Nathalie Dreyfus

On March 6, 2025, the Montpellier Court of Appeal issued a significant ruling (No. 23/01999) confirming that sales conducted via social media platforms, such as Instagram, are subject to the same consumer protection rules as traditional distance sales. This decision reaffirms the legal obligation for sellers to inform consumers of their right of withdrawal, a fundamental consumer right under European Union law.

Background of the case

The Montpellier Court of Appeal ruled in a case involving a dispute between a consumer and a micro-entrepreneur operating via Instagram. The seller had failed to inform the buyer of their withdrawal rights. The buyer subsequently requested the cancellation of the sale and a refund. The court confirmed that the transaction qualified as a distance contract, as it had been concluded without the simultaneous physical presence of both parties.

Understanding the right of withdrawal

What is the right of withdrawal ?

The right of withdrawal entitles consumers to cancel a purchase within 14 days without having to provide any justification and without incurring additional charges, apart from potential return shipping costs. This right applies to contracts concluded at a distance or outside the seller’s business premises, including online, by telephone, and increasingly, through social media.

The legal framework

In France, the right of withdrawal is governed by Articles L.221-18 to L.221-28 of the French Consumer Code. Article L.221-18 grants consumers 14 days from delivery or contract signature to exercise this right. Importantly, if the seller fails to inform the consumer of this right, the withdrawal period is extended by 12 months, pursuant to Article L.221-20.

Social media sales as distance contracts

Are social media sales considered distance sales ?

In ruling No. 23/01999, the Montpellier Court of Appeal held that Instagram-based sales do indeed qualify as distance sales. While social media platforms are not designed solely for commercial transactions, the court emphasized that the absence of simultaneous physical presence between seller and buyer meets the criteria set out in Article L.221-1 of the French Consumer Code.

The seller’s duty to inform

Sellers operating via social media are legally obliged to inform consumers of their right of withdrawal before the contract is concluded. This includes providing clear and accessible information about the existence of the right, how it may be exercised, and the applicable timeframe. Failure to comply with this obligation not only extends the withdrawal period but may also expose sellers to legal consequences.

The role of social media platforms

Can social media platforms be held liable ?

The obligation to inform consumers rests primarily with the seller. Social media platforms, as intermediaries, are not generally held responsible unless they are directly involved in the transaction, for instance, by facilitating payment or processing orders. Nevertheless, platforms can support compliance by offering features such as customizable terms and conditions fields or links to consumer rights information.

EU regulations on online intermediaries

What does EU law say ?

Directive 2011/83/EU on Consumer Rights harmonizes distance and off-premises contract rules across the EU, mandating that consumers be informed of their right of withdrawal before contract formation. Additionally, Regulation (EU) 2019/1150 on promoting fairness and transparency for business users of online intermediation services reinforces the importance of transparency in digital transactions, thereby indirectly supporting the enforcement of consumer rights, including the right of withdrawal.

Conclusion

The Montpellier Court of Appeal’s decision of 6 March 2025 underscores a key principle : sales conducted via social media platforms are subject to the same consumer protection rules as traditional distance sales. Sellers must ensure compliance with their obligation to inform consumers about the right of withdrawal, in accordance with both national and EU legislation. Failing to do so not only erodes consumer trust but also exposes sellers to legal risks and potential sanctions.

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

Dreyfus & Associés is partnered with a global network of Intellectual Property attorneys.

Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

The valuation of intangible assets has become a major issue in the economic strategies of modern companies. These assets, which include trademarks, patents, software, designs & models and databases, now account for an ever-increasing proportion of corporate value. Thanks to technological advances, and in particular the emergence of artificial intelligence (AI), new valuation methods are possible, enabling more accurate, dynamic and efficient valuation of these often-underutilised exploited intangible resources. This article explores the global impact of AI in the valuation and maximisation of the value of these intangible assets, offering tools for predictive analysis, automation and legal security.

Why AI is revolutionising intangible asset valuation

The emergence of artificial intelligence is profoundly changing the way we value intangible assets, which are now at the heart of economic strategies. These assets have gone from being simple ‘positive externalities’ to becoming genuine instruments of growth. With AI, the valuation of intangible assets is becoming more objective, detailed and consistent, considering dynamic factors that were previously inaccessible.

According to the Organisation for Economic Co-operation and Development (OECD), intangible capital now accounts for a large proportion of the market capitalisation of listed companies. In this context, it is imperative to adopt tools that are equal to the challenge. AI is now established as a vector for automation, anticipation and security, contributing to the legal, financial and strategic optimisation of intangible assets.

New value drivers enabled by AI

AI as a catalyst for intellectual property development

Artificial intelligence tools can proactively identify exploitable inventions, creations or distinctive signs, facilitating their protection by intellectual property rights. Numerous technologies developed by AI support innovation while automatically tracing the authorship of assets.

In particular, semantic analysis refers to the ability developed by AI to understand the meaning of words within a text or data. For example, by simply reading a patent, AI will be able to determine key concepts and their links, such as a specific technology or a particular innovation, without needing to be explicitly programmed for each detail. AI also facilitates the recognition of technical patterns, which enables the identification of recurring motifs or structures in technical data, such as product drawings, diagrams or technical ideas. In particular, it will be able to automatically detect a technical solution similar to an existing invention in a patent.

These technologies are even more effective because they are based on self-learning models. These algorithms enable AI to learn and improve over time, without being explicitly programmed for each situation. In this way, AI will become better at predicting the novelty of a patent as data on past patents is accumulated.

This translates into an acceleration of patent, design and trademark filings, but also into an improvement in the quality of registered rights, based on objectively qualified criteria of distinctiveness, use or novelty.

Predictive analytics and scoring of intangible assets

AI enables detailed evaluations of intangible assets based on extensive datasets: social media presence, scientific citations, prior art, comparable transactions, and market trends. These analyses produce dynamic and regularly updated ratings, invaluable for fundraising, asset sales, or financial reporting.

Moreover, AI-generated scenarios predict future valuations, considering market shifts and regulatory developments crucial for M&A due diligence and IP litigation strategy.

Toward standardised AI-based valuation methods

Concrete examples: patents, databases, software

In the technology, healthcare and telecoms sectors, AI can be used to value patents based on the estimated lifetime of the titles, their potential for commercial exploitation or cross-citation mapping. In fact, AI can examine patents and identify those that have been cited in other patents or publications. These citations highlight connections between ideas and similar technologies, providing a better understanding of the evolution of innovation in a specific field. By cross-referencing this information, AI can create a “map” listing the various inventions and their relationship in a network, making it easier to assess the novelty, importance or influence of an invention in relation to overall technological development.

Similarly, databases and software can be assessed on the basis of their functional architecture, reuse rate and competitive exposure.

The critical issue of algorithm traceability

The use of AI in this context requires traceability of the valuation processes, both for reasons of legal security and regulatory compliance, particularly with regard to the European General Data Protection Regulation (GDPR) and the European Digital Services Act (DSA). Any potential biases in algorithms must be documented, particularly in terms of financial predictions or investment decisions. Algorithms must also be auditable.

Legal and regulatory framework: risks and opportunities

The European Commission, the OECD and the World Intellectual Property Organisation (WIPO) are encouraging the use of artificial intelligence in the analysis of intangible assets, while insisting on the need for open, interoperable and auditable standards. To achieve transparency, economic efficiency and legal certainty, companies must rely on partners specialising in intellectual property, AI and asset valuation.

The French Data Protection Authority (CNIL) also stresses that the use of personal data in predictive models must be processed lawfully, proportionately and in accordance with the principles of minimisation and purpose.

Conclusion: strengthening strategic approaches with AI

Incorporating AI into intangible asset valuation equips companies with a structural competitive edge. This transformation transcends technology, touching legal, financial, and organisational domains. The ultimate goal is to convert intangible assets into measurable, actionable, transferable, and defensible capital.

Dreyfus Law Firm works with clients in the food sector, providing specialist advice on intellectual property and regulatory issues to ensure compliance with national and European laws.

We collaborate with a global network of intellectual property attorneys.

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

FAQ

Counterfeiting remains a critical threat to the integrity of intellectual property rights, impacting not only brand owners but also consumer safety and market trust. The publication of the new counterfeiting study by EUIPO and the OECD, notably involving complex product sectors such as pharmaceuticals and cosmetics, underscores evolving challenges. These sectors illustrate the legal and practical intricacies where product categorization, consumer perception, and regulatory frameworks converge to shape enforcement outcomes.

This article offers a detailed, professional analysis of the latest trends in counterfeiting, focusing on the European Union’s legal regime, recent case-law insights, and pragmatic enforcement strategies. Our aim is to equip clients with an in-depth understanding and effective tools to anticipate and counteract these sophisticated infringements.

I – Legal framework governing counterfeiting in the European Union

EU trademark regulation and anti-counterfeiting measures

The cornerstone of anti-counterfeiting law within the EU is the European Union Trade Mark Regulation (EUTMR). Article 8(1)(b) explicitly prohibits the registration of trademarks when the goods or services are similar enough to cause likelihood of confusion among consumers, including associative confusion. This principle forms the legal basis for challenging infringing marks that underpin counterfeit products.

In addition to the EUTMR, Directive 2001/83/EC and Regulation (EC) No 1223/2009 delineate the scopes of pharmaceuticals and cosmetics respectively, influencing the classification and legal treatment of counterfeit goods within these sectors. The legal overlap necessitates nuanced analyses, particularly when goods straddle both classifications.

Complementary legal instruments against counterfeiting

Beyond trademark law, the EU employs a multi-layered approach including customs enforcement (Regulation (EU) No 608/2013), criminal sanctions, and civil remedies. These legal tools work synergistically to prevent the importation, distribution, and sale of counterfeit goods, ensuring brand protection and consumer safety.

II – Challenges and specificities of counterfeiting in pharmaceuticals and cosmetics

Similarities and conflicts between pharmaceuticals and cosmetics in trademark law

Recent case-law and Board of Appeal reports emphasize the blurred lines between pharmaceuticals and cosmetics, especially in skin and hair care products. The degree of similarity between these categories affects the assessment of trademark conflicts and counterfeiting claims.

• Pharmaceuticals: Medicinal products intended to treat or prevent diseases, regulated under Directive 2001/83/EC.
• Cosmetics: Products intended mainly for cleaning, perfuming, protecting or altering the appearance of the human body, as defined by Regulation (EC) No 1223/2009.

The case-law consistently finds low to average degrees of similarity between these categories depending on product specifics, distribution channels, and intended purposes, complicating the enforcement against counterfeiting when product categories overlap.

Case-law developments addressing counterfeiting in overlapping sectors

Notable judgments (see below) highlight the common distribution channels (pharmacies, specialized shops) and overlapping target consumers, which create conditions conducive to confusion and potential counterfeiting. Courts recognize the evolving nature of products, such as cosmeceuticals, which combine pharmaceutical and cosmetic attributes, further intensifying enforcement challenges:

• CLEANIC: 13/05/2015, T-363/12, CLEANIC natural beauty (fig.) / CLINIQUE; 13/05/2015, T-364/12, CLEANIC Kindii (fig.) / CLINIQUE; 13/05/2013, T-363/13, CLEANIC intimate (fig.) / CLINIQUE
• MITOCHRON: 13/05/2016, T-62/15, MITOCHRON / mito (fig.)
• SANOLIE: 24/03/2021, T-175/20, SANOLIE / SANODIN

III – Enforcement mechanisms and practical responses to counterfeiting

Customs and border measures

The EU’s customs regulations empower border authorities to seize counterfeit goods upon importation or exportation. This preventive measure is vital for intercepting counterfeit pharmaceuticals and cosmetics that pose serious health and safety risks.

Judicial remedies and damages

Right holders can initiate civil and criminal proceedings against counterfeiters, seeking injunctions, damages, and destruction orders. Recent jurisprudence stresses the need for robust evidence on similarity, consumer confusion, and commercial origin to succeed in litigation.

Conclusion: Strategic IP protection against new counterfeiting threats

In light of newly published counterfeiting study, it is imperative for rights holders to adopt proactive strategies, including comprehensive trademark registrations across relevant classes, vigilant market surveillance, and swift enforcement actions. Recognizing the nuanced interplay between pharmaceuticals and cosmetics can substantially enhance the effectiveness of anti-counterfeiting efforts.

The Dreyfus Law Firm stands ready to assist clients in navigating these complexities, delivering tailored advice and enforcement support across the full spectrum of intellectual property protection.

The law firm Dreyfus et Associés is partnered with a global network of lawyers specializing in Intellectual Property.

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

FAQ

Genuine use of a European Union trademark (EUTM) is a fundamental condition for maintaining the rights granted by its registration. In its judgment of 5 March 2025 (Case T-118/24), the General Court of the European Union (GCEU) clarified the scope of this notion, as well as the EUIPO’s obligation to provide special motivation. This article outlines the legal framework and practical implications of the ruling for trademark holders and IP professionals.

Genuine use of an EU trademark : legal framework and key issues

The rights attached to an EU trademark (EUTM), governed by Regulation (EU) 2017/1001, are conditional upon its use. If the trademark is not put to genuine use within five years of registration, it may be revoked (Art. 58(1)(a)).

Use is considered genuine when it is effective, actual, and consistent with market practices. It must go beyond merely token use and must not be designed solely to preserve the registration. The Court of Justice of the European Union (CJEU) in Sunrider/OHIM (C-416/04) confirmed that even limited use may qualify as genuine if it reflects the commercial reality of the relevant market.

Accepted forms of evidence include :

• Invoices and purchase orders
• Advertising materials
• Screenshots from websites and social media
• Documents showing the trademark affixed to products or packaging

The use must take place within the EU and relate to the goods or services actually registered.

The EUIPO’s obligation to provide a special motivation

Under Article 94 of Regulation (EU) 2017/1001, the EUIPO must issue clear, complete and comprehensible justification for its decisions. This requirement serves two purposes :

• To enable the parties to understand and, if necessary, challenge the decision
• To allow the Union courts to exercise judicial review over its legality

A failure to provide proper reasoning may result in  the decision being overturned, especially where the Board of Appeal overlooks key arguments or fails to substantiate its conclusions based on the evidence submitted.

General Court Judgment of 5 March 2025 (T-118/24) : background and significance

In this case, revocation proceedings were initiated against an EUTM registered in Class 14 (jewellery). The EUIPO partially rejected the application, finding that genuine use had been established for certain goods. The applicant then appealed to the General Court, arguing :

• That the evidence submitted did not establish genuine use
• That the EUIPO failed to provide adequate reasoning

a) Evidence of use

The General Court upheld the EUIPO’s assessment. Genuine use was demonstrated by :

• 112 invoices, including 64 for Class 14 products
• Screenshots of advertisements on Facebook, YouTube, and Twitter
• A commercial presentation of the trademark on the owner’s website

Even though the trademark was not physically affixed to the products, these materials were sufficient to demonstrate a link between the mark and the commercialisation of the goods. The Court reaffirmed that the volume of sales must be assessed in context : low sales figures may still indicate genuine use where the products are expensive or niche.

b) Export-only use

Regarding sales outside the EU, the Court recalled the strict requirement of Article 18(1)(b) : the mark must appear on the products or packaging when used solely for export purposes.

In this case, however, most evidence related to use within the EU. As such, the EUIPO’s failure to assess the export-related requirement had no bearing on the outcome.

c) Alleged lack of reasoning

The applicant further argued that the EUIPO had failed to :

• Explain how the evidence established use within the EU despite being linked to exports
• Address the claim that the mark had only been used for retail services (Class 35)

The Court dismissed both arguments :

• The retail services argument had not been raised during the EUIPO proceedings and could not be invoked for the first time on appeal
• Any lack of reasoning on export-related evidence was immaterial, as genuine use within the EU had been amply demonstrated

Practical takeaways for trademark holders

This judgment underscores key compliance requirements for maintaining EUTM rights :

• Maintain detailed documentation : invoices, marketing materials, and digital records can collectively establish a pattern of genuine use
• Ensure EU relevance : use must be traceable to the internal market
• Tailor your evidentiary strategy to the market : in luxury or high-value sectors, a small number of sales may suffice if consistent with industry norms

The ruling also sends a clear message to the EUIPO : decisions must be reasoned with precision, particularly when assessing the relevance and sufficiency of the evidence.

Conclusion

Judgment T-118/24 reinforces two core principles in EU trademark law : a demanding yet contextual interpretation of genuine use, and the requirement of special motivations.

For trademark owners, this is a reminder to anticipate non-use challenges by systematically gathering and preserving use-related evidence. For IP practitioners, the case highlights the strategic value of invoking a failure to state reasons, although such a flaw will only be decisive where it materially affects the outcome.

Key takeaway : To preserve their rights, EUTM owners must demonstrate genuine economic use within the EU. At the same time, all EUIPO decisions must be properly reasoned to ensure effective judicial protection.

Dreyfus & associés advises clients in the preparation of relevant evidence of use, as well as in managing proceedings before the EUIPO and European courts. With in-depth experience in trademark law, the firm provides strategic support at every stage to secure intellectual property rights and anticipate litigation risks.

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FAQ 

Co-ownership of patents or trademarks often arises in collaborative innovation, particularly among inventors, business partners, or startup co-founders. While common, this legal arrangement entails a number of significant legal and strategic complexities especially when one co-owner seeks to transfer their share without informing the other.

A recent ruling issued by the Paris Judicial Court on 7 February 2025 clarifies the obligations of co-owners in the context of IP right transfers. The decision reinforces the importance of legal formalism and notification procedures. This article analyses the practical and legal consequences of such transfers, along with strategic guidance for rights holders.

Legal framework for IP co-ownership

Patent co-ownership: transfer regulations

Article L. 613-29 of the French Intellectual Property Code (IPC) allows a patent co-owner to transfer their share at any time. However, other co-owners benefit from a statutory right of first refusal, exercisable within three months of receiving formal notification by means of a bailiff’s act.

This requirement is further reinforced by Article 815-14 of the French Civil Code, which obliges the transferring party to disclose essential information: the proposed sale price, terms, and identity of the prospective buyer.

Trademark co-ownership: legal constraints and duties

Although less strictly codified than patent co-ownership, trademark co-ownership is recognized under Article L. 712-1 IPC. In the absence of a prior agreement between co-owners, the unilateral sale of a share without notification or consent may be deemed wrongful particularly if it deprives the other co-owner of financial rights or commercial opportunities.

The “Ares Trailer” case (Paris Judicial Court, 7 February 2025)

Background and key facts

In case number RG 21/07225, the Paris Judicial Court adjudicated a dispute between two co-inventors of a trailer system, who jointly owned a patent, a design, and a trademark registered under the name “Ares Trailer.” One of the co-owners transferred all IP rights to a third-party company without notifying the other, and the assignment documents were later found to contain a forged signature.

Key takeaways from the decision

The Court declared the contested assignments null and void due to lack of consent, emphasizing that even a lawful transfer of a share requires prior notification of the other co-owner.

However, the acquiring company escaped liability due to its good faith, as recognised under the doctrine of appearance. The co-owner who executed the transfer was ordered to pay €17,500 in damages for moral and financial harm caused to the other co-owner.

Legal risks of unilateral transfers without notification

Failing to comply with co-ownership rules regarding notification exposes the transferring party to significant legal risk, including:

• Annulment of the transfer, especially where consent is lacking or the transaction is tainted by fraud;
• Civil liability for breaching co-ownership obligations;
• Loss of revenues or commercial opportunities for the other co-owner;
• Litigation that may be prolonged, costly, and publicly damaging.

While a good-faith purchaser may retain the rights acquired, the assignor remains liable for having disregarded their legal obligations.

Best practices for managing IP co-ownership

To ensure compliance and mitigate risk, we recommend that co-owners of patents or trademarks:

• Formally notify all co-owners of any proposed transfer or licensing arrangement;
• Draft a comprehensive co-ownership agreement specifying procedures for transfer, licensing, and dispute resolution;
• Conduct a full review of title history and rights transfers prior to acquiring an interest in co-owned IP;
• Seek legal counsel proactively when contemplating any transaction affecting shared rights.

Conclusion

The co-ownership of intellectual property rights requires careful legal governance. The failure to notify other co-owners prior to a transfer even a partial one can lead to nullity of the transaction and potential damages. The “Ares Trailer” case provides a compelling precedent that reinforces the necessity of transparency, legal precision, and proactive planning when managing co-owned IP assets.

Dreyfus Law Firm works with clients in the food sector, providing specialist advice on intellectual property and regulatory issues to ensure compliance with national and European laws.

We collaborate with a global network of intellectual property attorneys.

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FAQ

Definition of territorial exclusivity in franchise agreements

Territorial exclusivity is a commonly included provision in franchise agreements that grants a franchisee exclusive rights to operate within a defined geographic zone.

This exclusivity offers a significant commercial advantage, shielding franchisees from internal competition and enabling them to develop their customer base within a protected environment. It also ensures brand consistency and alignment with the franchisor’s strategic positioning.

The effectiveness of this clause depends on precise territorial delineation and strict compliance with contractual obligations by all parties to the agreement. 

Legal framework under french law

Pursuant to Article 1240 of the French Civil Code, any act causing harm to another gives rise to liability for damages. This principle applies fully within the context of franchise relationships.

French courts regularly hold that violating a territorial exclusivity clause constitutes an act of unfair competition, particularly when it encroaches on the contractual rights of another franchisee. For example, in a decision dated 13 March 2024 (Paris Court of Appeal, No. 23/17908), the court found that distributing advertising materials within an exclusive territory amounted to a manifestly unlawful disturbance and warranted an injunction.

Additionally, EU Regulation No. 330/2010 authorises franchisors to prohibit active sales in another franchisee’s exclusive zone, while expressly permitting passive sales (responses to unsolicited customer orders).

How to identify unfair competition between franchisees

Unfair competition between franchisees can take various forms, particularly when one engages in commercial or marketing activities within another’s protected territory.

The most frequent examples include:

• Sending promotional emails or distributing leaflets within the exclusive zone;
• Using local SEO techniques to target customers in another franchisee’s area;
• Launching geo-targeted advertising campaigns on social media platforms aimed at consumers outside one’s designated territory.

Importantly, unfair competition may be established even in the absence of intent; the breach of exclusivity and the resulting harm alone suffice.

Legal and commercial risks for the infringing franchisee

A franchisee who breaches a territorial exclusivity clause is exposed to substantial legal and reputational risks, including:

• Preliminary injunctions requiring immediate cessation of the infringing activity;
• Damages for proven financial loss suffered by the affected franchisee;
• Termination of the franchise agreement for material breach of contract;
• Harm to brand reputation, which may negatively impact the franchise network as a whole.

These risks underscore the critical importance of adhering to territorial boundaries established in the franchise agreement.

Preventive measures and practical recommendations

To avoid both intentional and unintentional breaches of territorial exclusivity, we recommend the following best practices:

• Define territorial boundaries with precision in all franchise agreements;
• Train franchisees and their teams on their legal obligations regarding territorial exclusivity;
• Monitor local and online marketing campaigns, especially those involving digital outreach or search engine optimisation;
• Implement early warning systems or internal mediation procedures to swiftly address potential disputes.

A proactive and preventive approach is essential to safeguarding the integrity and stability of the franchise network.

Conclusion

Territorial exclusivity is a fundamental pillar of franchise governance, intended to promote balanced market development and limit internal conflicts.

Its violation not only constitutes a contractual breach, but also a form of unfair competition with potentially serious legal and financial consequences.

Dreyfus Law Firm works with clients in the food sector, providing specialist advice on intellectual property and regulatory issues to ensure compliance with national and European laws.

We collaborate with a global network of intellectual property attorneys.

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FAQ

Since May 1, 2025, European Union design law has undergone a major reform. This legislative overhaul, introduced through Regulation (EU) 2024/2822 and Directive (EU) 2024/2823, brings a comprehensive modernization of the legal framework to better protect industrial designs in the digital age.
This article outlines the practical implications for businesses, designers, legal professionals, and consumers.

Redefinition of key concepts

1. Expanded definition of “design”

The notion of “design” now includes dynamic features, such as movements, animations, transitions, and visual effects. This extension ensures effective legal protection for animated digital content and user interface designs.

2. Broadened definition of “product”

A product no longer needs to be tangible. Software interfaces, virtual objects, digital environments, and visual identifiers are now eligible for protection. This opens the door for design recognition in immersive digital environments, including virtual and augmented reality.

3. EU-Wide terminological harmonisation

Registered Community Designs (RCDs) are now officially referred to as Registered EU Designs (REUDs). The Community Design Regulation (CDR) has been renamed the European Union Design Regulation (EUDR). This terminological alignment enhances the coherence of EU design law and affirms its unified nature.

Procedural developments in design filing

• Centralized filing at the EUIPO : All applications for EU designs must now be filed directly with the European Union Intellectual Property Office (EUIPO). National offices are no longer competent for EU design filings, thereby streamlining the registration process.
• Multiple designs in one application, across Locarno classes : The reform allows up to 50 designs per application, even when they belong to different Locarno classes. This measure is intended to reduce costs and administrative burden, particularly for companies with extensive design portfolios.
• Dynamic representations : Although videos, 3D models, and simulations are not yet permitted as representation formats, their future integration is explicitly foreseen. Designers are encouraged to anticipate this development and prepare compatible visual material accordingly.

Revision of the fee structure

Simplified application and publication fees

A single fee now covers both registration and publication. In multiple applications, each additional design incurs a supplementary fee of €125. This simplification enhances clarity and financial predictability for applicants.

Higher renewal fees

Renewal fees have been increased and now escalate over time based on the age of the registration :

• 1st renewal: €150
• 2nd renewal: €250
• 3rd renewal: €400
• 4th renewal: €700

It is advisable to anticipate renewals before upcoming fee hikes and to manage design portfolios strategically based on business priorities and product life cycles.

New rights and limitations

• Protection against unauthorized 3D printing : Right holders are now empowered to act against the illicit reproduction of their designs via 3D printing. The reform thus responds to the emergence of new technological threats by securing the physical appearance of products, even when digitally replicated.
• Introduction of a permanent repair clause : A permanent repair clause has been established, authorizing third parties to use components protected by a design solely for the purpose of restoring the original appearance of a complex product (such as a car).
  The aim is to balance exclusive rights with the freedom to repair, preventing abusive technical monopolies.
• Freedom of expression and permitted uses : The new framework explicitly introduces limitations to design rights based on freedom of expression, including use for parody, commentary, criticism, or satire. This ensures a more proportionate and socially balanced application of design rights.

Strategic implications for stakeholders

• For companies and designers : A strategic audit of existing design portfolios is strongly recommended. The reform offers new opportunities, especially for digital, animated, and virtual designs. In addition, the centralized EUIPO filing system represents a major efficiency gain in managing design protection at the EU level.
• For legal professionals and IP advisors : Legal practitioners must adapt their advisory services and litigation strategies to incorporate the new regulatory framework. Continuous training is necessary to interpret the updated definitions, limitations, and procedural requirements.
• For consumers :  The repair clause and new limitations facilitate access to spare parts, combat planned obsolescence, and promote a more sustainable consumption model. These adjustments reinforce the public interest dimension of design law.

Conclusion

The EU design law reform that took effect on May 1, 2025, marks a significant modernization of the European system. It introduces expanded protection, greater procedural flexibility, and alignment with digital realities. Stakeholders across sectors are strongly encouraged to proactively adapt their practices to secure their rights and capitalize on the opportunities offered by this new legal landscape.

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In today’s innovation-driven economy, where collaborative research and technical partnerships are increasingly common, the exchange of proprietary know-how has become both essential and legally sensitive. If not properly managed, the disclosure of confidential technical information can compromise patentability, lead to the forfeiture of intellectual property rights, or give rise to liability for the disclosing or receiving party. This article explores the legal risks associated with know-how disclosure in the patent context illustrated by recent case law and sets out practical safeguards to ensure such exchanges are secure and compliant.

Legal risks arising from know-how disclosure

When confidential disclosure leads to patent litigation

The disclosure of technical know-how, even in a collaborative setting, may give rise to complex legal claims if improperly managed. Risks include:

• Ownership claims by the original holder of the disclosed information;
• Breach of contract claims, especially in the presence of a non-disclosure agreement (NDA);
• Irretrievable loss of confidentiality, should the disclosed elements be publicly revealed through a patent application.

Failure to anticipate these risks can not only nullify competitive advantage but also result in judicial reassignment of the patent rights and financial liability.

Case study: Air Liquide (Paris Judicial Court, January 31, 2025)

In 2020, Futura Mechanical Design Project (FMDP) and its parent company F2M SAS were retained by Air Liquide to conduct a feasibility study on a liquid hydrogen pump. An NDA was signed, explicitly forbidding the recipient from using disclosed technical information to file any intellectual property rights.

Despite this, an affiliated company within the Air Liquide group filed a French patent and subsequently a PCT international application, the contents of which replicated confidential material from the commissioned study. FMDP and F2M subsequently brought a claim for ownership of the patent, arguing that their proprietary know-how and the outcomes of their technical study had been unlawfully appropriated and used without authorization.

The Paris Judicial Court found that:

• FMDP held the technical solution prior to the collaboration;
• The patent filing constituted a breach of the NDA;
• The General Terms and Conditions (GTCs) cited by Air Liquide, which purportedly transferred IP ownership, were neither agreed upon nor enforceable.

The Court:

• Ordered the transfer of the patent and its international extensions to FMDP and F2M SAS;
• Awarded €30,000 in damages;
• Rejected Air Liquide’s counterclaims as unfounded and untimely.

This case underscores the evidentiary value of prior ownership documentation, the contractual weight of confidentiality obligations, and the inadmissibility of relying on unaccepted boilerplate GTCs in matters of intellectual property.

Contractual confidentiality obligations and legal consequences

A well-drafted NDA is a critical safeguard in collaborative innovation. Standard confidentiality provisions generally prohibit:

• The use of disclosed information beyond the defined scope;
• The filing of any intellectual property rights (patent, utility model, etc.) derived from such disclosures.

Failure to comply may result in:

• Injunctions and court-ordered ownership reassignment of the IP in question;
• Monetary damages for loss and reputational harm;
• Potential exposure of trade secrets through patent publication, which is irreversible.

Best practices when disclosing know-how in patent-related contexts

1. Draft robust and purpose-specific non-disclosure agreements NDAs

Generic templates are often insufficient. Tailor each NDA to the context, ensuring:

• A clear definition of what constitutes confidential information;
• Explicit terms regarding the prohibition (or permitted use) of such information in patent filings;
• Provisions reserving all pre-existing intellectual property rights of the disclosing party.

2. Secure proof of prior ownership of the invention

Maintain a systematic internal record of technical developments through:

• Invention Disclosure Forms (IDFs), signed and timestamped;
• Digital vaults or sealed e-Soleau envelopes for sensitive developments;
• Logs of internal emails and R&D notes to evidence early-stage ownership.

These records are crucial in proving entitlement and defeating wrongful ownership claims.

3. Clarify intellectual property clauses in all agreements

Beyond NDAs, ensure contracts such as R&D orders, joint development agreements, or licensing deals clearly state:

• Who owns the results and deliverables;
• The extent and limitations of assignments or licensing rights.

4. Explicitly reject conflicting general terms and conditions

Never rely on silence. In the Air Liquide case, the GTCs invoked by one party were ultimately deemed unenforceable due to:

• Lack of acceptance by the counterparty;
• Inconsistent communications showing clear disagreement.

To avoid ambiguity:

• Always confirm acceptance or rejection of GTCs in writing;
• Include IP-specific carve-outs in contracts or appendices.

5. Implement a controlled internal disclosure protocol

Companies should adopt a standardized protocol prior to any external exchange:

• Legal review of disclosure scope;
• Document classification and labelling (e.g., “Confidential – Do Not Distribute”);
• Internal tracking of disclosures: to whom, when, why, and under what conditions.

Conclusion: minimizing patent liability through preventive action

Patent-related liability arising from improper use or disclosure of know-how can be devastating legally, financially, and reputationally. Whether in open innovation or bilateral technical cooperation, prevention through contractual rigor and internal diligence remains the best defense.

Dreyfus Law Firm works with clients in the food sector, providing specialist advice on intellectual property and regulatory issues to ensure compliance with national and European laws.

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The UK Supreme Court’s decision in SkyKick UK Ltd and another v. Sky Ltd and others has significantly impacted trademark law, particularly concerning the breadth of specifications and the concept of bad faith. This ruling underscores the importance of aligning trademark specifications with genuine commercial intentions.

Background of the SkyKick v Sky Case

In 2016, Sky Ltd, a prominent broadcaster and telecommunications company, initiated legal proceedings against SkyKick, a US-based cloud management software provider, alleging trade mark infringement. Sky’s claims were based on its extensive trade mark registrations covering a wide array of goods and services. SkyKick countered by challenging the validity of Sky’s trademarks, asserting that they were registered in bad faith due to their overly broad specifications without genuine intent to use the marks across all listed categories.

Legal framework and Supreme Court’s findings

Understanding bad faith in trademark law

Under Section 3(6) of the UK Trade Marks Act 1994, a trademark shall not be registered if the application is made in bad faith. The concept of bad faith involves a lack of genuine intention to use the trade mark for the goods and services specified at the time of application.

Supreme Court’s analysis

The Supreme Court held that:

• Overly broad specifications: Filing for a wide range of goods and services without a genuine intention to use the trade mark for all of them can indicate bad faith.
• Assessment of intent: The applicant’s intention at the time of filing is crucial. A lack of intention to use the mark for certain goods or services, especially when the specification is excessively broad, supports a finding of bad faith.
• Partial invalidity: If bad faith is established for certain goods or services, the trade mark can be partially invalidated for those specific categories.

This decision emphasizes that trade mark applications must reflect a genuine commercial strategy and not serve as a means to unjustly monopolize market segments.

Implications for trademark applicants

Strategic considerations

Trademark applicants should:

• Align specifications with business activities: Ensure that the goods and services listed in the application correspond to current or planned business operations.
• Avoid overly broad terms: Refrain from using vague or broad categories without a clear intention to use the trade mark across all specified areas.
• Maintain documentation: Keep records demonstrating the intention to use the trade mark for each specified good or service at the time of application.

Risk management

Companies must be aware that:

• Enforcement actions may backfire: Initiating infringement proceedings based on broad specifications can lead to counterclaims of bad faith, potentially resulting in partial invalidation of the trade mark.
• Portfolio audits are essential: Regularly reviewing trade mark portfolios to ensure that all registrations are defensible and align with genuine business intentions is crucial.

Conclusion

The Supreme Court’s ruling in the SkyKick case serves as a pivotal reminder of the importance of integrity and genuine intent in trade mark applications. Applicants must ensure that their trade mark specifications are precise and reflect actual or planned use to withstand legal scrutiny and maintain robust protection.

At Dreyfus Law Firm, we specialize in intellectual property law, offering expert guidance on trade mark registration, portfolio management, and enforcement strategies. Our team is dedicated to ensuring that your intellectual property rights are secured and maintained with the highest level of professionalism and integrity.

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