Nathalie Dreyfus

Introduction : The legal breakup after Brexit

The United Kingdom’s exit from the European Union (Brexit) has dramatically altered the legal landscape, particularly in terms of intellectual property. Before December 31, 2020, intellectual property rights such as trademarks and designs were uniformly protected across the European Union, including the United Kingdom. However, since the end of the transition period, the separation of legal systems has required separate management of intellectual property rights for the UK and the EU.

This article explores the consequences of Brexit on intellectual property rights, particularly for trademarks and designs, and offers solutions to ensure their protection in this new legal environment.

Trademarks after Brexit : what has changed ?

2.1 Automatic conversion of EU trademarks into UK rights

Before Brexit, a trademark registered with the EUIPO (European Union Intellectual Property Office) protected rights across all EU member states, including the UK. Since January 1, 2021, EU trademarks (EUTMs) no longer cover the UK. To prevent trademark holders from losing protection in the UK, the UK Intellectual Property Office (UKIPO) automatically converted EU trademarks into comparable UK rights. These “cloned” marks retain the same filing and priority dates as their EU counterparts but are now governed by UK law.

2.2 European legislative reforms after Brexit

Following Brexit, the European Union continued to strengthen its legal framework for trademark protection. Regulation (EU) 2017/1001 on the European Union trademark was revised to address new challenges, particularly in the areas of cybersecurity and counterfeiting. The EUIPO implemented new tools to facilitate the monitoring of online violations and simplify dispute resolution procedures. These reforms are specific to the EU and do not directly affect trademarks in the UK, but they help reinforce the protection of EU trademarks post-Brexit.

2.3 Post-Brexit UK legislative reforms

The UK has introduced its own distinct legislation for managing trademarks after Brexit. The UKIPO has strengthened its rules to ensure that trademarks in the UK continue to receive the same protection as before, while also aligning with international standards. The UK has also adapted its mechanisms for tackling counterfeiting and IP rights violations, now independent of the EU. This legislation aims to reinforce the protection of rights in the UK and address global challenges related to counterfeiting.

2.4 EU Trademarks still under registration on December 31, 2020

EU trademark applications that were still under registration as of December 31, 2020, benefit from a priority right to file the same application with the UKIPO within nine months after the end of the transition period. This procedure allows holders to maintain their protection in the UK with the same filing date and the same goods and services as their corresponding EUTM.

Designs after Brexit: The new rules in the United Kingdom

3.1 Automatic conversion of registered Community designs

• Community designs registered before Brexit were automatically converted into equivalent UK rights.
• This conversion was carried out at no additional cost to the holders.
• The priority, filing, and renewal dates of the cloned UK rights are identical to those of the original Community designs, ensuring uninterrupted protection in the United Kingdom.

Steps to ensure protection of rights in the UK after Brexit

4.1 Verification of existing registrations and separate registration

After Brexit, it is essential to ensure that intellectual property rights have been properly converted into UK rights. Holders must verify that their trademarks and designs have been cloned in the UK. For new creations, it is imperative to proceed with separate registration with the UKIPO to guarantee continued protection in the UK.

4.2 Monitoring the use of rights : Proof of genuine use

Once rights are registered in both the UK and the EU, it is crucial to monitor the use of these rights in each jurisdiction. Use of the trademark or design in the EU no longer justifies use in the UK, and vice versa. To avoid the cancellation of your rights for non-use, you must be able to demonstrate genuine use in each territory. This step is essential for maintaining the validity of your trademarks and designs in both jurisdictions.

4.3 Defending intellectual property rights

The UK has an effective judicial system for handling intellectual property disputes. In the event of infringement, holders can send a cease and desist letter to demand the cessation of the infringement. If the situation persists, they can bring the matter to specialized intellectual property courts, such as the Intellectual Property Enterprise Court (IPEC), or the Patents Court for more complex cases.

Conclusion : protecting your rights after Brexit

Brexit has separated the systems for protecting intellectual property rights between the UK and the EU. Rights holders now need to manage their trademarks and designs separately in both territories. The key to maintaining continuous protection lies in distinct registration, monitoring the use of rights, and proactively managing disputes. The legislative framework has evolved to allow efficient management of rights in both the UK and Europe.

Dreyfus & Associates supports businesses in protecting their trademarks and designs against the legal challenges arising from Brexit and the separate management of rights between the European Union and the United Kingdom.

Nathalie Dreyfus, with the support of the entire Dreyfus & Associates team

FAQ

1. Does my EU trademark still protect me in the UK after Brexit ?
No, since January 1, 2021, EU trademarks no longer cover the UK. However, the UKIPO has generated comparable UK trademarks to maintain equivalent protection.

2. What should I do if I have a European trademark registered before Brexit ?
European trademarks were automatically converted into comparable UK trademarks without additional fees. You now need to manage your trademarks separately in the UK and the EU.

3. How can I ensure the protection of my designs in the UK after Brexit ?
Community designs were automatically converted into UK rights. However, for new designs, you must now file a separate application with the UKIPO to ensure protection in the UK.

4. What should I do if I haven’t yet filed my trademark or design in the UK ?
You need to file an application with the UKIPO to ensure the protection of your trademark or design in the UK. EU trademarks are no longer valid in the UK since January 1, 2021.

5. What steps should I take to maintain the protection of my rights after Brexit ?
It is essential to file separate applications with the UKIPO for the UK and the EUIPO for the EU. You must also prove the use of your rights in each territory to ensure their validity.

Introduction : impartiality tested by social media

The rise of social media has profoundly transformed human interactions, blurring the lines between private life and professional obligations. In the judicial context, this evolution raises delicate questions about the neutrality and independence of judges. The decision of 5 January 2017 (No. 16-12.394) of the French Court of Cassation illustrates this issue by ruling on the legal qualification of the “friend” link on Facebook. The highest court emphasised that such a virtual link, often created without any significant interaction, cannot automatically be equated with a genuine friendship. This clarification marks an important step in adapting case law to the realities of the digital age.

The distinction between virtual and real friendship

Facebook “friend”: a symbolic link, not presumed to be close

The Court of Cassation held that the term “friend” as used on Facebook reflects the platform’s own terminology rather than a traditional social recognition. In many cases, such a connection results from algorithms, professional contacts, or weak ties, without genuine personal involvement. A virtual connection therefore does not, in itself, indicate emotional closeness or influence. This position ends the automatic conflation of digital and personal relationships. It also reminds us that the law must take into account the specific practices of each digital environment.

No automatic presumption of bias

The decision confirms that a “friend” link on a social network is not, on its own, sufficient grounds to recuse a judge. Without factual evidence of a personal relationship or partiality, bias cannot be established. This stance protects the freedom to use social media while maintaining a high evidentiary standard. It thus strikes a balance between safeguarding the image of justice and acknowledging common digital practices. The Court reaffirmed that only concrete evidence can justify challenging a judge’s impartiality.

Concrete elements that may demonstrate bias

Evidence required by case law

For a recusal request to succeed, it is essential to provide tangible evidence. Such evidence may include:

• Frequent and personalized exchanges between the judge and the party.
• Public expressions of support or positions taken in favor of one party.
• Joint participation in events directly related to the case.
• Precise, verifiable evidence directly linked to the dispute.
• Elements ensuring that recusal is not used as a dilatory or strategic tool without any objective basis.

Probative value and legal requirements

The elements presented must demonstrate an objective appearance of bias, as it would be perceived by a reasonable observer. The criteria include:

• Rejection of isolated or anecdotal evidence (for example, a single screenshot or a one-off connection).
• The need to establish an overall context and a significant frequency of interactions.
• Consideration of consistent indicators demonstrating an objective risk of bias.
• A rigorous factual approach, excluding purely subjective interpretations.
• Ensuring legal certainty and the stability of rendered decisions.

Scope of the decision on judges’ use of social media

Recognition of digital realities

In ruling this way, the Court acknowledges the widespread use of social media and the connections they generate. Digital relationships can exist without implying a real personal bond, and their mere existence does not inherently threaten impartiality. This recognition marks progress in adapting the law to the digital era.

Freedom of use framed by ethical prudence

However, the decision does not exempt judges from their ethical obligations. Their online presence must remain compatible with the requirements of neutrality and restraint. Any interaction likely to create an appearance of bias should be avoided to maintain public confidence in the judiciary.

Implications for public perception of justice

A reassuring decision for judicial neutrality

By requiring concrete proof of bias, the Court reinforces confidence in the independence of judges. This stance reassures that objective criteria, rather than mere appearances, guide the assessment of impartiality.

Risks of negative public perception

Nevertheless, part of the public, unfamiliar with legal nuances, may view these virtual links as a potential source of conflict of interest. This calls on judges and judicial institutions to educate the public about the real significance of such digital connections.

Conclusion

The decision of 5 January 2017 is a cornerstone in defining judicial impartiality in the digital age. It makes clear that the mere existence of a virtual link cannot undermine a judge’s neutrality, absent tangible proof of closeness or influence. This ruling helps to stabilise case law on recusal while providing a clear framework for legal practitioners.

Dreyfus Law firm is part of a global network of lawyers specialising in Intellectual Property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

Can a judge be Facebook friends with a party to a case ?

Yes, but this link alone does not justify recusal.

What evidence can prove bias ?

Frequent exchanges, public support, or direct involvement in the case.

Does the private nature of exchanges affect the analysis ?

No, only proof of a concrete relationship matters.

Does this rule apply to LinkedIn or Instagram ?

Yes, it applies to all social networks.

Can a judge be sanctioned for online activities ?

Yes, in cases of breach of neutrality or restraint obligations.

Introduction

The UDRP (Uniform Domain Name Dispute Resolution Policy) and the URS (Uniform Rapid Suspension System) are two essential extrajudicial mechanisms for effectively combating cybersquatting and abusive domain name registrations. Administered under the auspices of ICANN, these procedures provide trademark owners with a fast and targeted means of enforcing their rights globally, without resorting to lengthy and costly court actions.

However, the success of any action largely depends on the strategic choice of the arbitration and mediation center. Each institution has its own specific features in terms of procedural rules, timelines, costs, and the quality of its decisions. Given this diversity, it is essential to adopt a methodical approach, based on objective criteria and a careful analysis of your needs.

In this article, we share 10 key tips to help you make this crucial decision and optimise the protection of your digital assets.

Legal framework of UDRP and URS proceedings

Tip 1 : Determine whether your dispute requires a UDRP or a URS

Before initiating any action, it is essential to assess the nature of the infringement. UDRP is appropriate where the objective is the transfer or permanent deletion of the domain name, for instance, in cases of clear cybersquatting. URS, which is faster and less expensive, is limited to temporary suspension and applies only to new gTLDs. A strategic review of the facts, the commercial risk, and long-term objectives will ensure that you choose the most appropriate procedure and avoid wasting time on an unsuitable path.

Tip 2 : Review the Supplemental Rules of the selected center

Each accredited center applies the baseline rules defined by ICANN but adds “Supplemental Rules” that can influence the process. These set deadlines for filing, evidence formats, accepted languages, and proof requirements. A thorough review before filing allows you to anticipate constraints and prepare a compliant case file, reducing the risk of dismissal for procedural defects.

Choosing based on the disputed domain name

Tip 3 : Check the policy applicable to the domain extension

Not all extensions fall under UDRP or URS. Certain ccTLDs voluntarily adopt UDRP (e.g., .tv, .me), while URS applies only to new gTLDs such as .shop, .app, or .paris. Before starting a procedure, confirm the applicability of the rules with the registry of the extension. This is critical to avoid initiating an inapplicable action, which could waste costs and delay enforcement.

Tip 4 : Select a center adapted to the language and time zone

The language of the proceedings directly impacts speed and cost. Choosing a center that operates in your language, or in the registration agreement’s language, avoids high translation costs and reduces the risk of errors. Time zone alignment is also important, as it facilitates communication with panelists and administrative staff particularly for urgent exchanges or submission of additional evidence under tight deadlines.

Assessing costs, timelines, and procedural rules

Tip 5 : Balance budget, urgency, and expected outcome

Costs and timelines vary significantly. URS generally costs between USD 300 and 500 and can conclude in under 20 days, but only provides suspension. UDRP, which is more expensive (often several thousand euros), takes an average of 60–75 days and results in a transfer or permanent deletion. Your choice should be guided by whether you prioritise speed or the permanence of the remedy.

Tip 6 : Anticipate technical and administrative constraints

Some centers require specific electronic formats, online filing tools, or strict file size and format rules. Others still require physical submission of signed documents. Failing to anticipate these requirements can lead to delays or even dismissal of the complaint. Preparing for these in advance ensures smooth procedural progress.

Service quality and legal expertise

Tip 7 : Choose a center with a rich and consistent body of case law

Centers such as WIPO have extensive decision databases and research tools that consolidate international case law. This consistency is invaluable for predicting the likely outcome of a case and crafting a strong argument. A center with few precedents offers less predictability in decision-making trends.

Tip 8 : Opt for a center offering flexibility and adaptability

Some disputes require procedural flexibility, such as extensions of deadlines, acceptance of late-filed evidence, or hearings in an additional language. A center capable of tailoring its process to the complexity of your case can greatly improve your chances of success, especially in multi-respondent or cross-border matters.

Other decisive factors

Tip 9 : Consider the reputation and experience of the center

A center’s reputation is often tied to the quality of its panelists and the consistency of its rulings. An experienced center inspires trust among the parties and can also facilitate enforcement of decisions by registrars and registries. This institutional credibility is a key factor in legal security.

Tip 10 : Assess additional services and avenues for appeal

Some centers provide added value through technical assistance, practical guides, or an appeal mechanism in case of an adverse decision. Such features can be decisive, particularly under URS where an appeal process exists. Evaluating these advantages ensures you select a center offering more than just case management.

Conclusion

Selecting the right arbitration and mediation center for UDRP/URS proceedings is a strategic decision that must account for the nature of the dispute, the domain extension, timelines, costs, language, and the institution’s experience and reputation. Applying these ten tips will maximise your chances of success and secure the protection of your digital assets.

Dreyfus & associés assists clients at every stage of these proceedings, backed by its recognised expertise in Internet and domain name litigation.

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

What is the difference between UDRP and URS ?

UDRP allows transfer or permanent deletion; URS provides only temporary suspension.

How do I know if my domain name is eligible for URS ?

URS applies only to new gTLDs approved by ICANN.

Which center should I choose to maximise my chances of success ?

Select a center with a rich case law history and recognised decision consistency, such as WIPO.

Do costs vary from one center to another ?

Yes, each center sets its own fees and terms.

Can an URS decision be appealed ?

Yes, some centers provide an internal appeal mechanism.

Introduction

Since the launch of ICANN’s New gTLD Program in 2012, the domain name landscape has undergone a profound transformation. This initiative has enabled the introduction of hundreds of new thematic, geographic, and sector-specific extensions (.shop, .paris, .app, .law, etc.), offering businesses enhanced opportunities for online positioning. However, this diversification has also brought increased risks of cybersquatting and brand infringement, compelling rights holders to adapt their protection strategies.

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) remains the central, globally recognised mechanism for resolving disputes over domain names registered in bad faith, whether they involve legacy extensions (.com, .net) or the new gTLDs. Today, the UDRP must address a rising volume of disputes and increasingly varied contexts, requiring more tailored approaches.

This article provides a comprehensive overview of developments since the landmark Canyon.bike case in 2014, examines recent trends in UDRP disputes involving new extensions, and outlines strategic recommendations for trademark owners in 2025.

Context and scope of the UDRP for new extensions

Adopted by ICANN in 1999, the UDRP applies to all generic top-level domains (gTLDs), whether they are legacy extensions or part of the New gTLD Program. It allows a trademark owner to obtain the transfer or cancellation of a domain name where three cumulative conditions are met:

• The domain name is identical or confusingly similar to the trademark;
• The domain name holder has no rights or legitimate interests in respect of the domain name;
• The domain name has been registered and is being used in bad faith.

This framework applies to all new extensions, thereby ensuring legal consistency on a global scale.

Evolution of new extensions since 2014

Growth and diversification of gTLDs

Since 2014, the number of available extensions has increased dramatically, now exceeding 1,200 delegated gTLDs. These fall into several categories:

• Thematic extensions (.shop, .tech, .app) targeting specific industries;
• Geographic extensions (.paris, .london) highlighting local presence;
• Community or specialised extensions (.law, .bank), often subject to strict eligibility requirements.

Trends and most-used extensions

Some new extensions have quickly gained prominence due to their universal appeal and marketing potential, such as .xyz, .online, and .shop. These have also become prime targets for cybersquatters, necessitating enhanced monitoring measures.

Case law and landmark decisions

The Canyon.bike case (2014)

This decision remains the first known UDRP case involving a new extension. It confirmed that the extension itself does not influence the assessment of similarity between the trademark and the domain name: the decisive element is the string to the left of the dot.

Recent jurisprudential developments

Since 2014, numerous cases have involved new extensions. UDRP panels apply the same criteria to recent gTLDs as to legacy ones, while considering the specific context of certain extensions, particularly when the extension reinforces the association with the trademark’s industry sector. Decisions also show heightened vigilance toward multiple registrations across different extensions targeting the same brand.

Issues and strategies for trademark owners

Monitoring and anticipation

The proliferation of extensions makes it essential to implement automated and targeted monitoring of trademark terms across all relevant extensions.

Selecting the appropriate procedures

Depending on the case, several options are available:

• UDRP: to obtain permanent transfer or cancellation;
• URS (Uniform Rapid Suspension): for clear-cut cases of cybersquatting, enabling swift suspension;
• Local procedures: such as Syreli for .fr, when the domain name falls under a ccTLD.

Building strong cases

The success of a complaint hinges on demonstrating all three UDRP criteria with clear, tangible evidence of the trademark’s reputation and the respondent’s bad faith (e.g., multiple registrations, deceptive use, redirection to competitor websites).

Conclusion

New extensions offer businesses unprecedented opportunities for online visibility but also open new fronts for rights infringements. The UDRP remains as relevant and effective as ever, provided it is integrated into a comprehensive strategy combining monitoring, rapid action, and careful selection of dispute resolution procedures.

Dreyfus & Associés assists clients in protecting and defending their rights across all extensions, in partnership with a global network of intellectual property law specialists.

Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

What is a new gTLD?

A generic top-level domain introduced after 2012, such as .shop, .paris, or .app, expanding the range of available domain name choices.

Does the UDRP apply to new extensions?

Yes. It covers all ICANN-approved gTLDs, whether legacy or new.

Should all extensions be monitored?

It is advisable to target the extensions most relevant to your sector and market to optimise monitoring costs and effectiveness.

Can multiple domain names be challenged in a single procedure?

Yes, if they are registered to the same holder and circumstances justify joint action.

How can a respondent’s bad faith be proven?

Through evidence such as the trademark’s reputation, redirection to a competitor’s site, or offering the domain for sale at an excessive price.