Nathalie Dreyfus

Introduction

The launch of professional accounts on Instagram marked a decisive step in the evolution of corporate communication. Social media platforms are no longer merely channels for institutional expression; they are now fully integrated into business development strategies, customer relations, and the enhancement of intangible assets.

However, this evolution entails a specific and often underestimated legal risk : “username squatting”, namely the appropriation by a third party of a username corresponding to a trademark or distinctive sign. In a digital environment where control over identity determines credibility and visibility, securing identifiers has become a major strategic issue.

Instagram and professional accounts : a strategic asset at risk

The shift to professional accounts has significantly transformed the nature of Instagram profiles. Access to audience analytics, promotional tools and commercial features has turned the account into a genuine business asset.

In this context, the username is no longer a secondary choice. It concentrates trademark visibility on the platform and determines how easily consumers can identify and find the company. It also contributes to consistency across digital channels, including domain names and other social media platforms.

When a third party registers or exploits this identifier, the consequences go beyond mere technical inconvenience: public confusion, loss of traffic, trademark dilution and a weakening of the overall digital strategy may result.

Username squatting : definition, mechanisms and legal risks

Username squatting refers to the registration of a username identical or similar to a trademark, generally with speculative or harmful intent. This practice follows the logic of cybersquatting observed in domain names, now transposed to social networks.

Motivations may vary : resale at a high price, traffic diversion, exploitation of a trademark’s reputation, and more generally, of a company, or even identity impersonation intended to mislead consumers.

From a legal perspective, the risks are significant. Where a trademark is registered, the use of a username incorporating the protected sign may constitute trademark infringement if it amounts to use in the course of trade likely to create a likelihood of confusion. Case law acknowledges that a digital identifier may qualify as trademark use where it seeks to attract public attention in a commercial context.

In the absence of a sign being filed, action may be brought on the grounds of unfair competition or parasitism. In such cases, fault, damage and a causal link must be demonstrated, requiring a detailed analysis and solid evidentiary support.

Beyond litigation, damage to online reputation may occur rapidly and have lasting consequences, particularly where the disputed account disseminates misleading or harmful content.

Legal grounds for taking action against the misappropriation of a username

Trademark law constitutes the primary legal tool. Registration with the INPI, EUIPO, or through an international filing provides an exclusive right that may be enforced against unauthorized third-party use.

In parallel, Instagram, and more generally the Meta group, provides internal reporting procedures in cases of intellectual property infringement. These mechanisms require evidence of ownership and proof of the alleged infringement. The strength of the file and the rights holder’s responsiveness are decisive factors.

Where necessary, a formal cease-and-desist letter based on trademark infringement or unfair competition may have a strong deterrent effect. In certain cases, the intervention of specialized counsel is sufficient to secure voluntary transfer of the username.

Prevention : protecting your trademark before opening a professional account

Prevention remains the most effective strategy. Reserving usernames should be integrated into any trademark launch or development strategy, alongside trademark filing and domain name registration.

Implementing digital monitoring enables early detection of abusive registrations and allows prompt action. Such monitoring forms part of a broader policy for managing intangible assets and governing digital identity.

To learn more about the importance of monitoring your trademark on social media, we invite you to read our previously published article.

A global strategic approach : digital consistency and trademark protection

Username squatting should not be viewed in isolation. It forms part of a broader reflection on the consistency and security of a company’s digital presence.

Alignment between the registered trademark, domain names and social media identifiers strengthens commercial credibility and limits the risk of impersonation. Rigorous digital identity governance helps prevent fraud, reputational damage and traffic loss.

Today, digital identity constitutes a fully-fledged intangible asset. Its protection should be approached with the same level of rigor as other intellectual property rights.

Conclusion

The launch of professional accounts on Instagram offers considerable commercial opportunities and plays a key role in corporate visibility strategies.

However, the risk of username squatting requires increased vigilance. Effective protection relies on a combination of prior trademark registration, strategic reservation of identifiers and swift action in the event of infringement.

In a competitive digital environment, securing a username is not a minor operational detail; it is a major legal and strategic issue.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. Can a company reserve a username without immediately using the account ?
Yes. Preventive reservation of a username is recommended even if the account is not immediately active. It prevents third-party appropriation and secures future digital strategy.

2. Does the inactivity of a squatted account make transfer easier ?
Not automatically. Inactivity alone is insufficient; infringement of prior rights or violation of platform rules must be demonstrated.

3. Can a slightly different username still create legal issues ?
Yes, if the similarity creates a likelihood of confusion in the public’s mind. Assessment is case-specific and depends on the trademark’s reputation and the context of use.

4. Is a username considered a company asset ?
Indirectly yes. As part of digital identity, it contributes to trademark recognition and coherence, potentially impacting the overall valuation of intangible assets.

5. Is social media monitoring truly necessary for SMEs ?
Yes. The risk of impersonation does not only affect large corporations. Appropriate monitoring enables early detection of infringements and limits their impact.

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

Introduction

In its Deity Shoes case of December 18, 2025, the Court of Justice of the European Union (CJEU) clarified with remarkable precision the conditions for protection of community designs.

Through this decision, the Court reaffirmed two fundamental principles: first, that protection under Regulation (EC) No 6/2002 is subject solely to novelty and individual character. Second, that the existence of fashion trends cannot lower the threshold required to establish individual character.

In recent years, fast fashion has profoundly transformed the fashion industry. Within weeks sometimes days a trend spotted on a runway or social media platform is reproduced on a large scale. The phenomenon of “dupes” products openly marketed as near-identical alternatives at lower prices further intensifies this pressure. We invite you to read our article previously published on this issue.

This judgment arises in a context marked by increasing litigation related to fashion, product customization and rapid reproduction practices. It now stands as a key reference for design right holders throughout the European Union.

The background of the case: A revealing illustration of contemporary creative practices

Deity Shoes marketed footwear protected by community design registrations. Its creative process relied on selecting and combining components sourced from catalogues of Asian suppliers. Colors, materials, decorative elements and accessories were chosen from pre-defined options and assembled into a final product intended for the European market.

When sued for counterfeiting, the defendant companies challenged the validity of the asserted rights. In their view, the designs merely resulted from the juxtaposition of pre-existing elements, without genuine creative contribution, and therefore could not meet the statutory requirements.

The CJEU was asked to clarify two sensitive issues:

• Whether a minimum threshold of creativity exists under EU design law;
• Whether fashion trends affect the assessment of individual character.

Fundamental reminder: no “minimum degree of creativity” required for design protection

One of the central questions referred to the Court concerned the possible existence of a minimum creativity threshold. The defendants argued that the contested designs reflected nothing more than combinations of existing elements and did not demonstrate any particular intellectual effort.

The Court rejected this reasoning unequivocally. Protection under Regulation No 6/2002 cannot be made conditional upon a “minimum degree of creativity” or a “particular intellectual effort.”

The Court clearly distinguished design law from copyright law. While copyright protects original “works” reflecting the author’s personality, design law protects new and individualized objects, often of an utilitarian nature and intended for mass production.

Accordingly, the assessment does not focus on the intensity of the creative process but on the final product. Novelty and individual character must be evaluated through an objective comparison with prior designs. The concept of “designer,” referred to in Article 14 of the Regulation, is relevant only for determining ownership and does not introduce any additional substantive condition for protection.

Design law: is the customization of a pre-existing design sufficient to establish individual character?The Court further clarified that “the fact that a design results from the personalization of a basic model […] is not, in itself, an obstacle to recognizing its individual character.”

The decisive factor remains the overall impression produced on the informed user. Even when composed of known elements, a design may be protectable if the specific combination creates an overall impression that differs from that produced by any individual prior design.

This clarification is crucial for the fashion industry, where creativity often operates through selection, adaptation and recombination rather than radical invention.

The informed user and the requirement of a global comparison

The Court adopted a rigorous approach to the assessment of individual character. The analysis must be conducted from the perspective of the informed user, defined as a person possessing a high degree of attention and extensive knowledge of the sector concerned.

This informed user is familiar with prevailing fashion trends. However, such knowledge does not reduce the level of scrutiny. On the contrary, it makes the user more attentive to differences in detail.

The Court emphasized that the assessment must be based on a global comparison, independent of aesthetic considerations, commercial positioning or the popularity of certain elements. The reasoning cannot rely on the notoriety of a trend or market saturation.

Practical implications of the case for fashion stakeholders

The judgment comes at a time of modernization of EU design law. The ongoing reform seeks to adapt the system to digital environments, clarify key concepts and enhance legal certainty.

In this context, the Deity Shoes ruling consolidates the theoretical foundations of the regime. It reassures right holders by confirming that protection is not dependent on fluctuating subjective criteria. At the same time, it prevents an excessive dilution of the individual character requirement in a sector heavily influenced by trends.

For businesses, this case law calls for a structured filing strategy. It is essential to:

• Clearly define the scope of claimed protection;
• Identify the visually dominant features of the design;
• Anticipate potential comparisons with prior art.

A proactive and strategic approach significantly enhances enforceability against fast fashion operators.

Conclusion

Design rights constitute an effective legal weapon against fast fashion, provided they are deployed within a coherent strategy. The Deity Shoes ruling clarifies that protection does not depend on subjective creative effort or the existence of fashion trends, but rather on the overall perception of the product by the informed user.

This strengthens business models based on adaptation and combination while maintaining a high and objective threshold for individual character. For fashion creators who invest in structured intellectual property protection, the legal framework offers robust and predictable safeguards.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of their intellectual assets.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Can fast fashion reduce the effectiveness of design protection?

Fast fashion does not alter the legal validity criteria. However, rapid production cycles and widespread copying may complicate enforcement. Effectiveness therefore largely depends on the filing, monitoring and enforcement strategy implemented by the right holder.

2. Can a design inspired by a supplier’s catalogue be protected?

Yes. The CJEU confirmed that a design resulting from the personalization or combination of pre-existing elements may be protected, provided that the chosen combination produces a distinct overall impression. The originality of each component taken individually is irrelevant.

3. Does commercial success influence the assessment of individual character?

No. The analysis is strictly legal and objective. Market popularity, aesthetic appeal or branding strategy do not affect validity. Only the overall impression on the informed user is decisive.

4. How long does protection of a community design last?

A registered community design is protected for an initial period of five years, renewable in five-year increments up to a maximum of 25 years. An unregistered community design benefits from three years of protection from the date of disclosure within the European Union.

5. Is it necessary to demonstrate significant creative effort to obtain protection?

No. Unlike copyright law, EU design law does not require a minimum degree of creativity or particular intellectual effort. Novelty and individual character are the only substantive requirements.

Introduction

Trademark invalidity in France and in the European Union has become a major strategic tool for securing a portfolio of rights, defending a competitive position, or neutralizing an opportunistic filing. Since the reform introduced by the Ordinance of  November 13, 2019 and the transfer of jurisdiction to the French National Institute of Industrial Property (INPI) for a large portion of intellectual property administrative disputes, invalidity actions have become more structured, professionalized, and significantly faster.

When can an invalidity action be brought ? On what legal grounds ? What procedure should be followed before the INPI or the EUIPO ? And above all, how can the chances of obtaining cancellation of a registered trademark be maximized ?

We provide here a structured, practical analysis grounded in experience.

What is trademark invalidity under French and EU law ?

Trademark invalidity consists of establishing that a sign registered as a trademark should never have benefited from the protection granted under trademark law. It is not a matter of sanctioning conduct occurring after registration, but rather of identifying a legal defect that existed at the filing date. In other words, invalidity is based on the principle that the trademark was irregular ab initio.

Since the reform that entered into force in 2020, the INPI has jurisdiction over  administrative invalidity actions. This development has profoundly transformed practice by making proceedings more accessible and considerably faster.

At EU level, Regulation (EU) 2017/1001 governs invalidity proceedings before the EUIPO. Although principles are harmonized, the analysis remains demanding, particularly with regard to evidence and the assessment of likelihood of confusion.

The effect of an invalidity decision is particularly powerful : the trademark is deemed never to have existed. This retroactive effect may weaken license agreements, coexistence agreements, or infringement actions based on the cancelled title. In strategic litigation, invalidity can therefore neutralize a competitor’s legal weapon.

Absolute and relative grounds for trademark invalidity

The distinction between absolute and relative grounds structures the entire invalidity framework. The former protect the public interest; the latter safeguard earlier private rights.

• Absolute grounds for invalidity :

A trademark is liable to invalidity if, at the time of filing, it did not meet the essential validity requirements. This is the case where it lacks distinctive character, merely describes the goods or services concerned, has become customary in everyday language, or is misleading as to the nature, quality, or origin of the goods.

Contrary to public policy or morality may also constitute an independent ground, although its application remains rare and strictly interpreted.

Bad faith of the applicant has become central in contemporary case law. French and European courts carefully scrutinize massive, defensive, or speculative filing strategies. A filing made solely to prevent a competitor from accessing the market, without any genuine intention to use the sign, may constitute abusive conduct justifying cancellation.

In technological sectors, we frequently observe filings anticipating emerging trends, such as artificial intelligence, blockchain, or the metaverse, made by entities with no actual development project. In such situations, the chronology of events, the relationship between the parties, and the competitive context become decisive.

• Relative grounds for invalidity :

Invalidity may also be based on the existence of an earlier right. This may include a French trademark, an EU trademark, or an international trademark designating the relevant territory. Other rights may also be invoked, such as a prior company name, trade name, domain name effectively used in the course of trade, copyright, or personality rights.

The analysis is based on the concept of likelihood of confusion, assessed globally. Authorities examine the visual, phonetic, and conceptual similarity of the signs, the proximity of the goods or services, and the distinctiveness of the earlier right. This assessment is contextualized: the relevant public, the level of consumer attention, and the possible reputation of the earlier right all play a determining role.

Practice shows that mere chronological priority is insufficient. It is also necessary to demonstrate effective use and real economic impact. Evidentiary strategy therefore lies at the heart of a successful action.

Invalidity proceedings before the INPI and the EUIPO

Since the reform, proceedings before the INPI have become a particularly effective tool. The procedure is fully digital and based on a strictly regulated timetable. Exchanges are written and adversarial. Each party must present all arguments and evidence within the prescribed deadlines, failing which submissions may be declared inadmissible.

A decision is generally issued within six to ten months, which represents a significant gain in time compared to traditional judicial proceedings. This speed allows invalidity actions to be integrated into broader commercial strategies, including fundraising operations or portfolio restructuring.

Certain complex situations, particularly where invalidity is based on copyright or contractual issues, remain within the jurisdiction of judicial courts.

For further information on the invalidity procedure before the INPI, we invite you to refer to our  article, previously published on this subject.

Before the EUIPO, proceedings follow a similar logic within a harmonized European framework. The application must be precisely reasoned and accompanied by all relevant evidence. The trademark holder has the right to respond, and the decision may be appealed before the Boards of Appeal.

The evidentiary requirement is particularly high. Applications that are insufficiently substantiated are systematically rejected. Drafting rigor and strategic coherence are therefore essential.

What evidence is required to obtain trademark invalidity ?

The success of an invalidity action largely depends on the quality of the evidence produced. For absolute grounds, it may be necessary to demonstrate the descriptive nature of a term through linguistic analyses, specialized dictionary extracts, sector publications, or examples of common market usage.

In cases involving bad faith, email exchanges, the chronology of business relationships, competing initiatives, or a manifest absence of intent to use may constitute decisive indicators.

Where invalidity is based on an earlier right, registration certificates alone are not always sufficient. If the earlier trademark is more than five years old, its holder must demonstrate genuine use. Invoices, catalogs, advertising campaigns, dated screenshots, and sector-specific turnover figures then become essential.

Recent case law strictly regulates the late submission of evidence. Methodical anticipation is therefore indispensable from the outset of the action.

Invalidity, opposition or revocation : which strategy should be chosen ?

The choice between opposition, invalidity and revocation is not merely a procedural preference ; it forms part of a broader strategic approach that takes into account timing, legal risk exposure and underlying business objectives.

Opposition is the preventive tool by excellence. It allows action to be taken upstream, before the contested trademark is registered. In France, opposition must be filed within two months from the publication of the application in the official bulletin (BOPI). At European Union level, the time limit is three months from the publication of the European Union trademark application by the EUIPO. The decisive advantage of opposition lies in its ability to block registration and prevent the trademark from producing legal effects. However, it requires active monitoring of trademark filings and immediate responsiveness.

Invalidity, by contrast, operates after registration. It enables a party to challenge retroactively a right that has already been entered on the register. Invalidity becomes a central strategic instrument when the opposition deadline has expired or when the dispute arises within broader litigation, particularly as a defense in infringement proceedings. In such cases, invalidity can neutralize the very foundation of the opposing party’s claim by eliminating the invoked trademark altogether.

Revocation follows a different logic. It sanctions the absence of genuine use of a trademark over an uninterrupted five-year period, or circumstances where the mark has become misleading or generic. Revocation is rooted in post-registration conduct and relies on a factual assessment of the effective commercial exploitation of the sign. In complex matters, revocation may be strategically combined with an invalidity action, allowing the claimant to articulate multiple lines of attack, one based on the initial irregularity of the filing, the other on the lack of subsequent use.

Ultimately, opposition protects proactively, invalidity corrects retroactively, and revocation penalizes inactivity. The appropriate choice depends less on the nature of the right itself than on procedural positioning and the competitive strategy pursued.

Conclusion

Trademark invalidity in France and in the European Union is a powerful strategic instrument for the protection of intangible assets. Early analysis and rigorous structuring of the case significantly increase the likelihood of success.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. Can a trademark be invalidated for lack of genuine intention to use at the time of filing ?

Yes. If the filing was made without a serious intention to use the mark, in a blocking or speculative strategy, this may constitute bad faith and justify cancellation, provided consistent and objective evidence is produced.

2. Can a prior domain name be relied upon to obtain trademark invalidity ?

Yes, provided that effective prior use of the domain name in the course of trade and a likelihood of confusion are demonstrated. Mere registration is insufficient; commercial exploitation is decisive.

3. Can a weakly distinctive trademark be invalidated several years after registration ?

Yes, if the lack of distinctiveness existed from the outset and has not been remedied by intensive use conferring acquired distinctiveness. The burden of proving such acquired distinctiveness lies with the trademark holder.

4. Can an invalidity action be brought defensively in infringement proceedings ?

Absolutely. Invalidity is frequently used as a strategic defense. If the invoked trademark is cancelled, the infringement action becomes legally unfounded.

5. Does peaceful coexistence between two trademarks prevent an invalidity action ?

Not necessarily. However, conscious and prolonged tolerance of more than five years may, in certain circumstances, deprive the earlier right holder of the ability to act, except in cases of bad faith.

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

With the rapid development of generative AI systems capable of simulating voices and faces with striking realism, the legal protection of digital identity remains fragile. In this context, American actor Matthew McConaughey recently filed several trademark applications with the United States Patent and Trademark Office (USPTO), including movement trademarks depicting him.

Such an initiative has surprised many legal practitioners, as it challenges the traditional boundaries of trademark law and raises novel questions regarding the legal protection of digital identity.

The limits of personality rights in the face of generative AI

Under French law, a person’s image and voice are protected as personality rights, primarily pursuant to Article 9 of the French Civil Code related to the right to privacy. This provision protects any unauthorized use of elements enabling the identification of a person, irrespective of whether a pre-existing material medium exists. An infringement may therefore be established whenever the public is capable of recognizing the individual concerned.

Although protective, this regime relies on demanding evidentiary requirements. The claimant must demonstrate the existence of an infringement, fault, identification of the responsible party, and, where applicable, the extent of the damage suffered.

The emergence of generative AI complicates each of these elements. AI systems may produce “resembling” voices or faces without directly reproducing an identifiable recording or photograph. The legal issue lies less in the distinction between reproduction and simulation than in the assessment of identifiability: at what level of resemblance can a person be deemed legally recognizable?

Further uncertainty arises from issues of attribution. The generation of AI content may involve multiple actors, developers, infrastructure providers, end users, and distribution platforms, thereby rendering the allocation of liability more complex. Existing mechanisms remain primarily corrective and intervene only after the dissemination of the contested content.

The evolution of filing requirements for distinctive signs

Since the entry into force of French Ordinance No. 2019-1169 of November 13, 2019 implementing the EU Trademark Package (Directive (EU) 2015/2436), French trademark law has undergone significant modernization.

The abolition of the requirement of graphic representation replaced by the obligation to represent the sign in a manner that is clear, precise, self-contained, easily accessible, intelligible, durable and objective in the register, has considerably broadened the range of registrable signs. This reform follows the criteria established by the Court of Justice of the European Union in the Sieckmann judgment (CJEU, December 12, 2002, Case C-273/00), which are now fully integrated into the practice of trademark offices.

Within this updated framework, French and EU law expressly permit the registration of sound trademarks, movement trademarks and multimedia trademarks, provided that they are represented in an appropriate technological format, such as an audio file (MP3) or video file (MP4). A sound trademark may therefore consist of a precisely fixed sequence, such as a jingle, a distinctive intonation or a recurring expression used in a commercial context, provided that the relevant public perceives it as an indication of commercial origin.

The protection of voice and image through trademark law under French and EU Law

Pursuant to Article L.711-2 of the French Intellectual Property Code, a sign may be registered only if it is linked to designated goods or services and used as a trademark to distinguish the goods or services of one undertaking from those of others. When applied to a sound or audiovisual sequence, this principle requires that the relevant public perceive the sequence as an indication of commercial origin.

It is essential to emphasize the precise scope of the monopoly conferred. Protection extends exclusively to the sign as filed and exploited, namely, the specific sound or audiovisual sequence recorded in the register. Trademark law does not grant a general appropriation of a person’s identity; rather, it secures a defined expression integrated into commercial activity.

The primary advantage of relying on trademark law lies in its litigation framework. The proprietor of a registered trademark holds a constitutive right benefiting from a presumption of validity and may initiate counterfeiting proceedings where a third party reproduces or imitates the sign in the course of trade for identical or similar goods or services.

Such action is based on the infringement of the registered sign itself, independently of the need to demonstrate personal moral damage, and allows for effective injunctive relief, including through internal procedures implemented by digital platforms.

Nonetheless, a measured approach remains necessary. Registering a sound or audiovisual excerpt as a trademark is legally demanding. Trademark law is not intended to protect an individual’s personality but to identify the commercial origin of goods or services.

Attempting to secure a voice or image through trademark law may therefore conflict with its economic rationale. It must be demonstrated that the sign genuinely fulfills the essential function of a trademark and is not merely perceived as a representation of the individual. Failing genuine use within the meaning of trademark law, the registration risks being challenged or revoked for non-use.

Conclusion

Trademark law protects only a specific sign exploited as an indication of origin in the course of trade. Its effectiveness will therefore depend, in practice, on the proprietor’s ability to demonstrate genuine, distinctive use as a trademark.

In the context of generative AI, trademark law does not constitute a universal solution. Nevertheless, it offers a more structured legal framework than personality rights alone, allowing certain uses to be anticipated and supported by an enforceable registered title. Such a strategy must, however, be embedded in a coherent and sustained commercial exploitation.

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 trademark law protect against non-commercial deepfakes?
No. Trademark law requires use in the course of trade. Deepfakes disseminated for parody or private purposes are more likely to fall under image rights or other legal mechanisms.

2.Does celebrity status provide an advantage when registering a voice excerpt?
Not automatically. While notoriety may facilitate the acquisition of distinctiveness through use, it does not exempt the applicant from satisfying the statutory conditions.

3.Does parody limit trademark protection?
In certain circumstances, freedom of expression may be invoked, particularly where the use does not undermine the essential function of the trademark.

4.Does a multimedia trademark offer broader protection?
It may provide more precise protection where the combination of sound and image constitutes the core element of commercial identification.

5.Why does registering a trademark simplify judicial proceedings in cases involving voice or image misuse?
Because infringement proceedings are based on the existence of a registered and presumed valid right, shifting the debate from the subjective assessment of personal harm to the more objective issue of infringement of a protected sign. This may render the evidentiary analysis clearer and more structured before court.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

Commercial identity encompasses all signs through which the public identifies a company, such as its corporate name, trade name, business sign, visual identity, or digital presence. The protection of these elements is governed by distinct legal regimes that are often less structured and less predictable than trademark law.

In a context where a company’s name and image circulate across borders instantaneously, securing distinctive signs has become a non-negotiable requirement. Trademark registration does not encompass the entirety of a company’s commercial identity; however, it constitutes its most solid legal foundation. It grants an exclusive right over a specific sign (name, logo, slogan) in relation to precisely designated goods and services. In the absence of registration, a third party may file and appropriate an identical sign. Conversely, a registered trademark enables its owner to initiate opposition proceedings, bring counterfeiting actions, and consolidate a legally controlled intangible asset.

Why is trademark filing essential to preserve its legal identity?

Under French law, a trademark constitutes an industrial property title governed by Articles L.711-1 et seq. of the French Intellectual Property Code. Registration confers upon its holder an exclusive right of use for the designated goods and services, subject to the principles of specialty and territoriality.

This exclusive right produces immediate and structured legal effects. In particular, it allows the holder to:

• Prohibit the use of an identical or similar sign for identical or similar goods or services;
• Take action against the use of a similar sign creating a likelihood of confusion;
• File opposition against a subsequent trademark application within statutory deadlines;
• Initiate infringement proceedings before specialized courts;
• Challenge domain name registrations reproducing or imitating the trademark;
• Exploit the sign through licensing, franchising, or assignment.

A registered trademark therefore constitutes a right enforceable erga omnes. By contrast, in the absence of registration, protection relies on unfair competition or parasitism claims under Article 1240 of the French Civil Code. Such actions require proof of fault, damage, and causation, an evidentiary burden considerably more uncertain than in trademark infringement proceedings. Registration thus transforms commercial use into a legally consolidated property right.

This protection nevertheless requires consistency between the registered sign and the actual business activity. The selection of classes under the Nice Classification and the drafting of specifications must correspond to a genuine, documented, and coherent business project. Recent case law confirms that trademark filing may not be diverted from its economic purpose. The decision of the French Intellectual Property Office (INPI) dated September 13, 2024 (NL 23-0183) concerning bad faith filing confirms that a speculative filing intended solely to block a third party, without genuine intent to use, is liable to cancellation.

A detailed analysis of this decision is available here:

https://www.dreyfus.fr/en/2025/02/10/french-trademark-office-inpi-decision-of-september-13-2024-bad-faith-trademark-filing-and-its-implications/

How to integrate trademark filing into a comprehensive protection strategy?

Trademark registration is not an end in itself. To achieve full effectiveness, it must form part of a coordinated strategy encompassing all means of identification and exploitation of the sign.

Consistency between trademarks and domain names is essential. Filing a trademark without securing the corresponding strategic domain names (.fr, .com, or relevant country-code extensions) exposes the company to opportunistic registrations capable of generating confusion, traffic diversion, or fraud. An effective protection strategy therefore requires proactive domain name registration and ongoing monitoring of competing filings.

This protection must also be aligned with digital compliance. The exploitation of a trademark on a website or digital platform requires compliance with legal obligations relating to mandatory disclosures, personal data protection, and commercial communication rules. Deficiencies in this area may weaken the reputation attached to the sign and compromise its economic value.

A trademark is a territorial right whose scope depends on the chosen title. A filing with the INPI provides protection limited to France. A filing with the European Union Intellectual Property Office (EUIPO) produces unitary effect throughout the European Union. The Madrid International Registration System enables protection to be extended to specifically designated States.

The choice of territorial scope must not be dictated solely by the company’s present situation; it should reflect its foreseeable business development. A trademark protected only in France will not prevent identical use in Germany or Spain. Conversely, a European Union trademark may be vulnerable if an earlier right exists in a single Member State. Legal security therefore requires a forward-looking assessment of target markets, competitive risk areas, and planned expansion.

We invite you to read a previously published article outlining best practices in trademark filing and portfolio management strategy:

https://www.dreyfus.fr/en/2026/02/11/how-to-build-in-2026-a-trademark-filing-and-management-strategy-to-secure-structure-and-anticipate-risks/

Finally, a registered trademark must be viewed as a structured intangible asset. It may be licensed, assigned, contributed in kind, or valued in the context of financing or restructuring operations. Integrating trademark filing into a comprehensive strategy therefore means securing not only a distinctive sign but also a central component of the company’s intangible assets, controlled geographically and economically exploitable.

Conclusion

Ultimately, trademark filing constitutes the foundational act in securing your commercial identity from a legal standpoint. When properly prepared, it transforms a mere distinctive sign into an exclusive right that is enforceable, exploitable, and economically valuable. Poorly anticipated, it exposes the business to opposition proceedings, invalidity actions, or loss of rights. Effective trademark protection therefore requires a methodical, forward-looking, and economically coherent approach. Securing your trademark today means strengthening the long-term legal and financial value of your business.

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 trademark be filed before the company is incorporated?
Yes. An individual may file a trademark prior to company incorporation. The trademark must subsequently be assigned or contributed to the company to avoid any uncertainty regarding ownership.

2. Should the name or the logo be filed first?
A word trademark generally provides broader protection, independently of graphic stylization. A figurative trademark protects a specific visual representation. Both filings may be complementary depending on the protection strategy.

3. Does a trademark automatically protect the corresponding domain name?
No. A trademark grants a right to prohibit use, but it does not automatically reserve the corresponding domain name, which must be registered separately.

4. Can a trademark be modified after registration?
No. A registered trademark cannot be substantially modified. Any material alteration requires a new filing.

5. Can a trademark be cancelled several years after registration?
Yes. An invalidity action may be brought at any time if an absolute or relative ground for refusal existed at the time of filing.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

When an applicant receives a notice of opposition against a recently filed trademark, the stakes go far beyond a mere procedural formality. The issue concerns the protection of the company’s commercial identity, strategic positioning, and the economic value of its intangible assets. In trademark law, opposition is a specific administrative procedure allowing a third party to request the refusal of a trademark application on the grounds that it allegedly infringes earlier rights.

In this article, we will examine how an applicant can build a structured, persuasive response that complies with procedural requirements, both before the French National Institute of Industrial Property (INPI) and the European Union Intellectual Property Office (EUIPO).

The legal framework of opposition in France and the European Union

Under French law, opposition is governed by Articles L.712-4 et seq. of the French Intellectual Property Code (IPC). It allows the holder of an earlier right to oppose the registration of a new trademark. The time limit for filing an opposition is two months from the publication of the trademark in the Official Bulletin of Industrial Property (BOPI).

At the European level, opposition is regulated by Articles 46 and seq. of Regulation (EU) 2017/1001 on the European Union trade mark. The deadline to file opposition is three months from publication of the EU trademark application.

These time limits are non-extendable and determine the admissibility of the opposition. Any action filed out of time is automatically declared inadmissible.

Opposition is primarily based on the existence of a likelihood of confusion, a key concept defined in Article L.713-3 of the French IPC and Article 8(1)(b) of Regulation (EU) 2017/1001. This mechanism does not seek to sanction infringement but to prevent the registration of a sign that could mislead the public or dilute earlier rights.

Notification of the opposition: the starting point of the defense strategy

From the date of publication in the BOPI, any person who believes that the trademark infringes on their prior rights (already registered trademark, trade name, company name, etc.) has two months to file an opposition. This period cannot be extended. If no opposition is filed within this time frame, the trademark will continue through the registration process as normal.

Within that period, it is possible to file a so-called notice of opposition and to pay the official fee, without immediately setting out the full substantive arguments: the statement of grounds (written submissions) and certain supporting documents may therefore be filed within an additional one-month period running from the expiry of the opposition time limit.

This additional period serves a practical purpose: it allows the opponent to draft and substantiate the statement of grounds (likelihood of confusion / infringement of earlier rights, etc.) after having secured the opposition deadline. That said, this subsequent filing is strictly framed: the opponent may not broaden the scope of the opposition, nor rely on new earlier rights, nor target additional goods/services beyond those identified within the initial time limit.

The notice of opposition must in any event include (Article R.712-14 of the French Intellectual Property Code):

1. The opponent’s identity, together with information establishing the existence, nature, origin and scope of the earlier rights relied upon;
2. Identification of the contested application, together with specification of the goods/services targeted by the opposition; and
3. Evidence that the official fee has been paid.

For more information on this French opposition procedure, please see our specific article published on the subject .

Once the opposition has been declared admissible, the competent office proceeds notifies the applicant.Before the EUIPO, the procedure includes a specific feature: a “cooling-off” period, initially set at two months and extendable by mutual agreement between the parties. If no settlement is reached, the formal adversarial phase begins. For more information, please see our dedicated article on our blog page.

At this stage, the key issue is to determine the most appropriate strategy among several legally available options.

Strategic analysis of the notice of opposition

The first step for the applicant is to carefully analyze the opposition, which is based on three essential criteria:

• The comparison of the signs requires assessing the overall impression produced by the trademarks at issue. The analysis is conducted from visual, phonetic, and conceptual perspectives.
• The comparison of the goods and services focuses on their nature, purpose, function, potential complementarity, and distribution channels. Mere inclusion in the same Nice Classification class is insufficient, in itself, to establish similarity..
• The global assessment of the risk of confusion must take into account the interdependence of these factors. A low degree of similarity between the signs may be offset by a high degree of similarity between the goods and services, and vice versa.

An effective argument does not isolate a single criterion but methodically dismantles the opponent’s reasoning as a whole.

Drafting the response brief and supporting evidence

Following the analysis phase, drafting the response brief becomes a decisive strategic moment. It is not a simple formal reply but a structured legal argument aimed at clearly and convincingly demonstrating the absence of infringement of the earlier rights invoked.

The brief must first accurately recall the procedural elements: the office involved, the opposition number, the contested application reference, and the earlier rights relied upon. This contextual framework ensures that the argument is grounded in the precise legal setting.

The applicant must then set out the opponent’s arguments in order to analyze and challenge them point by point. This demonstrates a thorough understanding of the claims raised and helps identify weaknesses in the opposing reasoning. The argumentation must place the signs and goods or services within their actual economic context in order to establish the absence of confusion for the relevant public.

Finally, the brief must be supported by relevant and properly explained evidence. Proof of use, commercial documents, or market-related materials should be incorporated in a structured and reasoned manner. Overall coherence is essential: each development must serve a single objective, namely to convince the examiner that the contested mark may be registered without infringing the rights invoked.

Proof of use and alternative negotiation strategies

• Requesting proof of use: a decisive procedural lever

Where the earlier trademark relied upon has been registered for more than five years, the applicant may request that the opponent provide proof of genuine use for the goods or services invoked. This option exists before both the INPI and the EUIPO.

The burden of proof lies with the opponent, who must demonstrate real, public, and commercially justified use during the previous five years in the relevant territory.

Accepted evidence includes invoices, catalogues, advertisements, promotional materials, sales data, and contractual documents.

Use must be genuine and not merely token. In the absence of sufficient evidence, the opposition may be rejected in respect of the goods or services not properly substantiated.

This stage often represents a strategic turning point in the proceedings.

• Limiting the specification

The applicant may choose to voluntarily restrict the list of goods or services covered by the trademark application. This limitation can eliminate areas of conflict with the earlier right invoked and may lead to partial withdrawal or rejection of the opposition.

However, such limitation is definitive. It reduces the scope of protection of the trademark and must be assessed in light of future commercial exploitation plans.

In practice, this option frequently serves as a negotiation tool, particularly during the cooling-off phase before the EUIPO.

Conclusion

Responding to a trademark opposition requires technical mastery of trademark law, thorough factual analysis, and a drafting strategy aligned with the expectations of the competent offices. A response built on a solid demonstration of the absence of likelihood of confusion, supported by carefully substantiated evidence, not only neutralizes the opposition but also strengthens the legal security of your trademark.

Mastering this procedural stage is a major strategic issue for protecting your commercial identity and enhancing the value of your intangible assets.

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 happens if the applicant does not respond to the opposition?

Failure to respond leads to the closure of the adversarial phase and generally results in a total or partial refusal of the application for the goods or services targeted by the opposition. Silence is treated as a waiver of the right to present arguments.

2. Can additional time be requested to prepare the response?

As a matter of principle, an extension of the time limit for filing a response is not available. Before both the INPI and the EUIPO, the time limits set for submitting observations are strictly regulated and cannot be extended upon simple request. Only specific grounds for suspension of the proceedings may be contemplated, in particular where the parties are engaged in settlement negotiations, and subject to strict compliance with the applicable procedural requirements.

3. Can an opposition be withdrawn during the proceedings?

Yes. The opponent may withdraw the opposition at any time, either as part of a settlement agreement or unilaterally. Withdrawal terminates the proceedings for the goods or services concerned. However, the opponent’s incurred costs are not automatically reimbursed. Any agreement should therefore be properly documented in writing.

4. Can new evidence be submitted after filing the response brief?

In principle, the offices set strict deadlines for the submission of evidence. Additional materials may sometimes be accepted, but their admissibility depends on the procedural stage and proper justification. Anticipating evidentiary strategy is therefore essential.

5. Can the applicant rely on good faith to overcome the opposition?

Good faith is not a decisive factor in assessing likelihood of confusion. The examination primarily focuses on an objective comparison of the signs and the goods or services. Nevertheless, evidence of prior peaceful coexistence or independent use may serve as contextual support in certain defense strategies.

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

Introduction

In the field of artificial intelligence (AI), trained models represent a major technological advancement derived from extensive training datasets. Unlike the raw data forming the original datasets, an AI model captures the relationships and patterns learned during the training process. Once trained, it becomes an autonomous intangible asset, embodying technical knowledge extracted from the underlying data.

The legal protection of such models has therefore become an increasingly significant issue. While the question of protection of AI-generated works, authorship, and liability for infringement have already been extensively analyzed, the legal qualification and protection regime applicable to the trained model itself raise distinct and specific challenges requiring separate examination.

The sui generis database right: an ill-suited regime for AI models

The training of an AI system relies on a database serving as an informational reservoir. However, the resulting model is not equivalent to the original database. Unlike a mere aggregation of structured data, an AI model incorporates relationships, weightings, and patterns learned during the training process. It constitutes an abstract representation enabling prediction, classification, or analysis of new data.

This specificity raises a qualification issue. The sui generis database right, established by Directive 96/9/EC and transposed into Article L.341-1 of the French Intellectual Property Code, protects substantial investment in the acquisition, verification, or presentation of systematically organized data. By contrast, an AI model does not consist of individually accessible structured data, but rather a dynamic configuration resulting from algorithmic learning. It does not reproduce the original database, nor does it allow extraction of the initial data as such.

Accordingly, although it relies on a potentially protected training dataset, the AI model itself generally falls outside the scope of the sui generis database right. Its algorithmic and relational nature fundamentally differs from the static and organizational logic inherent in databases.

Copyright: partial protection focused on code expression

In theory, copyright protection may apply to certain elements of an AI model if they reflect free and creative choices constituting the author’s own intellectual creation, as established in the Pachot decision (French Court of Cassation, Plenary Assembly, March 7, 1986, No. 83-10.477).

In practice, such protection primarily concerns the source code or software architecture implementing the model, insofar as these fall within the legal regime applicable to software (Article L.112-2, 13° of the French Intellectual Property Code). To date, however, no judicial decision has recognized autonomous copyright protection for a trained AI model as such.

In case SAS Institute (CJEU, May 2, 2012, C-406/10), the Court held that while a software is protected by copyright, its functionalities and the ideas and principles underlying it are not. Transposed to AI models, this reasoning requires distinguishing between the code implementing the model, which may be protected, and its functionalities (text generation, classification, prediction) as well as its underlying statistical or architectural principles, which remain unprotectable ideas.

The most complex issue concerns the weights and parameters of a trained neural network: can they be regarded as “expression” for copyright purposes? The restrictive approach adopted in the SAS Institute case excludes ideas, principles, and underlying mathematical methods from protection. The qualification of weights and parameters, materializing the outcome of algorithmic learning, remains uncertain in the absence of specific case law.

Patent law: the requirement of a further technical effect

Patent law does not permit protection of an AI model as an abstract mathematical construct. Algorithms, mathematical methods, and computer programs are excluded from patentability “as such” pursuant to Article L.611-10 of the French Intellectual Property Code.

However, an invention implementing an AI model may be patentable if it provides a technical solution to a technical problem and produces a further technical effect, as clarified by the EPO Technical Board of Appeal (T 1173/97 – Computer program product, July 1, 1998).

In other words, it is not the model itself that may be protected, but its integration into a concrete technical application, such as improving computer performance, optimizing an industrial process, processing technical signals or images, or managing a physical device.

Patentability therefore requires that the model effectively contributes to the technical character of the invention beyond the mere execution of calculations or statistical learning. In practice, direct protection of an isolated AI model appears unlikely; only its incorporation into a system or process producing an identifiable technical effect may justify patent protection.

Trade secrets: a pragmatic protection for trained parameters

In practice, trade secret protection constitutes the most appropriate mechanism for safeguarding trained AI models. Under Articles L.151-1 et seq. of the French Commercial Code, information is protected where it is not generally known or readily accessible, has commercial value because of its secrecy, and is subject to reasonable protective measures.

The weights, parameters, and internal configurations of an AI model frequently satisfy these criteria: they are non-public, result from substantial investments in data and computation, and confer a decisive competitive advantage. Protection requires an effective security policy, including technical access controls, contractual confidentiality limitations, and appropriate organizational measures.

From this perspective, trade secret law appears to be the most coherent legal tool for preserving the economic value of proprietary AI models.

Conclusion

A trained AI model does not fully fit within any traditional intellectual property regime. It is neither a database within the meaning of the sui generis right, nor a work protected as such under copyright, nor an independently patentable invention absent a further technical effect.

Its protection therefore relies on a combined approach: copyright for the code, patent protection for certain technical applications, and, above all, trade secret protection to safeguard trained weights and parameters. Rather than a single exclusive right, it is a coherent and anticipatory legal strategy that ensures effective protection of this strategic intangible asset.

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. Are models derived from an open-source model legally independent?
It depends on the applicable license terms. Certain licenses impose obligations to share modifications or derivative works.

2. Are non-compete clauses relevant for protecting a model?
They may complement contractual protection strategies, particularly to prevent the reuse of equivalent know-how by employees or partners.

3. Can training a model on protected data legally contaminate the model?
In principle, no, since the model does not reproduce the data. However, if protected data remain identifiable or retrievable, infringement risks may arise.

4. Does the protection of AI models require legislative reform?
The doctrinal debate is ongoing. Some advocate for a sui generis protection regime for AI systems, but no specific reform has yet been planned.

5. Can an AI model constitute a strategic asset for valuation or investment purposes?
Yes. It may be subject to specific due diligence in M&A transactions or fundraising operations.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

Adopted in 2004, the French “Loi pour la confiance dans l’économie numérique” (LCEN) laid the foundations for the regulation of the Internet in France. Nearly seven years later, the implementing decree of Article 6 II, published in 2011 (Decree No. 2011-219 of February 25, 2011), clarified the obligations relating to the retention of identification data imposed on technical intermediaries.

More than fifteen years after the entry into force of this decree, and in a profoundly transformed digital environment, the practical effects of this framework now call for renewed assessment.

The issue is no longer the long-awaited adoption of an implementing text, but rather its current relevance. In an era characterized by the massification of data, the consolidation of major digital platforms, and the expansion of European regulation, does the LCEN framework still provide an effective response to contemporary digital challenges, or does it expose the limits of a system conceived for an Internet that no longer exists?

The evolution of article 6 II of the LCEN in a transformed digital environment

The legal framework of Article 6 II of the LCEN establishes one of the pillars of French Internet law. Asserted as early as 2004, in a technological context predating the development of large platforms, this obligation was designed for an Internet with largely linear and centralized uses. However, it has been implemented in a constantly evolving digital environment, characterized by the diversification of services, the emergence of global intermediaries, and the exponential growth of data volumes processed.

By requiring access providers and hosting service providers to retain data enabling the identification of content authors, the legislator established a key counterpart to the limited liability regime applicable to technical intermediaries. This regime is based on a conditional exemption from liability, grounded in the absence of prior knowledge of the content and the obligation to act promptly upon notification, excluding any general obligation to monitor. The retention of data thus serves as the procedural counterpart to this neutrality, allowing for the subsequent identification of those responsible for infringements without transforming intermediaries into oversight actors.

This obligation is a prerequisite for the ex post identification of authors of unlawful content, without imposing any form of generalized monitoring.

However, from the outset, this framework was structurally incomplete. The legislator expressly deferred to an implementing decree the task of defining the categories of data to be retained and the applicable modalities, in order to ensure proportionality and legal certainty. The prolonged absence of this decree generated lasting legal uncertainty.

In practice, operators relied on fragmented case law and heterogeneous recommendations, resulting in uneven retention practices, sometimes excessive, sometimes insufficient. The decree was therefore expected to serve as an instrument of normative clarification and alignment with European requirements, particularly in the field of personal data protection.

An assessment of the implementing decree in light of changes in the digital ecosystem

The implementing decree of Article 6 II of the LCEN was adopted in a context radically different from that prevailing in 2004. At the time, the legislator primarily sought to regulate the first generation of hosting and access providers, within a relatively stable technical environment dominated by identifiable operators.

Twenty years later, the digital ecosystem has undergone profound transformation. Platforms have proliferated, uses have become more complex, and data volumes have reached unprecedented levels.

Against this backdrop, the detailed list of identification data categories imposed by the decree appears, with hindsight, both necessary and structurally outdated. While it initially provided much-needed formal clarification, it soon encountered the limits of a retention model designed for the early 2000s Internet.

Transposed to a 2026 environment marked by service fragmentation, automated exchanges, and the widespread use of distributed architectures, this approach has proven only partially suitable. Retention periods and modalities have been repeatedly challenged, particularly in light of contemporary principles of proportionality and data minimization.

Far from settling the debate, the decree has thus contributed over time to the emergence of structural litigation concerning the compatibility between identification requirements, personal data protection, and technical realities.

Operational impacts on digital stakeholders

Following its entry into force, the decree resulted in significant operational requirements for hosting providers, publishers  and platforms including a legal obligation to retain and secure identification data. This obligation, which conditions the limited liability regime provided by the LCEN, has required operators to implement substantial technical and organizational measures. These measures particularly focus on the traceability of connections, the integrity of retained data, and its security, in accordance with Article 32 of the GDPR.

With hindsight, these obligations have formed part of a broader movement toward the standardization of compliance functions within digital actors. They have progressively been integrated into comprehensive frameworks combining requirements arising from the LCEN, the GDPR, and, more recently, European regulations governing digital services.

By 2026, this accumulation of regulatory obligations represents one of the sector’s principal operational challenges, in terms of both costs and internal legal governance particularly regarding the allocation of responsibilities, management of litigation risk, and traceability of compliance decisions.

From the perspective of intellectual property rights holders, the decree has strengthened the procedural tools allowing, under judicial oversight, the identification of perpetrators of online infringements.. The clarification regarding the categories of data retained, such as IP addresses, connection timestamps, and subscription data held by the host or registrar has improved, in several disputes, the effectiveness of actions for infringement and unfair competition.

Nevertheless, litigation experience since 2011 demonstrates that this mechanism remains largely dependent on the effective cooperation of intermediaries and judicial interpretation of their obligations. The decree has therefore not created an automatic right to identification, but rather a procedural framework whose scope varies according to circumstances.

Anticipated legal and litigation risks

The main legal risks associated with the decree implementing the LCEN relate to the delicate balance between the legitimate objective of identifying the authors of illegal content and the protection of fundamental freedoms, foremost among which are the right to privacy and the protection of personal data. In practice, these tensions have crystallized around the requirements of proportionality, which stipulate that data retention and disclosure obligations must be strictly necessary, limited in scope, and subject to effective procedural safeguards. Over time, they have given rise to extensive litigation before national and European courts, concerning both retention periods and conditions of access to data.

This is the case, for example, in this ruling dated March 25, 2021 (Cass. civ. 2e, March 25, 2021, No. 18-18.824), in which the French Cour de Cassation clarified the conditions for accessing identification data. In this case, the High Court was asked to rule on a request for disclosure of data made by a private party in a civil dispute, based on the obligations arising from Article 6 II of the LCEN. The Court ruled that the retention obligation established by the LCEN does not confer on individuals an automatic right of access to data, but is subject to a strict procedural framework, subject to judicial review. It thus reiterates that the disclosure of identification data must comply with the principles of proportionality, purpose and necessity, in accordance with the requirements of both domestic and European law. This decision illustrates the Cour de Cassation’s desire to maintain a balance between the effectiveness of the fight against illegal content and the protection of personal data. In practice, it limits the possibilities for direct identification by rights holders and strengthens the role of the judge as the guarantor of this balance.

Conclusion

Long awaited, the implementing decree of Article 6 II of the LCEN has undeniably contributed to structuring obligations relating to the retention of identification data in France. With more than fifteen years of application, however, it appears that it has constituted neither a definitive solution nor an instrument fully adapted to digital transformations.

While it has strengthened the traceability of online activities, it has also intensified tensions with data protection law and multiplied areas of litigation, particularly in relation to proportionality, liability, and data governance.

In an environment increasingly shaped by European regulation and global platform dynamics, this framework reveals the limits of an essentially national approach. It calls upon digital stakeholders to adopt an integrated legal strategy combining compliance, risk management, and anticipation of regulatory developments.

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. Are all platforms subject to the obligations of Article 6 II of the LCEN?

No. The applicable regime depends on the qualification of the actor: hosting provider, publisher, access provider, or hybrid operator. In practice, many services combine multiple functions, making classification more complex. Each service must be assessed individually, taking into account its actual role in content publication and control.

2. Are LCEN retention obligations compatible with the GDPR?

In principle, yes, subject to strict conditions. Retention must be based on a legal ground, be necessary and proportionate, and comply with the principles of minimization and storage limitation. The main risk lies in excessive precautionary retention, which may expose operators to GDPR litigation and proportionality challenges.

3. Under what conditions may a judge order the disclosure of identification data?

In practice, courts require targeted requests justified by a legitimate purpose (e.g., identifying the author of unlawful conduct) and subject them to strict necessity and proportionality review.

4. Do LCEN obligations apply to actors established outside France?

Potentially, depending on connecting factors such as targeting of the French public, activities directed toward France, or the presence of infrastructure or establishments. Enforcement may be more complex, reinforcing the relevance of European mechanisms such as the DSA and cross-border cooperation tools.

5. Do artificial intelligence and automation affect identification obligations?

They primarily affect scale and speed, through automated moderation, abnormal behavior detection, and event correlation. However, they do not reduce legal obligations. On the contrary, they require enhanced governance, including minimum explainability, human oversight, and decision traceability.

This publication is intended to provide general guidance and highlight certain issues. It is not intended to address specific situations and does not constitute legal advice.

Introduction

In 2026, filing a trademark is no longer merely about “reserving a name.” The filing has become a fully-fledged legal and strategic act, directly engaging the applicant’s responsibility and determining the future strength of the portfolio. This evolution results from a now-structuring triptych : the continuous increase in trademark filings, the tightening of office practices (INPI, EUIPO, and foreign offices), and the rise of opportunistic behaviour.

A poorly anticipated strategy exposes applicants to refusals at the examination stage, multiple opposition proceedings, and subsequent invalidity or revocation actions. Above all, registration only confers a presumption of ownership. A trademark may be registered without opposition due to the absence of monitoring, and later challenged once the project is already established, thereby jeopardising substantial marketing investments.

In 2026, the objective is therefore clear : to file more effectively and manage rights proactively. This requires securing registration, structuring the portfolio, anticipating evidence, and organising enforcement within a sustainable framework.

Distinctiveness, descriptiveness, and bad faith : securing the validity of the filing

The tightening of practices relating to distinctiveness and descriptiveness has become a fundamental parameter. Offices and courts now require more strictly that a sign fulfil its essential function of indicating commercial origin. This severity is directly linked to the progressive saturation of registers, with filings having tripled over the past twenty years.

Signs closely related to professional jargon, evoking product characteristics, or bearing strong sector-specific connotations are now subject to heightened scrutiny. Assessment is carried out exclusively as of the filing date, based on the perception of the relevant public, without any binding precedent drawn from earlier registrations.

This requirement fully extends to descriptive signs. In this respect, the cancellation by the EUIPO of OpenAI’s “GPT,” “GPT-3,” “GPT-4,” and “GPT-5” trademarks provides a particularly significant illustration. The Office held that the term “GPT,” meaning “Generative Pre-Trained Transformer,” refers to a language model architecture based on machine learning commonly used in artificial intelligence. Due to its widespread use to describe a technology rather than a commercial origin, the term was deemed generic and devoid of distinctive character.

At the same time, bad faith has become a central ground in trademark litigation. Authorities examine, in particular, knowledge of prior rights, lack of intent to use, refiling strategies, and the appropriation of abandoned trademarks. Attempts to revive “zombie” trademarks are assessed in light of the economic context and the effective reputation at the filing date.

Securing the validity of a filing therefore requires thorough preliminary analysis, addressing both the inherent distinctiveness of the sign and the risk of challenges based on bad faith.

Use and proof of use : anticipating enforcement from the outset

Consistency between the specification and actual or foreseeable use has become a major vulnerability in 2026. From the filing stage, the owner must anticipate the creation of a structured evidentiary file.

This file should include tangible materials : commercial documents, packaging, labels, invoices, catalogues, marketing content, affidavits, studies, and quantitative data. Their probative value is enhanced when they clearly indicate the trademark, date, relevant products, and territory.

Such anticipation is strategic. In certain jurisdictions, use directly conditions the validity or maintenance of rights. Moreover, once a trademark is more than five years old, adversaries may request proof of use in various procedural contexts.

The concept of sub-categories reinforces this requirement. Where a specification covers a broad category, use may need to be demonstrated for each relevant autonomous sub-segment. Exploitation of a single product does not necessarily preserve rights for the entire scope.

Evidentiary anticipation thus becomes a core pillar of portfolio governance.

Specifications and foreign office practices : focus on the United States and Canada

In the United States and Canada, drafting the specification represents a major procedural issue. Compliance with administrative standards directly affects costs, timelines, and objection risks.

Since 2025, the USPTO has imposed a structural choice : reliance on pre-approved terms from the Trademark ID Manual or use of customised wording. The former facilitates processing and reduces fees, while the latter entails stricter examination and increased risk of provisional refusals.

Canada applies a comparable approach, with heightened scrutiny of goods and services within an increasingly automated examination framework.

In this context, a specification drafted solely in accordance with European standards may prove inadequate. Integrating North American constraints from the outset often avoids fragmented and costly internationalisation.

Clearance searches and territorial strategy

Clearance searches have become an indispensable preventive investment. Filing without a serious search, or based on informal checks, exposes applicants to disproportionate risks.

In a saturated environment, thorough searches help identify potential obstacles, adapt the sign, strengthen distinctiveness, or adjust the specification before significant financial commitments are made.

Territorial strategy must be developed concurrently. Limiting protection to the country of headquarters is no longer sufficient. Production countries, distribution markets, and structurally high-risk regions must be considered.

Cumulative protection and portfolio structuring

Protection based solely on a word trademark is not always optimal. Depending on the sector, cumulative rights significantly enhance overall defensibility.

Trademarks protect distinctive signs. Designs protect appearance. Figurative or semi-figurative trademarks secure visual elements. Each title has its own criteria and provides complementary enforcement tools.

In creative industries, particularly fashion and cosmetics, this combination enables more effective responses to duplication and parasitic practices.

The European design law reform, gradually applicable from 2026, further reinforces the value of an integrated and anticipatory approach.

Rationalisation and optimisation : audit and article 4bis of the Madrid Protocol

In 2026, portfolio management requires strategic oversight. Audits enable assessment of alignment between actual activities and registered rights, identification of vulnerabilities, and elimination of unnecessary costs.

Duplication situations, particularly resulting from Brexit, illustrate the importance of this approach. Without audits, redundant rights continue generating expenses without added value.

Article 4bis of the Madrid Protocol offers an additional rationalisation tool. Under strict conditions, it allows an international registration to replace national rights while preserving priority.

Use assimilation strengthens continuity. However, dependency periods and varying office practices require cautious and well-documented implementation.

Conclusion

In 2026, trademark strategy rests on a demanding balance between legal security, risk anticipation, and cost control. Filing represents a structuring investment requiring rigour, territorial coherence, drafting precision, and evidentiary organisation.

Protection does not end with registration. It requires active management, regular audits, and continuous monitoring policies to preserve the long-term distinctiveness and economic value of signs.

Dreyfus & Associés supports its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

Dreyfus & Associés works in partnership with a global network of specialised intellectual property lawyers.

Nathalie Dreyfus, with the support of the entire Dreyfus team.

Q&A

1. What checks should be carried out before investing in a “short” sign to limit cascading oppositions ?

Beyond identity searches, phonetic and visual proximity, registry density in relevant classes, and the descriptive load of the sign must be analysed to assess real multi-front risk.

2. How can a specification be calibrated when offerings evolve rapidly ?

It is preferable to reason in terms of foreseeable commercial uses and sub-categories, covering core activities and realistic extensions while avoiding generic formulations likely to trigger objections or bad faith claims.

3. What warning signs indicate a risk of invalidity for bad faith before filing ?

Disproportionate specifications, lack of a credible exploitation project, a history of defensive filings without use, or conflict contexts (former partners, employees, distributors) are major red flags.

4. When should trademark monitoring be implemented, and with what minimum scope ?

From filing, ideally at launch, as lack of monitoring may allow oppositions to lapse. A baseline covering trademarks, company names, and domain names in key territories limits unexpected challenges.

5. When is a figurative or position trademark more wise than a word trademark alone ?

When the verbal element is weak or overcrowded, protection of a distinctive visual configuration or position may provide a stronger enforcement angle.

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

Introduction

An intellectual property due diligence is conducted prior to major corporate transactions, such as acquisitions, mergers, fundraising operations, or asset disposals. Its purpose is to assess the legal and financial status of a company’s intellectual property assets before any strategic decision is made, thereby serving a fundamentally transactional function.

Too often perceived as a mere documentary audit, intellectual property due diligence in fact directly determines the valuation of intangible assets, the stability of transferred rights, and the control of future legal and financial risks.

Why is intellectual property due diligence a strategic asset?

Intellectual property represents a key component in the valuation of innovative companies, particularly in technology-driven and creative industries. An intellectual property due diligence goes far beyond the mere verification of registered rights. It secures investments by assessing the impact of legal risks on the contemplated transaction.

This process includes the review of claimed rights (trademarks, patents, licenses, and related assets), verification of their  enforceability, and the identification of vulnerabilities that may affect asset valuation or transaction terms.

From a litigation risk perspective, IP due diligence also evaluates the potential impact of ongoing or foreseeable disputes, including counterfeiting actions, opposition proceedings, and collective actions, on the purchase price, the stability of transferred rights, and the management of warranties and indemnities. For instance, unresolved disputes may justify price reductions or the implementation of compensation mechanisms.

By anticipating financial exposure, due diligence enables the parties to adjust their negotiation strategy, minimize risks, and secure the transaction. It further facilitates the implementation of appropriate safeguards, such as indemnification clauses, limitation of liability provisions, and price adjustment mechanisms.

How to structure an effective intellectual property due diligence process?

An effective intellectual property due diligence relies on a clearly defined scope to ensure strategic relevance. Prior to starting the review, it is essential to determine the transactional context, taking into account the parties’ objectives, the relevant jurisdictions, and the strategic technologies or trademarks involved.

Competitive dynamics and regulatory constraints must also be assessed, as they may affect the management and enforceability of IP rights. This preliminary framework allows the analysis to focus on the most critical assets for the transaction.

The success of the process further depends on the quality and reliability of the collected information. A structured data repository is essential to centralize key documentation, including registration certificates, assignment and license agreements, confidentiality provisions, and invention disclosure records.

Access to such documentation enables a comprehensive understanding of ownership, exploitation modalities, and associated legal risks.

Which assets and risks should be prioritized?

The review of trademarks and domain names generally forms the cornerstone of the analysis. It involves verifying actual ownership, registration validity, territorial scope, exposure to opposition proceedings, and ongoing disputes. A strategically important trademark that has not been renewed may expose the acquirer to an immediate loss of rights.

Patent and innovation audits require both technical and legal expertise. They involve reviewing chains of title, employee inventions, joint ownership arrangements, cross-licensing agreements, and freedom-to-operate assessments. A patent that is formally valid but easily circumvented may suffer a significant loss of value.

With regard to copyrights, software, and databases, it is essential to review development agreements, assignments, open-source licenses, and compliance with data protection regulations, including GDPR requirements. Regulatory non-compliance may constitute a major transactional obstacle.

A comprehensive due diligence must also include an analysis of past, ongoing, and potential disputes, including court proceedings, cease-and-desist letters, administrative oppositions, arbitration proceedings, and settlement agreements. All latent risks must be carefully identified, quantified, and documented in order to assess their potential impact on the transaction.

How to leverage the results from a legal and financial perspective?

To ensure effective legal and financial use of due diligence findings, a structured and operational report must be prepared. This report should not be limited to an inventory of rights and risks, but must include risk prioritization, criticality assessments, practical recommendations, and impact scenarios.

Each issue should be presented in a manner that enables decision-makers to take informed and timely action.

The conclusions of the due diligence must then be incorporated into the negotiation process. They serve as the basis for drafting representations and warranties, indemnification clauses, conditions precedent, price adjustment mechanisms, and post-closing commitments.

Finally, due diligence should lead to the implementation of a remediation plan, including title regularization, contractual restructuring, supplementary filings, targeted enforcement actions, and strengthened internal compliance policies. In this way, intellectual property due diligence becomes a strategic tool for correcting, securing, and optimizing intangible assets within a transactional framework.

Conclusion

Mastering intellectual property due diligence has become an essential strategic competence for any company involved in a major corporate transaction.

A rigorous, cross-disciplinary, and well-documented approach not only reduces legal risks, but also enhances asset valuation, strengthens negotiation positions, and secures investments.

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. Is intellectual property due diligence legally mandatory?
No. Intellectual property due diligence is not legally mandatory. However, it constitutes a fundamental duty of care for any acquirer or investor seeking to limit liability and secure their investment.

2. Can an incomplete due diligence engage directors’ liability?
Yes. Where demonstrable harm is established, insufficient due diligence may be characterized as a breach of directors’ duties or a failure in corporate governance.

3. Can unregistered intellectual property rights be transferred?
Yes, subject to precise and duly formalized contractual arrangements. Nevertheless, the absence of registration significantly weakens enforceability against third parties.

4. Should a due diligence include social media assets?
Yes. Official accounts, usernames, content, and online communities now constitute strategic assets in their own right and must be duly assessed.

5. Should trademark coexistence agreements be reviewed?
Absolutely. Such agreements may restrict future exploitation and materially affect post-acquisition commercial strategy.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

When considering filing a figurative trademark (logo, image, or graphical sign without words), a fundamental question arises: Are they automatically valid? The answer, under French and European trademark law, is negative. The validity of a figurative trademark depends on specific legal criteria related to its ability to identify the commercial origin of a product or service, as demonstrated in the French Intellectual Property Code, European Union law, recent case law such as the decision in Mercedes-Benz Group AG v. EUIPO (Case T 400/24) of March 19, 2025, and the practices of trademark offices (INPI, EUIPO, etc.).

What is a figurative trademark?

A figurative trademark consists exclusively of graphical elements, designs, logos, symbols, colors, without any independent verbal element (text). It aims to visually protect a sign that distinguishes the products or services of one company from those of its competitors.

Alongside the figurative trademark, we distinguish:

• The verbal trademark: composed solely of words or letters.
• The semi-figurative trademark: a combination of text and visual elements.

This distinction is important because while the validity requirements are generally common under substantive law, they are applied differently depending on the type of sign being filed.

Legal conditions for the validity of a figurative trademark

For a figurative trademark to be considered valid and registered, it must meet several cumulative conditions.

Distinctiveness

Distinctiveness is the primary requirement; the trademark must allow consumers to identify the commercial origin of a product or service. It should not be descriptive, generic, or purely functional.
An arbitrary or stylized logo, unrelated to the products/services, generally presents strong distinctiveness. However, a graphic representing the product itself or an expected feature of the product is rarely considered distinctive.

Legality and public order

As shown in Article L711-3 of the French Intellectual Property Code, the trademark must not be contrary to public order or morals. It must also be lawful and not infringe on existing rights (e.g., personality rights, state arms, international agreements).

Availability

A figurative trademark cannot be registered if identical or similar prior trademarks already exist in the same product or service classes. Thorough searches for prior rights are essential before filing.

Jurisdictional illustrations of refusals or acceptances: the Mercedes-Benz Group AG v. EUIPO Case (Case T 400/24) of March 19, 2025

Facts

In this case, Mercedes-Benz sought to register as an EU trademark (EUTM no. 018805110) representing an off-road vehicle driving up a slope, for products in Class 12 (vehicles, spare parts, tires) and Class 18.

However, the EUIPO partially refused the application due to a lack of distinctiveness for products in Class 12. The Board of Appeal upheld this refusal on the grounds that the sign represented a typical image of an off-road vehicle in a situation and did not contain any distinctive elements to indicate commercial origin to consumers.

EUIPO Tribunal decision

In its decision of March 19, 2025 (Case T 400/24), the EUIPO Tribunal rejected Mercedes-Benz’s appeal, confirming that the sign lacked distinctiveness under the EU Trademark Regulation 2017/1001.
In its reasoning, the Tribunal recalled case law stating that a sign closely inspired by usual representations of the product itself can only be considered distinctive if it deviates significantly from the visual norms of the sector. The drawing in question was not sufficiently different from the usual representations of an off-road vehicle for the relevant public to associate it with a particular commercial origin.

The simplicity and generic nature of the image reinforced the absence of distinctiveness, even though the target public pays attention to the concerned products.

Scope of the decision

This decision illustrates the high level of distinctiveness required for figurative trademarks representing the product or its expected performance.

A drawing that merely represents the product in a conventional or generic manner, without sufficiently unique or unusual elements, is likely to be deemed devoid of distinctiveness and thus ineligible for registration as a trademark.

Strategies to Maximize the Validity of Your Figurative Trademark

Here are some best practices based on practical experience and case law:

• Design an original visual sign: A drawing or logo that deviates from usual product/service representations makes registration easier.

• Combine distinctiveness and creativity: Unusual stylization, distinctive graphic elements, or a unique composition enhance distinctiveness.

• Conduct a prior search: Before filing, an exhaustive search of existing trademarks (both verbal and visual) reduces the risks of opposition or refusal.

• Consider multiple filings: Filing both a verbal trademark and a semi-figurative trademark can strengthen protection, especially for trademarks that rely on both a logo and a name.

Conclusion

Not all figurative trademarks are automatically valid. Their legal validity primarily depends on their distinctiveness, compliance with public order, and availability relative to prior rights. A generic or overly descriptive logo will often be refused registration, while an original and distinctive design will result in solid protection.

To ensure successful registration and safeguard your rights, it is essential to create a strong visual sign and conduct the necessary checks before filing.

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. Is a simple logo always valid as a figurative trademark?
No, it must also be distinctive and non-descriptive to be registrable.

2. Can a figurative trademark be refused for reasons other than lack of distinctiveness?
Yes, it can be refused if it contravenes public order, is already used by another party, or does not meet the conditions of representability or legality required by law.

3. Can I modify a figurative logo already filed?
Any significant change generally requires a new filing.

4. Is a drawing very similar to an existing one valid?
No, if it creates similarity with a prior trademark, registration may be refused or the act annulled.

5. Can a color alone constitute a figurative trademark?
Yes, but the color must be specifically claimed and presented with international codes (e.g., Pantone).

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

In an economic landscape where corporate value is increasingly derived from intangible assets, intellectual property (IP) litigation is becoming significantly more complex. The increasing judicialization of business, coupled with the technical intricacies of emerging digital challenges (Web3, AI, Data), imposes a requirement for absolute rigor upon legal practitioners. For international lawyers, General Counsels, and decision-makers, relying on standard technical support is no longer sufficient; it has become imperative to collaborate with professionals whose competence is recognized and validated by the highest jurisdictions.

It is in this context that the dual status of Court-Appointed Expert to the Cour de cassation (French Supreme Court – Specialization: Trademarks) and Expert to the Paris Court of Appeal (Specialization: Trademarks, Designs & Models) assumes its full strategic dimension. Beyond the honorific title, it represents a probative methodology and an anticipatory vision of judicial risk that are placed at the service of corporate strategy. This qualification offers reinforced legal certainty, which is essential for preserving the professional liability of legal counsel and ensuring the enforceability of rights holders’ assets.

The status of court-appointed expert: a guarantee of technical excellence and ethics

Inclusion on the lists of judicial experts is not a mere administrative formality. It is the culmination of a drastic selection process, validating indisputable technical competence and absolute moral probity.

Being a Court-Appointed Expert to the Cour de cassation constitutes the highest level of recognition for a legal technician in France. This implies that the highest court in the French judicial order recognizes the expert as an authority in their specialization. Similarly, accreditation by the Paris Court of Appeal, the central jurisdiction handling the vast majority of IP litigation in France, attests to a proven practice in complex cases.

For the lawyer or the final client, collaborating with a Court-Appointed Expert offers three major guarantees, indispensable to the solidity of a file:

1. Independence: The expert is bound to total objectivity, a pledge of credibility when establishing reports or audits.
2. Technical Competence: Mastery of the most specific aspects of the matter (distinctiveness, likelihood of confusion, revocation, materiality of infringement).
3. Ethics: Strict adherence to the guiding principles of the trial, notably the adversarial principle (due process), which permeates their entire practice, even in advisory roles.

You may verify these official registrations via the justice directories:

• Consult the official list of experts to the Paris Court of Appeal (2026)
• Consult the official list of experts to the Cour de cassation (2025)
• Consult the national directory of the National Council of Companies of Justice Experts (CNCEJ)

The added value of the judicial expert in the lifecycle of IP rights

A common misconception is that the Court-Appointed Expert only intervenes once litigation has arisen. On the contrary, it is precisely upstream, in the daily management of portfolios, that the judicial expert’s mindset provides superior legal certainty. Each act is performed with the perspective of its future enforceability before a tribunal.

Audit and availability searches: the judge’s eye before the trial

A standard availability search lists potential obstacles. A search conducted with “the eye of the Court-Appointed Expert” qualifies the risk with the perspective of the magistrate. The expert, accustomed to enlightening tribunals, understands how trial judges appreciate in concreto the similarity of signs or goods and services.

When analyzing your trademark availability searches, we do not merely apply theoretical criteria. We evaluate the probability that a judge would retain a likelihood of confusion, integrating the most recent jurisprudential trends. This allows for the elimination of false positives (theoretical risks that are judicially weak) and the identification of genuine litigation risks, thus protecting the company against future nullity actions.

Filings and procedures: procedural rigor at the service of protection

The solidity of an industrial property title is determined at the moment of its filing. A poorly drafted specification or imprecise classification constitutes a breach into which the opposing party will step during a nullity or revocation action.

The practice of pathological litigation teaches us a contrario how to draft robust wordings. We anticipate arguments of non-use or lack of distinctiveness. This preventive approach is at the heart of our trademark law practice, where each class is weighed to withstand the “fire” of judicial proceedings, guaranteeing maximum enforceability of the title. This is essentially legal engineering designed to preclude future vulnerability.

Management and valuation: credibility in audits (M&A)

In the context of Mergers & Acquisitions (M&A) or fundraising, the valuation of IP assets is critical. The intervention of an Expert appointed to the Cour de cassation to audit a portfolio provides a major “trust signal” to investors and auditors.

The financial valuation of trademarks requires rigorous methodology (relief from royalty method, excess earnings method, etc.) which the judicial expert masters perfectly for regular presentation before the courts. This rigor secures the valuation and strategy and minimizes the risks of liability warranties, thereby protecting the professional liability of the business lawyers managing the transaction.

Surveillance and defense: qualifying infringement with precision

Online brand enforcement often generates significant “noise.” Distinguishing between a minor infringement and a substantiated counterfeiting case requiring immediate action is crucial for cost control and defense strategy.

The Court-Appointed Expert possesses the necessary acuity to detect the constitutive elements of infringement (identical reproduction, imitation, risk of association) and to compile a body of probative evidence. This precise qualification allows for advising on the most adapted gradual response, from the cease-and-desist letter to the seizure (saisie-contrefaçon), avoiding reckless threats that could lead to liability for disparagement.

The synergy between lawyers and IP attorneys in complex litigation

The success of intellectual property litigation often rests on the alliance between the procedural strategy of the lawyer and the technical analysis of the Trademark Attorney (CPI). When a specialized lawyer collaborates with a CPI holding the status of Court-Appointed Expert, they significantly reinforce the probative value of their file.

This technical collaboration materializes at several levels:

• Expert Consultation (Party-Appointed Expertise): Even before the introduction of proceedings, we can draft an independent technical consultation. Although produced at the request of a party, the signature of an Expert appointed to the Cour de cassation confers major technical weight upon the document. This report serves to objectify technical facts and provides the lawyer with robust arguments for their pleadings, which can be pivotal in IP litigation advice.
• Assistance during Saisie-Contrefaçon (Seizure): The preparation of the motion and assistance to the Bailiff during operations require surgical precision to avoid the nullity of the official report. Judicial expertise ensures scrupulous respect for the limits of the court order and the accurate description of material facts.
• Validity Analysis and Counterclaims: In a defense strategy, we assist the lawyer in identifying technical flaws in the opposing party’s patent or trademark (prior art, lack of novelty, descriptiveness) to construct a solid counterclaim for nullity.

This synergy allows for the delivery of a “turnkey” file to the judge, where law and technique articulate perfectly, maximizing the chances of success.

FAQ: The judicial expertise in practice

What is the difference between a Party-Appointed Expert and a Court-Appointed Expert?
The Court-Appointed expert is designated by the judge to enlighten the tribunal on a technical question with total impartiality. The Party-Appointed expert is retained by one of the parties. However, when the party expert also holds accreditation from the Cour de cassation or Court of Appeal, their private consultation benefits from superior moral and technical authority. They remain bound by their ethics and duty of rigor, which confers greater probative force to their analysis than a simple technical note.

How does judicial expertise secure a trademark financial valuation in an M&A context?
The financial valuation of intangible assets is often contested by tax authorities or during shareholder disputes. The judicial expert applies standardized methodologies recognized by the courts. Their valuation report is argued, documented, and justified point by point. In the event of an audit or post-acquisition litigation, this report constitutes a master piece of evidence to justify the transfer price, thus protecting executives and their legal counsel.

Can we retain a Court-Appointed Expert for a private consultation before litigation starts?
Yes, and it is highly recommended. Retaining a Court-Appointed Expert for a pre-litigation consultation allows for an objective assessment of the chances of success of an action (analysis of the materiality of infringement, validity of the title). This enables the lawyer and client to define the best strategy: settle, attack, or withdraw. It is an indispensable risk management tool to avoid long, costly, and uncertain proceedings.

What is the role of the expert during a saisie-contrefaçon?
During a seizure, the Bailiff describes what they see, but they do not always possess the technical competence to identify specific elements of infringement, particularly in complex fields (software, designs). The expert assisting the Bailiff guides them to ensure that the seized evidence corresponds exactly to the judge’s order, thus avoiding out-of-scope seizures that could lead to the nullity of the report.

Why trust Dreyfus Law Firm

Dreyfus Law Firm is not merely a firm of Trademark Attorneys; it is a reference in Intellectual Property and Digital Law.

Founded by Nathalie Dreyfus, Expert to the Cour de cassation and Expert to the Paris Court of Appeal, the firm combines the agility of a dedicated team with the power of a global network. Our transversal approach allows us to accompany lawyers and legal departments across the entire value chain: from filing strategy to aggressive defense of rights on the Internet (Domain names, UDRP, Phishing) and in the physical world.

Choosing Dreyfus means choosing the security of technical expertise recognized by the highest French jurisdictions to protect your most valuable assets and secure your litigation strategies.

Are you a lawyer or General Counsel looking to secure the technical aspect of a complex file?

Contact us for a confidential analysis of your issues.

Dreyfus & Associés is a partner of a global network of lawyers specializing in Intellectual Property.

Introduction

The protection of plant varieties is a major strategic issue for breeders, seed companies, research institutes and investors. Within the European Union, the plant variety right (PVR) provides a harmonised, demanding and highly technical legal framework. Certain mistakes—often made prior to filing—may result in the definitive loss of rights.

It was Regulation (EC) No. 2100/94 of 27 July 1994, known as the Basic Regulation, which established at EU level a specific system for the protection of plant varieties, referred to as the Community Plant Variety Protection system (CPVP).
This system provides for the grant of a single intellectual property title: the Community Plant Variety Right (Community PVR), issued by the Community Plant Variety Office (CPVO), the sole authority competent at EU level for implementing this protection system.

Unlike national plant variety rights, which are granted by national offices and are strictly limited in territorial scope to the State concerned, the Community plant variety right allows, through a single filing, the securing of exclusive rights covering the entire European market.

The purpose of this article is to provide a comprehensive, structured and chronological checklist designed to anticipate risks and to effectively secure an application for plant variety protection within the European Union.

Ensuring, at an early stage, that the variety is eligible for protection

Before taking any steps, it is essential to verify that the variety in question actually meets the conditions for protection under EU law. Above all, the variety must result from a characterised breeding activity, excluding any mere discovery.

Beyond this initial assessment, attention must focus on compliance with the fundamental criteria for protection: novelty, distinctness, uniformity and stability.
• Novelty requires that the variety has not been commercialised, with the breeder’s consent, beyond the authorised time limits prior to filing. Even limited or indirect marketing may be sufficient to destroy novelty.
• Distinctness means that the variety must be clearly distinguishable from any other known variety at the filing date, by at least one relevant and observable characteristic.
• Uniformity requires that the plants constituting the variety show sufficient consistency in the expression of their characteristics, taking into account the mode of reproduction.
• Stability, finally, means that the essential characteristics of the variety remain unchanged after repeated propagation or at the end of each cycle of reproduction.

These criteria are assessed globally as part of the technical examination conducted by the CPVO. The absence of any one of them is sufficient to justify rejection of the application.

In practice, novelty is very often the main point of concern. Any marketing activity, even on a limited scale, occurring prior to filing may lead to an irreversible loss of rights. Field trials, exchanges of plant material or inadequately controlled technical communications are frequently at the origin of subsequent difficulties.

Securing ownership of the plant variety right from the outset

Ownership of rights is a central issue in the plant variety protection procedure. It is essential to identify precisely the breeder in the legal sense, whether a natural person or a legal entity.

Where the variety results from collective work involving employees, industrial partners or research institutes, an in-depth analysis of the contractual relationships is required. Employment contracts, collaboration agreements or research conventions may contain decisive clauses regarding ownership of results. In the absence of prior clarification, the applicant exposes itself to subsequent claims likely to seriously weaken the protection.

Formal requirements for filing

The preparation of the filing dossier should not be treated as a mere administrative formality. It requires the collection of precise and consistent technical information relating to the variety, its origin and its breeding method.

The filing dossier notably includes:
• the full identity of the breeder and, where applicable, its representative,
• the exact botanical designation of the variety,
• the proposed variety denomination, compliant with European rules,
• a detailed technical questionnaire specific to the species concerned.

Particular care must be taken with the variety denomination. This is subject to specific rules, distinct from trademark law, and must allow clear, stable and non-misleading identification of the variety. A poorly chosen denomination may give rise to objections, delay the procedure or result in refusal.

Applications before the CPVO may be filed in several official EU languages; however, English remains the preferred working language.
Representation by a specialised advisor helps to avoid formal irregularities likely to delay the procedure.

Filing the application and conduct of the procedure before the CPVO

Once the application has been filed and the fees paid, a formal examination is carried out before the technical examination phase is opened. This phase involves the designation of a competent examination office for the species concerned, responsible for carrying out the distinctness, uniformity and stability tests.

The choice of this office may have a significant impact on the duration of the procedure and on subsequent technical exchanges. In addition, the timely submission of plant material in accordance with the required conditions is a critical step. Any failure in this respect may result in rejection of the application or a substantial extension of time limits.

The DUS Examination: a lengthy and decisive phase

The DUS examination lies at the heart of the plant variety protection procedure. It is based on in-depth comparative tests, generally spread over several growing cycles.
In practice, this examination is entrusted to an authorised examination office competent for the species concerned, in accordance with Article 55 of the Regulation.

The examination generally involves:
• the supply of compliant plant material,
• trials conducted over one or more growing cycles,
• strict adherence to a timetable, which varies depending on the species and the filing period.

The duration of the examination depends in particular on the growing season applicable to the variety. In practice, the full procedure most often extends over two to three years, or even longer for certain perennial species.

At this stage, objections may be raised if the variety appears insufficiently distinct from existing varieties or if difficulties are identified in terms of uniformity or stability.

This phase requires rigorous technical preparation and anticipation of the examination office’s expectations. An incorrect assessment of the criteria or insufficient documentation may lead to failure, sometimes after several years of proceedings.

Applicants outside the European Union: key regulatory points of attention

Where the applicant is established outside the European Union, additional regulatory constraints must be taken into account at an early stage of the project. The transfer of plant material into the EU may be subject to strict phytosanitary rules, specific customs formalities and, depending on the country of origin and the species concerned, prior authorisations.

Furthermore, certain States apply particular restrictions on the export of biological resources or specific tax regimes likely to affect the circulation of plant material or the structuring of financial flows.
Failure to anticipate these aspects may result in delays, unforeseen costs or even prevent continuation of the procedure. A prior analysis of the applicable regulatory, customs and tax constraints is therefore essential.

Anticipating common errors and international coordination

Among the most frequent errors are:
• premature disclosure of the variety; strict traceability of the first uses of the variety is therefore essential,
• a non-compliant or conflicting denomination, making it necessary to conduct a thorough availability search prior to filing, not only in respect of existing variety denominations but also relevant prior rights,
• poor coordination between national, European and international filings.

The filing of a community plant variety right is only one component of an international protection strategy. It must be coordinated with systems in place in third countries that are members of the International Union for the Protection of New Varieties of Plants (UPOV), which, although based on common principles, present significant national specificities.

Poorly managed timing between initial commercialisation, Community filing and filings in third countries (United States, Latin America, Asia, Africa) may lead to irreversible loss of protection in strategic territories.

Conclusion

Filing a plant variety right in the European Union requires a rigorous approach, combining law, agronomic expertise and economic strategy. A comprehensive legal and administrative checklist is the most effective tool to secure the breeder’s rights and optimise the long-term valorisation of the variety.

Dreyfus & Associés is in partnership with a global network of lawyers specialising in Intellectual Property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team

Q&A

1.What is a Community plant variety right (CPVR)?
A Community plant variety right is a unitary intellectual property title granted by the Community Plant Variety Office (CPVO). It confers on its holder an exclusive right to exploit a new, distinct, uniform and stable plant variety throughout the entire territory of the European Union.

2.What is the difference between a national plant variety right and a Community plant variety right?
A national plant variety right has effect only within the territory of the State that granted it. By contrast, a Community plant variety right provides uniform protection in all EU Member States through a single filing, making it the preferred option for breeders targeting the European market as a whole.

3.What do the DUS tests carried out as part of the procedure involve?
DUS tests are designed to verify that the variety is distinct, uniform and stable. They are conducted by authorised examination offices and focus on specific technical characteristics. These tests may extend over several growing cycles and represent the longest and most technical stage of the CPVR procedure.

4.When should an application for plant variety protection be filed?
Ideally, before any commercialisation or public disclosure likely to affect the novelty of the variety.

5.Can a variety be protected both by a plant variety right and a trademark?
Yes, but these protections serve different purposes. The variety denomination is subject to specific rules and must not be confused with a commercial trademark.

6.How long does the plant variety protection procedure take?
The duration varies depending on the species, but the DUS examination generally extends over several years.

7.What happens in the event of an error regarding ownership of rights?
An ownership error may lead to claims, disputes or, in some cases, invalidation of the plant variety right.

8.Can an applicant outside the EU apply for a European plant variety right?
Yes, but the applicant must anticipate the phytosanitary, customs and regulatory rules applicable to the export of plant material into the European Union.

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.

Introduction

As the next round of new generic top-level domain (gTLD) applications approaches in 2026, the Registry Service Provider (RSP) Evaluation Program introduced by ICANN is redefining the technical and legal foundations of the domain name ecosystem.

This program marks a structural shift in how registry operators are assessed, certified, and integrated into the global DNS infrastructure. For trademark owners, intellectual property professionals, registries, understanding this framework is now a strategic imperative.

Understanding the registry service provider evaluation program

A new model for technical qualification

The RSP Evaluation Program introduces a decoupled assessment model, separating technical validation from individual gTLD applications.

Under the former framework, each applicant had to demonstrate independently its operational capabilities. This approach generated:

• Redundant technical audits
• Increased compliance costs
• Extended review timelines
• Inconsistent quality benchmarks

The RSP model replaces this with a centralized pre-qualification mechanism, whereby providers are evaluated once and recognized across multiple applications.

Core services covered by the RSP framework

Certified RSPs must demonstrate robust capacity in:

• Domain Name System (DNS) operations
• DNSSEC key management and cryptographic security
• Registry data publication and RDAP compliance
• Registry system continuity and disaster recovery
• Escrow and data integrity mechanisms

These functions are no longer treated as ancillary. They now constitute the technical backbone of gTLD governance.

Evaluation phases and operational framework

Pre-evaluation phase (2024–2025)

The initial pre-evaluation phase enabled early applicants to undergo technical assessment ahead of the main round.

Its objectives included:

• Establishing a pool of vetted operators
• Enhancing transparency for applicants
• Facilitating early contractual negotiations

Successful candidates are listed publicly, creating a reference market for future applicants.

Concurrent evaluation phase (From 2026)

A second evaluation window will operate alongside the 2026 gTLD application round.

This phase targets:

• New entrants
• Late technical providers
• Applicants developing in-house registry systems

Testing infrastructure: OT&E and RST v2.0

ICANN’s Operational Test and Evaluation (OT&E) and Registry System Testing (RST) v2.0 environments are mandatory validation platforms established to verify that a registry operator or RSP provider is genuinely capable of managing a top-level domain in a reliable, secure, and continuous manner.

They assess:

• Load resilience
• Incident response capacity
• Data recovery procedures
• System interoperability

This reinforces operational reliability at the root of DNS governance.

Legal and technical implications for stakeholders

Technical reliability as a legal safeguard

From an IP enforcement perspective, registry stability directly conditions the effectiveness of:

• Uniform Domain-Name Dispute-Resolution Policy (UDRP)
• Uniform Rapid Suspension (URS)
• Trademark Clearinghouse mechanisms (TMCH)
• Sunrise and Claims services

Without a qualified RSP, these instruments lose practical effectiveness.

Impact on enforcement and dispute resolution

Procedures administered in coordination with institutions such as the WIPO depend on accurate registry data and operational continuity.

A certified RSP ensures:

• Reliable registrant identification
• Traceable abuse reporting
• Preservation of evidentiary records

These elements are decisive in litigation and administrative proceedings.

Strategic opportunities for trademark owners and rights holders

Cost rationalization and budget predictability

The pre-certification model significantly reduces:

• Technical audit expenses
• Legal contingency reserves
• Emergency remediation costs

Applicants can reallocate resources toward:

• Trademark architecture
• Defensive registration programs
• Digital compliance policies

Enhancing .trademark governance models

For corporate applicants pursuing .trademark strategies, RSP certification enables:

• Centralized trademark ecosystems
• Controlled distribution channels
• Unified cybersecurity governance
• Integrated compliance frameworks

Practical recommendations for 2026 applicants

We recommend that applicants integrate RSP considerations into early strategic planning.

Key action points

• Identify pre-evaluated RSPs at least 18 months in advance
• Integrate RSP timelines into trademark filing strategies
• Conduct legal audits of registry agreements
• Align DNS governance with trademark protection policies
• Establish internal oversight committees

Internal and external resource integration

Applicants should coordinate:

• Legal teams
• IT governance units
• Cybersecurity departments
• External IP counsel
• Registry operators

This transversal approach reduces operational fragmentation.

Conclusion

The Registry Service Provider Evaluation Program represents a structural evolution in DNS governance. It transforms technical qualification into a strategic legal instrument and places infrastructure reliability at the center of trademark protection.

For domain name stakeholders, this program is no longer optional. It is a prerequisite for sustainable digital positioning.

The Registry Service Provider Evaluation Program must now be understood as a cornerstone of modern domain name strategy.

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 RSP certification guarantee application approval?
No. It only validates technical capacity. Legal, financial, and policy reviews remain applicable.

2. How long does RSP evaluation usually take?
Between 6 and 12 months, depending on system complexity and remediation requirements.

3. Should trademark owners prioritize pre-evaluated providers?
Yes. Early engagement reduces regulatory and operational uncertainty.

4. What are the main legal risks of using a non-certified provider?
Application rejection, enforcement failures, compliance breaches, and reputational damage.

5. When should applicants begin RSP negotiations?
Ideally 24 months before the application window.

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

Over the past few years, the double proxy has established itself as one of the most formidable technical mechanisms used by professional cybersquatters. Behind an apparent technical sophistication hides a very concrete legal reality: an organized opacity, intended to slow down the identification of those responsible, to neutralize in practice the actions of withdrawal and to amplify infringements of trademarks, domain names and corporate reputation.

In a context of growing organized crime, the double proxy is no longer a simple tool for anonymization. It now allows the deployment of industrial phishing, employment fraud, digital counterfeiting or identity theft campaigns, designed to resist traditional legal reaction mechanisms.

Understanding the double proxy: a cascade opacity mechanism

The double proxy is based on the successive interposition of several distinct technical intermediaries between the end user and the server effectively controlled by the attacker. In practice, the disputed domain name points to a first proxy, often operated by a CDN or reverse proxy provider, which then redirects to a second intermediary before reaching the final infrastructure.

These actors generally present themselves as mere technical providers and claim, in practice, the benefit of the hosting providers’ liability regime, subject to the legal qualification of their actual functions.. The objective is clear: to sever both the legal and technical link between the unlawful content and its true operator. Each layer acts as an additional screen, making the identification of the true hostng provider and the data controller particularly complex.

Fragmentation of responsibilities and enforcement actions

Unlike a simple proxy, the double proxy is based on a voluntary segmentation of technical and legal roles, which fragments the chain of responsibility and complicates any swift and coordinated action.

In practice, the chain of intermediation follows a well-established pattern. The registrar identifies a technical point of contact and refers to a CDN provider, whose official mission is to optimize the availability and performance of content. This provider then redirects to an intermediate hosting service, which is not necessarily the actual site operator. Finally, this host relies on a hidden origin server, sometimes located outside the European Union.

Each actor then presents himself as a passive intermediary and shifts responsibility to the next link in the chain. This cascading architecture exploits the grey areas of technical intermediaries’ liability law: without formally neutralizing notice-and-takedown mechanisms, it largely deprives them of  effectiveness by diluting the actual knowledge of unlawful content and the capacity for immediate action.

Why the double proxy has become the cybersquatter’s ultimate weapon

The first effect of the double proxy is a systemic neutralization, in practice, of takedown procedures. Each service provider invokes their status as an intermediary, requires local court orders or redirects the complainant to another actor in the chain. A withdrawal request, although well-founded, then turns into a fragmented procedural journey, incompatible with the urgency of ongoing fraud.

The second effect is an accelerator of large-scale fraudulent campaigns. The dual proxy allows for near-instant infrastructure recycling: when a website is suspended, content is replicated elsewhere, the domain name redirected, and the proxy chain reconfigured in minutes.

Finally, this architecture leads to a dilution of legal responsibilities. Each intermediary invokes its local compliance, or lack of actual knowledge, complicating the demonstration of bad faith, which is central to cybersquatting and domain name disputes.

Impact on rights holders

The double proxy weakens the effectiveness of trademark rights and extrajudicial mechanisms. UDRP-type procedures or blocking actions carried out with registrars lose effectiveness when fraudulent content remains accessible despite the suspension or blocking of the disputed domain name.

Each additional day during which a fraudulent website remains online generates immediate economic and reputational damage, marked by a loss of customer trust and an increased risk of personal data being misappropriated.

From an evidentiary standpoint, the double proxy greatly complicates evidence gathering. The rotation of IP addresses, limited log retention and the deliberate instability of intermediation chains make the identification of the real operator particularly challenging.

What solutions are available against double proxying?

Faced with the double proxy, the effectiveness of the response relies on a multi-level legal approach. This combines coordinated notifications with the registrars, CDN providers and hosting providers, legally qualified formal notices and, where justified , targeted extrajudicial or judicial actions. The objective is to identify, within the technical chain, the actors with a concrete capacity for intervention and to avoid the dilution of responsibilities.

Anticipation through technical evidence is decisive. The precise documentation of proxy chains, time-stamped captures of redirects, dynamic DNS analysis and rapid conservation of technical elements make it possible to establish the actual role of each intermediary and to contest usefully the classification as a purely passive intermediary.

In this respect, recent case law confirms the relevance of this approach. In a judgment of October 2^nd, 2025 (RG n° 24/10705) relating to a streaming fraud case, the Paris Judicial Court admitted that an infrastructure provider could be held liable as an indirect host provider, when the latter is duly notified of the illegal content and this qualification remains proportionate to its technical functions and its capacity to act.

Conclusion

The double proxy is today one of the most sophisticated and destabilizing tools of modern cybersquatting. Its impact goes well beyond technical considerations: it undermines the effectiveness of rights, the speed of remedies and user protection.

within response to this weapon, only a global strategy, combining legal expertise, technical mastery and anticipatory evidence gathering, can restore a balanced enforcement framework.

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. Is the use of double proxying illegal?

No. The use of a proxy, including multiple, is legally neutral in itself. It is not the technology that is unlawful, but its use. On the other hand, when double proxy is used to conceal manifestly unlawful activities, it constitutes a strong indicator of bad faith in the overall legal analysis.

2. Can an intermediary be forced to keep their logs?

In principle, not without judicial intervention. Data retention obligations are strictly regulated. On the other hand, rapid precautionary measures may be requested in order to avoid the automatic deletion of essential technical data.

3. Does the use of non-EU servers prevent any legal action?

No, but it complicates enforcement. It often requires combined actions (administrative, judicial) and more frequent reliance on international assistance or actors located upstream in the technical chain.

4. Are automated detection tools effective against double proxy?

They are useful but insufficient alone. They must be combined with legal and technical analysis, capable to interpret redirections, infrastructure structures and weak signals.

5. Is a website protected by a CDN necessarily suspicious?

No. CDNs are widely used for legitimate purposes. It is the combined use of several layers of proxy, associated with unlawful content, that may become problematic.

6. Are the hosting providers always able to act quickly?

Not necessarily. Some intermediaries have only partial control over the infrastructure and must themselves turn to other providers before they can intervene.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

The Data Protection Act (Loi Informatique et Libertés), of January 6, 1978, has since then evolved to meet the new challenges posed by digital technologies and the management of personal data.

The successive reforms, particularly with the implementation of the General Data Protection Regulation (GDPR), the EU Directive 2016/680’s transposal, and recent amendments, have allowed the law to adapt to contemporary issues.

This article explores the major changes to this legislation and analyzes their impact on personal data protection in France.

The origin and evolution of the data protection Act

The Data Protection Act was initially adopted in 1978 to protect citizens’ privacy in the context of personal data management. This law established the Commission Nationale Informatique & Libertés (CNIL), French independent administrative authority, to ensure that data processing practices comply with the law’s fundamental principles. The original law aimed to regulate the collection and processing of personal data by both public and private sectors and has been amended twice:

• In 2004, with the introduction of new provisions to strengthen data protection, notably through the transposal of the European Directive 95/46/EC, which implemented adjustments to the law.

• In 2016, with the adoption of the General Data Protection Regulation (GDPR) in May, which came into effect in 2018, marking a significant evolution in both French and European legislation.

Major changes brought by the GDPR

The GDPR had a significant impact on the Data Protection Act by strengthening personal data protection and harmonizing rules at the European level. While it is not directly a modification of French law, its application forced national legislation to integrate its core principles.

The GDPR has enabled to guarantee :
• The right to clear and accessible information when collecting data.
• The right to access, rectify, and erase (right to be forgotten).
• Data portability from one service to another.

The GDPR also expanded the CNIL’s powers in terms of enforcement, allowing fines up to 4% of a company’s global turnover for non-compliance. The CNIL now plays a more proactive role in monitoring corporate compliance.

Relationship between national law and the GDPR

The Data Protection Act continues to play a complementary role to the GDPR on issues where the European regulation allows for national discretion.

For example:
• The processing of health data, offense-related data, or journalistic data.
• Criminal law files, governed by specific rules derived from the European directive introduced alongside the GDPR.

These provisions allow the legal framework to adapt to areas where security and protection concerns are particularly high.

The evolution of the Data Protection Act remains dynamic, with regular amendments, notably decrees published since 2018, specifying the operational modalities of the new rules.

New obligations for businesses

The Data Protection Act, as amended by the GDPR, now imposes additional obligations on businesses regarding the management of personal data:

• Appointment of a Data Protection Officer (DPO):
Certain businesses must appoint a DPO to ensure that data processing practices comply with the legislation.

• Explicit and Documented Consent:

Businesses must obtain explicit consent from users before collecting their data, and this consent must be documented and easily accessible.

• Privacy Impact Assessment (PIA):

Businesses must conduct PIAs when data processing presents a high risk to individuals’ rights and freedoms, especially in the case of automated processing.

Challenges of data protection in the digital Age

1) The rise of Big Data and AI

The massive processing of data (Big Data) and the growing use of artificial intelligence (AI) in personal data processing pose new challenges. Businesses must now justify the necessity of collecting data and can no longer rely on a lax approach.

2) The risks of data breaches

Despite efforts to strengthen security, data breaches remain frequent. Companies must not only take preventive measures but also be prepared to notify competent authorities and affected individuals in case of a data breach.

3) International Data Transfers
The transfer of data outside the European Union is strictly regulated. Businesses must implement appropriate mechanisms, such as standard contractual clauses or comply with adequacy regulations (e.g., the Privacy Shield for transfers to the United States), to ensure the security of personal data.

Conclusion

The Data Protection Act, as amended by the GDPR, represents a strengthened legal framework for personal data protection, particularly in the context of rapid technological advancements. Businesses must comply with these new rules, not only to avoid penalties but also to ensure the trust of their users.

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 specialized intellectual property lawyers.

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1.How does the GDPR affect companies that process sensitive data?
Companies that process sensitive data must implement enhanced security measures and obtain explicit consent from the individuals concerned. They must also conduct a Data Protection Impact Assessment (DPIA) to assess the risks associated with these processing activities.

2.Which companies must appoint a DPO?
Companies that process personal data on a large scale or sensitive data must appoint a Data Protection Officer (DPO). It is also mandatory for public organizations and those involved in regular monitoring of individuals.

3.What are the risks for companies in case of non-compliance?
In case of non-compliance, companies risk financial penalties of up to 4% of their global turnover or €20 million, depending on the severity of the violation. They may also face legal action and damage to their reputation.

4.How can companies ensure the security of personal data?
Companies must implement technical and organizational security measures, such as data encryption, strict access controls, and continuous training for employees on security best practices.

5.What is a Data Protection Impact Assessment (DPIA)?
A Data Protection Impact Assessment (DPIA) allows companies to analyze the risks to data protection before launching processing activities that may affect individuals’ privacy. It is mandatory for high-risk processing, particularly in cases of large-scale surveillance.

6.Is user consent always necessary for the processing of their data?
Explicit consent is required when data is processed based on this consent. However, in certain cases (e.g., for contract execution or legal obligations), other legal bases, such as legitimate interest, can be used without the need for prior consent.

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

ICANN (Internet Corporation for Assigned Names and Numbers) established the system of national top-level domains, known as ccTLDs (country code Top-Level Domains), the management of which is entrusted to each country. Specific rules govern the registration and use of these extensions, depending on local legal and regulatory requirements.

Choosing an appropriate ccTLD makes it possible to clearly indicate to search engines and users the intended target audience, thereby strengthening the relevance of content at a national or regional level. As such, the ccTLD constitutes an essential legal, technical, and strategic lever for any company developing an online activity, whether domestic or international.

Definition: what is a ccTLD?

A ccTLD (Country Code Top-Level Domain) is a domain name extension composed of two letters, assigned to a State or territory on the basis of the international ISO 3166-1 standard.

Each ccTLD corresponds to a clearly identified geographical area, for example .fr for France, .de for Germany, .it for Italy, .es for Spain, or .cn for China.

In addition, certain territories have been assigned specific codes under the ISO standard, in particular overseas territories, in order to reflect their particular geographical situation. Accordingly, alongside the French .fr extension, there are also .gf (French Guiana), .mq (Martinique), .re (Réunion), .nc (New Caledonia), .yt (Mayotte), and .gp (Guadeloupe).

Certain exceptions also exist. The United Kingdom, for instance, does not use the standard ISO code .gb, but rather the ccTLD .uk. Likewise, although the European Union is not a State, the ccTLD .eu is widely used by institutions and organisations in order to strengthen their visibility and identification at the European level.

The role of governance authorities

From an institutional perspective, the allocation of all ccTLDs is coordinated by ICANN. However, the management and registration of national domain names are carried out by the respective national registries, commonly referred to as NICs (Network Information Centers).

In France, for example, the .fr extension is administered by AFNIC (Association française pour le nommage Internet en coopération), which sets specific rules relating to eligibility, dispute resolution mechanisms, and the protection of prior rights.

Accordingly, a ccTLD is not merely a technical extension. It is the expression of national digital sovereignty, governed by specific rules that are often firmly rooted in local law.

What are the conditions for registering a ccTLD?

Each ccTLD is subject to its own registration rules, which are often stricter than those applicable to generic top-level domains (gTLDs) such as .com, .net, or .org. Certain extensions require a local presence, a national registration, or the appointment of a legal representative within the relevant territory.

By way of example, the registration of a .fr domain name is limited to holders established within the European Union, as well as in Iceland, Liechtenstein, Norway, or Switzerland.

Registration conditions vary depending on the policy adopted by the relevant registry. For more information about the eligibility rules for the .fr extension, please refer to our previously published article.

Similarly, the Canadian ccTLD .ca is strictly reserved for companies and individuals having their registered office or residence in Canada.

As a result, ccTLDs are not subject to a uniform regime.

What are the advantages of ccTLDs for businesses?

A lever of credibility and local trust

A ccTLD sends a strong signal of geographical proximity to users. It enhances trust, improves the clarity of the offer, and reinforces commercial credibility, particularly in markets where local presence is decisive. For many consumers, a national extension is naturally associated with a company established locally and subject to the applicable national law.

A strategic advantage for search engine optimisation

From an SEO perspective, a ccTLD clearly indicates the geographical target to search engines. It improves rankings for local searches and enables the implementation of a more precise international SEO strategy than reliance on a generic domain name alone.

A tool for protecting trademarks and digital assets

ccTLDs play a key role in the fight against cybersquatting, phishing, and other fraudulent uses. The defensive registration of strategic country-code extensions helps reduce the risk of trademark infringement, traffic diversion, and online impersonation, while facilitating recovery actions based on local law.

Conclusion

The ccTLD (Country Code Top-Level Domain) has become a structuring tool at the heart of corporate digital strategies. Far beyond a simple geographical extension, it serves as a vector of credibility, a lever for local visibility, and an essential legal instrument for protecting trademarks and online intangible assets.

The firm Dreyfus & Associés works in partnership with a global network of intellectual property lawyers.

Nathalie Dreyfus with the support of the entire Dreyfus firm team

Q&A

Does registering a domain name under a ccTLD automatically protect a trademark?
No, but it is an effective tool for preventing and combating online infringements.

Are all ccTLD extensions subject to the same registration requirements?
No. There is no uniform regime applicable to ccTLDs. Registration requirements vary depending on the policy of the relevant registry. Some extensions are open without specific conditions, while others require a local presence, national incorporation, or the appointment of a local representative.

Can a ccTLD be used as an indicator of territorial targeting in a dispute?
Yes. Courts and IP offices frequently take the national extension into account when assessing the intended audience, particularly in cases involving trademark infringement or unfair competition.

Can a ccTLD domain name be deleted if the eligibility requirements are no longer met?
Yes. Many registries provide for the suspension or deletion of a domain name if the holder no longer satisfies the required criteria, in particular where local presence is lost.

Are dispute resolution procedures identical for all ccTLDs?
No. Each ccTLD applies its own mechanisms, which may be based on the UDRP, local alternative dispute resolution procedures, or national courts.

Introduction

In December 2009, the new Montenegrin regulation applicable to .me domain names entered into force, entitled Regulation on Procedures for the Registration and Use of Domain Names under the National .ME Domain. This regulation paved the way for the introduction of an arbitration mechanism in addition to theUDRP (Uniform Domain-Name Dispute Resolution Policy), which had until then been the preferred means of resolving disputes relating to this extension.

This arbitration mechanism represents a structural development in the domain name dispute resolution framework, as it now makes it possible to address more complex situations that go beyond the strict scope of cybersquatting, and to integrate contractual, commercial, or strategic issues closely linked to contemporary domain name use.

The legal and institutional framework of the .me domain

From its launch in 2007, the .me extension enjoyed immediate and unparalleled success. Although formally attached to Montenegro, it quickly established itself as an extension with a clear international vocation, with more than 320,000 domain names registered within just a few months, an unprecedented pace for a ccTLD and a clear indication of its attractiveness to economic players and trademark owners worldwide.

The .me is a ccTLD operated in accordance with international standards, while remaining subject to Montenegrin law. This hybrid nature explains the early integration of the UDRP and the gradual opening to complementary national mechanisms.

The UDRP procedure as applied to .me domain names

The UDRP and arbitration are not mutually exclusive. They serve distinct yet complementary purposes, offering rights holders a broader strategic range. While the UDRP is often described as a form of arbitration, it is in fact a specific extrajudicial administrative procedure.

The UDRP is characterized by a deliberately narrow scope, limited to situations of manifest abuse, based on strictly defined criteria, and leading exclusively to technical remedies, namely the transfer or cancellation of the disputed domain name. It does not produce res judicata effects, as state courts remain competent in all circumstances. The procedure remains particularly well suited to cases of clear bad faith, but it shows its limits when confronted with complex contractual or commercial disputes.

For further information on the UDRP framework, readers are invited to consult our previously published guide.

The arbitration procedure applicable to .me domain names

The Montenegrin regulation governing .me domain names provides for the implementation of an autonomous arbitration mechanism, distinct from the UDRP procedure. The coexistence of these two dispute resolution avenues requires prior strategic reflection, based on the nature of the dispute, the economic interests at stake, and the legal effect sought.

Fully falling within the scope of arbitration law, this mechanism is based on the existence of an arbitration agreement, whether express or implied. It is distinguished by its ability to address complex disputes involving contractual, commercial, or competitive elements, whereas the UDRP remains confined to cases of abusive registration and use of domain names, in particular cybersquatting. The procedure allows for in-depth examination, extensive administration of evidence, and results in an arbitral award capable of recognition and enforcement at the international level, notably under the New York Convention.

For trademark owners, arbitration therefore constitutes a complementary tool with significant strategic value. It offers a more flexible and structured dispute resolution framework when the domain name forms part of an existing business relationship, while ensuring a comprehensive assessment of the dispute and a decision with enhanced legal force.

Conclusion

The introduction of arbitration for .me domain names, alongside the UDRP procedure in Montenegro, significantly strengthens the enforcement tools available to rights holders. It allows the legal response to be tailored to the increasing complexity of domain name uses.

Dreyfus & Associés law firm assists its clients in designing bespoke strategies that integrate all available mechanisms for resolving digital disputes.

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

Nathalie Dreyfus, with the support of the entire Dreyfus team.

Q&A

1. Does arbitration allow remedies other than the transfer or cancellation of the domain name ?

Yes. Unlike the UDRP, arbitration may, depending on the applicable framework, address broader claims, such as contractual obligations, corrective measures, or future commitments between the parties.

2. Is arbitration riskier for a trademark owner than the UDRP procedure ?

Arbitration is not riskier, but it is more demanding. It requires thorough legal preparation, strong factual arguments, and a clear strategic vision, whereas the UDRP is based on strict and limited criteria.

3. Can one freely choose between the UDRP procedure and arbitration for a .me dispute ?

Yes, in most cases. The choice depends on the nature of the dispute, the objectives pursued, and the respondent’s profile. Prior analysis is essential to avoid an inappropriate or ineffective procedure.

4. Is arbitration confidential, unlike the UDRP procedure ?

Yes. Confidentiality is one of the major advantages of arbitration, particularly valued by companies seeking to avoid public exposure of sensitive or strategic disputes.

5. Is arbitration suitable for disputes involving international groups ?

Absolutely. Arbitration offers procedural, linguistic, and legal flexibility, making it particularly well suited to international groups operating across multiple markets and facing cross-border issues.

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

The receipt of fraudulent invoices has become one of the most recurrent and costly risks for intellectual property rights holders. The scheme is now well known : fraudsters exploit public data from official registers, reproduce visual codes and institutional language, and then request payments for services that are either non-existent or devoid of any legal value. Beyond the financial loss, these practices undermine trust in the intellectual property ecosystem and compel companies to adopt genuine risk governance mechanisms.

When invoicing becomes a tool for fraud : heightened vigilance for intellectual property rights holders

A fraudulent invoice is a payment request designed to resemble an official communication, referring to a trademark filing, a publication, an opposition period, or a renewal. It frequently proposes registration in so-called “private registers” presented as mandatory, even though they have no official status whatsoever.

The fraud relies on ambiguity between official fees and optional services lacking any legal relevance, while insinuating that failure to pay could jeopardize rights. Intellectual property offices, including the EUIPO, publish warnings and examples of misleading communications on their websites, identifying companies involved in such scams.

By way of example, in 2023 a series of fraudulent emails was reported. These messages originated from email accounts using domain names closely resembling those of the EUIPO. Such phishing emails falsely claimed to come from the Office’s Deputy Executive Director and requested payment of an alleged registration fee to a foreign bank account that in no way belonged to the Office.

This constitutes identity theft fraud, evidenced in particular by a fake registration certificate imitating the name, acronym, and logo of the Office.

The vulnerability of rights holders

The exposure of rights holders begins as soon as an application is published and continues through to renewal. Publication acts as a trigger, as it makes visible the applicant’s identity, the filing date, and the procedural status. A second critical phase arises during opposition periods, when internal organizations may hesitate as to the appropriate steps to take in response to earlier rights holders. Finally, the approach of renewal deadlines offers fertile ground for fraudsters, especially when teams receive purported “final reminders” even before the office has issued any official communication. The risk is heightened when intellectual property management is spread across several subsidiaries or brands, and when payment processes prioritize speed over verification.

Identifying warning signs

The most reliable method is to verify structural elements rather than debating the tone or style of the message. Authenticity depends on the identity of the sender, the payment channel, and the beneficiary bank account. Where an office provides a secure online portal, legitimate payments and notifications should be checked primarily through that channel, not through unsolicited emails.

Fraudsters typically use domain names very close to official ones, with minor typographical variations, and attach documents imitating certificates or decisions. Within companies, the decisive reflex is procedural : no payment relating to intellectual property should be approved without verification of the file in the official portal or internal records, and without formal confirmation of the beneficiary’s legitimacy.

The accelerating effect of artificial intelligence (AI)

Generative AI increases both credibility and scalability. It facilitates multilingual drafting of messages with a convincing legal tone, removes obvious errors, and enables mass personalization based on public data. It also allows optimization of timing : by observing corporate processing habits, fraudsters can target periods when the likelihood of payment is highest. Observations by European authorities and anti-fraud cooperation bodies describe a structured phenomenon, fueled by significant gains reinvested in tools, front entities, and international logistics. The practical consequence is clear : awareness alone is no longer sufficient, and security increasingly depends on robust internal controls.

Best practices in combating fraud

When faced with a suspicious request, the appropriate response is not simply to delete the fraudulent email. Internally, legal teams and the person responsible for intellectual property must be informed to verify whether an official fee is genuinely due, and accounting departments should be alerted to block payment execution.

If a payment has already been made, the bank should be contacted immediately to explore cancellation or recovery options, as speed is often decisive. Externally, reporting is not incidental: it feeds investigations, enables offices to issue alerts, and contributes to dismantling fraudulent campaigns. From an evidentiary standpoint, it is essential to preserve the message in its original form in order to retain headers and technical data, as simple forwarding may erase useful information.

Conclusion

Fraudulent invoices exploit the transparency of official registers, which calls for a structured response : validation procedures, secure channels, training, and an internal culture in which urgency never overrides verification.

Dreyfus & Associés law firm assists its clients in implementing preventive measures, managing incidents, liaising with offices and authorities, and analyzing phishing and identity theft components when they overlap.

Dreyfus & Associés works in partnership with a global network of lawyers specialised in intellectual property.

Nathalie Dreyfus, with the support of the entire Dreyfus firm team.

Q&A

1. What types of fraudulent invoices most commonly circulate in the field of intellectual property ?
The most common involve registrations in private registers with no legal value, fake renewal or opposition notices, and purportedly mandatory service offers. Some directly imitate communications from offices or advisors to create confusion as to the official nature of the request.
2. At which key stages in the life of an intellectual property right is the risk of fraud highest ?
The risk is particularly high at the time of publication, during opposition periods, and as renewal deadlines approach. These stages make information public and create time pressure conducive to unchecked payments.
3. How can a legitimate request be distinguished from an attempted fraud ?
Any payment request must be verified through the offices’ official secure channels; unsolicited, urgent emails or those featuring unusual bank accounts should raise immediate concern.
4. How can an effective internal validation process for intellectual property payments be organized ?
All payments should be validated by the legal function or the person responsible for the portfolio, based on official portals or pre-verified banking references. No payment should be made solely on the basis of an unsolicited or purportedly urgent email.
5. Should an attempted fraud be reported even if no payment has been made ?
Yes. Reporting helps fuel investigations, warn other users, and strengthen the effectiveness of collective anti-fraud mechanisms.

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

Introduction

Artificial intelligence (AI) is rapidly spreading within companies. Task automation, decision-support tools, content generation and the optimisation of internal processes are becoming increasingly common, often driven by employees themselves in a context where AI tools are widely accessible.

This rapid adoption may create the illusion of freedom of use. In reality, the use of AI in the workplace is subject to a dense and now clearly structured legal framework, resulting from the combined application of labour law, the General Data Protection Regulation (GDPR), collective bargaining agreements (CBAs) and, more recently, the European regulation on artificial intelligence (the AI Act).

AI is therefore neither a neutral tool nor a purely technical instrument. It cannot be freely used in the workplace whenever it affects work organisation, employees’ rights or the processing of data.

The general legal framework governing the use of AI in companies: a multi-level approach

The use of AI in the workplace is governed by an intricate set of national and European rules, which fully apply whenever an algorithmic tool influences work organisation, decision-making processes or the processing of personal data.

The AI Act: a new pillar, but not a standalone one

Regulation (EU) 2024/1689 on artificial intelligence (the AI Act), adopted in June 2024, is the first European legal framework specifically dedicated to AI. It introduces a risk-based approach to AI systems.

In particular, AI systems are classified as high-risk when they are used for:

• recruitment and candidate selection,
• employee evaluation or scoring,
• performance management,
• monitoring or control of professional behaviour.

The Regulation already imposes, for certain provisions, key obligations on employers, including:

• the prohibition of certain AI practices considered incompatible with fundamental rights;
• the obligation to ensure appropriate training for persons using AI systems in a professional context.

However, practical experience shows that the AI Act cannot be considered in isolation. It forms part of a pre-existing legal framework that continues to produce its full effects.

The GDPR: the central legal foundation of AI in the workplace

In almost all cases, AI used in companies involves the processing of personal data. The GDPR therefore constitutes the unavoidable legal entry point.

As a general rule, the employer remains the data controller, even where the AI tool is provided by a third-party service provider. In this capacity, the employer must in particular:

• define a specific, explicit and legitimate purpose;
• identify a valid legal basis;
• comply with the principles of data minimisation, proportionality and security;
• provide clear and transparent information to employees.

The French Data Protection Authority (CNIL) regularly recalls that algorithmic systems cannot escape the fundamental requirements for the protection of individuals’ rights.

The GDPR also strictly regulates decisions based solely on automated processing that produce legal or similarly significant effects. In practice, human intervention remains mandatory, particularly in recruitment, evaluation or disciplinary processes.

Labour law and collective bargaining agreements: a decisive social framework

Beyond European regulations, labour law and collective bargaining agreements (CBAs) play a central role in governing the use of AI in companies.

From a legal perspective, AI is treated as a new workplace technology. As such, its introduction triggers, in many sectors, specific obligations to inform and consult employee representative bodies.

Collective bargaining agreements frequently regulate:

• the introduction of new technologies affecting work organisation or working conditions;
• employee monitoring, surveillance or evaluation systems;
• measures likely to have an impact on employment, skills or management methods.

As a result, an AI project may comply with the GDPR and the AI Act while still being legally weakened if it fails to comply with applicable collective bargaining obligations. This level of regulation remains too often underestimated by companies.

What obligations do employers face when using AI in the workplace?

Employers may use AI to organise work, improve performance or secure internal processes, provided that they respect a fundamental principle: decision-making responsibility remains human.

AI may assist, inform or automate certain tasks, but it can never replace the employer’s responsibility, whether towards employees or supervisory authorities.

The growing use of generative AI tools also raises a specific risk: the unintentional disclosure of personal or confidential data through prompts. Such data may be processed outside the European Union or reused for model training purposes.

Employers must therefore:

• strictly regulate authorised uses;
• train employees on legal and compliance risks;
• select service providers offering strong guarantees in terms of confidentiality and security.

AI deployer or AI provider: a particularly fragile legal boundary

One of the key structural contributions of the AI Act lies in the distinction between AI deployers and AI providers.

At first glance, the distinction appears straightforward:

• the provider designs or places an AI system on the market;
• the deployer uses that system in the course of its professional activity.

In practice, the AI Act adopts a functional approach. An employer may be classified as a provider when it goes beyond a passive use of the tool, in particular when it:

• trains or retrains a model using its own internal data;
• modifies operating parameters;
• integrates the AI system into an internal decision-making process;
• combines several tools to create a proprietary algorithmic solution.

These situations are common in HR, compliance or performance-management projects and result in enhanced obligations in terms of governance, documentation and risk management.

What measures should companies take to properly govern the use of AI?

To secure the use of AI in the workplace, companies must implement clear legal and organisational governance, including in particular:

• an internal AI use policy or charter;
• precise rules governing data and prompt management;
• training programmes addressing legal and compliance risks;
• robust contractual oversight of AI service providers.

Such an approach significantly reduces litigation risks, strengthens regulatory compliance and fosters trust with employees.

Conclusion

Artificial intelligence is a powerful tool, but it cannot be used freely or without control in the workplace. Its use directly engages the employer’s liability and requires legal mastery that is as rigorous as technical expertise.

A clear strategy, combined with appropriate internal rules, is essential to reconcile innovation, performance and legal certainty. Governing AI in the workplace requires a comprehensive approach, integrating the GDPR, labour law, collective bargaining agreements, intellectual property law and the European regulation on artificial intelligence.

Dreyfus & Associés works in partnership with a global network of lawyers specialised in Intellectual Property.
Nathalie Dreyfus with the support of the entire Dreyfus firm team

FAQ

1. Is the employer responsible for decisions made by an AI system?
Yes. The employer remains fully responsible for decisions taken within the company, even where such decisions are assisted or prepared by an AI system. AI may serve as a decision-support tool, but it can never replace human responsibility, in particular in matters relating to recruitment, employee evaluation or disciplinary measures.

2. Does the AI Act replace the GDPR and labour law?
No. The AI Act does not replace either the GDPR or labour law. It supplements an existing legal framework. A single AI tool may be subject simultaneously to the AI Act, the GDPR, labour law rules and collective bargaining agreements, which requires a combined reading and a comprehensive compliance approach.

3. Can an employee refuse to use an AI tool imposed by the employer?
In principle, employees are required to comply with the employer’s instructions issued under its managerial authority. However, a refusal may be legitimate if the AI tool has not been properly disclosed to employees, if it infringes their fundamental rights, or if it has not been subject to the mandatory consultation of employee representatives. A lack of training or use contrary to data protection rules may also undermine the legitimacy of the tool.

4. What happens if an employee uses an unauthorised AI tool in the course of their work?
The use of an unauthorised AI tool may constitute a breach of professional obligations, particularly with regard to confidentiality and data security. However, any disciplinary measure requires that the applicable rules have been clearly defined, communicated to employees and remain proportionate. In the absence of an internal policy or AI charter, the employer’s disciplinary leeway is reduced.

5. Can an employee claim intellectual property rights over content generated with the assistance of AI?
Yes, but only in very limited circumstances. An employee may claim intellectual property rights over AI-assisted content only where their human contribution is creative, decisive and identifiable. In the absence of a personal intellectual contribution (creative choices, structuring, or substantial modification of the content), the output generated by AI is not protected by copyright. Furthermore, where the content is created in the course of the employee’s duties, the exploitation rights generally belong to the employer or are contractually governed.

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.

Introduction

This issue is central for companies facing alleged infringements of their trademarks, patents, designs and models, or copyrights. In a context of intensified competition and rapid circulation of information, the temptation to act quickly, sometimes too quickly, is strong. Recent case law, however, firmly reiterates that the enforcement of intellectual property rights is subject to strict limits, particularly when exercised outside judicial proceedings and when it involves third parties.

Enforcing intellectual property rights without a court decision: an accepted but regulated principle

Extrajudicial action as a legitimate tool for rights protection

French law does not systematically require a prior court decision to enforce intellectual property rights.
In practice, numerous mechanisms allow for a swift response to an alleged infringement, including the sending of a cease-and-desist letter, notice-and-takedown requests addressed to online platforms, removal procedures involving technical intermediaries, or customs actions.

These measures pursue a clear economic objective: to promptly bring an allegedly unlawful practice to an end, limit damage to the value of the right, and preserve the right holder’s competitive position.

Freedom of action subject to loyalty and caution

This freedom, however, is neither absolute nor discretionary.

Case law requires that any extrajudicial action be based on a solid factual foundation, conducted with restraint, and comply with the principle of fair dealing in commercial relations. Failing this, the enforcement of rights may amount to a civil fault engaging the author’s liability.

Legal limits to the extrajudicial enforcement of intellectual property rights

The principle: prohibition of discrediting a competitor

On the basis of Article 1240 of the French Civil Code, disparagement is established whenever a company disseminates information to third parties that is likely to discredit a competitor’s products, services, or activities.

Case law is consistent: the tone used or the absence of malicious intent is irrelevant where the information disseminated has not been judicially established.

The boundary between legitimate information and abusive action

Directly informing the alleged infringer of the existence of prior rights and requesting the cessation of the disputed acts is generally accepted.

By contrast, alerting third parties—such as distributors, customers, or commercial partners—to an alleged infringement places the action in a zone of significant legal risk.

Allegations of infringement and abusive actions: key lessons from recent case law

Clear confirmation by the Court of Cassation

In a decision dated October 15, 2025 (No. 24-11.150), the Court of Cassation firmly reiterated that notifying third parties of an alleged infringement, in the absence of a court decision, constitutes an act of disparagement.

In this case, a company holding copyright in wooden wind chimes had been authorised to carry out a copyright seizure (“saisie-contrefaçon”) against a competing company and its subcontractor. Following this seizure, it sent cease-and-desist letters to several distributors of the targeted competitors, requesting that they cease marketing the allegedly infringing products.

The competing companies, considering that they had been unfairly implicated while no infringement had yet been legally established, brought an action for disparagement against the copyright holder.

At first instance, the lower courts considered that the wording of the letters sent to the resellers was measured and did not, as such, constitute disparagement. However, the Court of Cassation overturned the appellate decision, holding that “in the absence of a court decision recognising the existence of copyright infringement, the mere fact of informing third parties of a possible infringement of such rights constitutes disparagement of the products alleged to be infringing.”

Principles derived from case law

The Court thus reaffirmed three key principles governing any extrajudicial intellectual property enforcement strategy:

• The defence of rights does not justify everything: invoking an intellectual property right does not confer any entitlement to publicly disseminate unproven accusations.
• Pre-litigation communications must remain targeted: they must be strictly limited to the person suspected of infringement and must not extend to economic third parties.
• Good faith is irrelevant: even if measured, cautious and devoid of animosity, the dissemination of an unadjudicated allegation of infringement constitutes a civil fault.

Best practices for protecting rights without incurring liability

Structuring a legally secure extrajudicial action

An effective strategy is based on a graduated sequence of actions that complies with judicial requirements:

• Objectively assess the risk: evaluate the strength of the asserted rights and the reality of the alleged infringement.
• Limit exchanges to the alleged infringer: any cease-and-desist letter must be addressed exclusively to the presumed author of the acts.
• Adopt factual and proportionate wording: avoid definitive characterisations of “infringement” until recognised by a court.
• Preserve evidence: bailiff reports, seizures, and technical or comparative analyses should precede any communication.

When turning to the courts becomes essential

Where the economic risk is high or the infringement spreads through a distribution network, promptly seising a court often becomes the only secure course of action.

A judicial decision offers a dual benefit: it legitimises subsequent communications and protects the right holder against any allegation of disparagement.

Conclusion

Can intellectual property rights be enforced without a court decision? Yes, but only subject to strict limits. Case law reiterates that the defence of rights cannot justify communications liable to harm a competitor’s reputation in the absence of prior judicial recognition.

In this context, a controlled, legally framed and proportionate strategy remains essential. Anticipation and support from specialists help secure rights enforcement while preserving fair competition.

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. Is legal risk limited to litigation exposure?
No. It also includes reputational, commercial and sometimes structural risks for the company.

2. Is extrajudicial action always less risky than court proceedings?
No. If poorly handled, it may expose its author to civil liability that can be more costly than initially contemplated litigation.

3. Does good faith protect against an action for disparagement?
No. Case law considers good faith to be irrelevant.

4. Is a seizure for infringement sufficient to communicate with third parties?
No. It is an evidentiary tool, not a judicial recognition of infringement.

5. Can freedom of expression be relied upon?
It is limited by the principles of loyalty and protection against disparagement.

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.

On November 4, 2025, the case Getty Images (US) Inc. v. Stability AI Limited gave rise to a highly anticipated decision of the High Court of Justice in London, stating that the use of trademarks in the context of artificial intelligence is not, in itself, unlawful. This judgment is of considerable importance for defining the scope of liability in the field of generative AI and intellectual property law.

Introduction

On November 4, 2025, the High Court of Justice in London delivered a long-awaited decision in Getty Images (US) Inc. v. Stability AI Limited, providing key clarifications on the interaction between generative artificial intelligence and intellectual property rights.

In particular, the Court held that the use of trademarks in the context of AI is not unlawful per se, while emphasizing that specific infringements may nevertheless be established in concrete circumstances. This ruling constitutes a significant reference point in defining the liability of generative AI stakeholders.

Background and facts of the case

Getty Images, a leading provider of licensed images, brought legal proceedings against Stability AI, alleging that the latter had used its images to “train” its generative AI system, Stable Diffusion, a deep learning model capable of generating images from textual descriptions.

Getty Images claimed that Stability AI had used, without authorization, images from its databases to train its model and had generated synthetic images reproducing its “Getty Images” or “iStock” watermarks.

These allegations were based on three main legal grounds:

• infringement of copyright and database rights;
• infringement of the “Getty” and “iStock” trademarks, on the basis that certain generated images appeared to reproduce or evoke watermarks associated with those marks;
• acts of passing off, namely the misleading appropriation of Getty Images’ commercial reputation.

Arguments raised by the parties

Getty Images argued that Stability AI had reproduced copyright-protected works without authorization. In its view, the training process should be regarded both as an indirect reproduction of those works and as an unlawful extraction from its databases.

From a trademark law perspective, Getty Images primarily alleged infringement of its trademarks, asserting that the reproduction of its distinctive signs in AI-generated images constituted unauthorized use, likely to give rise to unfair competition, in particular by creating confusion in the public’s mind as to the existence of a license or a partnership.

Stability AI,  contended under copyright law that the Stable Diffusion model neither stores nor reproduces source images, but relies on statistical learning that cannot be equated with copying protected works. It further argued that the training operations had been carried out outside the United Kingdom, thereby excluding the application of UK copyright law.

Stability AI also denied any liability, asserting that any potential infringement resulted from prompts provided by end users rather than from its own conduct.

The Court’s legal analysis

An approach based on the reality of the infringement

The Court recalled that trademark law does not sanction abstract risks, but rather actual and perceptible uses. Accordingly, the analysis focused on the images generated and disseminated, rather than on the technical training process alone.

Some images had been generated from content identifiable as originating from Getty Images, while others stemmed from broader and non-identifiable datasets. This distinction played a decisive role in the Court’s assessment.

Rejection of the copyright counterfeiting claims

With regard to copyright, the Court carried out a precise legal characterization of the disputed subject matter. It clearly distinguished between:

• the model training process, which falls within the scope of statistical learning; and
• the reproduction of protected works, which alone is capable of constituting infringement.

The Court found that Stable Diffusion does not store or contain source images in a recognizable form. The model could therefore not be treated as a medium incorporating copies of protected works within the meaning of the Copyright, Designs and Patents Act 1988.

This conclusion was reinforced by a strict territorial analysis: as the training had been carried out outside the United Kingdom, UK copyright law was in any event inapplicable.

The Court thus drew a clear line between algorithmic learning and legally relevant reproduction, rejecting any principle-based liability of the AI provider on this ground.

Recognition of a limited trademark counterfeiting

For trademark matters, the Court adopted a more nuanced approach. It acknowledged the existence of counterfeiting, but characterized its scope as “extremely limited”.

The trademarks at issue were found to be identical or quasi-identical, and the services concerned fell within the same economic field as those covered by Getty Images’ registrations.

The judge specified that the lack of extensive evidence of actual confusion was not decisive, insofar as the likelihood of confusion could be inferred from the overall context.

Use of trademarks at the stage of generated content: consumer perception

It is at the stage of content generation and dissemination that legal risk crystallizes. The Court therefore examined the perception of the average consumer, a central concept in trademark law.

In the Getty case, several user profiles were considered:

• members of the general public using cloud-based services;
• developer users;
• users of downloadable models.

The Court held that a significant number of these users could believe that a partnership or license existed, a factor which weighed heavily in the recognition of trademark infringement.

Conclusion

The Getty Images v. Stability AI decision confirms that the use of trademarks in the AI creation process is not unlawful by nature, but may constitute an infringement of intellectual property rights where the traditional conditions of infringement are met and concretely demonstrated.

It represents an important milestone for both rights holders and AI developers, by clarifying the analytical criteria and evidentiary requirements applicable, while rejecting any blanket condemnation of generative AI.

In a context of rapidly expanding AI uses, specialized legal expertise remains essential to secure projects and anticipate litigation risks.

Dreyfus & Associés assists its clients in anticipating and managing these emerging risks related to generative AI, integrating trademark law, data protection and emerging technologies.

Dreyfus & Associés  is in partnership with a global network of intellectual property law specialists.

Nathalie Dreyfus, with the support of the entire Dreyfus firm team

FAQ

1. Can an AI system infringe a trademark without intent?
Yes. Intent is not a necessary condition in trademark law where there is use in the course of trade.

2. Is the appearance of a trademark in an AI-generated output always unlawful?
No, but it becomes problematic in cases of likelihood of confusion, damage to reputation, or parasitism.

3. Are AI developers responsible for generated images?
Case law trends towards increased accountability where outputs are commercially exploited.

4. How can trademark use by AI systems be monitored?
Through a combination of technological monitoring, legal analysis, and audits of generative platforms.

5. Can the removal of a trademark from AI outputs be requested?
Yes, through appropriate amicable or judicial proceedings, depending on the context and jurisdiction.

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

Introduction

Understanding DNS abuse has become a strategic priority for companies operating online, well beyond the technical community. The Domain Name System (DNS) underpins global digital commerce, trademark visibility, and trust. Yet, it is also one of the most exploited layers of the Internet infrastructure, routinely leveraged for phishing, malware distribution, botnet coordination, and large-scale fraud.

Over the past two years, and particularly since April 2024, the regulatory and contractual landscape governing DNS abuse has undergone a structural transformation. Through reinforced contractual obligations imposed by ICANN, enhanced compliance oversight, and the launch of new policy initiatives within the GNSO, DNS abuse mitigation has shifted from best-effort cooperation to binding, enforceable responsibility.

What is DNS abuse under ICANN rules?

At the highest level, DNS abuse refers to a limited and deliberately narrow category of online harms that rely on the DNS itself to function. This scope is essential: ICANN does not regulate online content, but rather the technical coordination of the DNS.

A precise and enforceable definition

For contractual and compliance purposes, DNS abuse exists when a domain name is used to enable or materially support:

• Malware, meaning malicious software designed to compromise systems or data
• Botnets, consisting of remotely controlled networks of infected devices
• Phishing, involving deception to obtain credentials or sensitive information
• Pharming, redirecting users to fraudulent destinations through DNS manipulation
• Spam, but only when it serves as a delivery mechanism for one of the above threats

This definition draws a strict line between DNS-level abuse and content-based illegality (such as trademark infringement), which falls outside ICANN’s mandate.

DNS abuse beyond technical enforcement

Historically, DNS abuse mitigation relied heavily on voluntary cooperation and informal best practices. That model has proven insufficient against industrialized cybercrime, where abusive domains are registered in volume, activated within minutes, and rotated rapidly.

From a legal and business perspective, DNS abuse now represents:

• A direct risk to trademark integrity and consumer trust
• A source of contractual exposure for registrars and registries
• A compliance risk with measurable enforcement consequences
• A governance issue, requiring documented decision-making and accountability

In practice, DNS abuse has become a cross-disciplinary risk, sitting at the intersection of cybersecurity, contract law, regulatory compliance, and digital governance.

How did the 2024 contractual amendments change registrar and registry obligations?

ICANN’s contractual amendments, effective 5 April 2024, mark a clear shift in DNS abuse mitigation. What had long been framed as cooperative best practice is now established as a binding contractual obligation, subject to compliance review and enforcement.

Registrars: clearer duties and an obligation to act

Under the revised Registrar Accreditation Agreement, registrars must maintain accessible abuse reporting mechanisms and ensure that reports are effectively processed. Beyond accessibility, the core change lies in the explicit duty to act when presented with actionable evidence of DNS abuse involving a domain name they sponsor.

This standard does not require absolute certainty. It requires a reasonable assessment based on available information. Once met, registrars must take timely and appropriate measures to disrupt the abuse.

Registries: complementary responsibilities at the TLD level

Registry operators are subject to parallel obligations under the Base gTLD Registry Agreement. They must publish abuse contact points and, upon receiving actionable evidence of DNS abuse, either escalate the matter to the sponsoring registrar or take direct mitigation measures where appropriate.

How is DNS abuse enforced today?

Since April 2024, enforcement activity has intensified significantly. ICANN relies on:

• Third-party complaints, filed by rights holders, security researchers, or affected users
• Proactive audits and monitoring, initiated internally
• Public compliance reporting, increasing transparency and reputational pressure

Failure to comply can lead to formal breach notices and escalating contractual consequences.

Strategic implications for professional stakeholders

For legal advisers, compliance officers, and technical teams, several priorities emerge.

• Structured governance and audit-ready procedure: clear internal procedures for intake, assessment, escalation, and response are now essential. Documentation is no longer optional.
• Operational capability and staff readiness: teams handling abuse reports must understand both technical indicators of DNS abuse and the contractual standards governing mitigation.
• Proportionality and exposure to legal liability: over-reaction can be as damaging as inaction. Unjustified suspensions may expose operators to contractual disputes or liability toward registrants.
• Integrated cross-functional coordination: effective DNS abuse mitigation increasingly depends on coordination between legal, technical and compliance teams.

Conclusion

DNS abuse remains one of the most persistent threats to Internet stability and user trust. Through its 2024 contractual amendments and strengthened compliance framework, ICANN has fundamentally reshaped the expectations placed on registrars and registry operators.

For professional stakeholders, DNS abuse mitigation is now a legal and contractual obligation with tangible enforcement consequences. Mastery of this framework is essential to managing risk, ensuring compliance, and protecting digital assets in an increasingly hostile online environment.

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

What is the difference between DNS abuse and online content infringement?

DNS abuse concerns technical misuse of the DNS itself, whereas content infringement relates to what is published on a website and falls outside ICANN’s mandate.

Is spam always considered DNS abuse?

No. Spam qualifies only when it is used to deliver malware, phishing, or similar DNS-enabled threats.

Are registrars required to suspend domains automatically?

No. They must take proportionate and appropriate measures, which may vary depending on context.

Can registry operators act directly against abusive domains?

Yes, where appropriate, or they may escalate the matter to the sponsoring registrar.

Does DNS abuse mitigation create legal risk for registrars?

Yes. Both failure to act and disproportionate action can carry contractual and legal consequences.

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

The sharp increase in demand for out-of-court dispute resolution services in the field of domain names constitutes one of the most significant indicators of recent developments in digital law. According to official data published by WIPO, more than 6,200 UDRP complaints were filed in 2025, representing the highest volume ever recorded, and a slight increase compared to 2024 (6,168 cases).

This growth is not a short-term or cyclical phenomenon. It reflects a structural transformation in the way intellectual property disputes are resolved, driven directly by the digitalization of intangible assets.

An analysis of the 2025 statistics provides key legal, economic, and strategic insights for businesses, particularly regarding the now central role of WIPO procedures in the protection of intangible assets.

Statistical analysis of domain name disputes

UDRP: a new all-time record

In 2025, more than 6,200 UDRP complaints were filed, a level never reached since the creation of the UDRP mechanism.

These figures confirm a continued intensification of cybersquatting, phishing, and identity theft practices, involving domain names that imitate well-known trademarks or distinctive corporate signs. Such practices are frequently accompanied by:

• deceptive websites,
• mail server (MX) configurations,
• targeted fraud campaigns aimed at employees, partners, or customers.

At the same time, these infringements have become increasingly professionalized, involving mass registrations, multiple extensions, and fraudulent uses combining websites and email services.

An industrialized form of litigation

Cumulative data show that WIPO has now administered more than 80,000 domain name disputes since the inception of its dispute resolution mechanisms.

From a statistical perspective, this critical mass produces two major effects:

• a highly structured and predictable case-law,
• a growing deterrent effect on the most visible fraudulent operators.

Geographical distribution and sectors of activity

Complaints originate from rights holders established in numerous countries, with a strong concentration of filings from the United States, France, and the United Kingdom.

The disputes span a wide range of economic sectors, including retail and distribution, digital technologies, healthcare, finance, and consumer goods.

WIPO mechanisms: scope and operational effectiveness

UDRP and related procedures: an international standard

The procedures administered by WIPO, foremost among them the UDRP, make it possible to obtain the transfer or cancellation of a domain name when three cumulative conditions are met:

• identity or confusing similarity with a prior right,
• absence of rights or legitimate interests on the part of the respondent,
• registration and use in bad faith.

A pragmatic and predictable procedural framework

The average duration of a procedure remains limited, generally a matter of weeks, with reasoned decisions that are widely published, thereby contributing to legal certainty and jurisprudential consistency.

Strategic impacts for companies and legal departments

Integrating WIPO procedures into a global protection strategy

The statistics invite companies to rethink their internal organization, including:

• anticipation of infringements,
• structured international monitoring,
• the ability to initiate WIPO proceedings rapidly.

A complementary lever to judicial litigation

Recourse to WIPO does not systematically replace court actions, but rather forms part of a complementary approach.

It allows companies to reserve judicial proceedings for matters with high strategic value, while effectively addressing large-scale or repetitive infringements. In practice, WIPO procedures often make it possible to:

• Act quickly,
• Reduce costs,
• Secure digital assets upstream of more complex litigation.

Conclusion

WIPO’s record 2025 statistics reflect a clear reality: out-of-court resolution of intellectual property disputes has become a central pillar of digital law.

For businesses, these mechanisms now constitute an essential strategic tool, provided they are integrated into a comprehensive and forward-looking approach to the protection of intangible assets.

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 a WIPO procedure be prepared effectively?
By gathering solid technical evidence, conducting a precise legal analysis, and clearly demonstrating bad faith.

2. Are WIPO decisions binding?
They are enforceable at the registrar level, subject to the absence of judicial proceedings initiated within the prescribed deadlines.

3. Are WIPO procedures truly effective?
The growing volume of cases and their recurrence demonstrate an effectiveness recognized by companies of all sizes.

4. Does a WIPO procedure prevent subsequent judicial action?
No. It does not preclude complementary actions before the competent courts.

5. Why is there such a sharp increase in WIPO procedures?
The statistics reflect the multiplication of digital infringements and the search for rapid, international, and specialized solutions.

6. Will domain name disputes continue to increase?
Current statistical trends indicate a likely continuation of growth, driven by fraudulent practices and the expansion of domain name extensions.

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

In the contemporary sports economy, performance alone is no longer enough to create sustainable value. Media visibility, presence on social networks, the ability to unite a community and attract business partners are now essential levers. In this context, the possession of trademarks by athletes is an essential legal and strategic tool. It allows to transform a notoriety, by nature volatile, into a structured intangible asset, secure and exploitable, in the service of a long-term patrimonial and entrepreneurial strategy.

The trademark, a key asset for athletes

The trademark confers on its owner an exclusive right of use over a distinctive sign for specific goods and services. For an athlete, this right presents a major interest: it allows to legally appropriate its commercial value, regardless of its sporty performances.

In a highly competitive and globalized environment, the trademark plays a structuring role. It provides a clear legal framework, enforceable against third parties, and facilitates the defense actions against unauthorized uses such as counterfeiting or parasitism. In the absence of a deposit, an athlete exposes himself to significant risks, particularly in systems based on the principle of “first to file”, where third parties can legally appropriate a name, a pseudonym or a sign that has become famous. This is notably the case of Neymar, whose name was registered as a trademark by a third party (TEU, 14 May 2019; T 795/17). The athlete had the possibility to contest the validity of the trademark, subject to the assessment of the INPI or the judges, in particular by invoking the bad faith of the registrant who exploits the name of a third party for his personal benefit. On the other hand, this means having to initiate trademark cancellation proceedings, which in turn has a financial and temporal cost.

The variety of signs eligible for trademark protection

Contrary to a generally accepted idea, the trademark of an athlete is not limited to their patronymic name. Depending on the case, can be protected:

• The civil noun, when it has distinctive character;
• A sports pseudonym or nickname recognized by the public;
• A logo or stylized signature;
• A slogan, motto or phrase associated with the athlete;

The deposit must however be carefully prepared. Not all signs are automatically protectable, and a prior legal analysis is essential to assess the distinctiveness, the possible presence of earlier trademarks and consistency with the commercial objectives of the athlete.

The trademark as a monetization and negotiation lever

The holding of trademarks considerably strengthens the position of the athlete in his contractual relations. In sponsorship, equipment or partnership agreements, the question of ownership of the used signs is central. An athlete who masters its trademarks retains increased bargaining power and avoids permanent transfers or excessive dependencies towards economic partners.

Trademarks are also the foundation of diversified monetisation strategies. They allow for the development of licensing, merchandising, co-branding, or even the creation of product and service ranges. In a structured framework, the trademark becomes an asset that generates recurring revenues, regardless of the duration of the sports career.

In terms of heritage, trademarks can be valued, brought to a company, licensed or transmitted. They are thus fully integrated into a logic of management and optimization of intangible assets.

Trademarks, image and legal risk management

Athletes are among the prime targets of Internet rights violations: counterfeits, fake products, fraudulent accounts on social networks, misleading sites or parasitic uses. In this context, the trademark is a particularly effective protection tool.

It allows to act quickly with platforms, registrars, hosts or customs authorities, often without having to demonstrate a complex fault. It also provides a sound legal basis to combat reputational damage and risks of confusion in the public mind.

Moreover, the trademark facilitates articulation with other rights, such as image rights or copyright. It provides additional legal certainty, particularly in a digital environment where the boundaries between business operations and personal communication are increasingly blurred.

Anticipate the post-career thanks to trademarks

The sports career is, in essence, limited in time. Injuries, performance drop or personal choices can end it abruptly. The trademark, on the other hand, is long-term, offering stable valuation support, likely to fit into a long-term heritage logic. It allows the athlete to perpetuate their notoriety beyond the competition.

Many reconversion projects today rely on pre-existing trademarks: academies, consulting activities, media, product lines, foundations or philanthropic commitments. By anticipating these developments, the trademark strategy becomes a tool for securing the professional and financial future of the athlete.
It also participates in the construction of a heritage, by permanently associating a name or a sign with values, an expertise or a specific universe.

Conclusion

The opportunity to own trademarks for athletes relies on a proactive and structured approach to intellectual property. By transforming sports awareness into a legal asset, the trademark becomes a real tool for economic and strategic management. Experience shows that athletes who have anticipated these challenges have a real freedom of action, much greater than those who would have neglected them.
Dreyfus & Associates assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associates is partnered with a global network of intellectual property law firms.

Nathalie Dreyfus with the help of the entire team at Dreyfus & Associates

Q&A

1.Can a trademark be filed personally or must it be through a company?
Both options are possible. The deposit can be made on a personal basis, which may offer more flexibility in operation, or through a company, which may have tax or patrimonial advantages. The choice depends on the overall strategy for managing the athlete’s rights.

2.Do trademarks protect against fake accounts on social networks?
Yes, they are an effective legal basis for requesting the removal of fraudulent accounts.

3.When should an athlete consider a branding strategy?
Ideally as soon as possible, before any significant media exposure or signing of commercial contracts.

4.What happens if a third party files a trademark with the name of an athlete?
If a third party files a trademark with the name of an athlete without his consent, the latter may initiate opposition or cancellation proceedings, especially if the trademark was filed in bad faith or if it creates confusion in the mind of the public. It is also possible to request the cancellation of the trademark if the filing infringes the image rights of the athlete.

5.Can an athlete file a trademark in several countries?
Yes, an athlete can register their trademark in several countries depending on their commercial ambitions. He can choose to file his trademark at the national level or use systems like the Madrid system (WIPO) for a simplified international registration, covering several countries in a single application

6.How can an athlete use their trademark to enter sectors other than sports?
An athlete can use their trademark to diversify into sectors such as fashion, wellness products, technologies, or media. By using his name or image, he can create partnerships with trademarks in these sectors, relying on his reputation and network to expand his activities beyond the sports field.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice

Introduction

Trademarks and patents are intangible assets of value for a company. Thus, both their maximization and their protection are essential to preserve innovation, differentiation, and competitiveness in the market. However, effectively managing these rights requires much more than their simple registration: a thorough audit allows to analyze and evaluate all the industrial property rights held by a company to ensure that they are well protected, operated and in accordance with legal and contractual requirements. An audit of trademarks and patents is therefore a crucial lever to avoid risks and optimize innovation and growth strategies.

The need for an audit of trademarks and patents

There are multiple situations in which a trademark or patent audit is required. Among these, three major reasons justify, in themselves, making this approach an essential strategic reflex for the company..

The protection of intellectual property assets

Trademarks and patents are essential tools for securing a company’s activity. Indeed, the audit allows verifying that all intellectual property rights are properly registered and protected. Many intellectual property assets can be neglected, such as unpaid annuities or a title not renewed on time or not used. The audit also makes it possible to verify that the rights are properly used and that the company does not face risks of infringement, revocation or nullity. By identifying rights at risk or geographical areas that are insufficiently covered, the audit makes it possible to adopt a proactive strategy to strengthen legal protection.

The optimization of business strategies and transactions

An audit of trademarks and patents is particularly important in the context of commercial transactions such as mergers, acquisitions or fundraising. During these events, an investor or a purchaser will conduct a due diligence review, including the audit of intellectual property rights. This ensures the legal soundness of the company and avoids setbacks during the transaction. In addition, the audit allows to identify patents or trademarks that can be , transferred or assigned, which optimizes the commercial potential of the company.

The reduction of legal risks

An audit helps limit the legal risks and helps to identify industrial property rights that could be contentious or invalid and to anticipate possible conflicts. By verifying the compliance of contracts, licenses and transfers of rights, the audit helps to avoid potential violations of third-party rights. In addition, it allows for the assessment of the scope of existing patents and trademarks, as well as their potential to be exploited in new markets or areas.

The essential steps of trademark and patent audit

An audit of trademarks and patents is not limited to a simple inventory of rights. It includes several fundamental steps to assess the situation of intellectual property assets and propose appropriate recommendations.

The inventory of intellectual property assets

The first step of the audit is to draw up a complete inventory of the company’s intangible assets. This includes intellectual property titles stricto sensu, such as trademarks, patentsdesigns, as well as copyright-protected works, but the trade secret.

Each asset must be listed with its essential information:

• Registration dates
• Renewal dates
• Geographical scope
• Etc…

This step also allows identifying unused or abandoned rights that can be removed from the portfolio.

Assessment of the validity and strength of rights

The next step is to assess the validity and scope of the rights held. This includes verification of their legal status (for example patents reaching an expiry date or trademarks that will need to be renewed). The audit also assesses the strength of rights in the face of potential challenges. We also study the strength of the right in case of infringements by third parties such as counterfeiting.

Management of contracts and licenses

The audit also includes the analysis of contracts related to intellectual property rights: license, assignment, co-ownership agreements, as well as agreements with employees and business partners. These contracts must be reviewed to ensure that they are up-to-date and comply with current legislation. The audit verifies that the company meets all its contractual obligations and identifies areas for improvement for better management of intellectual property.

Anticipating an action against a trademark or a patent: auditing as a tool for litigation preparation

In the context of an opposition, a cancellation action, revocation for non-use or infringement, the ability to quickly produce legally relevant proof of use is decisive. In practice, many cases fail not on the substance of the law, but due to insufficient, inadequate or non-aligned evidentiary elements with procedural requirements.

A trademark audit allows for the upstream identification of the portfolio’s evidentiary strengths and weaknesses, by verifying the existence of usable proof of use in relation to the labels, territories and periods concerned. It also highlights securities exposed to a risk of lapse or challenge, thus avoiding the company from placing itself in a situation of procedural vulnerability vis-à-vis a prepared opponent.

In patent matters, auditing is an essential tool for litigation preparation. It enables the legal and technical soundness of the titles invoked, the consistency between the claims and the invention actually exploited, as well as their ability to withstand a nullity action, to be assessed.

This anticipation reduces reaction times, secures the contentious strategy and refocuses the debate on the substance of the law, rather than on avoidable evidentiary weaknesses, while offering a realistic vision of the chances of success and the associated financial stakes.

Conclusion

The audit of trades and patents is an essential step for a proactive management of intellectual property tools. It allows a company to maximize the value of its assets while protecting against legal risks. To ensure the sustainability of rights and effectively exploit assets, a regular audit is essential.

Dreyfus & Associates helps its clients identify, secure, and monetize their rights, both in France and internationally.

Dreyfus & Associates is partnered with a global network of intellectual property law firms.

Nathalie Dreyfus with the help of the entire team at Dreyfus & Associates

FAQ

1. Does the industrial property rights audit include the analysis of third party?
Yes, the audit of patents includes the analysis of freedom to operate, that is to say the study of third-party patents likely to prevent the exploitation of the invention. This allows the company to identify potential patent conflicts before launching a product on the market.

2. How often should a trademark and patent audit be conducted?
It is advisable to carry out an annual or biannual audit, or on the occasion of strategic events such as an acquisition or a change in strategy.

3. What is the difference between an internal industrial property audit and an audit carried out by an external firm?
An internal audit can be conducted by the company’s legal team, but it often lacks the necessary hindsight and objectivity to identify all gaps. An external audit, conducted by lawyers specialized in intellectual property, provides a more complete, impartial and expert view of industrial property rights and the strategies to adopt.

4. What are the advantages of an industrial property audit as part of fundraising?
An industrial property audit can reassure investors that the company has properly protected its industrial property assets and is in compliance with regulations. This increases the company’s perceived value and improves its position in negotiations, proving that its assets are well managed.

5. What are the costs associated with a trademark and patent audit?
Costs vary depending on the size and complexity of a company’s industrial property portfolio. A comprehensive audit may include additional research, legal advice, and analysis of contracts and documents related to the industrial property. It is important to consider these costs as an investment in the security and valuation of company assets.

6. Is the audit of trademarks and patents mandatory?
Auditing trademarks and patents is not a legal requirement, but it is highly recommended to optimize industrial property asset management, avoid legal risks, and maximize business value. Some companies choose to carry out one in strategic periods (before a transaction, a change of strategy, etc.).

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

Wines and spirits, emblematic products of French and European heritage, are highly exposed to counterfeiting and misappropriation of reputation, particularly due to their strong territorial identity and the rise of online commerce. How can producers protect goods whose value depends as much on origin as on visual identity and reputation? An integrated approach combining wine and spirits regulations, intellectual property rights and digital enforcement is essential.

Legal framework applicable to wines and spirits

A sector governed by strict and specific regulations

The protection of wines and spirits relies on a combination of French laws (Rural Code, Consumer Code, Évin Law) and European regulations (EU Regulation 2024/1143 on geographical indications, Regulation 2019/787 on spirit drinks). These texts impose:

• Strict labelling requirements,
• Restrictive rules on advertising,
• Transparency obligations to prevent consumers from being misled.

While these obligations protect the public, they also limit the freedom of communication for operators. As a result, robust intellectual property protection becomes the only way to secure a product’s name, packaging and reputation over time.

Protecting origin: PDO, PGI and geographical indications

SIQO (official signs of identification of origine and quality): the cornerstone of territorial protection

Geographical indications (PDO and PGI) are the most powerful mechanisms, amongst SIQO, for safeguarding the link between a product and its territory. They rely on a detailed and enforceable specification document, binding on all producers.

PDO: the highest level of protection

Under Article L.721-1 of the French Intellectual Property Code :

“A protected designation of origin is the name of a country, region or locality used to designate a product originating therein, the quality or characteristics of which are due to the geographical environment, including natural and human factors.”

Obtaining a PDO is subject to strict requirements:

– Precisely identifying the natural and human factors that characterise the terroir,
– Demonstrating that the proposed area shows genuine geographical and qualitative coherence,
– Establishing long-standing, stable and recognised use reflecting historical continuity,
– Showing that the product enjoys sufficient reputation, which influences the scope of protection.

The geographical delimitation often proves to be the most sensitive element, particularly near borders where certain producers may be excluded from the designated perimeter.

PGI: a more flexible but solid link

A PGI identifies a product originating in a specific place whose quality, reputation or other characteristics are essentially attributable to its geographical origin. For a protected geographical indication (PGI), only one stage of production must occur within the geographical area, but the European legislator is clear: no misleading use of a territorial name should deceive consumers.
Wines benefit from enhanced requirements: both the grapes and vinification must originate from the designated area.

Protecting commercial identity: trademarks, designs and copyright

The essential complement to geographical protection

Even if reputation is tied to terroir, the economic value of wines and spirits is embodied by their trademarks, packaging and visual identity.

Trademarks: a central but regulated tool

A trademark may include a geographical name, but only if:
• It does not describe the actual origin of the goods,
• It is not misleading,
• It does not monopolise a place name required by other producers.

A viticultural village name cannot be appropriated by a single producer unless distinctiveness through use can be demonstrated.

Figurative and semi-figurative trademarks (crests, château silhouettes, stylised labels) often provide stronger protection.

Designs: protecting shape and appearance

Iconic bottles, capsules, gift boxes or label designs may be protected through design rights.

Filing with the INPI, EUIPO or with the WIPO (through the Hague System) prevents others from reproducing or imitating a distinctive appearance.

Unregistered Community Designs (UCD), valid for three years, are valuable for seasonal packaging or limited editions.

Copyright: protecting originality

Subject to originality, the following can be protected by copyright:
• Graphic labels,
• Illustrations,
• Photographs,
• Original visual creations.

By contrast, flavours, aromas and recipes cannot be protected due to the absence of objective identification criteria.

Securing the digital presence and combating fraud

Cybersurveillance: now indispensable

Wine and spirits counterfeiting is no longer limited to falsified labels. It now expands through:

• Fake online shops,
• Marketplaces offering counterfeit goods,
• Typographic or phonetic domain name squatting,
• Impersonation on social networks,
• Deepfakes used in fraudulent promotions.

Tools such as DNS monitoring, marketplace surveillance and DSA-based notifications to major platforms ensure rapid response.

Building a comprehensive protection strategy

A coherent, proactive and evolving approach

An effective strategy requires a global and structured methodology. It begins with a precise mapping of the company’s intangible assets (domain names, cuvées, labels, packaging, graphic signatures and digital positioning) to identify what must be protected.

This is followed by the implementation of a multi-layered legal protection system combining a coherent portfolio of trademarks, designs and copyright, appropriate distribution agreements, licensing frameworks defining usage of distinctive signs and strict governance of know-how.

This architecture must be reinforced by continuous monitoring of geographical indications, competitor filings, e-commerce platforms, social networks and domain names, enabling rapid detection of infringements.

Responses should then be graduated from cease-and-desist letters and online takedown notices to customs seizures, and, if necessary, civil or criminal proceedings.

Finally, rigorous internal organization is a must: documented procedures, systematic archiving, staff training and coordinated communication between legal, marketing and commercial teams all help preserve the long-term value of intangible assets.

This integrated strategy becomes a true competitive advantage: it protects, enhances and sustains a producer’s identity.

Conclusion

Protecting wines and spirits requires the articulation of geographical indication law, intellectual property tools and modern digital surveillance mechanisms. A comprehensive approach enables producers to defend origin, identity and reputation effectively, while anticipating the risks of an increasingly globalised and digital marketplace.

Operators who structure their protection strategy around these pillars gain a decisive and lasting advantage in this highly competitive sector.

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. Can a designation of origin be registered as a trademark?
No. PDOs and PGIs are collective, regulated rights and cannot be privatised.
2. Can a municipality oppose a trademark that reproduces its name?
Yes. Article L.712-3 IPC allows public authorities to challenge trademarks that harm their reputation or image.
3. Do small producers have the means to protect themselves effectively?
Yes. Affordable legal tools exist (PGIs, figurative trademarks, design registrations, targeted monitoring), and collective structures such as unions and inter-professional bodies play a key role in shared protection.
4. What should a global protection strategy include in this sector?
A solid strategy combines an inventory of intangible assets, a structured IP portfolio, appropriate contracts, digital and legal monitoring systems, tiered enforcement mechanisms and internal workflows capable of responding quickly.
5. Can a producer’s know-how be legally protected?
Yes. Although it cannot be registered as a trademark or design, know-how may be protected as a trade secret if it is identified, documented, not publicly known and preserved through reasonable confidentiality measures. Techniques such as vinification protocols, blending methods and selection processes may therefore be safeguarded.

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 or to constitute legal advice.

2026 is off to a brilliant start for the Dreyfus law firm. We are proud to announce that our firm has been recognized as the “Trademark Law Firm Of The Year In France” by the prestigious Global 100 awards. This international recognition highlights our team’s expertise and our clients’ continued trust.

Recognizing excellence on a global scale

The Global 100 program is dedicated to identifying and honoring firms and companies that demonstrate outstanding performance, innovation, and strategic leadership worldwide.

Receiving this distinction confirms Dreyfus’ position as a key player in Intellectual Property (IP), both in France and on the international stage.

Why Dreyfus? A Winning strategy

This award reflects the dedication of our team of over 20 experts. Based in Paris but operating with a global mindset, we assist clients daily with the full spectrum of their intangible assets: trademarks, designs, copyrights, and digital brand issues.

Under the leadership of Nathalie Dreyfus, renowned for her strategic vision, the firm has established itself through a pragmatic and results-oriented approach.

“This award highlights not only our technical expertise but also our concrete efficiency, reflected by a success rate of over 90% in our IP cases.”

Thank you to our clients and partners

Above all, this victory belongs to you. It testifies to the trust you place in us to protect, enhance, and defend your innovations in an increasingly complex legal environment.

In 2026, we will continue to innovate to provide you with optimal legal security in the face of new digital challenges and globalization.

View the full list of winners on the official website: Global 100 – 2026 Winners

Introduction

In a world where artificial intelligence is reshaping the digital commercial landscape, ChatGPT is opening up new opportunities by becoming a genuine player in e-commerce, no longer limited to the role of a conversational assistant. The issue of trademark protection within ChatGPT therefore becomes a central concern for companies seeking to safeguard their intangible assets.

Contrary to a sometimes-widespread belief, the digital environment does not constitute a lawless space. A structured legal framework has gradually emerged, particularly at the European level, foremost among which is Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000, known as the “e-Commerce Directive”.

Trademark law in the face of AI technologies

Trademark law is based on the right of the trademark owner to prohibit the use, in the course of trade, of a sign that is identical or similar to its trademark for identical or similar goods or services, where such use is likely to create a likelihood of confusion in the mind of the public, including the likelihood of association.

Applied to ChatGPT, this principle requires a contextual analysis. AI, as a technology, does not itself hold rights or obligations. However, the uses made of the content it generates, particularly in a commercial context, may fall squarely within the scope of trademark law.

Instant Checkout and conversational commerce: a new area of vulnerability for trademarks

The Instant Checkout service, launched in 2025 by OpenAI, allows users to purchase products directly from ChatGPT. This technology, currently available in the United States, could be rapidly deployed in Europe.

The immediate visibility offered by this platform represents a powerful commercial lever, as it enables trademarks to reach a wide audience through purchase offers. At the same time, it also facilitates infringements of intellectual property rights, particularly trademarks.

The AI system aggregates product feeds from various platforms, enabling counterfeiters to offer infringing products using images and registered trademarks without authorization. This process is particularly risky, as ChatGPT does not automatically certify that the seller is official, preventing consumers from knowing whether they are purchasing from an authorized reseller.

It is therefore imperative for trademark owners to take measures to secure their products and prevent the abusive use of their distinctive signs.

Best practices for protecting trademarks on commerce platforms

Trademark protection on commerce platforms incorporating generative AI engines now relies on the proactive structuring of information, aimed at guiding algorithmic interpretation toward authentic products and legitimate sources.

Generative Engine Optimization (GEO) is a key lever in this respect. GEO follows in the footsteps of SEO and encompasses all techniques designed to improve the visibility of certain information in outputs generated by generative AI systems such as ChatGPT. When applied to trademark protection, GEO enables rights holders to enhance the clarity, credibility, and visibility of legitimate product listings for AI systems.

Clear identification of authorized sellers, product origin, and rights holders, combined with technical measures such as the integration of metadata and distinctive elements in visuals, helps limit fraudulent uses.

Finally, securing trademarks within the ChatGPT ecosystem requires an active and ongoing approach. This includes continuous monitoring of generated results to quickly identify suspicious offers, systematic enrichment of product catalogs, and the use of verification badges designed to reassure consumers.

Trademark enforcement and legal actions

Where counterfeit products are identified, trademark owners must follow a rigorous enforcement process to protect their rights:

• Securing evidence: retaining screenshots and metadata in order to build a robust evidentiary file.
• Taking action with sales platforms: directly contacting platforms to obtain the removal of counterfeit product listings and the deactivation of the sellers’ accounts involved.
• De-indexing : obtaining the removal of counterfeit product listings from ChatGPT’s results.
• Implementing targeted monitoring: in order to rapidly identify new high-risk occurrences and intervene at an early stage.

In this complex technological environment, recourse to an intellectual property specialist remains decisive to define an appropriate and legally secure enforcement strategy.

Conclusion

In this new era of digital commerce, the integration of tools such as ChatGPT and Instant Checkout creates significant opportunities for trademarks, while also introducing risks of counterfeiting and identity misappropriation. By adopting protection strategies such as GEO, the use of metadata, and authenticity labels, trademarks can secure their position in this dynamic environment and effectively protect their intellectual property rights.

Dreyfus & Associés law firm assists its clients in managing complex intellectual property matters, providing tailored advice and comprehensive operational support for the full protection of intellectual property.

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

Nathalie Dreyfus, with the support of the entire Dreyfus team.

FAQ

1. What are the main threats to trademarks in the ChatGPT ecosystem?
The risk of association with inaccurate content, unauthorized sellers, or counterfeit products, as well as the dilution of the official source in favor of third-party content.

2. Why is GEO (Generative Engine Optimization) important for trademarks?
It aims to optimize the understanding and accurate citation of a trademark by generative AI systems, in order to prevent confusion and uncontrolled uses. Conversational engines no longer merely reference existing content; they synthesize, rephrase, and prioritize information, becoming powerful intermediaries between trademarks and the public. In this context, a lack of GEO control exposes trademarks to heightened risks of confusion, approximation, and potential infringement of their rights.

3. What legal and operational levers can trademarks activate to regain control over their image in responses generated by ChatGPT?
Trademarks can combine several complementary levers, including monitoring the use of their trademarks in conversational environments, as well as notification, takedown, or legal actions in the event of misleading or unlawful associations. This hybrid approach, both preventive and reactive, helps reduce the risk of confusion, protect trademark reputation, and strengthen the consistency of information relayed by generative AI systems.

4. Is ChatGPT liable for the counterfeit products it displays?
Legal liability depends on the contractual arrangements between ChatGPT and the sales platforms and remains unclear at this stage.

5. How can metadata be used to protect a trademark in ChatGPT?
By integrating explicit, standardized, and consistent metadata enabling the identification of the trademark, its legitimate rights holder, and its official channels. Such metadata may include the exact trademark name as registered, registration references (INPI, EUIPO, WIPO), protected territories, and links to official websites and verified social media accounts.

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

The protection of a design relies less on creative intuition than on the rigorous mastery of the technical requirements applicable to filing. In practice, many rights that are nevertheless strategic prove to be fragile, or even unenforceable, due to errors made at the stage of graphical formalisation. In a context of increased competition and frequent litigation, the technical quality of the filing directly determines the scope and effectiveness of legal protection.

We set out below the essential technical recommendations to be followed in order to secure a design filing, both under French and European law, adopting a pragmatic approach focused on evidence and enforceability of rights.

Understanding the central role of graphical representation in the protection of designs

Graphical representation as the sole scope of protection

In design law, only what is represented is protected. Neither creative intent, nor function, nor textual description can compensate for a deficient representation. Design offices, whether the INPI or the EUIPO, assess novelty and individual character exclusively on the basis of the filed visuals.

An imprecise, overloaded or ambiguous representation mechanically results in a reduction of the scope of protection, or even increased vulnerability in the event of cancellation action.

Fundamental technical requirements to be respected

The visuals must comply with strict standards, both in substance and in form. In particular, we recommend:

• Clear images, without parasitic shading or reflections;
• A neutral, uniform or white background, without any decorative elements;
• A complete absence of textual elements, logos or measurements;
• Perfect consistency between the different views.

In addition, where the design comprises several elements, each element must be represented separately, while also being shown as part of the overall product, in order to allow a clear understanding of the global appearance as well as of each component taken individually.

Structuring views and variants to control the scope of protection

Multiplying views without diluting protection

An effective filing is based on a balance between exhaustiveness and readability. The views must make it possible to fully understand the appearance of the product, without introducing contradictions. In practice, the following views are generally recommended:

• Front and rear views;
• Right profile and left profile views,
• Top and bottom views;
• A perspective view.

Any inconsistency between these views may be exploited by a third party to challenge the scope of the right, particularly in infringement proceedings.

Managing variants and options strategically

Where the product includes variants (alternative shapes, interchangeable patterns, removable elements), several strategies may be considered.

Either the variants may be included in a coherent multiple filing, or separate design filings may be made. Poor management of variants exposes the right holder to a double risk: overly narrow protection, or conversely, partial cancellation for lack of novelty.

Anticipating office technical requirements and litigation risks

Neutralising non-claimed elements

In order to precisely delimit the scope of protection and exclude visible but non-claimed elements, offices allow the use of several graphical neutralisation techniques, provided they are applied clearly, consistently and without ambiguity.

• Broken lines: the reference technique for explicitly excluding visible but non-claimed elements, in particular functional or standardised parts.
• Dotted lines: an accepted alternative for clearly indicating excluded elements, provided they are applied uniformly across all views.
• Distinct colour treatment: a technique used to visually differentiate claimed elements from neutral elements, provided that the protected scope remains immediately identifiable.
• Voluntary blurring effect: a method enabling the neutralisation of secondary elements without removing them entirely from the representation.
• With boundaries: a technique aimed at precisely delineating the claimed parts by contrast with the surrounding visual environment.

The use of these techniques must form part of a homogeneous and anticipated graphical strategy, as imprecise or inconsistent neutralisation may weaken the validity of the design and its effectiveness in litigation.

Avoiding any confusion with technical function

A design must never give the impression of protecting a technical solution. Shapes dictated exclusively by function are excluded from protection. An inappropriate representation may lead the office or the court to consider that the appearance is dictated by technical constraints, resulting in invalidity.

We therefore recommend a prior cross-analysis between design law, patent law and competition law, in order to properly guide the filing strategy.

Conclusion

A legally effective design filing is based on a technical, strategic and anticipatory approach. The quality of the representations determines the strength of the right, its economic value and its ability to withstand litigation.

Mastering the technical recommendations applicable to design filings makes it possible to transform an aesthetic creation into a robust and enforceable legal asset. Such rigour is now essential to secure innovation, enhance portfolio value and prevent disputes.

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 many views are recommended when filing a design?
As many as necessary to understand the complete appearance, without unnecessary redundancy, within a limit of ten views per filing. In this respect, seven views are taken into account for protection, while up to three additional views may be included without extending the scope of protection.

2. What is the purpose of filing ten views if only seven are taken into account for protection?
Additional views facilitate a global understanding of the design by illustrating certain angles, details or specific configurations that cannot be fully perceived through the protected views alone. These supplementary views play a pedagogical and interpretative role, assisting the office or the judge in assessing the overall appearance.

3. Must colours be filed?
Only where they contribute to the claimed overall impression.

4. Can a poor representation invalidate a design?
Yes, in particular where there is ambiguity or contradiction between the views.

5. Should the filing be adapted depending on the country?
Yes, certain formal and practical requirements vary between offices.

6. Is a technical drawing sufficient?
No, it must reflect appearance, not function.

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 or to constitute legal advice.

Introduction

Determining the ownership of a design and model is one of the most sensitive issues in industrial creation law. In practice, disputes rarely focus on the validity of the design or model itself but rather on the identity of the person authorized to exploit, oppose, or transfer the rights. Employment, subcontracting, collective creation, lack of a contract, or poorly anticipated registration are all sources of risk. In this article, we analyze how the ownership of a design and model is obtained and proven, under both French and European law.

Principle and criteria of ownership in design and model

Criteria for ownership of designs and models

A design and model protect the appearance of a product or a part of a product, independently of its technical function. Ownership must be distinguished from material creation. The creator must be a natural person, while the holder may be a legal entity.

Under both French and European law, the logic is pragmatic: ownership is attributed to the person legally entitled to exploit the design, taking into account the context of its creation. The law sets out a principle, with presumptions and corrective mechanisms.

Principle of ownership: the central role of the creator

As a general rule, the design and model belong to its creator. This rule applies whether or not the design is registered. Creation confers an original right, provided that the design is new and has an individualized form.

In the event of a dispute, the courts examine the concrete elements proving the creative contribution: sketches, prototypes, digital files, email exchanges, annotated specifications. A mere idea or aesthetic directive is insufficient. Ownership is based on a personal creative contribution identifiable in the final form of the product.

Ownership disputes

1. Designs and models created by employees

The creation of a design by an employee in the performance of his duties is not regulated by law. In fact, the case law uses a slightly different reasoning than that used in copyright. Indeed, if copyright is inextricably personalist, the right of designs and models responds to a more economic logic. Thus, when the design is created by an employee in the performance of his duties or according to his employer’s instructions, the law provides a presumption of ownership in favour of the employer when the latter is at the origin of the application for registration. This rule aims to secure the economic exploitation of creations made in an organized and remunerated framework.

However, this presumption is not irrebuttable and assumes that the creation is indeed part of the tasks entrusted to the employee. If the design was designed outside the functions, without any link with the company’s activity, the ownership thus remains attached to the employee.

In fact, the absence of a precise contractual clause constitutes a major source of litigation. It is recommended that employment contracts should systematically include explicit clauses relating to the creation of designs and models, covering both ownership and operating terms.

2. Designs and models created by independent contractors or partners

The situation is radically different when dealing with an independent contractor, freelance designer, or industrial partner. Unlike employment, no legal presumption favors the client.

In the absence of a contract specifying the assignment or transfer of ownership, the contractor retains ownership of the rights, even if the creation was fully financed by the client. This situation is common in industries such as luxury, product design, or fashion, and constitutes a major legal risk.

The transfer of ownership must be explicit, written, and clearly defined, especially regarding territorial scope, duration, and modes of exploitation. A simple invoice or mention of “custom work” is legally insufficient.

Ownership presumptions and the value of registration

The registration of a design and model, whether national or European, creates a simple presumption of ownership in favor of the registrant. This presumption facilitates actions for infringement and defense of rights, but it can be overturned by contrary evidence.
Thus, a registrant may lose their ownership status if it is demonstrated that the registration was made without rights, particularly by a former employee, contractor, or partner acting in bad faith. European courts are particularly attentive to the circumstances of creation and prior contractual relationships.

The registration should, therefore, be viewed as a tool for securing rights, not as an absolute guarantee.

Securing ownership: best practices and legal strategies

To avoid future disputes, several levers should be combined:

• First, systematically contractually secure ownership at the outset of creative projects.
• Then, maintain dated evidence of creation and the design process.
• Finally, align the registration strategy with the legal reality of creation.

For example, an industrial company that registers a model created by an external studio without a written transfer may lose its rights during a nullity action. In contrast, a prior contractual audit would have secured the chain of rights at a lower cost.

Conclusion

Knowing how to determine the ownership of a design and model is essential for effectively protecting a strategic asset. Ownership is not presumed solely from funding or registration. It relies on a thorough analysis of the creation context, contractual relationships, and available evidence. Rigorous legal foresight remains the best safeguard against disputes.

Dreyfus & Associates 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 is the difference between creator and holder?
The creator is the material author of the design; the owner is the one who legally holds the exploitation rights. In some cases, the creator and the owner may be the same person, particularly when the creator retains all rights over his work.

2) Can ownership of a design or model be transferred without a written contract?
In principle, no. The transfer of ownership must be explicit, written, and recorded. The law requires that any transfer of rights (including ownership) be clearly documented to avoid disputes. In practice, this means that a simple invoice or verbal agreement is insufficient. A detailed contract defining the scope of the transferred rights (territory, duration, exclusivity, etc.) is always preferable.

3) What is the procedure to recover a design or model if a contractor refuses to transfer the rights?
In this case, it is recommended to act quickly by asserting ownership of the design or model based on contractual elements. If no transfer contract was signed, jurisprudence may, however, consider tacit agreement or contextual elements showing the intention to transfer ownership, which can be crucial.
4) What evidence can be used to challenge the ownership of a registered design in Europe?
In order to challenge the ownership of a registered design, relevant evidence may be :
• Communications
• Original sketches
• Testimony about prior discussions
• Proof of prior authorship
• A preliminary version of the design
• Exchanges between the creator and the company
• Proof of funding, may also be essential to contest a design registration.
Additionally, the question of bad faith during registration may be decisive.

5) Does a creation carried out during a notice period or a period of suspension of the employment contract belong to the employer?
Not necessarily. The period of notice or suspension (leave without pay, sick leave, layoff) does not automatically eliminate the contractual relationship, nor does it imply an automatic devolution of rights.
The analysis will focus on the concrete circumstances of creation, the use of the company’s resources, the link with previous missions and the possible existence of a transfer clause. In practice, these situations are particularly conducive to subsequent disputes.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

In the field of intellectual property, sound trademarks have become a powerful differentiating tool for businesses. Protecting a sound as a trademark offers many unique opportunities for businesses seeking to secure their identity. This article explores the strategic advantages, legal considerations, and best practices related to the protection of sound trademarks.

What is a sound trademark?

Since December 15, 2019, it’s possible to register an MP3 file as a trademark with the INPI. A sound trademark is a trademark consisting of a sound or a combination of sounds. To be registered, the sound trademark must comply with the existing validity requirements in trademark law. IP Offices often emphasize the importance of distinctiveness when registering a sound trademark.

According to the European Union Intellectual Property Office (EUIPO), in order for a sound to be protected as a trademark, it must be distinctive and capable of distinguishing the products or services of one company from those of others

This criterion implies that the sound must be unique, non-functional, and directly associated with the brand’s identity. For example, a jingle or a specific sound effect used in advertisements can be registered as a trademark.

The benefits of protecting a sound trademark

Sound trademarks help create a distinct identity for a company, thereby differentiating it from its competitors.

Examples of registered sound trademarks:

• Six notes on a piano No. 17672932
  • MGM’s lion roar No.005170113.

These sounds are closely associated with the undertaking from which they originate, representing a powerful lever for fostering brand loyalty and public recognition.

By registering a sound trademark, companies can license it for use in various media, advertisements, and products, generating new revenue streams while protecting their intellectual property from unauthorized use (legal action for infringement could then be pursued). Therefore, the sound trademark represents a significant and valuable asset for a company.

The legal framework for sound trademarks

Several landmark cases have established the legal precedent for sound trademarks. A notable example is the EUIPO’s refusal to register the jingle of Netflix after several attempts

As the sound is too short and too simple, it would not be sufficiently distinctive in the mind of the relevant public. In other words, consumers would not automatically perceive this sound as a distinctive sign linked to Netflix. However, the company succeeded in registering its jingle as a multimedia trademark, combining both its logo and jingle, as well as the term “TUDUM” as a word trademark.

However, a decision handed down by the General Court of Justice of the European Union on September 10, 2025, appears to point towards a more favourable assessment of the registrability of sound marks.

In this case, a Berlin public transport company sought the registration, as a European Union sound trademark, of a two-second jingle composed of four notes.

The application was rejected by the EUIPO, and then by its Board of Appeal, on the grounds that the sign was too short and too simple to be perceived as a trademark by the relevant public.

In its ruling, the Court annulled the decision of the Board of Appeal and held that the disputed jingle was eligible for registration as a European Union trademark.

He first considers that the requirement for a sign to “differ from the norms and practices of the sector,” often applied to figurative marks, does not apply to sound marks, which constitutes a favorable decision.

The Court further highlighted that only a minimal degree of distinctiveness is required. In this case, several factors favored the registrability of the jingle: its brevity, which aids in memorization, its structure composed of successively distinct sounds, its originality, and, most importantly, the fact that it does not reproduce a sound directly related to the execution of the transport service.

It also appears that the fact a sound serves a practical function, such as attracting the attention of passengers, does not prevent it from simultaneously functioning as a trademark. The Court thus recognizes that a sound sign can be both functional and distinctive, as long as it is perceived by the public as an indicator of commercial origin.

This ruling represents a notable relaxation in the assessment of the distinctiveness of sound marks. Unless overturned in the future, it serves as a favorable signal for trademark holders wishing to protect sound identities within the European Union.

Best practices for protecting your sound trademark

When choosing a sound to protect as a trademark, it is essential to select a sound that is memorable, distinctive, and consistent with the brand’s image. It is advisable to consult intellectual property experts to ensure that the sound is both effective and protectable.
The registration process involves selecting the appropriate intellectual property office (INPI, EUIPO, USPTO) depending on the desired scope of protection, submitting the sound file, and verifying that it meets all the necessary legal criteria for registration. Seeking advice from experts throughout this process can significantly enhance the likelihood of a successful registration.

Conclusion

In conclusion, protecting a sound as a trademark offers numerous strategic advantages in today’s competitive market. By securing the legal protection of a distinctive sound, businesses can enhance the visibility, recognition, and profitability of their brand.

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. What types of sounds can be registered as a trademark?
Any type of sound can be registered as a trademark if it is distinctive and non-functional.

2. How long does it take to register a sound trademark?
The registration process for a sound trademark can take several months, depending on the IP office and whether objections are raised.

3. Can I use a sound trademark in different countries?
Yes, it is possible to protect a sound trademark internationally through systems like the Madrid Protocol, which allows for global trademark protection.

4. What are the costs of registering a sound trademark?
Costs vary depending on the jurisdiction, and may be substantially higher if you opt for additional services such as legal consultation.

5. How can the evidence of unauthorized use of a sound trademark be proven?
To prove the unauthorized use of a sound trademark, it is necessary to gather concrete elements showing that the sound is being used without authorization: audio recordings, screenshots of advertisements, websites, or products using the sound trademark. It is also possible to use media monitoring tools or online platforms to detect unauthorized use.

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

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.

Introduction

With the rise of online shopping, not only are buying habits changing, but so are methods of fraud. Return fraud, which involves sending back a counterfeit item instead of an authentic product, is now one of the most serious types of fraud.

This mechanism introduces counterfeits directly into legal distribution channels and undermines the integrity of inventories. As a result, companies can no longer rely on simple visual checks: sustainable trademark protection requires enhanced traceability and authentication tools, in line with best practices recommended by French and European authorities.

How return fraud works?

Return fraud is based on a simple but discreet strategy. The fraudster orders a genuine product, keeps the original, and returns a carefully reproduced imitation. This type of fraud thrives due to several factors:

• Very permissive return policies on e-commerce platforms,
• Increasing sophistication of counterfeits,
• Logistical pressure linked to large volumes,
• Lack of thorough checks upon receipt.

In warehouses, processing times are short and teams do not always have the expertise to identify high-quality fakes.

Why is return fraud rising in e-commerce?

Historically, counterfeit goods entered the market through parallel channels. Today, return fraud creates an internal entry point: counterfeit goods enter directly through the trademark‘s official channel. As a result:

• Warehouses receive counterfeits without their knowledge;
• Some counterfeits perfectly imitate the characteristics of the authentic product;
• Counterfeits may be mistakenly shipped to other consumers.

This confusion blurs the lines between authentic and counterfeit, complicating overall control of the supply chain.

Legal, financial, and reputational impacts

Return fraud has three major consequences:

1. An immediate financial cost

The company loses the original item and is left with a counterfeit that cannot be sold. On a large scale, the losses add up.

2. Significant reputational risk

If a counterfeit item is accidentally returned to a customer, trust is eroded, which can lead to complaints, doubts about quality, and damage to the company’s image.

3. Significant legal consequences

The presence of counterfeits in the supply chain complicates infringement actions, as the break in traceability alters the evidence. This raises questions about civil liability, as well as the company’s ability to enforce its intellectual property rights.

Strengthening authentication and traceability

To limit this risk, companies must adopt enhanced technical mechanisms:

• Unique digital identifiers for each item,
• Discreet markings applied during manufacturing,
• Authentication technologies integrated into the product,
• Digital tracking of the item’s life cycle until its eventual return.

Internal procedures must allow for rapid and confidential verification of authenticity upon receipt.

A sustainable protection strategy

Return fraud evolves with online commerce practices. Companies must therefore secure the entire chain:

• Production,
• Transport,
• Distribution,
• Returns.

But the strategy must also be based on:

• Robust internal procedures,
• Regular updates to the legal framework,
• Ongoing training for teams,
• Constant risk analysis to anticipate new methods.

Conclusion

Return fraud is now a major challenge for businesses. It is essential to implement robust authentication systems and strengthen return controls. Companies that invest in these measures protect their reputation, the value of their assets, and public trust in the long term.

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. What is return fraud?
The purchase of an authentic product followed by the return of a counterfeit or different product.

2. Why is this phenomenon rising?
Due to flexible return policies, the increasing quality of counterfeits, and the rise in return volumes.

3. What are the risks for businesses?
Risk of financial loss, damage to reputation, and legal difficulties related to the presence of counterfeits in the supply chain.

4. How can you protect yourself?
Through unique identifiers, authentication technologies, digital tracking, and strict internal procedures.

5. Is it possible to completely eliminate return fraud?
No, but consistent measures can greatly reduce the risk.

Introduction

Creating a trademark, whether a name and/or a logo, is often a pivotal moment in the development of a business. However, before initiating a formal filing with the French IP Office (INPI) or any comparable authority, it is essential to verify that the proposed sign is available and does not conflict with earlier rights. This is precisely the purpose of a prior art search: an essential step to anticipate legal risks, safeguard your investments, and build a sustainable trademark strategy.

What Is a trademark prior art search?

Filing a trademark grants, under trademark law, an exclusive right to use the sign for specific goods and services.

However, such registration requires that the chosen sign be distinctive and available: it must not infringe any pre-existing rights (trademarks, company names, trade names, business names, domain names, etc.).

A prior art search is therefore the preliminary verification used to identify such earlier rights before filing.

Several types of searches may be necessary:

• Exact-match search: identifies signs that are strictly identical (same spelling, same logo, same classes of goods/services) to the one you intend to file.
• Similarity search (phonetic, visual, conceptual): a deeper examination to detect signs that are close enough to trigger a likelihood of confusion. This level is particularly critical for assessing risks of opposition, invalidity, or infringement.

Thus, the absence of identical trademarks is not sufficient: similarity must also be assessed to identify potential risks.

How to conduct an effective prior art search?

Recommended tools and databases

To perform a thorough search, it is advisable to use:

• The INPI “Marques” database for French trademarks.
• The EUIPO database for EU trademarks and the WIPO database for international trademarks.
• Professional services (IP attorneys, law firms) when a similarity analysis is required.

Relying solely on a general-purpose search engine is strongly discouraged.

Legal analysis: beyond simple automated searches

A truly useful prior art search requires professional legal analysis:

• Assessment of the likelihood of confusion based on phonetic, visual or conceptual criteria, and the perception of the relevant public.
• Examination of the goods and services covered, in accordance with the principle of specialty.
• Consideration of other rights beyond trademarks: company names, trade names, domain names, business names, etc.
• Verification of the actual use of the earlier sign (reputation, age, geographical scope), which may affect the assessment of the risk.

This work demands legal expertise, making the involvement of an IP attorney or trademark attorney highly advisable.

When and by whom should the search be conducted?

• When?: Before any filing. It should be carried out as soon as the name, trade name, domain name, or logo is being conceived.
• By whom?: The applicant may perform preliminary checks, but a professional (IP attorney or specialist lawyer) is strongly recommended for a reliable, risk-based interpretation.

Legal and strategic implications of a prior art search

Securing registration and avoiding opposition or invalidation

Without a prior search, filing a trademark may lead to:

• Opposition by the holder of earlier rights after publication,
• Invalidation proceedings years after registration if the trademark is deemed too similar to an earlier sign,
• Infringement proceedings if the trademark is used commercially.

For instance, in the Huella case of May 7, 2025, the application for a trademark covering leather goods (Class 18) was refused due to the presence of an earlier trademark protected for cosmetics (Class 3). More details can be found on this case in our previously published article.

Thus, a prior art search is the first line of defence in securing the validity and long-term enforceability of your trademark.

Protecting investments and trademark reputation

Trademark development often involves substantial investments: branding, marketing, packaging, communication, digital presence, etc.

A conflict arising after launch may result in refusal of registration, forced withdrawal, or a complete rebrand, each carrying significant financial, logistical and reputational consequences.

A prior art search protects the business against these risks by providing a stable and secure framework from the outset.

Structuring a strategic trademark portfolio

Beyond a simple verification exercise, a prior art search helps to build a smart filing strategy. The applicant is advised to:

• Identify priority or defensive classes based on current or future activities,
• Adjust the sign (spelling, logo, wording) to maximise distinctiveness,
• Consider complementary filings (domain names, trade names, company names) to strengthen market presence,
• Prepare for future monitoring to detect potentially conflicting new filings.

A comprehensive search is therefore not merely a compliance measure but a genuine strategic tool for managing intangible assets.

Conclusion

A prior art search is the cornerstone of any effective trademark protection strategy. It allows businesses to anticipate legal risks (opposition, invalidity, infringement), safeguard investments, establish a strong trademark reputation, and develop a coherent trademark portfolio. Neglecting this step exposes the company to significant financial and reputational consequences that can be difficult to remedy.

We strongly encourage every entrepreneur, start-up, and established company to incorporate this process into their trademark development strategy, ideally with the support of an experienced professional.

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. Is a prior art search legally required before filing a trademark?

No. It is not a statutory requirement, but it is essential in practice because it determines whether earlier rights could block registration or restrict the use of your trademark.

2. Why is a simple Google search insufficient to verify availability?

Many earlier rights are not visible through search engines. Only official databases (INPI, EUIPO, WIPO, domain name registries) reveal registered rights, and only legal analysis can assess the likelihood of confusion.

3. Should I check only trademarks, or also domain names and company names?

A complete search should include domain names, company names, trade names and business names, as these rights can also be invoked, especially when they are well-known.

4. Does a prior art search guarantee the absence of future conflicts?

It significantly reduces the risk but cannot provide absolute certainty. New filings may still arise after the search, which is why ongoing monitoring is recommended.

5. Does a prior art search guarantee that my trademark will be registered?

No search can guarantee registration. The outcome depends on the applicant’s strategic choices, the behaviour of holders of earlier rights and subsequent filings. A combined strategy (search + filing + monitoring) provides the highest level of security.

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

The protection of figurative trademarks occupies a central place in intellectual property strategies, particularly in an environment where imagery, form, and graphic codes are decisive vectors for identifying products and services. Yet the registration of such signs remains complex due to the strict requirements set by European Union law and recent case law. Companies seeking robust protection must anticipate obstacles relating to distinctiveness, graphic originality, and consumer perception.

This article outlines the key legal criteria, the risk of refusal, and practical strategies to optimize the protection of figurative trademarks.

Legal foundations of figurative trademark protection

A figurative trademark encompasses any non-verbal sign composed of graphic elements: logos, icons, stylized drawings, shapes, lines, or visual combinations. Under both French law and European Union law, such signs must be distinctive, non-descriptive, and capable of identifying the commercial origin of the goods or services.

Legislation requires that the sign be perceived immediately by the consumer as an indication of origin, and not as a simple decorative motif or ordinary shape. This requirement is set out in Article L.711-2 of the French Intellectual Property Code and Article 7(1)(b) EUTMR.

Industrial property offices consistently refuse signs considered banal, even when applicants rely on actual commercial use or marketing strategy. The logic remains constant: a trademark does not protect a graphic idea but a form that is immediately perceived as distinctive.

Distinctiveness criteria applicable to shapes and graphic elements

The central question is whether the figurative sign contains sufficiently marked characteristics to allow the consumer to memorise it without particular effort. This does not require a high level of artistic creativity, but the sign must be capable of standing apart from the common stock of shapes.

Where the graphic element approaches a simple geometric shape (circle, square, rectangle, line, pentagon), there is a high risk of refusal. Case law adds that minor variations (slight waviness, tilt, rounding) are not sufficient to compensate for a lack of distinctiveness.

For example, in a decision dated November 13, 2024 (TUE, November 13, 2024, case 426/23 Chiquita Brands v. EUIPO), the General Court of the European Union ruled that a simple yellow and blue oval was comparable to a basic geometric shape and therefore not eligible for trademark protection. This approach is particularly strict, as the offices and courts consider that these signs do not convey any identifiable commercial message.

This requirement applies irrespective of the relevant public. Even if that public has a higher level of attention, as in technological or professional sectors, case law reiterates that the degree of attention has no impact on the threshold of distinctiveness.

Key lessons from recent case law: the Rigo Trading decision

The judgment delivered by the General Court of the European Union on 16 July 2025 (Case T-215/24, Rigo Trading SA v. EUIPO) constitutes a major development.

Facts and procedure

The Luxembourg company Rigo Trading SA designated the European Union for the international registration of a purely figurative sign representing a slightly wavy rectangle, intended to distinguish a wide range of goods.

The EUIPO examiner refused registration on the ground that the sign had no distinctive character within the meaning of Article 7(1)(b) EUTMR, considering that it amounted to a minor variation of a basic geometric shape. The Fifth Board of Appeal upheld that decision, prompting the company to bring the matter before the General Court.

Before the Court, Rigo Trading argued, in particular, that the EUIPO had incorrectly defined the relevant public and that the sign could not, in reality, be assimilated to a simple geometric figure.

Findings of the General Court

The General Court dismissed the action, confirming that the sign did not allow consumers to identify the commercial origin of the goods. It emphasised that the level of attention of the consumer, whether average or specialised, has no impact on the assessment of distinctiveness.

The Court found that:

• The contested sign is very close to a simple geometric figure
• The slight waviness is not sufficient to constitute a substantial variation
• The absence of additional graphic elements (combination, complexity, stylisation) prevents the sign from meeting the minimum threshold required
• The simplicity of the sign prevents immediate memorisation by the public

The ruling reinforces a long-established trend: overly simple or minimalist signs (rectangles, lines, stylised circles, regular hexagons) fail to be registered unless distinctiveness acquired through use is proven.

An interesting point: the same sign had been accepted by the Benelux Office, highlighting divergences between European offices. However, the Court confirmed that EU law prevails for any registration targeting the European Union.

Best practices for securing a figurative trademark

To maximise the chances of registration, it is advisable to:

• Integrate distinctive graphic elements: visual rhythm, asymmetry, original contours
• Avoid simple or geometric shapes, especially when the aim is to protect packaging or motifs
• Reinforce the stylisation of the logo to increase memorability
• Demonstrate intensive use of the sign through structured marketing evidence when necessary
• Systematically analyse recent EUIPO refusals to adjust the graphic strategy

Conclusion

The protection of figurative trademarks requires both a strategic and technical approach. Ensuring strong figurative trademark protection involves more than aesthetic analysis: it relies on a precise understanding of distinctiveness as assessed by trademark offices. Companies must therefore anticipate obstacles linked to graphic simplicity, strengthen stylisation, and closely monitor recent case law.

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. How can distinctiveness acquired through use be proven?

By providing evidence demonstrating that the public associates the sign with your company: sales data, advertising campaigns, surveys, press coverage, market share, or any proof of effective recognition.

2. Can a figurative trademark protect packaging?

Yes, provided the packaging has sufficiently original visual features to be perceived as an indicator of origin rather than a decorative or functional element.

3. Do European offices assess distinctiveness in the same way?

No. Although EU law sets a common framework, assessments differ between national offices. The EUIPO generally applies a stricter approach, particularly regarding simple shapes.

4. How can a logo that is too simple be strengthened before filing?

By adding distinctive graphic elements: asymmetry, combinations of shapes, original lines, stylistic effects, or integrating a verbal element to distance the sign from basic geometry.

5. How can a refusal before the EUIPO be avoided?

By anticipating the distinctiveness assessment, avoiding minimalist signs, preparing an evidence-of-use strategy if needed, and conducting a legal evaluation of the sign prior to filing. Reinforcing stylisation greatly increases the chances of registration.

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 an environment where creative content circulates faster than ever, determining the owner of a copyright-protected work remains a key legal issue for businesses, creators, and all innovation stakeholders. French law follows a particularly protective regime, grounded on the primacy of the author, strict requirements for copyright assignments, and narrowly framed exceptions, especially for employees, external service providers, collaborative works, and software.

Please find bellow the essential rules governing copyright ownership and transfer in France, together with best contractual practices to ensure secure exploitation of a work.

Who is the author and initial rights holder of a work?

Fundamental principle: the author is always the natural person who created the work

The French Intellectual Property Code (“IPC”) is unequivocal: the author is the creator of the work, regardless of status or function. The author holds:

• Moral rights, perpetual, inalienable, and imprescriptible (Art. L121-1 IPC);
• Economic rights, transferable and exploitable under contract (Art. L122-1 et seq. IPC).

Presumption of authorship: the person whose name appears on the work

When a work is disclosed under a particular name, that person is presumed to be the author, unless proven otherwise. This presumption is central in disputes relating to the origin of a creation.

Orphan works: a specific regime

If no author can be identified, the work is considered an orphan work, and it remains protected. Its use is strictly limited to cultural, educational or research purposes, excluding commercial exploitation.

Works created by employees, contractors, or public officials: who owns the rights?

Employees: no “work for hire” doctrine under French law

Contrary to common-law systems, French law does not recognise automatic transfers of copyright to employers.

Even when created within the scope of employment, the employee remains:

• The author, and
• The initial owner of economic rights.

To exploit the work, the employer must obtain a written copyright assignment, compliant with Articles L131-1 et seq. IPC.

The software exception

Software is subject to a major exception under article L113-9 IPC: the employer automatically acquires economic rights when the software is created:

• In the course of the employee’s duties, or
• According to the employer’s instructions.

This rule strongly protects technology companies.

Public officials: a regime governed by the intellectual property code

Public officials are subject to a specific copyright regime, set out in Articles L131-3-1 and L111-1 of the French Intellectual Property Code. As a general rule, the public official remains the author and the initial rights holder, but the administration may exploit works created in the performance of the official’s duties or in accordance with instructions received, to the extent necessary for the fulfilment of the public service mission. Any exploitation exceeding this purpose requires the express authorisation of the author, together with appropriate remuneration.

Teachers-researchers, however, constitute a notable exception: owing to their academic freedom, they retain full control over the exploitation of their works, even when created in the course of their duties. This framework seeks to balance the protection owed to the author with the operational needs of the public service.

Independent Contractors: Assignment Required

The rule is clear: a contractor remains the author and owner of the work unless a written assignment is executed in favour of the commissioning party.

Without such an assignment, the work cannot legally be exploited, even if fully paid for.

Works with multiple authors: collaboration, derivative works and collective works

Collaborative works: joint ownership

A work created by several individuals is a collaborative work under Articles L113-2 (para. 1) and L113-3 IPC.

Co-authors jointly own the rights, and any exploitation requires their mutual consent.

Derivative works: authorisation required

When a work derives from a pre-existing work (adaptation, transformation, remix of a protected work), the author of the derivative work must obtain the right holder’s authorization, pursuant to article L113-4 IPC, which governs composite works.

Collective works: a specific ownership regime

Article L113-2 (para. 3) IPC defines a collective work as a creation developed at the initiative of a natural or legal person who publishes and discloses it under their name and assumes editorial responsibility, with the individual contributions merged into an inseparable whole.

This regime frequently applies to:

• Press publications,
• Content created by creative agencies,
• Websites and digital platforms,
• Editorial and institutional materials.

A work qualifies as collective when three cumulative criteria are met:

1. A decisive initiative and overall control by the commissioning entity, exercising genuine editorial oversight;
2. Integration of individual contributions into a unified whole, with no separable rights;
3. Disclosure under the commissioning entity’s name, appearing as the sole project owner.

Where these conditions are fulfilled, the legal entity is the original owner of the economic rights, eliminating the need to obtain individual assignments from contributors.

Assignment and licensing: how can copyright be transferred or exploited?

Copyright assignment: strict formal requirements

A valid assignment must:

• Be in writing;
• Specify each transferred right (reproduction, representation, adaptation, etc.);
• Detail the territory, duration, and media;
• Include proportional or fixed remuneration compliant with the ipc.

General formulas such as “all rights assigned” are invalid.

Licences: a flexible alternative

A licence authorises use without transferring ownership. It must be:

• Limited in duration (perpetual licences are void),
• Clear, with ambiguities interpreted in favour of the author.

Certain licences are statutory (library lending, private copying, educational uses) and involve mandatory remuneration.

No registration requirement

France requires no administrative formalities to recognise assignments or licences.
However, maintaining records is strongly recommended for evidentiary purposes.

Duration of protection and contractual safeguards

Standard duration: 70 years post mortem

Economic rights expire 70 years after the author’s death.

For collective, anonymous, or pseudonymous works, protection lasts 70 years from 1 January following the year of publication (Art. L123-3 IPC).

Best contractual practices

We systematically recommend:

• Signing contracts before delivery of the work;
• Drafting by distinct rights (reproduction, adaptation, etc.);
• Precise identification of the work and all versions;
• Verifying the chain of title (employees, contractors, subcontractors);
• Including warranties against eviction and infringement.

A frequent example: a company commissioning a website without an assignment is legally unable to modify its design or entrust maintenance to a third party.

Conclusion

Determining the ownership of a copyright-protected work in France requires balancing author protection, contractual precision, and narrowly framed legal exceptions. Legal certainty depends on a deep understanding of IPC mechanisms and carefully drafted contracts.

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 an author assign copyright before the work is even created?
Yes, but only under strict conditions. French case law prohibits broad assignments of future works unless the scope or type of works is sufficiently defined. Production agreements (video games, audiovisual works, commissioned creations) often rely on this framework.

2. How can authorship or prior creation be proved in case of a dispute?
Evidence may include Soleau envelopes (INPI), blockchain timestamps, bailiff reports, digital archives, dated project files, or emails. No formalities are required, but reliable proof of date is essential.

3. Can an employer prevent an employee from reusing a work created during employment?
Yes, if the employee has assigned the economic rights under the IPC. Without a written assignment, the employer has no exploitation rights.

4. Who owns the rights in a work published under a pseudonym?
The person identified as author upon disclosure benefits from a presumption of authorship.

5. Can a licence be granted without a duration limit?
No. Perpetual licences are void under French law.

6. Can AI be considered an author?
No. Only a human being can be recognised as an author under the IPC.

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

Introduction

On May 21, 2025, the General Court of the European Union  upheld the partial revocation of the EU trademark Airbnb for “advertising” services in class 35.

This decision highlights an essential distinction: promoting one’s own services does not constitute advertising within the meaning of trademark law.

The case illustrates the importance of genuine and distinctive use of registered trademarks and encourages proprietors to adapt their filing strategies to the actual nature of their business activities.

The partial revocation request concerning the Airbnb trademark

Airbnb, Inc., which owns a European Union trademark since 2013 and which covers advertising services in class 35, was subject to a revocation request filed in 2020 by the Australian company Airtasker Pty Ltd on the grounds of lack of genuine use within the European Union.

The EUIPO Cancellation Division partially upheld the request for revocation.

Following an appeal filed by Airbnb, the EUIPO Board of Appeal confirmed the revocation for class 35, finding that the evidence provided (promotional materials, marketing campaigns, website excerpts) related exclusively to the company’s internal activities and not to the provision of advertising services to third parties.

Airbnb then appealed to the General Court of the European Union, challenging the interpretation that advertising must necessarily be understood as a service provided to third parties.

The position of the General Court of the European Union

The General Court dismissed Airbnb’s appeal and upheld the partial revocation of the trademark for advertising services.

Based on established case law, the Court recalls that advertising services are intended to assist other companies in promoting their goods or services, or to strengthen their competitive position on the market through commercial communication.

Thus, advertising carried out solely for one’s own internal purposes, even if extensive and widely disseminated, cannot be regarded as an advertising service provided to third parties, which is the type of service covered by Class 35 under the Nice Classification.

The evidence of use submitted by Airbnb demonstrated only the promotion of its own accommodation offers and commercial activities, without establishing any advertising services carried out on behalf of other companies or individuals.

The Court further specified that promoting the accommodation offered by hosts on the platform does not constitute an independent advertising activity.

Such promotion is primarily intended to increase the visibility and profitability of the platform itself, rather than to provide a distinct advertising service.

The use of the Airbnb trademark in this context cannot therefore be regarded as genuine use for advertising services.

Key takeaways for trademark owners

This decision reiterates a fundamental rule of trademark law: for use to qualify as genuine, it must correspond to the precise nature of the services designated.

• Avoid unnecessarily overprotecting a trademark

Filing a mark in classes that have no direct connection with the owner’s actual business activities, as was the case here with Class 35 for advertising services, exposes the registration to medium-term risks of revocation

• Promoting one’s own products does not constitute an advertising service

A company’s internal or self-focused communication, even on a large scale, is not sufficient to demonstrate genuine use for advertising services. Only services rendered to third parties (e.g., agencies, consultants, platforms providing visibility to others) fall within this category.

• The importance of a coherent filing strategy

Before filing, it is essential to identify accurately the relevant classes in light of the proprietor’s real economic activities. For digital businesses in particular, distinguishing between core activities and ancillary services is crucial.

Conclusion

In its judgment of May 21, 2025 (Case T-1032/23, Airbnb, Inc. v. EUIPO), the General Court of the European Union clearly reiterates that genuine use of a trademark requires exploitation consistent with the services for which it has been registered.

Trademark owners must therefore ensure that their filings accurately reflect the nature of their services, otherwise, they risk partial or even total revocation of their rights.

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 types of services are covered under Class 35?

Class 35 of the Nice Classification covers advertising, business management, and retail services, among others.

2. Why is it risky to register a trademark in classes that do not correspond to the owner’s actual business activities ?

Overly broad filings increase the risk of revocation: if the proprietor cannot demonstrate genuine use in a given class, their rights may be partially or fully cancelled. Moreover, an incoherent filing strategy can trigger unnecessary disputes and raise the overall cost of maintaining the trademark portfolio.

3. Can an overly narrow trademark filing also create issues?

Yes. An excessively limited specification may prevent a business from achieving adequate protection as its activities evolve. A trademark should be protected in a proportionate manner: if the filing is too broad, it risks revocation; if too narrow, it may fail to shield the owner from imitators

4. How can a business anticipate and mitigate the risk of revocation within its trademark portfolio?

By implementing regular monitoring of actual use, maintaining dated evidence, conducting internal audits every two to three years, and adjusting filings when business activities evolve. This proactive approach helps prevent future challenges.

5. What types of evidence are generally accepted to prove genuine use of a trademark within the European Union?

The evidence must demonstrate real, public, outward-facing, and commercial use of the mark for the goods or services for which it is registered. This may include invoices, contracts, advertisements directed at the public, sales evidence, marketing materials, audience metrics, or commercial partnerships. Purely internal documents are insufficient.

Introduction

The administrative cancellation procedure has been available before the INPI since April 1, 2020, thanks to the PACTE Law of May 22, 2019. After five years, this procedure has proven highly successful. Bad faith in the filing of a trademark is one of the most frequently invoked absolute grounds for cancellation before the INPI. The rise of parasitic strategies, increased competitive tensions, and the consolidated case law from the CJEU have prompted companies to examine what this concept actually entails.

In this article, we provide a comprehensive guide to understanding and identifying bad faith in a trademark application, in order to determine under which conditions a nullity action can be brought before the INPI.

Understanding the concept of bad faith in trademark law

Legal definition and foundations

Article L.711-2 11° of the French Intellectual Property Code provides that a trademark filed in bad faith cannot be validly registered. If it is nevertheless registered, it may be declared null.
More specifically, the prohibition of bad faith targets any filing made with an intention contrary to honest commercial practices, whether to harm a competitor, unduly monopolize a sign, or divert the essential function of indicating origin.

Presumption of good faith and burden of proof

Under Article 2274 of the French Civil Code, good faith is always presumed. The burden of proof lies with the claimant seeking nullity, who must provide relevant and consistent evidence. This evidence must be dated, contextualized, and allow assessment of the applicant’s intention at the time of filing.

Identifying bad faith in a trademark application

Fraudulent behaviors targeting a specific third party

This category covers situations in which the applicant knew of prior use and filed with the intention of harming the third party’s interests, for example:

• Filing a sign used by a former business partner, employee, or distributor

In the Secretum decision of April 15, 2025 (NL24-0093), a commercial partnership existed between the claimant and the owner of the contested trademark. The claimant had created a wine trademark specifically for the owner, with a contract explicitly stating that the trademark remained the claimant’s property. Despite this clause, the owner filed an identical trademark, reproducing both the term and the calligraphy.

• Intent to improperly benefit from the reputation of the sign

For example, in a July 3, 2023 decision (NL23-000) regarding the trademark “” (or “BANDE DE FILS DE SNAP”) the INPI considered that the trademark exploited the notoriety of the signs “SNAPCHAT” and “”. The contested trademark was filed with the intent to create an association in the public’s mind and profit from the reputation and success of the existing application.

• Coincidence of the end of a contractual relationship and a targeted filing

In the HYGROTOP decision of February 23, 2022 (NL21-0167), the claimant had ended commercial relations with the company distributing and installing its products. On the same day, the managing director of the distributing company filed the claimant’s name as a trademark.

Filings diverting the essential function of a trademark

Some fraudulent filings do not target a specific third party but aim to obtain an unjustified monopoly, for example:

• Filing to prevent a revocation action

In the Pomone decision of March 27, 2025 (NL23-0276), the claimant requested that the owner of preexisting POMONE marks (filed in 2017 and registered for more than five years) provide proofs of use, according to the rules controlling use of older marks. Less than three weeks after this request, the owner filed the contested trademark to strengthen its position in negotiations regarding the purchase of the marks.

• Filing a work in the public domain

In the Pompon decision of September 13, 2024 (NL23-0183), the trademark «POMPON», filed by a museum shop operator, was challenged by Dixit Arte SAS. The claimant argued that the registration aimed to monopolize the name «Pompon», associated with sculptor François Pompon, whose works are in the public domain.

For more information on this matter, please refer to our previously published article.

Factual indicators considered by the INPI

The assessment is global and depends on multiple factors, such as:

Chronology of events (often decisive), e.g., in Drag Race France, April 26, 2023 (NL22-0205), the contested trademark was filed simultaneously with the announcement of the show’s arrival in France by the claimant.

Attempts to monetize the filing, e.g., in Google, August 30, 2021 (NL21-0055), the owner of the contested marks offered to modify the project in exchange for compensation, indicating a “wait for a monetary proposal.”

Other factors include:

• Prior relations between the parties;
• Notoriety of the prior sign;
• A clearly parasitic strategy of multiple filings.

Conversely, the INPI rejects bad faith when a filing aims to strengthen preexisting rights or involves a real and legitimate exploitation project.

Bad faith as a procedural tool before the INPI: the example of forfeiture through acquiescence

Article L.716-2-8 of the French Intellectual Property Code provides that the holder of an earlier right who tolerated the use of a later-registered trademark for five consecutive years cannot request nullity of that later trademark. This is known as forfeiture through acquiescence.

However, the article makes an exception: nullity is still possible if the registration was filed in bad faith. This serves as a powerful lever when the prior right holder discovers an abusive filing late.

In the recent LOCPLUS decision of December 14, 2023 (NL21-0255), the issue was examined, showing the strictness required to overturn forfeiture. In that case, although bad faith was invoked to bypass forfeiture, the argument was rejected due to insufficient evidence.

Conclusion

Cancellation of a trademark for bad faith in INPI proceedings is a decisive legal mechanism to combat parasitic strategies. Rigorous assessment of bad faith strengthens the legal certainty for economic actors.

In an environment of increasing trademark conflicts, understanding this absolute ground for cancellation is essential to protect intangible assets and anticipate litigation 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. Can the INPI raise bad faith ex officio during examination of a trademark application
No. The INPI cannot raise bad faith on its own; it can only be invoked by a third party in a nullity action.

2. Is likelihood of confusion required to prove bad faith?
No. Bad faith sanctions a fraudulent intention, independent of confusion analysis.

3. Can a company file a name it plans to commercialize later?
Yes, provided there is a genuine and fair intention to use it, not as part of a fraudulent strategy to block a competitor.

4. Can multiple filings indicate bad faith?
Yes, if they reveal a systematic strategy to capture signs used by third parties.

5. Can bad faith exist without targeting a third party?
Yes, for example, when the filing diverts the essential function of a trademark.

This publication provides general guidance and highlights key issues. It is not intended for specific cases nor to constitute legal advice.

Introduction

The publication by the INPI of its analysis of the first five years of cancellation and revocation procedures trademarks an important step in the evolution of trademark litigation in France. For the first time, the Office provides a comprehensive and documented overview of how these procedures, introduced by the Ordinance of November 13, 2019, and accessible since April 2020, actually work.

This report, published in the INPI’s Journal du droit, highlights how these administrative mechanisms have become a key tool in trade mark protection and litigation strategies. It outlines the profile of users, the legal grounds most frequently invoked, and the way the INPI applies the provisions of the Intellectual Property Code.

An administrative procedure that has become essential

Since their entry into force on April 1, 2020, applications for cancellation and revocation, provided for in Articles L. 714-3 and L. 714-5 of the Intellectual Property Code, have significantly transformed trademark litigation.

They offer several advantages:

• direct access, without going through a court;
• controlled costs, limiting the financial uncertainties of legal proceedings;
• decisions accessible in the INPI’s official legal database.
• a clear procedural framework, allowing for better anticipation.

The first decision issued in November 2020 confirmed the INPI’s ability to handle disputes previously reserved for specialized courts. Since then, companies, particularly SMEs, have actively used these procedures to protect their trademarks or challenge those of competitors.

A volume of decisions that is reshaping the landscape

In five years, the INPI has received approximately 2,200 applications and issued more than 1,800 decisions, a stable volume demonstrating widespread adoption by businesses and practitioners.

Breakdown of applications:

• 60% cancellation actions;
• 40% revocation actions.

These figures show two main uses:

• challenging the validity of a trademark upon filing
• sanctioning the absence of genuine use.

The analysis also highlights the strong involvement of SMEs and micro-enterprises, which represent more than one-third of applicants and defendants. The mechanism therefore achieves the accessibility objective set by the legislator.

The presence of a lawyer or patent attorney in over 90% of cases confirms that, despite its accessibility, the procedure remains legally demanding.

The legal grounds most commonly invoked the INPI

Relative grounds dominate cancellation actions :

Nearly 70% of cancellation requests are based on prior rights (Articles L. 711-3 et seq. of the CPI).

The INPI regularly recognizes the similarity or likelihood of confusion between signs, which explains the high success rate of this type of action.

Absolute grounds remain decisive :

Approximately 20% of actions invoke absolute grounds such as:

• lack of distinctiveness,
• descriptive character,
• violation of public policy,
• bad faith at the time of filing.

Bad faith, which was previously mainly examined by the courts, now plays an essential role before the INPI. It is invoked in more than 20% of cases and upheld in a significant proportion of them.

Revocation : lack of use as the main argument :

Lack of genuine use remains the main basis for revocation proceedings. The INPI notes that lack of commercial exploitation continues to be the easiest objective ground to document. Around 30 decisions also dealt with the degeneration or misleading nature of trademarks, which are rarer but important situations for certain sectors.

Duration, effectiveness, and observed trends

The average duration of proceedings is 8.5 months, which can extend to 17 months in the event of a hearing.

Nearly 30% of proceedings are closed without a decision on the merits (withdrawal, regularization, amicable agreement), which demonstrates the strategic use of proceedings as a bargaining chip.

Success rates are high:

• 85% of actions based on prior rights are successful in whole or in part;
• 74% of revocation actions are fully justified;
• More than 1,000 trademarks have been canceled or revoked since 2020.

Decisions often include an order to pay costs, with an average amount of €680, reinforcing the need for a solid strategy before initiating proceedings.

Practical issues for trademark owners

The publication of the analysis highlights several essential reflexes:

• regularly check the strength of registered trademarks;
• systematically keep evidence of use, which is essential in the event of a dispute;
• monitor competing filings to quickly detect conflicts using the tools provided by the INPI;
• factor the risk of cancellation into naming and branding decisions;
• prepare precise, documented, and structured arguments to maximize the chances of success.

To support these efforts, companies can rely on several useful resources:

• Journal de droit (analysis of decisions), INPI
• Légifrance for the applicable legal framework,
• The CNIL when evidence is based on online or time-stamped data.

Conclusion

The analysis published by the INPI confirms the key role played by cancellation and revocation proceedings in protecting trademarks in France. Their effectiveness, the diversity of the parties that use them, and their high success rate now make them an essential tool. For companies, the challenge is to adopt an active, proactive, and documented approach to managing their intellectual property in order to secure their intangible assets in the long term.

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. What is the main benefit of the administrative procedure?

A quick, accessible, and effective resolution of trademark disputes.

2. What are the most effective grounds for cancellation?

Relative grounds based on prior rights.

3. How can genuine use of a trademark be proven?

With dated evidence: invoices, advertisements, sales statistics, web archives.

4. Can the INPI refuse to rule?

Yes, particularly in the event of a pre-existing legal dispute concerning the same facts.

5. Are actions for bad faith effective?

They are upheld in approximately half of the cases in which they are brought.

Introduction

The long-awaited Next Round of ICANN’s new gTLD Program is finally on the horizon.
Set to open in April 2026, this new application window will reshape how trademark owners, communities, and innovators engage with the Internet’s Domain Name System (DNS).

The next round of ICANN’s new GTLD program follows the landmark 2012 round, which introduced over 1,200 new top-level domains (.app, .shop, .paris, .集团, etc.). Since then, the Internet ecosystem has evolved dramatically, reflecting broader technological, linguistic, and regulatory shifts.

ICANN’s community, through the GNSO Subsequent Procedures Working Group, has redefined the policy framework to increase diversity, inclusivity, and competition within the DNS. The Next Round aims to create a more accessible and multilingual Internet, encouraging participation from under-served regions and new industry sectors.

For trademark owners, the upcoming round is not merely a technical event, it is a strategic turning point!

The 2026 timeline: milestones and implementation path

ICANN has confirmed a tentative 12–15-weeks application window beginning in April 2026, with preparatory programs already in motion:

• Applicant Support Program (ASP): open since November 2024, closing November 19, 2025 (extended to December 19, 2025 to submit a completed application).
• Registry Service Provider (RSP) Evaluation Program : pre-evaluation window closed since May 20, 2025.
• Applicant Guidebook (AGB): to be finalized by December 2025, establishing the definitive rules and criteria for applicants.

These steps are part of ICANN’s phased approach covering policy implementation, program design, infrastructure development, and operationalization, the four pillars identified in its official status report.

Key outcomes from ICAAN 84 in Dublin

The ICANN 84 meeting in Dublin served as a decisive moment for consultation.
Multiple sessions focused on governments’ readiness, trademark engagement, and the technical ecosystem’s preparedness.

Governmental Advisory Committee (GAC) engagement

During its plenary and capacity-building sessions, the GAC emphasized its oversight role, especially the Early Warnings mechanism, allowing governments to flag potentially problematic strings or applicants on public-interest grounds. A new “GAC Readiness Pathway” was launched, including webinars, e-learning modules, and outreach to national governments scheduled for late 2025.

Governments also raised recurring concerns regarding geographic TLDs (geoTLDs), IDN variants, and fair access to applicant support program, issues that will shape the policy environment for 2026.

Geographic and trademark registries

The GeoTLD Group highlighted the importance of genuine local community engagement and governmental non-objection letters, stressing transparency in governance for place-based TLDs.

In parallel, the Brand Registry Group (BRG) discussed strategies relating to .brand TLDs, emphasizing the need for preparation as early as the second quarter of 2026, including provider selection, contractual compliance, and post-delegation planning. For companies, this requires close coordination between domain-name strategy, marketing, cybersecurity, and legal teams ahead of the opening of the application window.

Core challenges for applicants

1. Governmental involvement and Early Warnings

Applicants must anticipate governmental scrutiny early in the process. GAC Early Warnings can significantly affect evaluations or even trigger objections.

Recommendation: Monitor applied-for strings, maintain dialogue with relevant authorities, and integrate public policy considerations into your application strategy.

2. Applicant Support Program (ASP)

The ASP aims to reduce fees by up to 75–85% for qualified applicants from under-served regions. However, governments and civil-society groups stress that outreach remains insufficient.
Applicants should assess eligibility criteria, potential benefits, and strategic trade-offs between ASP participation and standard applications.

3. Contention sets and auctions

When multiple applicants seek the same string, contention resolution becomes critical. ICANN has not yet confirmed whether auctions, controversial in 2012, will remain the default.

Trademark owners should prepare for potential competition, alliances, or pre-emptive applications to mitigate disputes.

4. Technical and operational readiness

The RSP Evaluation Program transfers part of the technical due diligence outside the applicant phase. While this simplifies evaluation, it also requires early engagement with RSP partners to ensure compliance, stability, and security.

Selecting a technically competent RSP is now a precondition for application success.

5. Fees and cost management

The application evaluation fee is estimated around USD 227,000 per TLD, excluding legal, technical, and operational costs.

Applicants should prepare comprehensive budgets, anticipate cost recovery mechanisms, and align internal governance with registry obligations.

6. IDNs, variants, and multilingual opportunities

The Next Round will support 26 scripts under the Root Zone Label Generation Rules (RZ-LGR).
This represents a major opportunity for global trademarks seeking to localize their digital presence. However, applicants must address string similarity risks, translation accuracy, and local regulatory nuances.

7. Public Interest Commitments (PICs) and Registry Voluntary Commitments (RVCs)

All new registries must agree to PICs/RVCs, defining commitments related to consumer protection, transparency, and responsible operation. These are legally binding under the Registry Agreement.
Trademark owners must prepare governance and compliance frameworks to support these obligations.

Strategic implications for trademark owners

For trademark owners

Applying for a .brand TLD (also called a dotBrand) represents one of the most strategic evolutions in corporate digital identity since the first gTLD round in 2012. A dotBrand allows a company to operate its own exclusive, secure domain space under its direct control.

This model goes far beyond traditional defensive registrations or marketing convenience. It provides unprecedented autonomy in managing domain names, strengthens consumer trust, and supports digital transformation objectives across business units.

1. Brand control and consumer trust

Owning a .brand enables the creation of a trusted digital ecosystem, where every domain ending in the company’s TLD is verified and controlled by the rights holder.
This eliminates risks of phishing, counterfeiting, and typosquatting within the namespace, ensuring users can safely navigate to authentic websites such as shop.brand, careers.brand, or support.brand.

From a reputational standpoint, the .brand domain reinforces brand integrity and customer’s trust, particularly for regulated sectors like financeand health

2. Strategic marketing and innovation potential

A .brand opens new opportunities for innovation in communication and marketing.
Companies can structure personalized campaigns (e.g. summer.brand), or segment offerings (pro.brand, luxury.brand) with full consistency. This fosters omnichannel continuity, as the brand controls the entire domain architecture.

Moreover, using a .brand TLD signals technological leadership and enhances SEO performance by centralizing traffic under one authoritative namespace, improving both discoverability and data security.

3. Operational autonomy and long-term efficiency

Operating a private TLD brings technical independence from third-party registrars and external platforms. It allows companies to define their own registration policies, DNS management, and security standards (DNSSEC, SPF, DMARC, etc.).

While initial costs are higher than traditional domain portfolios, maintaining a .brand over time can be more economical and efficient, particularly for organizations managing hundreds of domain names. The consolidation of assets into one controlled namespace reduces administrative complexity and renewal expenses.

4. Challenges and responsibilities

However, a .brand also comes with governance and compliance obligations.
Brands must appoint a Registry Service Provider (RSP) meeting ICANN’s technical criteria and assume ongoing reporting duties under the Registry Agreement. Internal teams (legal, IT, marketing) must collaborate closely to ensure compliance with Public Interest Commitments (PICs) and Registry Voluntary Commitments (RVCs).

It is crucial to prepare internal procedures for policy management, data protection, and incident response within the .brand environment.

For more information on this subject, please refer to our focus article on .brands.

Conclusion

The Next gTLD Round is both an opportunity and a challenge.
ICANN’s roadmap is becoming clearer, but success will depend on early strategic preparation, stakeholder engagement, and a sound understanding of both policy and technical frameworks.

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 is a gTLD?

A gTLD (generic Top-Level Domain) is a generic domain name extension appearing at the end of an Internet address, such as .com, .org, .shop, or .paris. gTLDs serve to structure the Domain Name System (DNS) and provide new opportunities for communication, visibility, and digital positioning for businesses, institutions, and communities.

2. What is the Applicant Guidebook (AGB)?

The Applicant Guidebook (AGB) is the official ICANN document setting out the rules, procedures, and requirements applicable to applicants seeking to operate a new gTLD. It defines the evaluation criteria, objection and dispute resolution mechanisms, and the technical, financial, and contractual obligations applicable to prospective registry operators.

3. What are the Public Interest Commitments (PICs)?

The Public Interest Commitments (PICs) are contractual obligations ensuring that registry operations serve the public interest, protect consumers, and prevent abuse.

4. How are domain names in non-Latin scripts handled?

Domain names aren’t limited to the Latin alphabet. In the next application round, it will be possible to register domain names in 26 different writing systems, including Arabic, Chinese, Japanese, Hindi, and Cyrillic.

To ensure these domain names work properly worldwide, ICANN uses a set of technical rules called the “Root Zone Label Generation Rules” (RZ-LGR). In short, this system makes it possible for people to use the Internet in their own language and writing system, while ensuring that domain names remain safe, clear, and universally functional.

5. Do trademark owners need government approval to apply for new gTLDs?

Only geographic extensions (geoTLDs), such as .paris or .london, require the support, authorisation or formal non-objection of a government or competent public authority.

6. How should trademark owners prepare for the 2026 ICANN application window?

To make the most of the upcoming round, trademark owners should begin preparing now by taking a structured, strategic approach. Preparation involves:

• Conducting feasibility and ROI assessments to determine whether adopting a .brand TLD aligns with the company’s long-term digital and marketing goals.
• Mapping potential use cases and establishing naming conventions to ensure consistent deployment across business units.
• Engaging early with qualified Registry Service Providers (RSPs) to confirm technical readiness and compliance capacity.
• Budgeting for application, setup, and annual registry operations, anticipating both one-time and recurring costs.
• Reviewing internal compliance frameworks to ensure alignment with ICANN’s upcoming 2025 policy updates and Public Interest Commitments (PICs).

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

December 31, 2025, marks a critical date for businesses holding trademarks in both the United Kingdom and the European Union. Five years will have passed since the end of the Brexit transition period on December 31, 2020. However, this deadline is not merely an administrative calendar event ;  It marks the definitive end of a transitional regime that still allowed, under certain conditions, reliance on prior use of a trademark in the   European Union to secure UK rights derived from the “cloning” mechanism.

Starting January 1, 2026, a significant portion of European and UK trademark portfolios will enter a phase of increased legal vulnerability. Actions for revocation due to non-use will become more effective, and oppositions will demand stronger evidence. Historically protective trademarks that have been little or not exploited in the UK will gradually lose their deterrent effect.

For EU trademarks filed before Brexit, UK use will no longer have any evidentiary value to prove use of a sign in the European Union. This change, already noticeable in EUIPO case law, will be fully operationnal by the end of 2025.

This deadline should be approached  to conduct a comprehensive strategic audit : understanding the new legal dynamics, assessing exposure to risks, consolidating evidence of use, and adjusting filing and defense strategies. In other words : reassess, refile when justified, and revoke when blocking trademarks no longer have defensible usage use behind them.

Understanding the post-Brexit deadline of December 31, 2025 : a turning point for use

After the transition period, the UKIPO automatically created national “cloned” trademarks based on existing EU trademarks as of December 31, 2020. These titles ensured legal continuity for the rights holders.

Use in the EU prior to Brexit could still be taken into account to defend these UK trademarks, particularly in revocation actions.

December 31, 2025, marks the permanent end of this corrective mechanism. From that date onward, prior usage in the EU can no longer be invoked to justify maintaining a cloned trademark in the UK.

The consequences are clear :

• Any UK trademark resulting from cloning must demonstrate genuine use within the UK, or accept increased vulnerability.

Use of an EU trade mark prior to 2020 within the territory of the United Kingdom can no longer be relied upon to establish genuine use within the European Union.Thus, the 2025 deadline establishes a simple principle : usage must be territorially relevant, without any residual effect from Brexit.

Measuring the legal impact of Brexit on trademarks : proof of use, oppositions, and revocation

Trademark law is based on a fundamental balance : monopoly rights are earned through use. In both UK and EU law, the absence of genuine use for five years opens the door to revocation.

This changes the dynamics of trademark conflicts. A company confronting a “blocking” cloned trademark can, more often than before, consider a revocation action based on non-UK usage. Conversely, holders of historically “European” portfolios but with limited presence in the UK must accept that formal rights alone are no longer sufficient, and that a title without use becomes a legally vulnerable asset.

This evolution radically changes the litigation landscape. Companies facing a “blocking” cloned trademark will have a clearer path to pursuing a revocation action based on non-usage within the UK. On the other hand, holders of “European” portfolios with limited UK presence must accept that having formal rights alone is no longer enough to protect their trademark.

Another major consequence concerns opposition proceedings. In the UK, when the holder of an earlier trademark is required to prove use, the demonstration must be relevant to the territory in question. After the end of 2025, prior use in the EU before 2020 will no longer be capable of constituting valid evidence of use. The calculation depends on the date of filing of the contested trademark : the longer the opponent waits, the stronger, more recent, and territorially relevant their evidence must be.

Reassessing your portfolio : an operational audit, not a “cosmetic” one

Reassessing your portfolio is not about producing a formal inventory. A useful audit answers an operational question : “If a third party challenges us tomorrow, can we defend ourselves ?” This requires evaluating three key areas :

• The list of relevant titles, particularly the UK cloned trademarks ;
• The reality of their use in the UK ;
• The quality of available evidence.

Proof of use is not an abstraction ; it consists of concrete documents. These should be dated, traceable, and tied to the registered trademark, relevant goods/services, and the UK territory. In many cases, the problem lies not in the total absence of use, but in the lack of well-maintained evidence : scattered proof, unarchived marketing campaigns, hard-to-retrieve invoices, and incomplete e-commerce histories. In litigation, use must be proven, not merely explained.

At this stage, the best strategy is often the simplest : implement a proof preservation process and make it sustainable. A trademark used in the UK must have an ongoing “life record” that is regularly updated. In a post-Brexit context, this discipline becomes a competitive advantage : it reduces the risk of revocation and strengthens negotiating power in conflicts.

Purely defensive refiling exposes businesses to claims of bad faith. The logic is well known : a trademark should not be used as a perpetual lock, detached from real activity. A mechanical refile, without an economic justification, can become a vulnerability rather than a protection.

On the other hand, refiling can be perfectly valid when it reflects real change : logo evolution, modernization of visual identity, adaptation of labels to a more digital offering, expansion into new product ranges, or aligning a historic portfolio with a truly used brand. After five years, it is common for rebrands to have occurred, logos to have changed, or real usage to diverge from the original form. A thoughtful filing then realigns the rights with the market.

Revoking : strategic “cleaning” from 2026 onwards

From 2026 onwards, revocation actions for non-use will particularly target UK cloned trademarks without genuine UK use. For companies seeking to launch a brand in the UK but facing “paper-based” obstacles, revocation may become the most rational option. It helps clean the register, reduce uncertainty, and limit negotiation costs against holders who are not actually exploiting the trademark.

Revocation is not just litigation. It often serves to rebalance power dynamics, open discussions, or reach a more reasonable coexistence. In cross-border cases, it can also be combined with a filing strategy to secure market entry in the UK without relying on any post-Brexit “residual risk.”

Conclusion

The December 31, 2025, deadline is not a mere formality. It transforms how trademark portfolios must be defended and utilized in the UK post-Brexit. In practice, it imposes a three-step strategy :

• Reassess to detect vulnerabilities ;
• Refile when economic reality justifies it ;
• Revoke when blocking trademarks no longer have defensible UK usage.

In this type of regulatory shift, the value of strategic assistance is measured by its ability to secure assets, anticipate proof of use, and transform a legal constraint into a competitive advantage.

Dreyfus & Associés supports its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

Dreyfus & Associés works in partnership with a global network of specialised intellectual property lawyers.

Nathalie Dreyfus, with the support of the entire Dreyfus team.

Q&A

1. When will prior EU usage no longer protect a UK-cloned trademark ?

Starting January 1, 2026, usage in the EU prior to December 31, 2020, will no longer provide support to resist revocation for non-use of a cloned trademark.

2. Should I automatically refile cloned trademarks ?

No. Refiling should be targeted and justified. The priority is to identify critical trademarks and verify the alignment between actual usage, available evidence, and the filed form.

3. What constitutes genuine use in the UK ?

Real commercial exploitation within the UK, demonstrated by dated and coherent documents linked to the relevant products and services.

4. Can I more easily challenge cloned trademarks in 2026 ?

Often, yes, because holders will no longer be able to rely on prior EU usage and will have to demonstrate UK usage.

5. Is refiling “just to start over” risky ?

Yes. The strategy should be based on real economic rationale (brand evolution, new visual identity, product range expansion).

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