Nathalie Dreyfus

Introduction

Since January 1, 2026, the 13th edition of the International Nice Classification (“NCL 13-2026”) has entered into force in the jurisdictions that are party to the Nice Agreement. This update applies to all new trademark applications filed as from that date. As the wording of goods and services has evolved significantly across several classes, this reform has direct consequences for filing strategies, scope of protection, and the management of global trademark portfolios.

Understanding the Nice Classification

Origins and legal function

The Nice Classification is an international system that categorizes goods and services into 45 classes used for trademark registration purposes:

• Goods: Classes 1 to 34
• Services: Classes 35 to 45

It was established under the Nice Agreement (1957) in order to harmonize classification practices among national and international trademark offices, thereby facilitating filings, prior art searches, opposition proceedings, and contractual negotiations.

Why a 13th edition in 2026?

The previous version (NCL 12-2023) no longer adequately reflected current market and technological developments. NCL 13-2026 was introduced in order to:

• Clarify overloaded classes (notably Class 9)
• Adapt the classification to new uses and emerging technologies
• Reduce overlaps and ambiguities in the wording of goods and services

Key changes in NCL 13-2026

Major reclassifications of goods

– Optical products (glasses, lenses, accessories)
Prescription glasses, sunglasses, frames, and contact lenses have been transferred from Class 9 to Class 10 (medical devices). This reorganization is based on their medical or therapeutic function rather than their electronic nature.

– Essences and essential oils
The classification of these products now depends on their intended use:

• Essential oils for cosmetic purposes → Class 3
• Essential oils for medical/therapeutic purposes → Class 5
• Essential oils for food flavoring purposes → Class 30

– Emergency and rescue vehicles
Fire trucks, ambulances, lifeboats, and similar vehicles have moved from Class 9 to Class 12, consolidating all vehicles within the same class.

– Other reclassifications

• Heated clothing → from Class 11 to Class 25
• Further clarification regarding electronic equipment and software in Class 9

Services and new definitions

NCL 13-2026 also introduces changes in the services sector. Certain services related to artificial intelligence (AI as a Service – AIaaS) are now clarified within Class 42, reflecting the realities of the modern digital economy.

Practical impact on trademark filings

Selection of classes for filings as from 2026

From January 1, 2026 onwards, all trademark applications (national, regional, or international via the Madrid System) must be classified in accordance with NCL 13-2026. Any misclassification may result in office actions, procedural delays, or additional costs.

Pending applications and risk of objections

Applications filed before January 1, 2026 will continue to be examined under NCL 12-2025. However, objections may arise where the wording already corresponds to a new entry introduced under NCL 13-2026.

Consequences for existing portfolios

Clearance searches and trademark monitoring

From 2026 onwards, search and monitoring practices must simultaneously consider both the former and the new editions in order to avoid blind spots in enforcement and risk analysis strategies.

Renewals and official fees: INPI vs EUIPO/WIPO

The French Trademark Office (INPI) may require reclassification of specifications upon renewal from 2026 onwards, potentially triggering additional fees. By contrast, the EUIPO and WIPO generally do not automatically reclassify existing registrations.

Proactive strategies to implement

Comprehensive audit of specifications

A detailed audit of the specifications of pending and future applications is essential in order to prevent gaps in protection, particularly in sectors affected by significant reclassifications.

Licence agreements and coexistence agreements

Contracts referring solely to class numbers, without a detailed description of goods and services, may become outdated or contentious. A legal audit and revision of contractual wording are strongly recommended.

Updating portfolio management tools

Internal databases, monitoring tools, and classification protocols must be updated to integrate NCL 13-2026. This also includes standard filing templates and internal filing workflows.

Conclusion

The Nice Classification NCL 13-2026 is not merely an administrative update. It introduces significant reclassifications, generates direct operational consequences for trademark protection, and requires structured adjustments to intellectual property strategies.

Careful anticipation remains essential in order to secure your rights, optimize future filings, and ensure robust legal coverage.

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 the Nice Classification 2026 modify the legal scope of my trademark protection?

No. The classification has no retroactive effect on the intrinsic scope of rights conferred by a trademark. However, the exact wording of the specification remains decisive. Future reclassifications may influence the interpretation of imprecise wording in litigation.

2. Will the 2026 update affect opposition proceedings?

Indirectly, yes. Oppositions will continue to rely on the comparison of goods and services as registered. However, changes in classification may influence how offices assess similarity between certain goods.

3. Is the Nice Classification mandatory in all countries?

Most jurisdictions apply the Nice Classification, although certain national practices may vary. Particular attention should be paid to specific local requirements in strategic filings.

4. Can a classification error invalidate a trademark?

An incorrect class does not automatically invalidate a trademark. However, an overly narrow or inappropriate designation may limit the scope of protection or weaken the trademark in non-use cancellation proceedings.

5. Does the 2026 update impact international clearance searches?

Yes. Search tools must incorporate correspondences between former and new classes. A search limited to a single edition may overlook relevant prior rights, especially in sectors affected by class transfers.

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

On April 10, 2025, the Paris Judicial Court (RG No. 22/10720) delivered a landmark ruling that marks a turning point for the fashion and luxury industries. The case opposed Hermès, a global icon of craftsmanship and haute couture, to an upcycling atelier that had transformed second-hand Hermès scarves into decorated denim jackets.

This case highlights the growing tension between sustainable fashion, which promotes reuse and transformation of existing products, and the strict protection of intellectual property rights. While upcycling is appealing for its ecological and creative dimensions, it cannot serve as an excuse to violate the exclusive rights attached to trademarks and original works. The ruling reaffirms that the ethical and aesthetic enhancement of a product must be carried out within a legal framework that respects intellectual property rights.

The Hermès case: facts and decision

1.1 Background of the case

An independent fashion house offered for sale jackets made from second-hand Hermès scarves through an online store and Instagram. Each item was promoted as unique, featuring the name “Hermès” in product descriptions and hashtags. The company held no authorization from the brand or its rights holders. Hermès filed a civil action for trademark infringement and copyright violation, claiming that its designs were being misappropriated for commercial purposes.

1.2 Sanctions imposed by the court

The Paris Judicial Court found both trademark and copyright infringement and ordered the immediate cessation of all sales. The company was ordered to pay substantial damages for both material and moral prejudice. The infringing jackets were seized and scheduled for destruction. The judges emphasized that the visibility of the brand and the unauthorized transformation of the scarves made the infringement manifest. This ruling now stands as a key precedent on upcycling in France.

Trademark and copyright: what protections apply

2.1 Protection of luxury brands

The Hermès trademark, first registered in 1936, benefits from enhanced protection under Articles L.711-1 and following of the French Intellectual Property Code. Any use of a name, logo or distinctive sign without authorization constitutes infringement, even if the sign is transformed in a creative way. The exhaustion of trademark rights does not apply to substantially modified goods. A scarf incorporated as a component into a jacket is considered a new product and does not fall under the exhaustion exception. Designers must therefore be highly cautious when using the Hermès name in upcycling projects.

2.2 Hermès scarves as original works

Each Hermès scarf is considered an original graphic work, protected by copyright from the moment of its creation. The choices of color, pattern, and composition demonstrate sufficient creative input to justify copyright protection. Altering a scarf to integrate it into a garment offered for sale constitutes an act of reproduction or public communication that requires the author’s or right holder’s prior authorization. In this case, the court rejected any claim of copyright exhaustion, considering that the transformation amounted to a new commercial exploitation.

The environmental argument is not enough

3.1 Upcycling as justification

The defendants argued that their creations aligned with sustainable fashion values and aimed to combat textile overconsumption. Their defense was based on the idea of giving second life to existing scarves and thereby reducing environmental impact. While this narrative may be persuasive to the public, it has no exculpatory effect under IP law. Courts primarily assess economic exploitation and damage to trademark and copyright owners. Good intentions are not sufficient to excuse infringement.

3.2 The court’s rejection of environmental claims

The Paris Judicial Court confirmed that environmental aims do not justify illegal commercial exploitation. The jackets were intended for sale, and their promotion relied on the Hermès name and reputation, without permission. French case law consistently holds that environmental objectives do not override intellectual property rights. For creators, this means that any upcycling initiative must be preceded by legal due diligence; otherwise, the risk of liability remains significant.

What case law says about the use of brand elements

4.1 Exhaustion of rights and its limitations

The exhaustion doctrine allows for the resale of genuine products once placed on the market by the trademark owner or with their consent. However, this principle does not apply when the product has been substantially altered. In this case, transforming scarves into jackets was deemed sufficient to disqualify the exhaustion exception. This interpretation protects brand owners from dilution and unauthorized repurposing of their image. Creators must understand and apply this principle to avoid infringement.

4.2 Permitted use under the French intellectual property code

Article L.713-6 paragraph 3 of the French Intellectual Property Code authorizes limited use of a trademark only when strictly necessary to describe the product. In this case, the company used “Hermès” in product titles, descriptions, and hashtags for marketing purposes. This use was found to be excessive and aimed at capitalizing on the brand’s reputation. Creators engaging in upcycling must ensure that any reference to a brand is neutral, descriptive, and proportionate, to avoid infringing trademark rights.

How to create legally with luxury textiles

5.1 Best practices for lawful upcycling

• Use neutral fabrics: without logos or recognizable elements.
• Obtain proper authorization: when using any protected element.
• Avoid visible references: remove the brand name from all creations.
• Limit communication: do not promote products using the brand’s reputation.

5.2 Consulting experts before commercialization

• Consult an IP attorney: to legally secure the project.
• Audit the creations: to identify risks in advance.
• Prevent legal disputes: by anticipating issues early.
• Pursue official partnerships: to combine creativity with legal compliance.

Conclusion

The Hermès case makes it clear that upcycling does not exempt creators from complying with intellectual property rights. Luxury trademarks and original works benefit from robust protection under French law, which prevails over ecological or creative justifications. Designers who wish to transform branded goods must seek prior authorization or adapt their practices accordingly. Legal foresight, supported by expert advice, is essential to combining innovation with legality.

Dreyfus & associés relies on a global network of lawyers specializing in intellectual property, enabling the firm to support its clients in cross-border creative ventures while ensuring compliance with IP rights worldwide.

Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

1. Can I transform a Hermès scarf for personal use?
Yes, provided the use remains strictly private and non-commercial.

2. Is commercial upcycling a legal exception under IP law?
No, there is no exception for upcycling under the French Intellectual Property Code.

3. Can I mention Hermès on my website if I use its scarve?
Only in a neutral, purely descriptive way, without promotional intent.

4. How can I avoid infringement when upcycling?
By removing logos, using unprotected fabrics, or securing a proper license.

5. Is a partnership with the brand required for resale?
Yes, if your creations include identifiable elements of the brand, authorization is necessary.

Introduction

In 2026, domain name litigation unfolds against an ever-denser digital backdrop: according to the Domain Name Industry Brief, the first quarter of 2026 closed with 392.5 million domain names registered across all extensions. For businesses, this growth multiplies points of contact with internet users, but it also increases the risks of abusive registrations, impersonation or confusion with their distinctive signs.

A misappropriated domain name can divert internet users, facilitate online fraud or harm a trademark’s image. The scale of the phenomenon is confirmed: according to a communiqué published on 14 January 2026, WIPO handled more than 6,200 domain name disputes in 2025, its highest volume to date. The response must therefore be swift and tailored to the extension concerned.

Resolution mechanisms vary according to the extension: the UDRP (Uniform Domain Name Dispute Resolution Policy) remains the benchmark procedure for many generic domains, such as .com, .net or .org, while certain national extensions have their own dedicated mechanisms, such as SYRELI or PARL Expert for .fr. This diversity makes it essential to identify, from the outset, the most appropriate route to obtain the deletion, suspension or transfer of the disputed domain name.

What is a domain name dispute?

A domain name dispute arises when a name registered by a third-party conflicts with the rights or legitimate interests of another person, in particular by creating a likelihood of confusion with a trademark or a distinctive sign. The rights that may be invoked vary, however, according to the extension and the applicable procedure: the UDRP focuses on trademarks, whereas certain national procedures, such as SYRELI or PARL Expert, have a broader scope.

These disputes often originate in the “first come, first served” principle: an available domain name can be registered quickly, without any systematic prior check of third-party rights. This flexibility makes it easier to develop online projects, but it can also enable abusive registrations intended to divert traffic, mislead internet users or profit from a company’s reputation.

The situations encountered are varied, and the analysis must therefore always take into account the name concerned, its use, the rights invoked and the apparent intention of the holder.

The UDRP procedure: the international standard for domain name disputes

The UDRP procedure (Uniform Domain Name Dispute Resolution Policy) is the principal extrajudicial mechanism for resolving domain name disputes. Established by ICANN, it applies to many generic extensions, in particular .com, .net, .org and .info, as well as to several new extensions.

Its objective is simple: to enable a trademark owner to obtain the rapid transfer or deletion of an abusively registered domain name without bringing traditional court proceedings. The procedure is administered by accredited centres, including the WIPO Arbitration and Mediation Center.

To obtain the transfer of a disputed domain name under a UDRP procedure, the complainant must establish three cumulative conditions:

The UDRP is particularly well suited to cases of cybersquatting, typosquatting, phishing, fake official sites or abusive redirection. It is, however, less appropriate for complex commercial disputes, conflicts between former partners, or situations that require an in-depth judicial analysis of the parties’ rights.

Fast-track UDRP: a new route for straightforward cases

Since 9 March 2026, WIPO has offered an optional priority processing service for UDRP complaints, known as the UDRP Priority Service. This mechanism speeds up certain cases without altering the substantive UDRP criteria: the complainant must still demonstrate the similarity with its trademark, the holder’s absence of rights or legitimate interest, and the registration and use of the domain name in bad faith.

This service has several practical features:

– it is optional and subject to acceptance by the WIPO Center;
– it concerns cases that can be examined by a single panellist;
– it is limited to a maximum of five domain names held by the same registrant;
– any request for a three-member panel triggers a return to the standard UDRP procedure;
– a decision may be issued within approximately one month from the commencement of the procedure, subject to the case being accepted into the priority service and to the normal course of the proceedings;
– the announced fees are USD 4,000 for a complaint covering one to five domain names held by the same registrant, comprising USD 1,000 in administrative fees and USD 3,000 in panellist fees.

The fast-track UDRP differs from the URS (Uniform Rapid Suspension System). The URS allows a domain name to be rapidly suspended in certain clear-cut cases, but permits neither its transfer nor its definitive cancellation. The UDRP priority service may therefore be useful where the infringement is clear, where transfer of the domain name is sought and where speed is a strategic priority.

SYRELI and PARL Expert: the French procedures for .fr

Disputes relating to .fr domain names, as well as to certain overseas extensions managed by AFNIC such as .re, .yt, .pm, .wf and .tf, are governed by specific mechanisms based on French law. Two extrajudicial procedures may be considered: SYRELI and PARL Expert. Both make it possible to seek the deletion or transfer of a disputed domain name, although without obtaining damages.

These procedures differ from the UDRP in their scope. Whereas the UDRP focuses on trademarks, the French procedures can take into account other protected rights, such as a company name, a trade name, a surname, an earlier domain name or certain personality rights. The applicant must establish that the domain name falls within one of the cases provided for in article L.45-2 of the CPCE and that it has standing to act. Where the dispute concerns an infringement of earlier rights, it must also show that the holder cannot justify a legitimate interest or good-faith use.

In practice, SYRELI is often preferred where the infringement is clear: reproduction of a distinctive sign, parking page, typosquatting or a manifest absence of legitimate interest. PARL Expert may be better suited where the case calls for a finer legal analysis, for example in the presence of an alleged descriptive use, a serious challenge by the holder or a risk of court proceedings.

In both cases, precise evidence must be gathered: trademark titles or material establishing the rights invoked, screenshots, the domain name’s usage history, any correspondence, indicia of bad faith, redirections or technical elements revealing fraudulent use.

Foreign procedures and national extensions: a case-by-case approach

The procedure applicable to an extension depends first on the extension concerned and on the rules, incorporated into the registration agreement. For gTLDs, the UDRP is generally incorporated into the contracts entered into with registrars. For national or regional extensions, each registry may provide its own dispute resolution mechanism or adopt a model close to the UDRP.

A degree of convergence nevertheless exists: many mechanisms require proof of earlier rights, the holder’s absence of legitimate interest and/or abusive conduct in the registration or use of the domain name. However, the rights that may be invoked, the bad-faith criteria, the timeframes, the costs and the possible outcomes all vary according to the extension concerned.

How to identify the applicable procedure?

The applicable procedure depends first on the extension concerned, but also on the rules incorporated into the domain name’s registration agreement. For generic extensions such as .com, .net or .org, the UDRP is generally incorporated into the contract entered into with the registrar. For a .fr domain name, the SYRELI and PARL Expert procedures are, in principle, the routes to consider first. For certain national or sector-specific extensions, the rules specific to the registry concerned must be checked; they may provide for a specific procedure, a UDRP-inspired mechanism or, conversely, point towards court or amicable action.

The choice of procedure then depends on the objective pursued. The UDRP allows the transfer or deletion of a domain name, whereas the URS is limited to its suspension. The French procedures, for their part, make it possible to seek the deletion or transfer of a domain name falling under AFNIC. If the dispute involves a former partner, a contract, a claim for damages or a complex challenge to the parties’ rights, court action may be more appropriate.

Practical examples of common situations

Recent decisions illustrate these situations without altering the analysis of principle. In matters of phishing or impersonation, the Forvis Mazars Group v. Name Redacted case, WIPO No. D2025-0175, decision of 13 March 2025, concerning the domain name mazarsfrance.com, shows that the fraudulent use of a domain name reproducing a trademark with the addition of a geographical term, for the purposes of impersonation or email fraud, can establish the absence of rights or legitimate interests as well as bad faith, and justify the transfer of the domain name under the UDRP.

For .fr domain names, the PARL Expert decisions No. EXPERT-2025-01154, e-sas-carrefour.fr, of 1 July 2025, and No. EXPERT-2025-01159, mgmt-carrefour.fr, of 7 August 2025, illustrate the value of the procedure where the disputed domain name reproduces a well-known distinctive sign without apparent authorisation. They also serve as a reminder that the absence of an active site, or redirection to a mere blank or holding page, does not necessarily rule out the infringement, where the circumstances of the case reveal a risk of confusion, an absence of legitimate interest and, where applicable, a risk of fraudulent use.

Conversely, the Dietmar Hopp SAS v. Franck Chantoiseau, SCI Les Amis Vino case, WIPO No. D2026-1131, decision of 4 May 2026, concerning the domain name domaineterreblanche.com, illustrates the limits of these procedures. Where the domain name consists of evocative, common, or independently usable terms, the mere existence of an earlier trademark is not sufficient to obtain its transfer: the complainant must demonstrate, in a precise and detailed manner, the absence of the holder’s rights or legitimate interests, as well as its registration and use in bad faith.

Preventing domain name disputes

The best strategy remains preventive. A company must first ensure that its essential domain names are properly registered, renewed and centralised. Many incidents arise from a missed renewal, loss of access to the registrar account or poorly documented ownership. It is therefore advisable to identify strategic names, verify the declared holders, secure access and put renewal alerts in place.

Monitoring is also essential. It allows the rapid detection of registrations close to a trademark, typographical variants, relevant new extensions and names likely to be used for fraud. The earlier the detection, the more effective the available actions. This vigilance must also take account of the new ICANN cycle for generic extensions, whose 2026 application window is open from 30 April to 12 August 2026. The gradual arrival of new extensions may alter monitoring perimeters, particularly for trademark heavily exposed internationally.

Companies exposed internationally have an interest in identifying the extensions relevant to their activity, in order to anticipate the risks of abusive registration or confusion with their trademarks.

Companies must also keep evidence. In the event of a dispute, it is useful to have dated screenshots, material relating to the use of the domain name, proof of the trademark’s reputation, copies of fraudulent emails, or technical information about the site and its hosting. These elements may be decisive in a UDRP, SYRELI or PARL Expert procedure.

Finally, the domain name strategy must be coordinated with the trademark strategy. Filing a trademark, registering consistent domain names, monitoring important extensions and reacting swiftly to infringements help limit the risks of confusion and preserve customer trust.

Conclusion

A domain name dispute is not merely a technical or administrative conflict. Where a name reproduces a trademark, diverts internet users or serves as a vehicle for fraud, it can directly affect the trust of customers, partners and employees.

The UDRP, SYRELI and PARL Expert procedures, or the mechanisms specific to certain extensions, offer rapid responses, but their effectiveness depends on the framing of the case: the rights that may be invoked, the use observed, indicia of bad faith, urgency and the objective sought.

For businesses, domain names must therefore be treated as trust assets: they must be identified, monitored, secured and defended with the same rigour as other distinctive signs.

FAQ

What should I do if a third party has registered a domain name reproducing my trademark?
The first step is to preserve the evidence: a screenshot of the site, the date of consultation, the apparent identity of the holder, the use made of the domain name and any associated emails. You must then identify the extension concerned in order to determine the applicable procedure: UDRP for many generic extensions, SYRELI or PARL Expert for .fr, or a local procedure for certain national extensions.

Does the UDRP allow damages to be obtained?
No. The UDRP only allows the transfer or deletion of the disputed domain name. If the company wishes to obtain compensation, it will need to consider separate court action.

What is the difference between UDRP and URS?
The UDRP leads to a decision that may result in the transfer or deletion of the domain name. The URS is a faster procedure, but limited to the suspension of the domain name. It does not allow the name to be recovered.

Can action be taken against an inactive domain name?
Yes, in certain cases. The absence of an active site is not enough to exclude bad faith. The circumstances must be analysed: the trademark’s reputation, the identity of the domain name, the absence of a legitimate explanation, the technical configuration, the holder’s history or indicia of preparation for fraudulent use.

Can a company automatically recover a domain name matching its trademark?
No. Owning a trademark does not automatically entitle the owner to all corresponding domain names. The applicant must demonstrate the conditions specific to the chosen procedure, in particular the holder’s absence of legitimate interest and, under the UDRP, registration and use in bad faith.

Which procedure should be chosen for a .fr domain name?
For a .fr domain name, the SYRELI and PARL Expert procedures are generally the routes to consider first. The choice between the two will depend on the complexity of the case, the rights invoked, the urgency and the strategy sought.

Introduction

The proliferation of dupes imitation products that mimic the aesthetics of branded goods has become a major concern for the fashion, luxury, cosmetics, and electronics industries. These items, widely sold online through marketplaces and social media, not only capture part of the market but also dilute brand value and erode consumer trust.

Fighting dupes today requires more than traditional anti-counterfeiting actions. It calls for a comprehensive strategy combining IP registrations, digital monitoring, swift enforcement measures, and an intelligent use of the new EU design reform, which modernizes protection and enforcement tools.

Understanding dupes: nature, risks, and challenges

A dupe is an imitation product that replicates the appearance or style of an original item without being an exact counterfeit. Unlike traditional counterfeits, dupes often operate in a gray zone:

• Mimicking the visual identity of the original (shape, patterns, packaging), sometimes with slight modifications to avoid direct legal exposure;
• Leveraging brand awareness by presenting themselves as “inspired by” the original, particularly through viral content on TikTok and Instagram;
• Undermining brand value by associating inferior quality with the original product in the eyes of consumers.

Dupes are particularly prevalent in:

• Fashion and accessories (bags, sneakers, jewelry);
• Cosmetics and perfumes (look-alike bottles and packaging);
• Consumer electronics (earbuds, smartwatches, branded-style accessories).

They represent a commercial, reputational, and sometimes safety risk, especially in sectors where consumer trust is critical.

Deploying an effective anti-dupe strategy

A robust anti-dupe plan relies on three pillars: legal protection, market monitoring, and rapid enforcement.

2.1 Securing intellectual property rights

• Register all designs with the EUIPO and/or national offices for significant creations;
• File 3D or semi-figurative trademarks, especially for iconic packaging;
• Document originality through dated prototypes, photos, and digital proof to support enforcement actions.

Without properly secured rights, fighting dupes becomes significantly harder.

2.2 Implementing proactive and multi-channel monitoring

Modern dupes spread across digital ecosystems:

• Marketplaces like Amazon, AliExpress, and Vinted;
• Social media such as TikTok, Instagram, and Pinterest, which accelerate trends;
• Search engines and sponsored ads, where dupes may appear before the original.

An efficient monitoring system combines:

• Automated detection tools (reverse image search, web crawlers);
• Customs alerts to intercept suspicious imports;
• Tracking of influencers promoting look-alike products.

2.3 Using all enforcement tools

Once a dupe is identified, brands can act through:

1. Online takedowns
   • Using DMCA or platform-specific IP complaint tools;
   • Rapid removal is often possible if designs are properly registered.
2. Customs interventions
   • Filing a Customs Action Request (AFA) enables seizure of infringing goods at the border.
3. Targeted legal actions
   • Civil (design or trademark infringement, unfair competition) to obtain injunctions and damages;
   • Criminal, where organized or large-scale dupe networks are involved.
4. Brand communication
   • Educating consumers and distributors reduces tolerance for dupes and mitigates reputational risk.

Leveraging the EU design reform

The 2025 EU design reform modernizes protection mechanisms and directly strengthens anti-dupe strategies.

3.1 Strengthened protection adapted to digital markets

• Clearer definitions of “design” and “complex product”;
• Full protection for digital and 3D designs;
• Faster and cheaper online registration processes.

3.2 Simplified cross-border enforcement

• Single actions can now cover multiple EU Member States;
• Harmonized, accelerated procedures make it easier to block dupes before they saturate the market.

3.3 Synergy between anti-dupe measures and the reform

By combining:

• Systematic design and trademark registrations,
• Active digital surveillance,
• Use of EU-wide enforcement tools,

companies can deploy a cohesive, effective response to the growing dupe phenomenon.

Conclusion

Dupes are a persistent and fast-evolving threat to brand value and creative industries. Through a combination of proactive IP management, market monitoring, rapid enforcement, and the strategic use of the EU design reform, businesses can protect their creations, maintain market integrity, and strengthen their competitive position.

Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is a dupe?
An imitation product that mimics a brand’s style without being an exact copy.

2. Why is it a problem?
Dupes devalue the brand, create confusion, and harm its reputation.

3. How can you protect your creations?
Register your designs, document originality, and monitor the market.

4. How does the EU design reform help?
It simplifies filings, strengthens protection, and enables faster EU-wide actions.

5. What are the key steps to fight dupes?
Register, monitor, and act quickly (takedown, customs, legal actions).

Introduction

In today’s digital landscape, businesses and individuals often face defamatory or unlawful content that is disseminated online, frequently hosted abroad. While the global removal of such content can be complex, geo-blocking, which involves restricting access to content based on the user’s geographical location, has become an increasingly effective and adopted solution. In its ruling of June 13, 2025, the Paris Court of Appeal acknowledged that, under certain conditions, geo-blocking content from France can be considered a removal, thus fulfilling the legal requirements for content withdrawal. This legal development offers a way to balance the protection of individuals’ and businesses’ rights against online infringements, while addressing territorial concerns in a globalized digital environment

Definition of geo-blocking

1.1 What is geo-blocking ?

Geo-blocking is a technical measure used to restrict access to online content based on the user’s geographic location, typically identified through their IP address. It allows a website or specific page to be blocked for users connecting from a particular country. This mechanism is widely used in fields such as intellectual property rights, audiovisual broadcasting, or to comply with territorial regulatory obligations. Legally, it serves as a strategic tool to limit access locally without requiring the global removal of the content. Its use is becoming increasingly common in cases involving online defamation or reputational harm.

1.2 How is it used in digital litigation ?

Geo-blocking plays a critical role in resolving cross-border disputes involving unlawful online content. When content infringing protected interests under French law is hosted abroad, its removal can be legally or technically difficult. Geo-blocking allows access to be limited to users in France, thereby neutralizing the harmful effects within national borders. It offers a pragmatic alternative to full takedown, especially where international procedures are unrealistic. As a targeted risk mitigation measure, it is increasingly recognized by French courts as a legally sufficient response.

Geo-blocking recognized as a legal form of removal

2.1 The legal basis : Article 6-I-8 of the french LCEN

Article 6-I-8 of the French Law on Confidence in the Digital Economy (LCEN) requires hosting providers to promptly remove any manifestly unlawful content once notified. Long interpreted as requiring complete takedown, this obligation is now evolving toward a territorial approach. The central question is : Can content that is only inaccessible from France be considered “removed” under French law ? In a cross-border digital environment, the affirmative response given by the Paris Court of Appeal in June 2025 marks a major shift. It confirms that geo-blocking, if effective, can fulfill the legal requirement of removal.

2.2 The june 13, 2025 ruling : a jurisprudential turning point

In a case between Eoservices and the site Signal-arnaques.com, the Paris Court of Appeal ruled on June 13, 2025, that geo-blocking access to content from France qualifies as removal, provided it renders the content inaccessible to French users. The defamatory comments, initially removed then reposted, had been blocked through IP filtering. The Court found that effective inaccessibility within France was sufficient to stop the infringement, in accordance with the LCEN. This ruling marks a significant evolution, establishing a territorial interpretation of the legal removal obligation.

Legal requirements for effective geo-blocking

3.1 The harm must be localized in France

To be legally valid, geo-blocking must address harm that is specifically suffered within French territory. The infringing content must either be in French, target a French audience, or affect a business operating in France. The damage must be objectively demonstrable, such as reputational harm, customer loss, or misdirected traffic. If the harm is not clearly localized, geo-blocking alone will be insufficient. The claimant must document the territorial impact, which is essential for the measure to be legally acceptable.

3.2 The blocking must be technically reliable and effective

French case law requires that geo-blocking genuinely prevents access from France using ordinary means. If content remains easily accessible via VPNs or standard browsers, the measure may be deemed ineffective. Courts expect proof of technical reliability, such as bailiff reports or expert audits using multiple French IPs. The IP filtering must be strict, active, and verifiable, or the measure will not meet the standard for terminating an infringement under French law.

Practical implications for victims of defamatory content

4.1 An Effective Defensive Strategy in a Cross-border Context

• Strategic solution: Geo-blocking provides a way to limit the impact of defamatory content hosted abroad.
• Proposed from the pre-litigation stage: It offers an alternative to avoid burdensome legal procedures while achieving tangible results on French soil.
• Less intrusive than global takedown: This measure is more flexible and less confrontational, facilitating negotiations with the content publisher.
• Proportionality and adaptation: It fits into a proportionality framework, addressing the realities of the modern digital environment.
• Legal effectiveness: When technically implemented, it meets the requirements of French courts.

4.2 The heightened evidentiary burden for the claimant

To justify geo-blocking, the claimant must present a structured and comprehensive body of evidence. This includes proving the content is unlawful, establishing clear harm within France, and demonstrating that the blocking measure is technically operative. Bailiff reports and technical audits are often necessary. These evidentiary demands underscore the importance of working with an experienced legal counsel in IP and digital law. Proper documentation is critical to preempt challenges and secure legal recognition of the measure.

Conclusion and outlook

The ruling of June 13, 2025, confirms that geo-blocking content from France may be legally treated as removal, provided it effectively prevents access from national territory. This solution reconciles the territorial limits of French law, freedom of expression abroad, and the need to effectively protect corporate reputation.
It offers a powerful strategic tool for brands facing harmful online content hosted outside France, in a context where digital sovereignty is increasingly essential.

The Dreyfus Law Firm supports businesses in protecting their interests in the face of legal challenges arising from an ever-evolving digital landscape.

Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

1. Do courts always recognize geo-blocking as equivalent to removal?
No. Geo-blocking is accepted only if it is effective, targeted, and addresses harm localized in France. It is not a valid substitute in cases of criminal or global infringement.

2. How can I prove that geo-blocking is operational?
You must provide evidence such as bailiff reports or technical audits showing the content is no longer accessible from French IP addresses.

3. Can I still request global removal of content?
Yes. Geo-blocking is an alternative or complementary measure, but full removal remains relevant, especially if the content damages your brand internationally.

4. Does geo-blocking work on social media platforms?
Partially. Some platforms allow geo-filtering, but effectiveness depends on platform policies and the nature of the content. A formal or judicial request may be needed.

5. Is this solution suitable for trademark infringement cases?
Yes. If unauthorized use of a trademark is hosted outside France, geo-blocking can limit commercial harm on the French market while broader enforcement is pursued.

Introduction

Artificial Intelligence (AI) has transformed creative industries by enabling the autonomous generation of content, whether in design, writing, music, or even software development. This ability of AI to produce creative works raises complex intellectual property (IP) questions. To avoid conflicts, it is essential to contractually define the rights and responsibilities of the parties involved in the creative process. This article examines the key clauses to include in contracts to secure the use of AI in these processes.

Why use AI in a creative process?

AI offers numerous advantages for creators. It enables the generation of innovative ideas by analyzing vast amounts of data, thus opening up new creative possibilities. Additionally, AI increases productivity by automating repetitive tasks, such as content generation, design adjustments, or music composition. This efficiency allows creatives to focus on more strategic aspects of their work. AI also offers the ability to personalize works based on individual client needs, which is particularly useful in sectors such as fashion, marketing, and entertainment.

Despite these benefits, the use of AI in creative processes must be accompanied by legal precautions to avoid potential risks.

Risks associated with the use of AI in a creative process

One of the main risks lies in ownership and authorship issues. Determining who holds the rights to an AI-generated work is not always clear. In many jurisdictions, intellectual property law has not been designed for AI-generated works, which can lead to conflicts over copyright ownership.

The risks associated with using AI include:

• Ownership and authorship issues

Determining who owns the rights to an AI-generated work is a grey area. The creator of the AI or the user of the AI may claim ownership, but IP laws in many jurisdictions were not designed with AI in mind.

• Data privacy issues

AI often requires large datasets to function effectively. Using data without proper consent or failing to anonymize personal data could lead to violations of privacy laws, such as GDPR in Europe.

• Bias and ethical considerations

AI systems can perpetuate biases present in training data. AI-generated works may inadvertently reinforce stereotypes or fail to meet ethical standards, potentially leading to public backlash or legal consequences.

• Infringement risks

AI-generated content may unintentionally infringe on existing works, resulting in legal conflicts over copyright or trademark violations.

Who owns the rights to AI-generated content?

In traditional creative processes, the creator of a work holds the associated rights. However, in the case of AI, the situation is more complex. The creator of the AI tool, the user, or even a third party may claim ownership of the generated work.

Generally, ownership rights should be clearly defined in a contract. It should specify whether the AI user, the AI creator, or another party owns the rights to the generated works. It is also important to indicate how these rights can be transferred or licensed to avoid ambiguity or legal conflicts.

The uncertainty surrounding the rights to AI-generated content was recently illustrated by a landmark case: Getty Images v. Stability AI, dated June 9, 2025. In this case, Getty Images one of the world’s leading providers of licensed photography filed lawsuits against Stability AI, the creator of the generative model Stable Diffusion, before both UK and US courts.

Getty accuses Stability AI of having used, without authorization, several million of its copyright-protected images to train its AI model. The large-scale use of these materials some of which were reportedly recognizable in the AI-generated outputs, with certain visuals even displaying the “Getty Images” watermark lies at the heart of a complex legal dispute, based notably on claims of copyright infringement, trademark violation, and breach of the contractual terms governing access to Getty’s databases.

However, at the beginning of the hearing on June 9, 2025, Getty Images partially revised its procedural strategy by dropping its claims of direct copyright infringement before the UK courts. The action now focuses on three grounds: trademark infringement, passing off, and secondary liability arising from the availability of a generative model trained on protected works.This strategic shift reflects the legal difficulty of qualifying AI-generated images as direct infringements when they do not identically reproduce the source images. Nevertheless, the judges established an innovative judicial framework by acknowledging that AI models even if they do not literally store the works used in their training may still fall within the scope of the Copyright, Designs and Patents Act 1988 (CDPA) when they result in outputs that harm the rights holders.

Key clauses to secure the use of AI and avoid intellectual property conflicts

To secure the use of AI in a creative process, several clauses must be included in the contract to avoid legal conflicts concerning intellectual property.

4.1. Ownership and copyright

The contract must clearly specify who owns the copyright to AI-generated works. Additionally, it is important to determine under what conditions these rights are transferred, particularly after payment for the creative work. This clarity helps avoid disputes over ownership of creations.

4.2. Use of data and confidentiality

AI tools often require access to data for learning and functioning. The contract must specify the terms of data use, including consent, confidentiality, and personal data protection. It is crucial to comply with regulations such as GDPR to avoid legal risks related to data management.

4.3. Liability and infringement risks

The contract should also clearly define the responsibilities of the parties in the event of copyright infringement or violations. It should establish the conditions under which one party would be liable for damages or legal disputes related to AI-generated works. It is also important to specify guarantees regarding non-infringement to protect the interests of all parties involved.

4.4. Ethics and mitigating bias

To prevent the risk of bias or discrimination in AI-generated works, the contract may include a clause for regular audits of the AI’s output. It is crucial that the AI systems used adhere to ethical standards and avoid reinforcing stereotypes or prejudices, which could harm the company’s reputation and lead to legal consequences.

4.5. Confidentiality and non-disclosure

Given the sensitive nature of information related to AI and the generated works, it is essential to include confidentiality clauses in the contract. These clauses will protect sensitive information exchanged between the parties and ensure that no confidential data is disclosed without prior authorization.

Conclusion

Using AI in creative processes offers considerable opportunities but requires rigorous legal management to avoid intellectual property conflicts. By including necessary clauses regarding ownership, data use, liability, ethics, and confidentiality, parties can ensure that AI use is secure, transparent, and legally sound.

Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. Who owns the rights to AI-generated content?
Ownership typically depends on the terms of the contract, which may assign rights to the AI user, the AI creator, or another party.

2. What are the risks associated with using AI in creative processes?
Risks include ownership conflicts, data privacy violations, ethical concerns regarding AI biases, and potential IP infringements.

3. How can I avoid property conflicts related to AI?
It is important to clearly define ownership of copyright in the contract and ensure that the AI does not generate content that infringes existing rights.

4. What are the legal implications of using AI in creative processes?
Legal implications mainly concern intellectual property, data protection, liability for AI-generated results, and ethical considerations.

5. Can AI create works protected by copyright?
In many jurisdictions, works created by AI are not automatically protected by copyright unless a human author is involved in the creative process.

Introduction

In a rapidly evolving agricultural landscape, the creation of new plant varieties serves as a strategic tool for food sovereignty, agronomic innovation, and environmental sustainability. These varieties, the result of complex and lengthy scientific work, require tailored legal protection to secure breeders’ investments and ensure the traceability of seeds used in markets. The Plant Breeder’s Rights (PBR), is a form of exclusive right akin to a patent but specifically designed for plant innovations. It is governed by a normative framework harmonized at national, European, and international levels in France, by the Intellectual Property Code, in the European Union, by Regulation (EC) No. 2100/94 and internationally, by the UPOV Convention.

Criteria for obtaining a plant breeder’s right

1.1 Evaluating a plant variety: the four technical criteria
To obtain a COV, a variety must meet four key criteria: novelty, distinctness, uniformity, and stability.

• Novelty: The variety must not have been placed on the market or transferred to third parties within a specified time period. In France and the European Union, this period is one year, but it may extend to four years for non-EU countries, and even six years for certain perennial species like trees and vines.
• Distinctness: The variety must be distinct from any known variety at the time of the application. This distinction is based on one or more significant characteristics, such as morphological, phenological, or performance traits.
• Uniformity: The variety must be uniform in its essential characteristics, meaning its properties must be stable and reproduced consistently across generations.
• Stability: The variety must be stable, meaning its characteristics remain constant through multiple breeding cycles.
  All these criteria are validated through DHS tests for Distinctness, Homogeneity, and Stability, carried out by accredited organizations such as GEVES in France.

1.2 A compliant variety name

The deposited variety must bear a name that adheres to the standards set by UPOV. This name must be unique, neutral, and not misleading regarding the origin, nature, or quality of the variety. For instance, it should not contain laudatory terms, trademarks, or unsubstantiated geographical indications. INOV in France or CPVO at the European level may reject a non-compliant name and require the applicant to propose a new one.

1.3 Exceptions and exclusions

Certain varieties are excluded from protection. For example, farmer varieties or those already marketed before the filing are not eligible. Similarly, varieties without genetic traceability or those based on traditional knowledge cannot be protected. Moreover, varieties whose characteristics are already known or those not meeting technical criteria are also excluded from the procedure.

Filing procedure and costs for a plant breeder’s right

2.1 Strategic choice of protection mode: INOV, CPVO, or UPOV

The choice of protection system depends on the applicant’s business strategy. They may opt for national protection via INOV in France, which is ideal for local projects, or for community protection via CPVO, which is valid in all EU member states. Alternatively, an international system via UPOV allows the variety to be protected in several signatory countries, which is suitable for businesses aiming for global expansion.

2.2 Filing steps and technical examinations

The filing begins with submitting a complete dossier that includes a detailed description of the variety, its name, genealogy, and biological samples. Then, DHS tests are conducted to assess the distinctness, homogeneity, and stability of the variety. If the criteria are met, the application is published, and an opposition period is set. After this period ends, and provided no opposition has been raised, the certificate is issued and published in the official Bulletin.

2.3 Fees, timelines, and duration of protection

The filing fees for a COV generally range between 3,000 and 6,000 euros, depending on the species and the required tests. Protection typically lasts for 25 years and can be extended to 30 years for certain perennial species like vines, fruit trees, and potatoes. Processing a request can take between one and four years, depending on the crop and the chosen procedure.

Commercial valorization of a plant variety

3.1 Exploitation methods and seed licensing

The COV grants the holder exclusive exploitation rights over the variety. The holder can choose to produce and sell the seeds directly or license them to third parties. These licenses may be exclusive or non-exclusive, and may include contractual conditions regarding duration, territory, and production volumes.

3.2 Structuring partnerships and royalty mechanisms

Commercial valorization often involves partnerships with producers or agri-food industries, enabling investment pooling and accelerating commercialization. Royalties are typically based on the volume of seeds marketed and serve as a key economic lever to ensure the profitability of breeding efforts.

3.3 Scientific promotion through research projects and niche markets

Protected varieties can also be utilized in agronomic research programs to develop traits such as disease resistance or climate adaptability. This not only enhances their visibility but also promotes their adoption in specialized markets and for export.

Maintaining competitiveness of protected varieties

4.1 Progressive adaptation to climate change and agricultural demands

Varieties must now meet resilience criteria against climate change, while also meeting the demands of sustainable agriculture. Legal protection must be coupled with continuous agronomic evaluation to maintain the competitiveness of varieties in line with evolving agricultural needs.

4.2 Genetic innovation through digital tools and selective breeding regulations

Advances in genetics and the use of digital tools help accelerate the selection process for varieties. The UPOV exemption for selection also allows the use of protected varieties to create new, innovative varieties.

4.3 Developing seed sovereignty for responsible agriculture

The COV also plays a role in seed sovereignty policy by allowing states to reduce their dependency on foreign seeds and promoting locally adapted production that meets specific agricultural and environmental challenges.

Actions and remedies in case of infringement of protected plant breeder’s rights

5.1 Types of infringements

Unauthorized exploitation of a protected variety constitutes infringement. This includes the unlawful reproduction of seeds, unlicensed commercialization, and fraudulent use in a breeding program.

5.2 Civil, criminal, and customs sanctions

Article L623-25 and seq. of the Intellectual Property Code provides for civil sanctions, such as damage compensation, confiscation of infringing batches, and exploitation bans. In case of infringement, the holder can also seek criminal sanctions, with penalties including up to three years in prison and a fine of 300,000 euros, which may be doubled in case of repeat offenses. Customs measures can also be taken to detain illegally imported seeds.
A recent case illustrates these sanctions: in an Italian case, R.G.Dib. 1220/2024 the Tribunale ordinario di Nocera Inferiore sentenced the defendant to six months in prison and a 1,000-euro fine for infringing a protected plant variety, highlighting the severe sanctions against intellectual property violations related to plant breeding rights.

5.3 Enforcement methods for holders

To combat infringement, holders have several enforcement options, such as filing a lawsuit for infringement before the competent court, carrying out a seizure order with judicial authorization, or notifying customs services to activate border control measures.

Conclusion

The Plant Breeder’s Right is a crucial tool for the protection of innovations in the plant sector, ensuring legal security and enhancing the competitiveness of market players. To be fully effective, it is essential to understand the applicable legal framework and implement tailored strategies for valorization and defense against infringement.

Dreyfus & Associés supports plant industry stakeholders in protecting, valorizing, and defending their plant breeding rights in France, Europe, and internationally. Our expertise covers the entire lifecycle of the COV, from filing strategy to infringement actions.

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

FAQ

1. Duration of a plant breeder’s right
The certificate is valid for 25 years, or 30 years for certain species (vines, fruit trees, potatoes), with annual fees to maintain protection.

2. Can a patent and a plant breeder’s right be combined?
No, a single variety cannot be protected by both a patent and a COV, but a process for creating a variety can be patented independently of the COV.

3. Technical criteria for obtaining a COV
The variety must be novel, distinct, uniform, and stable, assessed through DHS tests conducted by accredited bodies like GEVES.

4. Reselling seeds from a protected variety
Reselling is strictly regulated. Only license holders or certain farmers can use farm-saved seeds; otherwise, it constitutes infringement.

5. What to do in case of infringement?
The holder can file an infringement action, request a seizure order, seek an injunction, or activate customs detention. Civil, criminal, and customs sanctions may apply.

Introduction

Domain names have become much more than simple Internet addresses: they are essential tools for visibility, image, and trust for companies. At the same time, this strategic importance has made domain names a prime target for counterfeiters, scammers, and impersonators of all kinds.

Infringements on trademarks through domain names, whether in the form of cybersquatting, phishing, or sophisticated commercial scams, are proliferating as technology makes them easier to implement, faster to execute, and harder to trace. These practices threaten the value of trademark portfolios, consumer safety, and corporate reputations.

In this context, it is crucial to understand the various forms of abuse, the legal remedies available to address them, and the importance of an active domain name monitoring strategy.

Understanding the main types of trademark infringement via domain names

1.1. Cybersquatting: hijacking a brand for speculative purposes

Cybersquatting involves registering a domain name corresponding to a trademark, with the intent to resell it to the rightful owner or benefit from its notoriety. This practice has become industrialised with the publication of public databases such as those of the EUIPO or USPTO, allowing some actors to automate targeted registrations immediately after a new trademark is published.

1.2. Typosquatting: typing errors as a fraud tool

Typosquatting is based on deliberate spelling variants or typing errors, exploiting user mistakes to redirect them to fraudulent sites or advertising pages. This technique is especially used to capture traffic for commercial purposes or to host malware.

For instance, a user typing “microsfot.com” instead of “microsoft.com” might be redirected to a site containing a virus or a fake update to download.

1.3. Phishing and spear phishing: digital identity theft

Phishing involves mimicking an official site to extract personal or banking data. The domain name used usually reproduces the brand or a credible variant. This practice is often paired with fraudulent emails that redirect to the fake site.

Spear phishing is more targeted, aimed at internal employees or business partners for fraudulent purposes (e.g. fake wire transfer requests).

For example, registering a fraudulent domain name mimicking a bank to host a cloned site asking the user to “update” their banking details.

1.4. Employment, order, or fake shop scams: complex schemes

Numerous fraudulent schemes now rely on domain names to give false legitimacy to fake e-commerce sites, recruitment platforms, or customer service portals. The domain name becomes a central tool of deception.

• Counterfeit sales websites or fake shops: sophisticated imitation of an official site to sell counterfeit products or obtain banking data.
• Identity theft and purchase order scams: domain names similar to procurement centres used to extract money or divert goods.

Responding effectively to the hijacking or abusive use of a domain name

2.1. Resorting to specialised out-of-Court procedures

Some administrative procedures allow for the deletion or transfer of a domain name without going through the courts. These are particularly useful when the infringement is clear and the domain name holder is difficult to locate or operates abroad.

• UDRP (Uniform Domain-Name Dispute-Resolution Policy)

Managed notably by the WIPO Arbitration and Mediation Center, this international procedure applies to most generic extensions (.com, .net, .org, etc.). It allows for the transfer or cancellation of a domain name when three conditions are met:

1. • The domain name is identical or confusingly similar to a prior trademark;
   • The registrant has no rights or legitimate interests in the domain name;
   • The domain name was registered and is being used in bad faith.

• Syreli (AFNIC)

This procedure applies to .fr domain names and is administered by AFNIC. It has the advantage of being fully digital, faster than a traditional trial, and results in a decision within two months.

• URS (Uniform Rapid Suspension System)

A simplified alternative to the UDRP, it targets clear-cut cases of cybersquatting. It is especially suitable for quickly suspending a domain name, without obtaining its transfer, when the infringement is blatant and well-documented.

• Cease and Desist Letter: a tool not to be overlooked

Sending a cease and desist letter formalises a request for withdrawal or transfer, demonstrating the prior rights and abusive nature of the use. This approach is often combined with technical notices (to registrars, hosts, or platforms). In simple cases, it can suffice to achieve a swift amicable resolution, particularly when the registrant is not an experienced professional.

2.2. Judicial actions: for serious or unresolved infringements

When out-of-court procedures fail or are not appropriate, legal action can be taken.

• Identifying the registrant: Article L.34-1 of the French Postal and Electronic Communications Code.

This provision allows, via summary proceedings, to obtain information from the registrar or hosting provider, lifting the veil on the identity of a domain name holder or site administrator.

• Trademark infringement or unfair competition actions :

If the domain name use infringes a registered trademark, a trademark infringement action is available. If the mark is not registered, it is still possible to act based on unfair competition or parasitism, by demonstrating abusive appropriation of another’s reputation.

2.3. Engaging the right intermediaries

In the technical domain name ecosystem, third-party actors play a key role in putting an end to infringements.

• The Registrar : They manage domain name reservations. When served with a UDRP decision or court injunction, they can block, suspend, or transfer the domain.
• The Hosting Provider : They host the content displayed under the domain name. In case of unlawful content, they can be served with a formal notice to remove it, under penalty of liability.

2.4. Gathering evidence: a prerequisite for any action

An effective response requires thorough documentation of the facts. The following should be collected and preserved as soon as the infringement is detected:

• Whois Data: to identify the holder or technical contact of the domain name.
• Screenshots of the infringing site, including the full URL, date, time, and infringing visual or textual elements.
• Fraudulent emails or technical logs: in case of phishing or misuse of email servers configured on the infringing domain.
• Correspondence with technical providers: can demonstrate inaction from a host or registrar, useful in liability proceedings.

Implementing proactive monitoring to protect assets over the long term

3.1. Domain name watch services to prevent infringements

Anticipate before damage occurs

Automated domain name monitoring relies on alert systems analysing in real time new creations in WHOIS databases, DNS registration bases, or root server zones. These tools signal domain registrations that closely resemble a protected trademark:

• Addition or removal of a character
• Letter inversion or homographs
• Registration in an unusual extension (.shop, .buzz, .store, etc.)

Detecting a malicious domain name upon registration, before a site is put online or promoted through search engines, enables preventive action that is often quicker and less costly.

3.2. Implementing a global defensive strategy: monitor, register, neutralise

Register strategic names in advance

An effective strategy combines monitoring and registrations. It is not about registering all possible domain names, but targeting the most sensitive extensions and variants:

• High-traffic generic extensions: .com, .net, .shop, .store, .vip
• Local extensions of key markets: .fr, .de, .cn
• Extensions prone to misuse: .xyz, .top, .online, .buzz

Defensive registrations help secure critical names before third parties can exploit them. This approach is especially useful during product launches, major events, or brand expansions.

Document to act more effectively

A solid monitoring strategy is supported by an evidence system: each alert must be documented by a screenshot, a timestamp, or a source code extraction if needed, to serve as a basis for UDRP or judicial action.

Conclusion

An effective brand strategy requires proactive domain name governance
in light of the growing scale of digital infringements, it has become essential to integrate domain names at the heart of your trademark protection strategy. Identify, respond, anticipate: these are the three steps to effective defence, based on appropriate legal tools, collaboration with the right technical actors, and continuous monitoring.

Dreyfus & Associés has been supporting companies of all sizes for over 20 years in the strategic, defensive, and contentious management of their domain name portfolios.

The firm works in partnership with a global network of Intellectual Property lawyers.

Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

1. What is cybersquatting?
It is the abusive registration of a domain name identical or similar to a trademark, with the intention of reselling it or deriving undue advantage.

2. What procedures are available to recover a domain name?
The UDRP (international) or Syreli (for .fr) procedures allow for the transfer or deletion of the domain name.

3. How can I find out who registered a domain name?
By consulting the Whois service, although some data may be hidden. Further (judicial) actions may be necessary.

4. What if the registrar or host refuses to act?
Turn to judicial or administrative procedures, depending on the case. Article L.34-1 of the French CPCE can provide for investigatory measures.

5. How can fraudulent domain names be detected?
Through automated monitoring and alert tools that flag registrations similar to your trademarks.

Introduction

Under French law, serious use of a trademark is a key requirement for maintaining its validity. According to Article L. 714-5 of the Intellectual Property Code, a trademark may be revoked if it has not been used seriously for the goods or services for which it was registered for a continuous period of five years. This requirement ensures that trademarks are not merely reserved without any intention for commercial use, freeing up distinctive signs for other market players.

However, the question arises: Does the use of a trademark in a specific subcategory suffice to maintain its protection for the entire category? This issue introduces the concept of autonomous subcategories, a concept that has been clarified in recent jurisprudence.

Appreciating the use of a trademark under French law

1.1. Definition of serious use

Serious use of a trademark involves real and substantial exploitation on the market, aiming to maintain or create market share for the designated products or services. It is not simply symbolic or internal use within the company. Jurisprudence has clarified that the use must be effective, continuous, and genuinely intended for commercial exploitation of the concerned products or services.

1.2. Means of proving use

The trademark holder may provide evidence of serious use by any means, such as:

• Commercial documents: invoices, purchase orders, distribution contracts.
• Advertising materials: brochures, websites, advertisements.
• Testimonies: statements from business partners or clients.
• Market presence: participation in trade shows, presence in retail outlets.

1.3. Consequences of non-use

If serious use is not demonstrated, the holder risks the revocation of their rights over the trademark for the non-exploited products or services. This revocation can be total or partial, depending on whether the use occurred for the entire range or just part of the products or services.

Autonomous subcategories: A jurisprudential concept

2.1. Definition and identification

An autonomous subcategory is a subdivision within a larger category of products or services that has internal coherence and is perceived as distinct by consumers. For example, within the category of “clothing,” “sportswear“ may constitute an autonomous subcategory if it is seen as such by the public.

2.2. Criteria for distinction

To be considered autonomous, several criteria are taken into account:

• Consumer perception: Is the subcategory recognized as distinct by the public?
• Specific characteristics: Does the subcategory have unique features (design, use, distribution)?
• Commercial autonomy: Does the subcategory have its own marketing and distribution strategy?

2.3. Relevant jurisprudence

The Court of Cassation, in a ruling from May 14, 2025 (n° 23-21.296), reiterated that when the trademark holder proves use only for a specific activity, the judge must verify whether that activity constitutes an autonomous subcategory. If so, the use will only count for this subcategory, and not for the entire broader category.

Risks and impacts of the autonomous subcategories concept

3.1. Risk of partial revocation

The main risk associated with recognizing autonomous subcategories is partial revocation of the trademark. If the holder does not provide proof of serious use for an autonomous subcategory, they risk losing their rights over that subcategory, even if the trademark is used for other products or services within the same category.

3.2. Impact on brand strategy

This concept encourages companies to:

• Precisely define subcategories when registering the trademark.
• Ensure active and continuous use for each subcategory.
• Carefully document the use of the trademark for each subcategory.

3.3. Legal consequences

In case of partial revocation, the holder loses the protection of the trademark for the non-exploited products or services, which could allow competitors to use similar signs for those products or services.

How to avoid revocation for lack of serious use in an autonomous subcategory?

4.1. Preventive strategies

To avoid revocation, it is recommended to:

• Register the trademark for specific subcategories rather than overly broad categories.
• Actively exploit the trademark for each subcategory, ensuring its market presence.
• Collect and maintain proof of use for each subcategory (sales, advertisements, contracts).

4.2. In case of dispute

If an action for revocation is initiated, the holder can:

• Provide proof of use for each concerned subcategory.
• Demonstrate the existence of an autonomous subcategory and justify its use.
• Argue against the relevance of subdividing into autonomous subcategories.

4.3. The role of an industrial property counsel

A specialized professional can assist the company in:

• Assessing risks related to trademark use.
• Drafting product and service classes during registration.
• Developing a usage strategy and documenting the use.

Conclusion

The recognition of autonomous subcategories under French law imposes increased vigilance on trademark holders regarding the exploitation of their rights. It is essential to define subcategories precisely during registration, ensure active use for each, and maintain proof of use. In cases of doubt or dispute, it is strongly advised to consult an industrial property expert to safeguard rights and avoid revocation risks.

Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

Introduction

The SkyKick UK Ltd v. Sky Ltd (UKSC/2021/0181) ruling, rendered by the UK Supreme Court on November 13, 2024, clarified the concept of “bad faith” in trademark registration. The case raised the issue of whether trademarks registered for overly broad products and services, with no connection to the actual business activities, could be invalidated for bad faith. The ruling resulted in a landmark decision on how bad faith is assessed in trademark registrations, leading the UKIPO to revise its guidelines.

In response to this decision, the UKIPO published an amendment to its practices on June 27, 2025, establishing stricter criteria for reviewing trademark applications, particularly concerning specifications deemed excessively broad. This article examines the UKIPO’s new guidelines and their impact on the trademark registration process.

Examination criteria for specifications by the UKIPO

1.1 Definition of an overly broad specification

The UKIPO considers a specification to be too broad when it includes an excessive list of products or services that are not directly related to the applicant’s actual or projected business activities. For instance, the UKIPO will deem an application too broad if it covers all 45 Nice classes or vague terms such as “software,” “clothing,” or “food products” without specifying subcategories or details of the intended products or services.
This approach aims to prevent trademarks from being registered defensively or abusively for products or services that the applicant will never actually use.

1.2 Consequences of an overly broad specification

When the UKIPO identifies an overly broad specification, several actions may be taken:
• Rejection of the application: When the specification is deemed too broad and the applicant cannot prove a genuine intention to use the trademark.
• Restriction of the specification: If the specification is considered too broad but could be made acceptable by narrowing it down, the UKIPO may ask the applicant to restrict the claimed products or services.
• Verification of the intention to use: The applicant may be required to provide concrete evidence of their genuine intention to use the trademark for the specified products and services.
This approach ensures that trademark applications are based on genuine business intentions, rather than aiming to monopolize broad terms.

Proving a genuine intention to use

2.1 Evidence accepted by the UKIPO

The UKIPO requires applicants to prove their genuine intention to use the trademark for the specified products and services. This can be achieved by providing commercial documents such as :
• Business plans detailing the intended use of the trademark.
• Commercial contracts or agreements with business partners.
• Proof of sales or advertising campaigns showing the intent to use the trademark for the claimed products or services.

2.2 Role of commercial documentation

Commercial documentation plays a crucial role in justifying the intended use of the trademark. If an applicant cannot provide evidence of intended use or a viable commercial project, the UKIPO may consider that the application was filed in bad faith. As a result, insufficient documentation may lead to the rejection of the application.

Partial cancellation of a trademark for bad faith

3.1 Process of partial cancellation

If part of the specification is deemed to have been filed in bad faith, the UKIPO can cancel only that part of the registration while maintaining trademark protection for the other products or services where the intention to use is proven. This partial cancellation ensures that only the portions of the application based on genuine intent remain valid.

3.2 Examples of partial cancellation

For example, if a trademark is registered for “pharmaceutical products” and “clothing,” but the applicant only intends to use the trademark for pharmaceutical products, the UKIPO may cancel the “clothing” portion for bad faith while maintaining protection for the pharmaceutical products.

Application of the guidelines to existing trademarks

4.1 Impact on existing trademarks

The new guidelines also apply to already registered trademarks. Trademark holders must ensure that their registrations comply with the genuine intention to use criteria defined by the UKIPO. If an existing trademark is found to have been filed in bad faith, it may be canceled, in whole or in part.

4.2 Review of existing registrations

Holders of existing trademarks should consider conducting an audit of their registrations to verify compliance with the new guidelines. This involves reassessing the specifications of their trademarks to ensure they reflect a genuine business intent.

Bad faith raised by the UKIPO without third-party intervention

5.1 Proactive examination of bad faith

The UKIPO may raise the issue of bad faith proactively when reviewing an application for registration. This means that it can identify manifestly abusive applications and reject them, even without a third-party opposition (such as from a competitor). The UKIPO can now act more strictly from the outset, thereby preventing abuses.

5.2 Consequences of an ex officio objection

If the UKIPO raises an objection for bad faith, the applicant will need to provide justifications regarding their genuine intention to use the trademark for the specified products or services. If no satisfactory justification is provided, the UKIPO may reject the registration application.

Conclusion

The UKIPO’s new guidelines following the SkyKick ruling introduce stricter requirements for trademark registration. Applicants must prove a genuine intention to use their trademark for the designated products and services, especially when specifications are deemed too broad. Existing trademark holders must also review their registrations to ensure they meet these revised requirements. These revisions aim to strengthen the integrity of the trademark system and prevent abuses.

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