Nathalie Dreyfus

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