Nathalie Dreyfus

Introduction

ICANN’s Board decision of 30 October 2025 keeps the Registration Data Request Service (RDRS) running until December 2027, while the community debates whether RDRS should evolve into a long-term, standardised access model (such as SSAD or a successor). The practical consequence is immediate: for the next two years, stakeholders must operate in a “hybrid” environment where disclosure requests are increasingly standardised in format, but still uneven in coverage, timelines, and authentication.

RDRS: what it is (and what it is not)

The Registration Data Request Service (RDRS) is a pilot service launched on 28 November 2023 to standardise the submission format of requests to obtain non-public gTLD registration data from ICANN-accredited registrars. It is intentionally not a final policy framework: it is a “real-world instrument” to measure demand, collect operational metrics, and identify policy gaps, so the community can decide what a durable system (e.g., SSAD) should look like.
What this means concretely: RDRS standardises the front door, not the outcome. Each registrar still applies its own legal assessment and decision-making, within applicable law and ICANN policy.

What ICANN’s 30 October 2025 resolution changes in practice?

ICANN’s Board confirmed that RDRS will continue operating for up to two years beyond the pilot, i.e., until December 2027, while the community works through next steps and policy alignment.
From an operational perspective, three points matter most:
• Continuity: rights-holders and investigators can keep using RDRS as a live channel rather than losing it at the end of the pilot.
• Pressure to expand uptake: the Board explicitly encouraged comprehensive usage by requestors and registrars, without (yet) converting it into a mandatory regime.
• Policy alignment is now the battlefield: ICANN opened a public comment process on the “RDRS Policy Alignment Analysis”, positioning it as the roadmap for addressing gaps (privacy/proxy underlying data, urgent timelines, authentication, etc.).

What ICANN84 in Dublin revealed: the real friction points

ICANN84 (Dublin, 25–30 October 2025) made one reality unavoidable: RDRS is useful, but incomplete, and its weakest points sit exactly where brand protection and law enforcement most need predictability.

Voluntary participation creates structural blind spots

A recurring concern is that participation is not universal. The Governmental Advisory Committee (GAC) highlighted that optional registrar participation translated into about 60% of gTLD domains under management being reachable via RDRS, which inevitably depresses requestor adoption and undermines “single-channel” expectations.

Authentication (especially for law enforcement) is a gating item

Community discussions repeatedly return to one practical question: who is the requestor, and can the registrar rely on that identity fast enough for urgent cases? ICANN’s own communications refer to ongoing work on an authentication protocol for law enforcement users during the extension period.

Integration and workflow efficiency are decisive

Registrars with mature disclosure processes are reluctant to “duplicate” work. The direction of travel is therefore technical: API-based integration that lets registrars map RDRS inputs into their internal tooling, reduce manual handling, and improve turnaround consistency, without forcing a single UI on everyone.

RDRS vs SSAD: why the distinction matters for strategy and compliance

SSAD (System for Standardised Access/Disclosure) is not a synonym for RDRS. SSAD is a policy construct developed through the EPDP Phase 2 process, with 18 interdependent recommendations covering accreditation, request criteria, response requirements, logging, auditing, and service levels.
ICANN’s Operational Design Assessment work illustrates why SSAD has remained complex and resource-intensive to implement, and why the community is now testing what can be improved incrementally via RDRS while policy deliberations continue.
Practical takeaway: RDRS is the operational “bridge” through 2027; SSAD (or a successor) is the potential “highway.” Planning must therefore assume evolution, not stability.

European data protection: how GDPR logic shapes disclosure decisions

For European stakeholders, the disclosure decision is rarely “policy-only.” It is a legal risk assessment structured around GDPR principles: lawful basis, necessity, proportionality, transparency, minimisation, retention, and accountability.

Lawful basis and the “legitimate interest” test

In most rights-holder scenarios, disclosure requests are framed around legitimate interest (Article 6(1)(f) GDPR logic), which requires (i) a legitimate interest, (ii) necessity, and (iii) balancing against the data subject’s rights and reasonable expectations. The CNIL and French legal materials frequently reflect this three-step logic.

Cross-border reality: one DNS, many legal regimes

A single domain name can involve a registrar in one jurisdiction, a registrant in another, and harm occurring across markets. RDRS helps standardise inputs, but it does not harmonise legal thresholds. As a result, outcomes will continue to vary unless and until enforceable service standards and authentication mechanisms mature.

A useful comparison point for France: AFNIC’s disclosure logic

While RDRS targets gTLDs, French operators and rights-holders are already familiar with structured disclosure models at the ccTLD level. AFNIC, for example, provides a formal route to request disclosure (lift of anonymisation) for .fr-type namespaces, illustrating that “structured request + evidence + legitimate interest” is operationally feasible, yet still fact-dependent.

Operational implications by stakeholder type

Registrars and registries: prepare for “standardisation pressure”

• If you are not participating, you risk being operationally and reputationally out of step with ICANN’s “comprehensive usage” direction, even before any mandatory shift occurs.
• If you are participating, the competitive differentiator becomes process maturity: intake quality, documented decision criteria, escalation paths for urgent cases, and technical integration capacity.
For further reading, we invite you to consult our analysis of ICANN registration data policy measures and their impacts.

Rights-holders and investigators: treat RDRS as one channel in a layered toolkit

RDRS remains a valuable path, but not a complete one. We recommend positioning it as:
• a first-line standardised intake for gTLD non-public data; and
• a case-building instrument that strengthens follow-on actions (takedown, registrar escalation, UDRP/URS, court measures) when disclosure is denied or delayed.
For further reading, we invite you to consult our complete guide to UDRP, Syreli, and international alternatives.

Privacy/proxy services: expect policy alignment to narrow discretion

One of the most sensitive gaps concerns access to underlying data behind privacy/proxy services, and how such requests should be handled in a standardised architecture. The policy alignment track explicitly connects RDRS evolution with privacy/proxy workstreams.

Corporate stakeholders: anticipate governance questions, not only “legal” questions

Large organisations operating globally should expect internal questions such as:
• Who is authorised to submit RDRS requests?
• What evidence threshold is required (fraud indicators, brand rights, consumer harm, phishing signals)?
• How do we log, retain, and audit outgoing requests and incoming data to meet internal compliance expectations?

Conclusion

The Registration Data Request Service (RDRS) is no longer a short experiment: with operations maintained through December 2027, it becomes the reference bridge for non-public gTLD registration-data requests, while the community debates whether to harden it into mandatory, authenticated, SLA-driven infrastructure. For European organisations, success will depend on combining high-quality evidence, disciplined disclosure theories, and well-sequenced enforcement paths that remain robust even when disclosure is refused.

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

Q&A

1) Does RDRS replace WHOIS/RDDS?

No. WHOIS/RDDS remains the system for accessing registration data (often partially redacted), while RDRS is a separate channel for submitting disclosure requests.

2) Does RDRS provide automatic access to non-public WHOIS data?

No. There is no automatic disclosure: each request is assessed by the registrar on a case-by-case basis, based on the applicable legal framework and the supporting evidence provided.

3) What is SSAD and how is it different from RDRS?

SSAD is the policy framework proposed by the EPDP Phase 2 process, including recommendations on accreditation, request criteria, response requirements, auditing, and SLAs. RDRS is a pilot operational service collecting data and experience while those policy questions remain unresolved.

4) Why is “law enforcement authentication” such a central issue?

Because urgent, cross-border cases require reliable requestor identity verification. ICANN has identified authentication work as a priority improvement track during the extension period.

5) How should EU rights-holders frame RDRS requests under GDPR constraints?

Requests should be tightly scoped, evidence-driven, and aligned with lawful-basis logic (often legitimate interest), necessity, proportionality, and documented balancing, consistent with CNILstyle reasoning around Article 6(1)(f).

6) If RDRS fails, what are the fastest alternatives to stop abuse?

Depending on the facts: registrar/hosting takedown routes, platform abuse channels, and, when transfer or suspension is needed, UDRP/URS or ccTLD-specific procedures.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

In corporate life, the issue of ownership of intangible assets is far from secondary. The filing of a trademark or the registration of a domain name in the personal name of a company director, even though such signs identify the company’s business, regularly gives rise to disputes. This practice is not automatically unlawful. However, it may become fraudulent where the filing is carried out with knowledge of the company’s prior rights or use, or as part of a strategy aimed at the personal appropriation of a strategic asset. This issue was recently illustrated by a noteworthy decision of the Douai Court of Appeal dated June 12, 2025.

The stakes are significant: judicial transfer of the trademark, loss of the domain name, civil liability, and potentially unfair competition claims.

When may a director file a trademark or register a domain name in their own name?

The principle: freedom to file

Under French law, the right to file belongs to the first applicant. As a matter of principle, no provision prohibits a director from filing a trademark or registering a domain name in their personal name, including where a company is still in the process of being formed. This formal freedom explains many “anticipatory” filings, particularly prior to incorporation.

The limit: corporate interest and loyalty

This freedom nevertheless reaches its limit where the filing takes place in the context of a joint project, a company in formation, or collective exploitation of the sign. A director may not divert to their own benefit an asset intended to identify the company.

To learn more about recent case law developments relating to trademarks filed on behalf of companies in formation, we invite you to consult our previously published article.

The criteria applied by French courts

Prior use for the benefit of the company

Use of the sign prior to filing, even informal, for the benefit of the future company or its associates constitutes a strong indication of fraud where the filing is made in a personal capacity.

The context of a company in formation

Where the filing takes place while the company is in the process of being formed, and the sign has been chosen collectively, courts frequently consider that the applicant acted in the corporate interest, even if the company had not yet acquired legal personality.

The director’s subsequent conduct

Fraud is not presumed. It is based on an intentional element: the applicant’s knowledge of existing rights or prior use that they seek to neutralise or appropriate. Case law consistently recalls that fraudulent intent must be assessed in light of all the circumstances, including those arising after the filing. Fraud is often revealed by subsequent conduct, such as:

• Proposing a licence agreement to the company,
• Threatening to prohibit use of the sign,
• Retaining control of the domain name or professional email addresses.

In a recent case, the Douai Court of Appeal ruled on this issue.

The decision of the Douai Court of Appeal, June 12, 2025, No.22/05989

Facts of the case

A founding associate, who later became president of a company in formation, personally filed several trademarks and registered a domain name corresponding to the sign intended to identify the company’s business. After his dismissal, he claimed ownership of these rights and proposed a licence agreement to the company, while retaining control over the domain name and the professional email addresses.

Decision of the Douai Court of Appeal

In its decision of 12 June 2025, the Douai Court of Appeal held that these filings constituted fraudulent filings, as they had been carried out with full knowledge of the circumstances, within the framework of a collective business creation project, and exclusively in the interest of the company in formation. The Court ordered the transfer of the trademarks and the domain name to the company, finding that the director had sought to appropriate a strategic intangible asset for personal purposes.

The Court also found the existence of acts of unfair competition and parasitism, as the former president, following his dismissal, pursued a competing activity through a newly created company while improperly exploiting the signs and identifying elements of the original company.

Scope of the decision

This decision confirms settled case law: the filing of a trademark or the registration of a domain name by a director is not unlawful per se, but becomes fraudulent where it diverts a sign intended to identify and develop the company’s business, in disregard of the collective interest and the duty of loyalty.

Trademarks and domain names: a converging legal approach

Courts apply a similar line of reasoning to domain names. Personal registration of a domain name corresponding to the corporate name or an exploited trademark may be characterised as fraud or unfair competition where it disrupts the company’s operations or diverts an element of its intangible assets.

Issues relating to identification data and access retention are also assessed in light of loyalty requirements and, where applicable, the principles recalled by the CNIL regarding the use of professional data.

Best practices to secure ownership of rights

• Anticipate ownership issues from the creation phase.
• Include an asset transfer clause in the articles of association or shareholders’ agreements.
• File trademarks directly in the name of the company once incorporated.
• Centralise domain name management at company level.
• Document collective decisions relating to the choice and exploitation of distinctive signs.

Conclusion

The filing of a trademark or the registration of a domain name in the name of a director is not, in itself, fraudulent. It becomes so when the facts demonstrate a disloyal appropriation of a sign intended to identify the company’s business, to the detriment of the company and its associates.

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. Can a company recover a trademark filed by its director?
Yes, through an action for ownership claim where fraud is established.

2. What if the articles of association do not provide for the transfer of trademarks?
The absence of a transfer clause does not prevent legal action, but it weakens the company’s position and makes proof of fraudulent intent more complex.

3. Is an oral agreement between associates sufficient?
It is risky. A written agreement is strongly recommended.

4. Is payment of filing fees by the company decisive?
It is a strong indication, but not an exclusive one.

5. Is the registration of a domain name treated in the same way as a trademark?
The legal reasoning is largely similar, particularly where company operations are disrupted.

This publication is intended to provide general public guidance and to highlight certain issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

An M&A deal is often decided on an element that is mistakenly viewed as “technical” until the documentation is scrutinized: the trademark. Where ownership is clear, registers are properly updated and use is consistent, the trademark supports a significant portion of the valuation, reduces legal uncertainty and facilitates post-acquisition implementation.
Conversely, an unclear chain of title, rights scattered across territories, or a trademark that is challenged or vulnerable (cancellation or revocation) may lead to price renegotiation, reinforced protections, or even the termination of the transaction.

Why trademarks are a decisive asset in M&A?

A trademark is not merely a graphic sign: it is an enforceable right…or a fragile advantage

A trademark is an asset because it grants an exclusive right to use a sign for designated goods and services. It enables the owner to prevent confusing uses, structure a distribution policy, support international expansion and protect marketing investment. However, its value depends on verifiable facts: who owns the trademark, in which territories, for which goods/services, and subject to which contractual constraints?

Common situations in which trademarks weaken the transaction

• Uncertain ownership: the seller uses the sign but is not (or is no longer) the recorded proprietor. This undermines enforcement against third parties and complicates transfer. Under French law, recording transfers and changes is a key condition for opposability.
• Territorial fragmentation: the same sign is owned by different entities depending on the country, complicating a global strategy (communications, social media, distribution, parallel imports). This is common in older portfolios or those built through successive acquisitions.
• Risk of invalidity or revocation: descriptive trademark, serious prior rights, insufficient use for certain classes, overly broad specifications disconnected from actual activity, a portfolio that is “theoretical” rather than defensible.
• Contracts that dilute value: exclusive licenses, imbalanced coexistence agreements, security interests, non-challenge commitments, transfer restrictions or change-of-control clauses.

Trademark audit: the checks that protect price and completion

1) Start from the business strategy

First, identify the portfolio’s strategic marks: the main trademark, sub-trademarks, slogans, logos, country-specific marks, flagship product names, and their role in the company’s growth (line extensions, new markets, new channels). The goal is not merely to take stock, but to confirm that the portfolio truly supports the post-acquisition plan (roll-out, expansion, diversification, internationalisation).

2) Secure the chain of title and opposability

Next, the asset must be regularised before being transferred. In France, INPI sets out the recording of events affecting a trademark’s life (assignment, change of name, merger, etc.), which contributes to publicity and opposability.
Key points of attention: in France and in the European Union, an up-to-date register is a condition for a transfer that is fully opposable and practically usable; for international trademarks, changes of ownership are handled through WIPO procedures.

3) Verify the validity of the sign

A portfolio can be extensive and yet fragile. It is therefore necessary to assess the likelihood that a third party could obtain invalidation of the trademark in contentious proceedings, by examining distinctiveness, relevant prior rights and the market context. This assessment is decisive: it determines the ability to defend the trademark, to invest, and to expand the commercial strategy without paralysing disputes.

4) Verify use and the administrative regularity of the titles

A trademark must remain “alive”. This requires checking renewals, the consistency of recorded data (owner, address, goods/services) and the existence of strong evidence of use (packaging, invoices, campaigns, dated screenshots, commercial documents). Portfolios that have undergone multiple restructurings can become difficult to operate if evidence and documentation have not been centralised.

5) Review the contracts

The buyer acquires a right to use and exploit. Change-of-control provisions, exclusivity clauses, territorial limits, quality-approval obligations, or sub-licensing restrictions can reduce value, constrain strategy or trigger renegotiation. A licence misaligned with the post-acquisition strategy may, in practice, neutralise a portion of the valuation.

6) Integrate the digital perimeter

A trademark’s digital footprint is inseparable from the trademark: domain names, marketplaces, social media, content and accounts. On certain platforms, access to trademark-protection tools requires proof of ownership and consistency between the recorded proprietor and the operating entity. Any inconsistency in the register can delay critical actions (content removal, seller blocking, internal trademark-protection processes).

7) Do not overlook data

Where valuation relies on customer relationships, marketing performance and customer files, compliance becomes an economic parameter. CNIL recalls the rules applicable to the sale/transfer of customer databases (information, rights, proportionality, security, etc.).

From the audit report to transaction clauses: securing the transaction without unnecessary over-negotiation

Match each identified risk with an appropriate measure

A weakness in title or a latent dispute does not automatically require abandoning the transaction. However, it must be translated into a clear mechanism: price adjustment, price holdback, escrow, capped indemnity, or a targeted condition precedent (recording an assignment, releasing a security interest, contractual regularisation). The logic is straightforward: a specific risk calls for a specific, proportionate and verifiable response.
Organise pre- and post-completion regularisation while protecting the timetable
Regularisation takes time: recordals, multi-territory signatures, supporting documents and historical corrections. For sellers, putting IP assets “in order” ahead of time reduces negotiation fatigue and strengthens the file’s credibility. For buyers, the audit should be approached as a structuring decision: what must be resolved before completion and what can be treated afterwards, with appropriate protections and a controlled timetable.

Conclusion

In M&A, trademarks can make or break the transaction: they concentrate value, but also potentially decisive weaknesses (opposability, territorial scope, use, contracts, disputes, digital issues). A structured audit and rigorous contractual implementation turn trademarks into a tool for security and negotiation, rather than a late-stage source of uncertainty.

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

Q&A

1) What does a trademark audit cover in an M&A transaction?
It involves reviewing ownership, validity, use, contracts and disputes relating to trademarks in order to secure price and completion.

2) What documents should the seller prepare to avoid delays?Up-to-date certificates and register extracts, assignment deeds and evidence of recordal, renewal schedules, evidence of use (invoices, catalogues, packaging, campaigns), contracts (licences, distribution, coexistence, security interests) and any litigation history.

3) What are the most frequent chain-of-title issues?
Trademarks filed in a founder’s name and used by the company without recorded transfer; intra-group transfers not recorded after restructuring; errors in corporate name or address; partially executed assignments; assignments unclear as to scope (territories/classes).

4) How should a trademark owned by different entities across territories be handled?
Through a rights map and a strategy combining additional filings, coexistence agreements, licences, intra-group reorganisation, or a trademark adjustment aligned with commercial priorities.

5) What if the audit reveals a missing recordal or a missing deed?
Implement a regularisation plan (reconstituted deeds, signatures, recordals), typically through a condition precedent or a specific covenant, supplemented where necessary by a holdback or escrow.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

French and European regulations on labelling, packaging and sorting are undergoing a major transformation with the entry into force of Regulation (EU) 2025/40, also known as the PPWR (Packaging and Packaging Waste Regulation). Published on January 22, 2025, this regulation replaces Directive 94/62/EC and establishes a harmonised and binding framework for all packaging placed on the European market, with clear objectives aimed at reducing waste and promoting the circular economy.

This represents a structural legal turning point, engaging not only environmental law, but also consumer law and trademark law, for both food and non-food packaging. Companies must now integrate these obligations into their compliance strategies and legal governance frameworks.

What is the legal framework governing labelling, packaging and sorting?

A directly applicable and strengthened European framework

Regulation (EU) 2025/40, adopted on December 19, 2024 and published on January 22, 2025, now constitutes the core European legal instrument governing packaging and packaging waste. It replaces Directive 94/62/EC and introduces binding rules on the design, durability, recyclability, labelling and management of packaging waste across all Member States.

This harmonisation aims to:

• Reduce packaging waste,
• Promote reuse and recycling,
• Foster the circular economy throughout the internal market.

At national level, these provisions interact with the existing French regulatory framework, in particular the AGEC Law, which already imposes obligations relating to the reduction and recycling of packaging.

When do the main measures enter into force?

A progressive yet legally binding timetable

The PPWR entered into force on January 22, 2025. Its main milestones are structured as follows:

• August 12, 2026: mandatory application of the new rules on packaging design, harmonised labelling and consumer information for companies and Member States.
• 2028: introduction of a minimum recycled content requirement for certain categories of plastic packaging, for example at least 30% recycled plastic in PET packaging.
• 2030: more ambitious reuse and recycling targets must be met.
• 2035: extension of recycling obligations to additional types of packaging, with a goal of large-scale recyclability.

What obligations apply to food and non-food packaging?

Challenges specific to food packaging

Food packaging combines environmental constraints with strict health and safety requirements.
Packaging must ensure product safety while avoiding any misleading information regarding the nature, composition or preservation of the product.

From 2026, new rules will apply, reinforcing in particular:

• the clarity and legibility of sorting instructions,
• consistency between the packaging and the environmental message conveyed,
• traceability of the materials used.

Constraints for non-food packaging

For non-food products (cosmetics, household products, electronics, textiles, etc.), obligations will also apply from 2026, covering new standards of design and labelling. Companies will need to anticipate reuse requirements and the reduction of unnecessary packaging in product design, relying on technical data and documented evidence of compliance.

Why are sorting and recycling at the heart of the new rules?

Persistent complexity for consumers

Despite the widespread use of the Triman logo  in France, studies show that consumers still have difficulty understanding sorting instructions.

The European regulation now requires a clear hierarchy of information, combined with standardised pictograms.

Companies must explain:

• what can be recycled,
• how to dismantle the packaging where applicable,
• what must not be disposed of in recycling bins.

The central role of environmental instructions for use

Instructions for use will no longer concern solely the use of the product, but also its end of life.
This obligation directly extends the consumer law duty to provide clear and accurate information.

What impact do these rules have on trademarks and environmental claims?

The PPWR has a direct impact on the use of environmental claims on packaging. From 2026, statements such as “recyclable”, “eco-friendly” or “biodegradable” may only be used if they are based on objective and verifiable criteria. The new regulatory framework requires absolute consistency between the trademark message and the technical reality of the packaging.

The absence of technical substantiation for such claims may be considered a misleading commercial practice, engaging the company’s liability regardless of its status as a trademark owner. From 2028, enforcement is expected to intensify, particularly in the context of market surveillance and product compliance checks.

To learn more about green brands and greenwashing, we invite you to read our previously published article.

Conclusion

French and European regulations on labelling, packaging and sorting now form a structuring legal framework, with obligations progressively applicable between 2026 and 2035, aimed at strengthening recyclability, reducing waste and harmonising practices across the internal market.

Integrating these constraints into companies’ legal and operational strategies is essential to ensure compliance and to mitigate significant legal risks.

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. How can regulatory developments be anticipated?
To anticipate these developments and minimise legal risks, it is recommended to:

• conduct packaging audits incorporating the new European obligations;
• document evidence of recyclability and recycled content;
• align environmental claims with certified technical data;
• involve legal, CSR and marketing teams from the product design stage.

2. What sanctions apply in the event of non-compliance?
Administrative penalties, unfair competition actions, consumer litigation and reputational damage.

3. Does the Triman logo remain mandatory?
Yes, the Triman logo remains mandatory in France, but it will gradually have to be coordinated with the harmonised European pictograms provided for under the PPWR. In the medium term, companies will have to manage the coexistence of different systems, requiring particular vigilance in terms of clarity and hierarchy of information.

4. Does the regulation require a complete redesign of existing packaging?
Not systematically, but in many cases adaptation will be unavoidable, particularly for:

• packaging that is not recyclable by design,
• packaging using complex composite materials,
• packaging containing non-compliant environmental claims.

5. Why anticipate obligations that only apply in 2028 or 2030?
Because current decisions relating to design, supplier contracts and trademark strategy commit the company for several years. Anticipation helps secure investments legally, avoid rushed redesign costs and transform regulatory compliance into a controlled competitive advantage.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific circumstances or to constitute legal advice.

In the luxury industry, perfume is far more than just a fragrance: it is a complex intangible asset composed of multiple layers of creation. For effective protection, it is imperative to dissect the product into its four major components: the scent (the juice), the formula (the recipe), the packaging (the bottle/box), and the name (the trademark).

Each of these elements falls under a distinct legal regime. Dreyfus Law Firm offers this expert guide to navigating between Copyright, Trademark Law, Designs & Models, and Trade Secrets.

The scent (The Fragrance): The challenge of the intangible

This is the soul of the perfume, yet it remains the most difficult element to protect legally in France today. This is a subject we monitor closely, and one we have already addressed particularly in our article entitled Fragrance and Intellectual Property: which protection?.

Why copyright does not (yet) apply to scent

Unlike music or literature, current French case law refuses to consider the fragrance (the perceived scent) as a “work of the mind” (œuvre de l’esprit) protected by copyright.

• The Judicial Position: The French Cour de cassation considers that a fragrance proceeds from the implementation of technical know-how, rather than from a purely creative artistic endeavor identifiable with sufficient precision.
• The Consequence: One cannot sue for “copyright infringement” for the reproduction of a scent alone.

The solution: Acting on grounds of unfair competition

While the scent is not a “work,” servile imitation remains punishable. To protect a scent against “dupes” or copies, we take action based on unfair competition (concurrence déloyale) or free-riding (parasitisme).

• The Legal Argument: The goal is to prove that the competitor sought to appropriate the wake (sillage) of your perfume to benefit from your investments without cost, creating a risk of confusion or undue value capture.

The formula (the recipe): The realm of secrecy

If the scent is the result, the formula is the technical process (the list of chemical ingredients and their dosage) used to achieve it.

Trade secrets rather than patents

Patent filing is rare in perfumery because it requires disclosing the formula to the public (which enters the public domain after 20 years). The preferred strategy is that of Trade Secrets (Secret des affaires).

• The Principle: The formula must remain confidential information, known only to a very restricted number of people (the “nose,” the laboratory).
• Legal Protection: This relies on the implementation of reasonable protection measures (physical and digital) to prevent the theft of the formula.

Contractualization as a shield

For the secret to hold, it must be legally secured by contracts:

• Non-Disclosure Agreements (NDAs): Essential with laboratories, raw material suppliers, and employees.
• Non-Compete Clauses: To prevent a perfumer from joining a competitor with your formulas in mind.

Packaging (bottle and box): The alliance of design and trademark

The bottle is the first visual point of contact with the consumer. It is an industrial art object that benefits from powerful cumulative protections.

Designs & models and copyright

• Designs & Models: This is the premier protection for the aesthetic appearance of the bottle (its shape, lines). Filing must be done before the product is disclosed to guarantee its novelty.
• Copyright: If the bottle is original and bears the imprint of its author’s personality, it is protected by copyright from the moment of its creation, without formal registration (although a probatory deposit is recommended).

The three-dimensional trademark

In exceptional cases, the shape of the bottle itself can be registered as a trademark (3D trademark) if it is sufficiently distinctive for the consumer to recognize the origin of the product by its shape alone (e.g., the iconic Jean Paul Gaultier torso bottle).

The name: The trademark monopoly

The name is the most valuable asset in the long term. Once the scent has evaporated, the name remains.

Word mark registration

The perfume name (e.g., “N°5”) and the House name must be registered as word marks.

• Filing Classes: It is crucial to target Class 3 (cosmetics, perfumes) but also Class 35 (advertising, business management) for retail and distribution.
• Availability: An in-depth clearance search is indispensable to ensure the name is not already taken.

Protection against cybersquatting

The name must also be protected online. Reserving domain names (.com, .fr, and new extensions like .luxury) must be synchronized with trademark filing, as we explain in our article on Domain Names and New gTLDs.

Litigation expertise of Nathalie Dreyfus

Protecting these four elements requires a global strategy, but also the ability to defend one’s rights in court when counterfeiting occurs.

Dreyfus Law Firm stands out through the specialized expertise of its founder, Nathalie Dreyfus. As a French and European Trademark Attorney, she possesses recognized experience not only in strategic consulting but also in handling complex litigation.

Her expertise is regularly sought in high-stakes cases, requiring perfect mastery of case law from the French Cour de Cassation and Courts of Appeal regarding intellectual property. This fine-tuned knowledge of judicial decisions allows for the anticipation of legal risks linked to scent or shape protection and the construction of solid defense cases for perfume houses.

You can view our founder’s full profile here: Nathalie Dreyfus.

FAQ: Frequently asked questions

1. Can you patent a scent?
   No. A scent cannot be patented. Only the technical manufacturing process (the chemical formula) could theoretically be patented, but this requires publication, which contradicts the industry’s secrecy strategy.

2. How do I prove my scent was copied?
   Proof is generally established via chromatography analysis (chemical analysis) comparing the original juice and the copy, combined with olfactory tests by experts, to demonstrate economic parasitism.

3. Should my perfume name be descriptive?
   Absolutely not. A trademark must be distinctive. Naming a perfume “Rose Scent” may be refused registration because the term describes the product. It is recommended to choose an arbitrary or fanciful name.

4. What is the difference between a “dupe” and a counterfeit?
   Counterfeiting copies a registered right (the name, the logo, the bottle shape). A “dupe” often imitates the scent (not protected by copyright) and the vibe, while changing the name. Against a dupe, we act on grounds of unfair competition; against a counterfeit, we act for trademark or design infringement.

Dreyfus Law Firm is your strategic partner for securing your intangible assets. Contact us to audit the protection of your olfactory creations.

Introduction

In an economic environment characterised by intensified competition, the digitalisation of exchanges and the rapid circulation of content, trademarks have become a key strategic asset. They embody economic value, reputation and consumer trust. Yet many companies still underestimate the technical complexity of trademark law and intervene too late, when the legal risk has already materialised.
Knowing when to seek the assistance of a trademark law expert is not a matter of legal comfort, but a strategic decision. Whether it involves creating a distinctive sign, preventing an infringement action or deploying an effective defence strategy, the involvement of a specialist makes it possible to anticipate, secure and, above all, arbitrate risks.

Understanding distinctive signs and the challenges of their protection

What is a distinctive sign under trademark law?

A distinctive sign is a sign capable of identifying the commercial origin of goods or services and distinguishing them from those of competitors. It may take various forms: a word trademark, logo, slogan, shape, colour, or even a sound or animation in certain cases.
However, not all signs are eligible for protection. Trademark law excludes, in particular, descriptive, generic or customary signs, as well as those contrary to public policy. Assessing distinctiveness requires a refined legal analysis, which is often underestimated at the filing stage. Independently of these absolute grounds for refusal, a sign may also be legally unavailable due to prior rights held by third parties, such as registered trademarks, company names, trade names or domain names, even if it is distinctive in itself.

Why is distinctiveness a critical point of attention?

A trademark that is weakened from the outset exposes its owner to significant risks: refusal of registration, third-party oppositions, or subsequent invalidity or revocation. A trademark law expert plays a key role in securing the choice of the sign, taking into account the relevant sector of activity, the target public and applicable case law.
Example: the French Supreme Court (Cour de cassation) set aside an appellate decision that had considered the trademark “Silhouette” to be distinctive on the grounds that the goods concerned were slimming-related substances, from which it followed that the sign could designate a characteristic of those goods (Cass. Com., July 12, 2005, No. 04-12.146).

When does trademark law expertise become essential?

Upstream: creation, filing and protection strategy

The first reflex must be anticipation. Before any commercial launch, the expert conducts in-depth prior rights searches and designs a coherent filing strategy, both at national and international levels. This approach helps avoid marketing investments in a sign that is legally unavailable.
Companies can file their trademarks with INPI for protection in France, with the EUIPO for a European Union trademark, or use the Madrid System managed by WIPO for streamlined international protection.

During use: monitoring and risk management

A registered trademark is not automatically protected in practice. Monitoring trademark registers, domain names, marketplaces and social networks is essential. The expert identifies potential infringements and recommends proportionate actions, ranging from cease-and-desist letters to litigation.

In crisis situations: opposition, disputes or litigation

Once a conflict has arisen, the intervention of a specialist becomes decisive. Opposition proceedings before the INPI or the EUIPO, infringement actions, settlement negotiations: each decision is based on a precise legal and strategic assessment, taking into account evidence, deadlines and economic stakes.

Trademark infringement: identifying, qualifying and acting effectively

How can a situation of infringement be identified?

Trademark infringement involves the unauthorised use of an identical or similar sign for identical or similar goods or services, creating a likelihood of confusion. The analysis is not limited to a visual comparison; it also incorporates phonetic, conceptual and contextual criteria.

Why is acting quickly essential?

Inaction weakens the trademark owner’s position and may be interpreted as acquiescence. A trademark law expert assesses the urgency, the seriousness of the infringement and the most appropriate course of action, whether judicial or extrajudicial.

Example: a company discovers the exploitation of its trademark through a fraudulent domain name used for online sales. A strategy combining a cease-and-desist letter, a UDRP procedure and platform takedown notices allows the risk to be neutralised swiftly. The firm has recognised expertise in domain name matters.

Building a defence and trademark valorisation strategy

Legal defence and overall consistency

Defending a trademark is not limited to reacting to infringements. It forms part of a broader strategy, aligned with the company’s commercial objectives and communication policy. The expert supports decision-making by assessing the cost/risk/opportunity balance.

Valorisation and securing intangible assets

Beyond litigation, trademark law is a powerful tool for valorisation: licensing, assignments, partnerships and fundraising. A legally robust trademark strengthens a company’s credibility with investors and business partners.

Conclusion

Seeking the assistance of a trademark law expert is a structuring step at every stage of a trademark’s life cycle: creation, use, defence and valorisation. In a context where infringements are multiplying and becoming increasingly complex, legal expertise makes it possible to turn risk into a competitive advantage.
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

Q&A

1. When should a trademark law expert be consulted?
As early as the reflection phase on the choice of a name or logo, and before any filing or commercial launch.
2. Is an expert indispensable to file a trademark?
Filing is possible without an expert, but professional support significantly reduces legal risks.
3. What are the risks of a poorly drafted trademark filing?
An imprecise or overly broad specification may weaken the trademark, limit its enforcement or expose it to invalidity or revocation actions.
4. Is an unused trademark protected?
The absence of genuine use may lead to revocation of trademark rights.
5. Is trademark monitoring mandatory?
It is not legally mandatory, but it is essential in practice to preserve trademark rights.
6. What is the difference between opposition and infringement?
Opposition arises during the trademark application phase, whereas infringement sanctions the unauthorised use of a protected sign.
7. Can a company defend itself alone against an infringement claim?
In practice, this entails significant risks. Incorrect legal qualification or an inappropriate response may aggravate the situation. Expert support helps structure a coherent and proportionate defence.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

Filing a trademark in the United States is an essential step for any business seeking to secure its growth in the world’s largest market. However, the U.S. system differs significantly from the French or European model: in the United States, trademark rights are fundamentally based on actual use in commerce. Unlike in the European Union, where registration alone creates a right, U.S. law requires that the trademark be genuinely used in interstate commercial activity.

For a foreign entrepreneur who has not yet launched products or services in the United States, this requirement may constitute a major obstacle. It is precisely to address this need that the USPTO created the Intent-to-Use (ITU) mechanism. This system allows a trademark to be filed even before it is used, provided that the applicant has a bona fide intention to use it in the near future. It is a particularly strategic tool, offering the ability to secure a sign, obtain a priority date, and prepare for an orderly entry into the U.S. market.

In this article, we present a rigorous and detailed explanation of the mechanics, steps, advantages and risks associated with this framework. Our aim is to support French and European companies in building a robust trademark strategy that complies with U.S. requirements.

Understanding the “intent-to-use” basis in the United States

The Intent-to-Use system is built on a simple yet decisive principle: allowing an applicant to reserve a trademark that has not yet been used, while maintaining the historical connection between use and protection. Unlike filings made in France before the INPI or before the EUIPO, the USPTO does not immediately register a trademark filed under an ITU basis. It will only be registered once use is demonstrated.

This approach aims to prevent speculative filings while allowing foreign companies to anticipate their market entry. In other words, the U.S. legislator seeks to encourage genuine, well-founded projects and discourage filings made for convenience. For this reason, the declaration of intent must be specific, sincere, and well-founded: a purely theoretical intention is insufficient.

The filing bases available before the USPTO include use in commerce (Section 1(a)), intent to use (Section 1(b)), and filings based on foreign rights. For foreign companies preparing entry into the U.S. market, the ITU basis remains the most commonly used mechanism.

The full process of an Intent-to-Use application

Initial filing

The applicant submits its trademark application to the USPTO under Section 1(b). At this stage, no proof of use is required, but the applicant must declare under oath that it has a real and bona fide intention to launch its products or services in the United States in the short or medium term. This declaration carries legal consequences.

Examination and publication

Once filed, the application undergoes the standard examination process: assessment of distinctiveness, analysis of potential conflicts, and review of the goods and services description. If no objections are raised, the application is published in the USPTO’s Official Gazette. Third parties then have an opposition period during which they may challenge the registration on the basis of prior rights or likelihood of confusion.

Notice of Allowance (NOA)

After publication and in the absence of opposition, the USPTO issues a Notice of Allowance. This step confirms that the trademark may proceed to registration once proof of use is provided. The trademark is therefore not yet registered, but it is accepted in principle.

Statement of Use (SOU)

The applicant has an initial six-month period to file a Statement of Use, accompanied by a specimen demonstrating commercial use. This proof may take the form of a photograph of the product, a screenshot of an online sales page, packaging, invoices, or any document showing actual use in interstate commerce.

If use began before issuance of the NOA, it is possible to submit an Amendment to Allege Use, allowing the registration process to be accelerated.

Extensions of time

If the company has not yet begun use, it may request up to five successive six-month extensions. In total, the applicant has a maximum of three years from the NOA to submit proof of use. Otherwise, the application will be abandoned and the priority date lost.

Strategic considerations for French and European companies

The Intent-to-Use mechanism is a major strategic tool. It allows applicants to secure a crucial priority date in sectors where filings proliferate, such as cosmetics, fashion, technology or wellness. For a European company in an expansion phase, an ITU filing provides the necessary time to plan a commercial launch without risking being overtaken by a local competitor.

However, this flexibility requires strict discipline. An undocumented intention to use may be challenged, particularly in the context of an opposition or a cancellation action. Likewise, insufficient or weakly substantiated use may result in invalidation of the registration.

We strongly recommend retaining documents that demonstrate preparation for use: market studies, exchanges with U.S. distributors, prototypes, pre-orders, or advertising developments. These elements reinforce the credibility of the original intention.

Finally, once the trademark is registered, the obligation to use it continues. The owner must file periodic maintenance declarations to preserve its rights, failing which the registration may be cancelled.

Conclusion

The Intent-to-Use system offers a particularly valuable strategic framework for foreign companies, provided it is used with rigor and caution. This mechanism enables applicants to secure priority, anticipate entry into the U.S. market, and prepare for a commercial launch in optimal conditions. However, it also imposes strict deadlines, close monitoring of use, and ongoing vigilance.

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

Q&A

1. Does an Intent-to-Use filing provide immediate protection against counterfeiting?

It grants a priority date, but full protection arises only upon registration.

2. Is the U.S. system compatible with a European filing?

Yes. Coordinating both strategies is recommended to harmonise priority claims and use requirements.

3. What types of documents constitute valid proof of use?

Product photographs, packaging, sales pages, invoices, screenshots, or labels.

4. Is a simple publication on a website sufficient?

No. Use must occur in interstate or international commerce.

5. Can the goods and services be amended after filing?

Substantive modifications are prohibited; only clarifications of the wording are allowed.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific situations nor to constitute legal advice.