, and music) blurs the line between human and machine creativity, making it harder to determine what qualifies for copyright protection. Lastly, the mass production of AI-generated content can devalue copyrighted works by flooding the market with non-attributable creations. These issues call for clearer legal frameworks to balance innovation with copyright enforcement.

3. Are AI-generated images copyright-free?

No, AI-generated images are not necessarily copyright-free. If an image is created solely by an AI without significant human input, it may not qualify for copyright protection under current laws. However, the platforms generating these images often impose usage restrictions through their terms of service. Additionally, if an AI model produces an image that closely resembles or is derived from copyrighted works, it could constitute copyright infringement. It is crucial to review the licensing terms of AI-generated images and ensure compliance before using them commercially.

4. What is the relationship between AI and copyright law?

AI is reshaping copyright law and intellectual property rights. It challenges fundamental legal concepts such as authorship, originality, and infringement. AI also raises concerns about fair use and the rights of creators whose works are used to train machine learning models. Legislators, particularly in Europe with the AI Act, are working to regulate AI’s impact on copyright and establish legal clarity. Emerging solutions include granting copyright to humans involved in AI-assisted creation and developing specific licenses for AI-generated content. The ongoing legal evolution aims to balance technological advancements with the protection of creators’ rights.

Introduction

Trademark infringement proceedings remain the preferred weapon for brand owners seeking to defend their rights. They uphold the exclusivity attached to the sign and sanction any unlawful appropriation. Yet this right is not absolute; it can be extinguished by the effect of forfeiture through acquiescence.

This mechanism, derived from European law and integrated into the French Intellectual Property Code, penalises the inaction of a trademark owner who, in full knowledge, allows the use of a later mark to continue for more than five consecutive years. Silence then becomes a true acceptance, rendering infringement proceedings permanently inadmissible.

Recent decisions of the Paris Court of Appeal in the SWEET PANTS (11 June 2025) and SCOTT (19 March 2025) cases illustrate the strict application of this rule. They serve as a reminder that tolerance, whether voluntary or not, can prove costly: the effective defence of a trademark portfolio requires constant monitoring and immediate reaction to infringements.

The legal foundations of forfeiture through acquiescence

Definition and statutory conditions

Article L.716-4-5 of the French Intellectual Property Code provides that infringement proceedings brought on the basis of an earlier mark are inadmissible where the proprietor has acquiesced, in full knowledge, for a period of five consecutive years in the use of a later registered mark for the relevant goods or services. The sole exception applies where the later mark was filed in bad faith.

The CJEU has clarified that four cumulative conditions must be met (CJEU, 22 Sept. 2011, Budvar, C-482/09):

1. The later mark must be registered.
2. Its filing must have been made in good faith.
3. It must have been put to genuine use.
4. The proprietor of the earlier mark must have had knowledge of both the registration and the subsequent use.

The role of good faith and statutory presumption

Pursuant to Article 2274 of the French Civil Code, good faith is always presumed. It is therefore for the proprietor of the earlier mark to establish that the later filing was made in bad faith.

Recent case law illustrations

The SWEET PANTS case: acquiescence in the face of extensive commercial use

In its decision of 11 June 2025 (Canada Goose International AG v. Sweet Pants SAS), the Paris Court of Appeal declared actions for invalidity and infringement inadmissible, as they were brought more than five years after the registration of a French semi-figurative mark SWEET PANTS.

• Proven and serious use: the mark had been used since 2012, with growing intensity from 2014 onwards (advertising campaigns, dedicated stores, presence in department stores and on major e-commerce platforms).
• Use in a modified form: slight variations (coloured background, the words “since 1982”) did not affect the distinctive character of the sign.
• Knowledge of the use: public reputation, media presence, and a cease-and-desist letter sent by the claimant in 2016 all demonstrated that exploitation of the mark could not have been ignored.
• Sectoral scope: forfeiture was upheld for clothing but not for headgear, as use on caps had not been sufficiently demonstrated.

This decision underscores that even a major international player (here, Canada Goose) may lose the right to act if it allows concurrent use to become established in the same market segment.

The SCOTT case: insufficient vigilance within a structured group

In its decision of 19 March 2025 (Bifratex SARL v. Scott Sports SA), the Paris Court of Appeal confirmed the inadmissibility of infringement proceedings based on the international word mark SCOTT.

• Continuous exploitation: the later semi-figurative SCOTT mark had been in public use since 2000 on the sportswear market in France and across Europe.
• Good faith presumed: absent contrary evidence, the filing of the later mark was deemed bona fide.
• Genuine use: the word “SCOTT,” being the central and distinctive element, was sufficient to characterise use of the semi-figurative mark.
• Imputed knowledge: the claimant and a sister company in the United States, both responsible for the group’s portfolio, had already brought legal and administrative actions against the defendant. Successive intra-group transfers of the mark could not obscure this knowledge.

The Court held that tolerance exceeding five years, in a context of direct competition and intra-group management, rendered the action inadmissible.

Practical consequences for trademark owners

The risks of prolonged inaction

• Permanent loss of the right to bring infringement or invalidity proceedings against the later mark.
• Weakening of the portfolio and forced coexistence with competing signs.
• Risk of dilution of the mark’s distinctiveness.
• Potential liability for legal costs and expenses.

Strategies for safeguarding rights

• Implement active monitoring of filings and market use.
• Respond swiftly: opposition, invalidity action, cease-and-desist.
• Negotiate coexistence or limitation agreements where necessary.
• Raise awareness within internal teams to ensure early detection of conflicting use.

Conclusion

Forfeiture through acquiescence is far from a theoretical concept: the SWEET PANTS and SCOTT cases demonstrate the strictness with which French courts apply it. They remind trademark owners that protection strategies cannot be limited to registration alone: they demand continuous monitoring and immediate responsiveness to infringements.

Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is forfeiture through acquiescence?
It is the loss of the right to act against a later mark where its use has been tolerated for five years, in full knowledge.

2. Can the bad faith of the applicant exclude forfeiture?
Yes, but it must be proven by the proprietor of the earlier mark, which is rarely admitted.

3. How is knowledge of use established?
Through public reputation, advertising of the use, coexistence in the same markets, or corporate and procedural links.

4. Does tolerance of a local mark have international effects?
Yes, forfeiture applies in each Member State where the use is established.

5. From when does the five-year period run?
From the moment the proprietor becomes aware of the registration and the actual use of the later mark.

Introduction

For trademark owners and intellectual property professionals, the Internet Corporation for Assigned Names and Numbers (ICANN) plays a crucial yet often underestimated role in the protection of digital assets. As the central body coordinating the global Domain Name System (DNS), ICANN develops policies and implements dispute resolution mechanisms that are essential tools in combating cybersquatting, protecting trademarks, and preserving the online reputation of businesses.

Understanding ICANN’s role and knowing how to engage in its decision-making processes has become indispensable for any organization seeking to safeguard its digital identity in a constantly evolving environment.

The role of ICANN in the Internet ecosystem

Founded in 1998, ICANN is a non-profit organization responsible for coordinating the management of databases related to Internet naming spaces and digital addresses. Its main functions include:

• Managing the root of the DNS system;
• Accrediting registrars and authorizing registries;
• Defining policies governing generic top-level domains (gTLDs) such as .com, .org or .xyz, as well as brand extensions (e.g., .loreal);
• Administering dispute resolution policies such as the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension (URS) system.

ICANN does not regulate the content available on the Internet. Its role is to ensure that each domain name is unique, that the DNS remains reliable, and that the global ecosystem operates in a stable and secure manner.

Why ICANN is essential for trademark owners and IP professionals

UDRP and URS procedures

The UDRP provides a global and relatively cost-effective mechanism for recovering domain names registered in bad faith. The URS, while faster but limited to the temporary suspension of an infringing domain name, complements the enforcement arsenal. Together, these procedures remain indispensable tools in the fight against cybersquatting.

The Trademark Clearinghouse (TMCH)

The TMCH is a centralized database where trademark owners can record their rights. This allows them to:

• Receive alerts in case of attempted registrations of similar names during the launch of new gTLDs;
• Benefit from priority access (Sunrise period) to secure domain names corresponding to their marks before the extension opens to the public.

Brand TLDs and the new wave of gTLDs

The expansion of gTLDs, including brand TLDs (e.g., .google, .sky, .canon), offers companies the opportunity to control their own digital space and reinforce consumer trust. The upcoming application round, expected in the coming years, will require anticipation and well-defined strategy.

WHOIS data and access to registration information

Since the General Data Protection Regulation (GDPR) came into force, public access to WHOIS data has been severely restricted. ICANN is currently developing the Registration Data Request Service (RDRS) to regulate access requests. For rights holders, monitoring and contributing to these discussions is vital, as access to registration data remains a key condition for enforcing trademark rights.

Participation in ICANN’s multistakeholder model

ICANN operates under a multistakeholder governance model, where governments, businesses, technical experts, and civil society all contribute to policy development. Rights holders’ interests are primarily represented within the Business Constituency (BC) and the Intellectual Property Constituency (IPC) of the Generic Names Supporting Organization (GNSO). These groups:

• Advocate for balanced policies that respect trademark rights;
• Influence the development of new dispute resolution mechanisms;
• Participate in the review of domain name policies and registry agreements.

Active involvement in these forums enables businesses to directly influence decisions that impact trademark protection and DNS governance.

Strategic implications for corporate digital policy

For businesses, particularly those with a global presence or exposure to imitation, ICANN policies are not abstract governance issues but practical tools. A proactive strategy should include:

• Monitoring ICANN policy developments and upcoming gTLD application rounds;
• Registering key trademarks in the TMCH;
• Building a robust domain name portfolio covering strategic markets;
• Actively using UDRP/URS mechanisms to enforce rights;
• Engaging in the IPC or working with advisors who participate in ICANN policy groups.

ICANN is more than a technical body: it is a global forum where the future of Internet naming infrastructure is shaped. For businesses seeking to protect their brand identity and minimize digital risks, proactive participation in ICANN processes is no longer optional, it is an essential component of modern IP management.

How Dreyfus can assist with ICANN-related matters

At Dreyfus & Associés, we understand the pivotal role ICANN plays in managing the global domain name system and safeguarding digital assets. As businesses face growing challenges in cybersquatting, trademark infringement, and brand protection in the digital space, our firm provides tailored expertise to help you navigate ICANN’s complex policies and ensure compliance with international digital standards.

Dispute resolution

We guide you through UDRP and URS procedures to recover or suspend domain names registered in violation of your rights.

Digital trademark protection

We handle trademark registrations in the TMCH and advise on opportunities to apply for a brand TLD, particularly with the next application round expected in 2026.

Data access and compliance

We assist you in using the RDRS and in requesting WHOIS data access, ensuring compliance with GDPR.

Strategic representation

As an active member of the IPC, our firm represents your interests in ICANN discussions and helps you prepare public comments to influence future policies.

Comprehensive digital strategy

We monitor ICANN developments on your behalf, optimize domain portfolio management, and prepare you for Universal Acceptance (UA), a key condition for an inclusive and effective digital presence.

Conclusion

At Dreyfus, we provide comprehensive legal and strategic advice to businesses navigating ICANN’s complex systems, from domain name dispute resolution to trademark protection and IP enforcement. Whether you are dealing with domain name recovery, new gTLDs, or compliance with WHOIS data access regulations, Dreyfus is here to guide you.

For expert legal advice on ICANN-related matters, contact Dreyfus & Associés. Our experienced team is dedicated to safeguarding your digital presence and intellectual property rights in today’s constantly evolving online environment.

Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is ICANN’s role in trademark-related disputes?

ICANN administers specialized mechanisms such as the UDRP (Uniform Domain Name Dispute Resolution Policy) and the URS (Uniform Rapid Suspension System). These procedures allow trademark owners to recover or suspend domain names registered and used in bad faith, without resorting to national courts.

2. How can a trademark owner protect rights during the launch of new gTLDs?

By registering trademarks in the Trademark Clearinghouse (TMCH), rights holders receive early alerts and enjoy priority access to corresponding domain names during the Sunrise period, securing their rights before general availability.

3. Can ICANN help identify domain name holders after the GDPR?

Indirectly. Since WHOIS data access has been restricted, ICANN has launched the Registration Data Request Service (RDRS), which enables rights holders and authorities to request access to registration data in a GDPR-compliant framework.

4. What are brand TLDs and why do they remain strategic?

Brand TLDs (e.g., .canon, .gucci) are Internet extensions reserved and operated by companies to fully control their naming space. They ensure secure, coherent, and value-enhancing communication around the brand. Their relevance remains intact as the next wave of gTLD applications approaches.

5. How can a business or law firm engage with ICANN’s work?

Participation is possible through the Business Constituency (BC) or the Intellectual Property Constituency (IPC), two influential groups within ICANN. Businesses and advisors may also contribute directly by responding to ICANN’s regular public consultations.

Introduction: a paradox in Trademark Law

In principle, trademark rights are territorial: to oppose the registration of a sign in a country, one must have an existing right in that same territory. However, within the Inter-American region, an exception exists. Thanks to the General Inter-American Convention for Trademark and Commercial Protection of 1929, it is possible to obtain the rejection of a trademark application, even without having a locally registered title, provided that certain conditions are met.

The Inter-American Convention of 1929: an overlooked but powerful tool

The General Inter-American Convention for Trademark and Commercial Protection, adopted in Washington in 1929, currently includes nine ratifying states: United States, Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, and Peru. These countries have officially committed to applying its provisions, enabling them to benefit from the protection and opposition mechanisms provided by the Convention.

In contrast, some signatories of the Convention, such as Bolivia, Brazil, Chile, Costa Rica, Dominican Republic, Ecuador, Mexico, Uruguay, and Venezuela, have only signed the text without proceeding with ratification. While their signatures indicate a willingness to support the principle of trademark protection across the Americas, these countries are not legally bound to apply the Convention’s rules, including the opposition mechanism.

The primary objective of the Convention is to provide effective protection against abusive trademark filings within contracting states. It complements and enhances the Paris Convention by introducing a unique opposition mechanism. This mechanism relies not only on the existence of a registered trademark but also on the knowledge of the prior sign by the applicant and the likelihood of confusion. This system offers broader protection by reducing the need for local registration, in contrast to the Paris Convention, which primarily relies on registration priority.

Article 7: Opposing a Trademark Application without local rights

Conditions for implementation

Article 7 allows a trademark holder to oppose the registration of a similar sign in another contracting state, provided that the following conditions are demonstrated:

• The holder has a protected right (through registration or use) in one of the contracting states;
• The contested applicant had knowledge of this right at the time of filing;
• The goods or services are related and likely to cause confusion.

Proof of knowledge of the prior sign

The central element here is knowledge. It is not necessary to prove worldwide fame, but rather to provide concrete evidence (commercial contracts, email exchanges, trade show participation, advertising campaigns, regional market presence). This aspect fundamentally distinguishes the Inter-American Convention of 1929 from the standards of the Paris Convention, which focuses more on registration priority.

Concrete examples and recent Case Law

• COHIBA Case (2022-2025, United States): The Cuban trademark holder successfully had trademarks registered by a third party in the United States canceled based on the 1929 Inter-American Convention. The judges recognized that the knowledge of the sign and the likelihood of confusion took precedence over the absence of prior local registration.
• SULA Opposition (2020, TTAB): A Honduran trademark holder invoked Articles 7 and 8, which was examined by the U.S. Patent and Trademark Office (USPTO). Although the request failed on product similarity, the principle was upheld: use in one contracting state may be sufficient to challenge a filing in another.

These decisions illustrate the vitality of a text often considered outdated, but still usable to prevent opportunistic filings.

Strategic considerations for Trademark holders

The application of the 1929 Convention offers several advantages:

• Neutralizing bad faith filings without having to pre-register the trademark in all contracting states.
• Expediting oppositions with a clear and recognized legal basis.
• Reducing international protection costs, by focusing filings in strategic countries while benefiting from a conventional shield in others.

However, this protection requires solid evidentiary preparation and a mastery of the procedural timelines of each office.

Conclusion

It is not always necessary to justify local trademark rights to win an opposition: the Inter-American Convention of Washington 1929 proves this. This tool, still underused, should be integrated into any trademark protection strategy operating between Latin America and the United States.

Dreyfus & Associés assists its clients in identifying the most effective legal foundations for protecting and defending their intangible assets.

Dreyfus & Associés is in partnership with a global network of specialized intellectual property lawyers.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Which countries are parties to the 1929 Inter-American Convention?
Ten countries, including the United States, Cuba, Colombia, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, and Peru.

2. Do you need to register your trademark locally to benefit from the Convention?
No. A registered or recognized use in one contracting state may be sufficient to oppose elsewhere.

3. What is the difference between the Paris Convention and the Washington Convention?
The Paris Convention often requires proof of fame. Here, only the knowledge by the applicant and the likelihood of confusion are required.

4. How do you prove the applicant’s knowledge of the sign?
Through any objective evidence: commercial exchanges, contracts, trade shows, regional advertising campaigns.

5. Can you invoke the Convention outside of signatory countries?
No, its effect is strictly limited to contracting states.

Introduction

Since 1 May 2025, the first phase of the reform of the European Union Design Regulation (EUDR) has come into force, introducing significant changes to the design protection system within the European Union. These changes aim to modernize and simplify the protection of designs, thereby enhancing legal certainty and accessibility for businesses and creators.

Overview of phase 1 changes

A. Expanded definitions and scope of protection

The reform clarifies and broadens the definitions of “design” and “product,” specifying visibility requirements and the scope of protection. In particular, the “informed user”(a person with a level of attention higher than that of the average consumer, but without possessing the expertise of a sector specialist) criterion is now explicitly defined, providing clearer guidance for assessing design and model infringements.

B. Procedural improvements

The new EUIPO examination guidelines take these legislative changes into account, thus simplifying procedures and aligning practices with the updated regulations. EU design fees are set out in Annex 1 of the Regulation: there is no longer a separate registration and publication fee, as a single application fee now covers both. In addition, staggered renewal costs for each renewal period include a higher increase for the third and fourth renewal periods a measure criticised by some industry stakeholders but intended to ensure that only EU designs actually used in the market remain registered.
Furthermore, the reform introduces a harmonised deferment of publication, allowing applicants to delay the publication of their design for up to 30 months after filing, providing extended and uniform confidentiality across the European Union, before automatic publication is triggered.

Implications for businesses

A. Impact on design holders and applicants

Businesses holding registered designs or filing new designs in the EU will benefit from a simpler and more predictable registration process. Clarified definitions and streamlined procedures reduce uncertainties and facilitate strategic management of intellectual property rights.

B. Strategic considerations

Companies should review their existing design portfolios to ensure compliance with the new regulations. This may include reassessing protection strategies and filing new designs to take full advantage of the broadened scope of protection.

Management of disputes and oppositions

A. Strengthening legal certainty

The reform introduces clearer criteria for assessing design infringements, relying notably on the “informed user” criterion, which evaluates similarities based on the overall appearance of the product from the perspective of a person familiar with the market and existing designs. This should facilitate dispute resolution and reduce the risk of prolonged litigation. These clarifications benefit both rights holders and alleged infringers by providing a more predictable legal framework.

B. Impact on opposition mechanisms

The updated reform simplifies opposition procedures by harmonising deadlines, reducing the formalities of notices, clarifying grounds for opposition, and allowing fully electronic filing and monitoring. These changes could lead to faster and more efficient conflict resolution. Companies should consider proactively filing oppositions to protect their design rights and fully leverage this streamlined framework.

Future perspectives: Phase 2 (effective from July 2026)

A. Expected changes

Phase 2 of the reform, scheduled for July 2026, is expected to introduce further improvements, such as:

• Unified representation: allowing a representative to act in both trademark and design matters without requiring separate qualifications.
• Strengthening enforcement mechanisms: enhancing tools available for the enforcement of design rights, including customs measures and cooperation with tax authorities.

B. Preparatory steps for businesses

Companies should begin preparing for these upcoming changes by:

• Training legal teams: ensuring that in-house counsel and representatives are informed about the forthcoming reforms.
• Reviewing enforcement strategies: evaluating current enforcement practices to identify areas for improvement in anticipation of Phase 2.

Conclusion

Phase 1 of the EU design reform marks a significant step in modernising design protection within the European Union. Companies should take proactive measures to understand and adapt to these changes in order to maximise the benefits of the updated framework.

Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What are the main changes introduced by Phase 1 of the EU design reform?
Phase 1 introduces clarified definitions of “design” and “product,” specifies visibility requirements, and updates procedural guidelines to simplify the registration process.

2. How do these changes affect companies holding registered designs in the EU?
Businesses will benefit from a more predictable registration process and broader design protection, with clearer criteria for infringement.

3. What impact do these reforms have on design dispute management?
The reforms provide greater legal certainty, facilitating the rapid resolution of disputes and oppositions.

4. What can be expected from Phase 2 of the EU design reform?
Phase 2, scheduled for July 2026, will introduce unified representation and strengthen enforcement mechanisms for design rights.

5. How can companies prepare for Phase 2 of the reform?
Businesses should begin training their legal teams and reviewing enforcement strategies to comply with the anticipated changes.