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Brexit and intellectual property : Ensuring the continuity of rights in trademarks and designs

nathalie dreyfus Written by Nathalie Dreyfus24/03/2020

Introduction : The legal breakup after Brexit

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

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

Trademarks after Brexit : what has changed ?

2.1 Automatic conversion of EU trademarks into UK rights

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

2.2 European legislative reforms after Brexit

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

2.3 Post-Brexit UK legislative reforms

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

2.4 EU Trademarks still under registration on December 31, 2020

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

Designs after Brexit: The new rules in the United Kingdom

3.1 Automatic conversion of registered Community designs

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

 

designs brexit

Steps to ensure protection of rights in the UK after Brexit

4.1 Verification of existing registrations and separate registration

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

4.2 Monitoring the use of rights : Proof of genuine use

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

4.3 Defending intellectual property rights

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

Conclusion : protecting your rights after Brexit

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

 

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

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

FAQ

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

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

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

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

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

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Fashion ID and Facebook : joint responsibility subject to debate

nathalie dreyfus Written by Nathalie Dreyfus13/08/2019

Introduction

The integration of third-party social plugins on professional websites has become a standard feature of digital strategies. Sharing buttons, advertising pixels, and analytics tools are widely perceived as levers for audience growth and commercial performance. However, these technical choices now entail legal responsibility for economic operators, particularly under European personal data protection law.

The Fashion ID judgment, handed down by the Court of Justice of the European Union, the July 19, 2019, constitutes a structuring decision in this respect. By recognising, under certain conditions, joint responsibility between a website publisher and Facebook as a result of integrating the “Like” button, the Court profoundly reshaped the analysis of digital chains of responsibility.

This solution, grounded in a functional and pragmatic approach, nevertheless continues to give rise to doctrinal and practical debate as to its actual scope and its operational implications.

The Fashion ID decision : a landmark in European data protection law

In the Fashion ID case, the company operating an online retail website had integrated Facebook’s “Like” button. This plugin triggered, as soon as the page loaded, the automatic transmission of visitors’ personal data (IP address, browsing data), regardless of any voluntary interaction with the social network.

The central question concerned Fashion ID’s legal qualification : could it be regarded as a controller even though it neither had access to the transmitted data nor exercised control over their subsequent use by Facebook ?

The Court adopted a resolutely concrete approach. It held that the voluntary integration of the social plugin, for purposes of visibility and commercial promotion, was sufficient to characterise participation in determining the purposes and means of processing, at least for the data-collection phase.

Fashion ID was therefore classified as a joint controller, alongside Facebook, for that specific phase of processing.

The concept of joint controllership applied to social plugins

The Court confirms that joint controllership does not require equality of roles or identical access to data. It is based on a functional analysis, taking into account the effective involvement of each actor in the processing chain.

Accordingly, a website may be deemed a joint controller where it :

• deliberately chooses to integrate a third-party tool ;
• derives an economic or marketing benefit from that integration ;
• facilitates, even indirectly, the collection of personal data.

This analysis aligns with the positions adopted by European data protection authorities, in particular the recommendations issued by the CNIL regarding trackers and third-party tools.

The Court is careful to specify that joint responsibility is neither global nor unlimited. It is strictly confined to the operations over which the website publisher exercises real influence, namely the initial collection and transmission of data.

web publisher liability

The limits set by the Court : a strictly circumscribed responsibility

One of the key contributions of the Fashion ID decision lies in the clear delineation of responsibility. The website publisher is not held responsible for subsequent processing carried out by Facebook, insofar as it does not determine either the purposes or the modalities thereof.

This clarification is essential to preserving a balance between data protection and legal certainty for economic operators.

The decision does not establish a principle of automatic responsibility for any integration of a third-party module. Each situation must be assessed on a case-by-case basis, taking into account the reality of data flows, the intended purpose, and the degree of involvement of the website publisher.

Practical takeaways for companies and trademarks

Website publishers must clearly inform users of data collection through third-party modules, identifying joint controllers and the purposes pursued.

This transparency requirement is fully consistent with the General Data Protection Regulation of April 27, 2016 (GDPR) framework and the CNIL’s guidelines.

Where the data collected are not strictly necessary for the operation of the website, prior consent is required. Such consent must be effective, specific, and technically enforced, which often entails revisiting the default settings of social plugins.

Best practices and risk-management strategies

To limit legal exposure, companies may usefully implement the following measures :

• regular audits of integrated tools and plugins ;
• removal of non-essential modules ;
• use of deferred loading solutions (lazy loading) ;
• contractual framing of relationships with third-party providers ;
• documentation of technical and legal choices made.

Conclusion

The Fashion ID case clearly illustrates how the law now addresses digital architectures. Joint responsibility is no longer a theoretical construct, but a concrete operational risk for companies, particularly those whose reputation relies on their digital presence.

Dreyfus & Associés law firm assists assists its clients in managing complex intellectual property cases, ensuring GDPR compliance, and providing legal protection for their digital strategies.

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

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

Q&A

1. Can joint responsibility be established in the absence of a contractual relationship with Facebook ?
Yes. The existence or absence of a formal contract with Facebook is not decisive. The Court reasons outside any contractual logic, relying exclusively on the facts and the reality of data flows. A website may therefore be classified as a joint controller even if it has entered into no specific agreement with the provider of the social plugin.

2. What concrete risks arise in the event of an inspection by the CNIL or a European authority ?
The risks are multiple and cumulative: formal notice, injunctions to comply, administrative fines, as well as potential compensation claims by users. Beyond the financial aspect, reputational risk is often decisive, particularly for exposed trademarks or those operating in sensitive sectors.

3. Does removing the social plugin eliminate all legal risk ?
Not necessarily. Removal puts an end to future risk, but it does not erase past processing. Authorities may examine previous practices, especially where data were collected without proper information or valid consent. Hence the importance of documenting audits carried out and corrective measures implemented.

4. Can this case law extend to tools other than social networks ?
Yes, and this is a central point. The Fashion ID reasoning goes far beyond “Like” buttons alone. It is transposable to other technologies such as advertising pixels, audience-measurement tools, chat services, video players, or interactive maps, insofar as they entail the transmission of personal data to third parties.

5. How should joint controllership be distinguished from processing on behalf of a controller under the GDPR ?
The distinction is fundamental. A processor acts on behalf of the controller and in accordance with its instructions, which was not the case in Fashion ID. Where a third party pursues its own purposes, qualification as a processor is excluded.

6. Can a publisher rely on technical complexity to escape responsibility ?
No. The Court adopts a clear position : technical complexity does not constitute grounds for exemption. Companies are required to understand, at least in broad terms, the legal effects of the tools they integrate. This requirement reinforces the need for legal support upstream of technical decisions.

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

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Generic trademarks: good practices to avoid ‘genericide’

nathalie dreyfus Written by Nathalie Dreyfus09/08/2019

Protecting intellectual property assets is a major concern of companies. Trademarks are a subject of immediate interest, because they allow consumers to associate products and/or services with a specific company. The company is therefore more easily recognized and is more likely to see customers buy its products.

 

Once a trademark has been duly registered, a company can start to exploit it.  That is when we must be most vigilant. Indeed, a trademark may lose its distinctiveness after its registration, by becoming a generic trademark.

 

What is a generic trademark?

 

Put simply, a generic trademark is one that has become “The common name in trade for a product or service” One of the main criteria for the validity of a trademark is its distinctiveness (Article L. 711-2 of the French Intellectual Property Code). Under the article L. 714-6 of the French Intellectual Property Code, a generic trademark is devoid of distinctiveness because it has become “The common name in trade for a product or service”.

 

In other words, a generic trademark is a trademark that has become a common term for a type of product or service. It is used by both consumers and competitors of the trademark to refer to the product or service no matter by whom it has been provided. As a victim of its success, the trademark no longer enables consumers to identify products and services as coming from the company concerned. It falls therefore into the public domain.

 

As such, the company that created the trademark loses its exclusive right of exploitation. It will no longer be able to oppose the use of its trademark by third parties who seek to use it as the descriptive or ‘generic’ name of the product or service for which it has become famous. This is called genericide of a trademark.

 

Under the aforementioned article L. 714-6, an action for revocation or cancellation for genericide of a trademark that became generic requires two conditions:

– the trademark must have become the common name of the product or service;

– such use must be caused by the trademark owner, namely mostly his inaction.

 

Hence, the need for a company to act effectively against any use of its trademark as a generic term. If the owner acts effectively against any generic use, the trademark will continue to be protected by law.

 

Good practices to prevent a trademark from becoming generic

 

Acting before any commercialization, is the most effective way to prevent a trademark from becoming generic. It is also advisable not to misuse the trademark later on.

 

If you have created a totally new product or seek to become a brand leader in a new market, it is imperative to create – or use -a term to designate the new product, as there is a strong risk of confusion between the trademark and the product. For example, Apple’s trademark is iPhone, and the product to which it is applied is a “smartphone”.  Similarly, if a generic term exists but is particularly complex, it is useful to provide a simpler term, where your trademark is the market leader. It is also recommended to use the term defined in this way in agreements with third parties (e.g. letter of commitment, coexistence agreement, etc.).

 

In addition, the trademark must be used correctly in all circumstances, both externally and internally.

 

The use of the trademark must be particularly monitored during advertising campaigns. The trademark should be distinguished from the surrounding text promoting the marketed product or service by placing it in BLOCK LETTERS or, by Capitalising the first letter.

Using the trademark as a noun makes it more likely to be confused as the generic name. This practice should be discarded in favour of using it as an adjective. For example; “a Kleenex handkerchief” rather than “a Kleenex”.

Another good practice is to use the ® symbol or the ™ symbol. Although the latter have no legal value in France unlike in the United States, their use on the market is common. Promoting the trademark as an asset belonging to the company discouraging its use as a common term.

 

A trademark becomes generic mainly because of its misuse by the public. This misuse is not necessarily the result of an intend to harm. As such, it is recommended to carry out advertising campaigns aimed at consumers promoting correct use in order to avoid misuse. Preparing written standards defining the correct use of the trademark that can be easily distributed to third parties (licensees, consumers, etc.) also participates to this public education.

Avoiding misuse of the trademark also requires protection against abusive use of the trademark by third parties. It is therefore necessary to monitor product and service descriptions for new trademark applications and press publications mentioning the trademark.

 

Finally, because a trademark may be declared generic as a result of the owner’s actions or lack of action, it is in the company’s best interest to ensure that it can prove that it has taken steps to avoid the trademark becoming generic. In this respect, marketing files (advertising costs, unsolicited mentions in the press, etc.), letters of formal notice, summonses or even court decisions are all evidence to be kept.

 

In short, a potentially generic trademark remains protectable under trademark law if its owner has enforced actions against its misuse and gathered supporting evidences to prove that extent.

 

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.

FAQ

What is a generic trademark?
A trademark that, through being used as a common name to designate a product or service, loses its distinctive function and falls into the public domain.

Can a trademark be protected against genericide?
Yes, by monitoring its use, educating the public and distributors, and ensuring it is always perceived as a trademark and not as a common name.

Can a generic trademark be recovered?
No, once a trademark has become generic and lost its legal protection, it is very difficult — if not impossible — to recover it as a registered trademark.

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Disputes regarding domain names <.CN> and <.中国> : it is now possible to act before the WIPO Mediation and Arbitration Centre.

nathalie dreyfus Written by Nathalie Dreyfus09/08/2019

The China Internet Network Information Center (CNNIC), registry of the <.CN> and <.中国> ccTLDs, has designated WIPO to provide dispute resolution services under the China ccTLD Dispute Resolution Policy. Disputes in relation to these ccTLDs may be filed with WIPO from August 1, 2019.

The <.CN> Policy is ONLY applicable to <.CN> and <.中国> domain names that have been registered for less than three years.

This Policy applies to <.CN> and <.中国>domain names that are identical or confusingly similar, not only to a mark, but to any “name” in which the complainant has civil rights or interests (.CN Policy, article 8(a)), whereas the UDRP is limited to the protection of trademark rights.

It is sufficient for the complainant to prove that either registration or use of the disputed domain name is in bad faith, whereas the UDRP requires the complainant to prove both elements.

The appeal jurisdiction belongs to the Courts of China or the arbitration Chinese institution, and the proceedings language will be Chinese (unless otherwise agreed by the parties or determined by the Panel).

This adds to the over 75 other ccTLDs for which trademark owners can rely on WIPO’s dispute resolution services.

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Social media and online reviews: How to defend against unfair competition?

nathalie dreyfus Written by Nathalie Dreyfus05/08/2019

Introduction

Social media and online reviews now constitute a decisive factor in consumers’ purchasing decisions and in shaping a company’s overall reputation. While this increased visibility represents a strategic opportunity, it also exposes economic operators to practices of unfair competition online, the effects of which may be immediate and particularly damaging. It is no longer uncommon to observe organized denigration campaigns, the publication of fraudulent reviews, or strategies aimed at artificially undermining a competitor’s reputation.

In this context, it is essential for any business to understand the applicable legal mechanisms and to implement an effective strategy to defend against harm to its online reputation.

Understanding unfair competition on social media

Unfair competition cannot be reduced to any wrongful conduct causing harm to a competitor. It falls within the general framework of civil liability and requires proof of fault, loss, and a causal link between them. It serves to sanction conduct that is contrary to fair commercial practice where such conduct infringes the interests of an economic operator.

When applied to the digital environment, this legal classification takes on increased significance due to the rapid dissemination of information and its direct impact on corporate reputation. Social media platforms are no longer merely communication tools: they constitute a competitive environment in which commercial practices may be diverted for unlawful purposes.

One of the main challenges lies in the often fragmented and anonymous nature of such conduct. A series of negative reviews, seemingly isolated, may in fact result from a coordinated strategy. This dispersion of responsibility complicates the identification of the perpetrators, but does not preclude the legal characterization of the conduct where fault and damage can be established.

Identifying unlawful practices related to online reviews

One of the most common forms of misconduct is commercial disparagement, namely the dissemination of information likely to cast discredit on a product or service marketed by another undertaking, regardless of the absence of direct and actual competition between the parties, where that information does not concern a matter of public interest, lacks a sufficient factual basis, and is not expressed in measured terms. This analysis is consistently confirmed by the courts (French Supreme Court, Commercial Chamber, January 9, 2019, No. 17-18.350 ; French Supreme Court, Commercial Chamber, March 4, 2020, No. 18-15.651).

On digital platforms, this often takes the form of misleading or exaggerated reviews intended to divert customers. Case law holds that “the disclosure of information likely to discredit a competitor constitutes disparagement, regardless of whether such information is accurate” (French Supreme Court, Commercial Chamber, September 24, 2013, No. 12-19.790).

Fake consumer reviews represent another widespread form of unfair competition. Where a review does not reflect a genuine customer experience or is manipulated for commercial purposes, it may qualify as a misleading commercial practice. French authorities have strengthened their scrutiny in this area, recognizing that such conduct undermines market fairness and consumer trust. The directorate general for competition, consumer affairs and fraud control (DGCCRF) has notably reported that 74% of internet users have already refrained from purchasing a product due to negative comments or reviews.

Legal grounds for effective action

Article 1240 of the French Civil Code constitutes the primary legal basis for an action against unfair competition, allowing civil liability to be established for any fault causing damage. Its flexibility enables it to encompass a wide range of situations, including those arising from digital technologies.

In addition, Article L121-1 of the French Consumer Code strictly regulates unfair commercial practices.

Article 29 of the French Law of July 29, 1881 on freedom of the press  may also apply where statements harm the honor or reputation of a company. The legal classification of the facts is crucial, as it determines both the applicable procedure and the relevant limitation periods.

In this respect, it is essential to distinguish between disparagement and defamation. Disparagement targets a competitor’s products or services, whereas defamation concerns damage to the reputation of a legal or natural person. The French Supreme Court has further clarified the circumstances in which freedom of expression may preclude a finding of defamation. Where the statements form part of a debate of general interest and are based on a sufficient factual foundation, the courts assess their scope with a degree of flexibility and may accordingly recognize the author’s good faith (French Supreme Court, Criminal Chamber, January 7, 2020, No. 18-85.159).

This distinction, although technical, is strategically important in litigation.

legal grounds action

New sanctions for fake online reviews

While commercial disparagement and misleading commercial practices have traditionally served as legal grounds to address excessively negative or false reviews, the French legislature has enacted specific provisions to regulate fake online reviews.

In this context, three implementing decrees of the French Law for a Digital Republic entered into force on January 1, 2018. Now codified, in particular, in Article L111-7-2 of the French Consumer Code, these provisions require operators engaged in the collection, moderation, or publication of online consumer reviews to provide fair, clear, and transparent information regarding the processing and publication of such reviews.

In particular, platforms must indicate, in proximity to the reviews, the date of publication, the date of the relevant consumer experience, and whether or not a review verification process is in place. These provisions replace the former voluntary adherence to the AFNOR standard, which was intended to ensure the reliability of online reviews.

Under French law, the publication or purchase of fake reviews is generally classified as a misleading commercial practice.

Pursuant to Article L132-2 of the French Consumer Code, offenders face up to two years’ imprisonment and a €300,000 fine. These penalties may be increased depending on the benefits gained, reaching up to 10% of the average annual turnover or 50% of the advertising expenditure linked to the practice. When the offence is committed online, penalties are aggravated and may rise to five years’ imprisonment and a €750,000 fine, along with additional sanctions such as bans on conducting business or managing a company.

In parallel, platforms hosting reviews must comply with specific transparency obligations regarding how reviews are collected, processed and displayed. Failure to do so may result in administrative measures, including injunctions and fines imposed by the French authority (DGCCRF).

Finally, affected businesses may bring civil actions under Article 1240 of the French Civil Code to obtain compensation for financial and reputational harm.

These new obligations reflect a strengthened regulatory framework in this area. They demonstrate that, while unfair competition law has long provided a useful legal basis, the widespread nature of fake reviews has led to the adoption of specific rules aimed at better protecting both businesses and consumers.

Practical strategies for prevention and defense

Protection against unfair competition online primarily requires a proactive approach. Implementing ongoing monitoring allows for the rapid identification of harmful content and timely action before lasting damage occurs.

A public response may be considered in order to reassure clients and preserve the company’s image; however, it must be carefully crafted to avoid exacerbating the situation. At the same time, legal steps may be taken, including issuing a formal notice or notifying platforms in order to obtain the removal of unlawful content.

In more serious cases, judicial proceedings may be necessary. Summary proceedings (référé) allow for the swift removal of harmful content, while proceedings on the merits enable the recovery of damages. The effectiveness of such actions depends on thorough preparation and a detailed analysis of the available evidence.

Evidence and procedures: securing your claim

The establishment of a robust evidentiary record is central to any litigation strategy. It is essential to preserve accurate records of the disputed content, notably through a bailiff’s report (constat d’huissier), which ensures the legal validity of the evidence collected and enhances its reliability (Paris Court of Appeal, July 2, 2010, RG No. 09/12757). While screenshots may be useful, they should be supplemented by technical evidence capable of establishing the origin and dissemination of the content.

Timeliness is also a critical factor. In certain cases, limitation periods are particularly short, requiring immediate action upon discovery of the facts. Delayed action may not only aggravate the damage but also compromise the prospects of success.

Conclusion

Social media and online reviews constitute a fully-fledged competitive arena in which traditional legal rules are applied in a renewed context. The proliferation of unfair competition practices online requires businesses to adopt a proactive and structured approach, combining monitoring, legal analysis, and targeted action.

The protection of online reputation cannot be addressed through isolated responses but must form part of a comprehensive risk management strategy. In this context, the involvement of legal professionals ensures the effectiveness of the measures taken and the long-term protection of the company’s market position.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. Can a customer review give rise to liability even if posted on social media?
Yes. Where a review goes beyond a mere opinion and becomes excessive or misleading, it may engage the civil liability of its author, even when published on a third-party platform.

2. Can a company be held liable for reviews posted by its employees?
Liability may arise where a connection with the company is established, particularly in cases involving internal instructions or coordinated strategies aimed at harming a competitor.

3. What are the risks for a company posting fake reviews?
In addition to civil liability, such practices may lead to administrative and criminal penalties, as well as significant reputational damage if publicly exposed.

4. Is it possible to take action against a competitor established abroad?
Yes, subject to certain conditions, particularly where the damage is suffered in France. International cooperation mechanisms may be used to initiate proceedings.

5. Do platforms have an obligation to verify the authenticity of reviews?
No. They are not required to verify reviews or to generally monitor user-generated content. Their liability may arise if they fail to act after being notified of manifestly unlawful content.

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.

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Between unfair commercial use and infringement of a reputed trademark: the fate of an identical brand name

nathalie dreyfus Written by Nathalie Dreyfus04/12/2018

 

In a decision of 10 July 2018 (no. 16-23694), the judges of cassation clarified the criteria for assessing unfair commercial use as well as the concept of just cause with respect to the usage of a well-known trademark, all within the scope of the disputed employ of the Taittinger surname. The affair opposes a member of the Taittinger family and the company Taittinger CCVC which acquired shares in the family-run company. For the Taittinger family sold all of the shares of this company, which owns a brand of champagne of the same name. One of the clauses in the transfer agreement was a hold harmless clause which stipulated that the members of the family undertook not to use the “TAITTINGER” trademark to designate products that would be in competition with the transferred business, namely the marketing of champagne. Later, one of the members of the Taittinger family filed the trademark “Virginie T” to designate various products and in particular champagne. To promote her activity, the applicant reserved the domain name but also several names reproducing her surname in full, including and . These latter redirect to the website attached to the domain name , where, moreover, the name Taittinger appears a number of times. As a consequence, Taittinger CCVC invoked the use of the Taittinger sign to promote and sell the champagne called “Virginie T” but also the “implementation of communication systematically oriented on the surname” Taittinger and summonsed the owner of the “Virginie T” trademark on the basis of breach of the transfer of securities contract, infringement of the reputed trademark “TAITTINGER” and unfair commercial use

 

The hold harmless (against the actions of the seller) clause 

While this point does not constitute the heart of the judgement, it nonetheless provides clarification on the scope of a mandate within the framework of the sale of securities. In the case at hand, the owner of the “Virginie T” trademark had mandated her father, with a substitution option, that he had moreover exercised, to sell her shares to Taittinger CCVC. In this respect, the Court of appeal had convicted Mrs Taittinger for having violated the hold harmless clause. The Supreme court of appeal recalled that the mandate encompasses only administrative acts, the agent can do nothing beyond what is included in their mandate. If the sale mandate authorised the agent to “subscribe to any undertaking or guarantee”, this did not imply the power to grant a prohibition or limitation on the principal’s use of the surname insofar as it constitutes a disposal of assets. The Supreme court of appeal therefore censored the judgement of the Court of appeal on this point.

 

Infringement of the reputed “Taittinger” trademark

One of the two main contributions of the judgement of 10 July 2018 lies in the appreciation of the concept of just cause vis-à-vis the use of a reputed trademark. Taittinger CCVC invoked article L713-5 of the Intellectual Property Code which stipulates that “the reproduction or imitation of a well-known trademark for products or services not similar to those designated in registration engages the legal liability of the author if it could be prejudicial to the owner of the trademark or if this reproduction or imitation constitutes an unjustified exploitation of the trademark”. While the reputation of the “TAITTINGER” trademark is not in dispute, Virginie Taittinger replied however by invoking the exception of just cause taken from article 5, 2° of the European directive 89/104/EEC of 21 December 1999 and in the light of which the French judge must interpret the French legislation. Consequently, the Court of appeal noted that the consumer was led to establish a link between the trademark transferred and invoked and the promotion of the products of Virginie Taittinger. However, the Court of appeal did not convict Ms Taittinger insofar as, recalling her family origin, she was not taking unfair advantage of the reputation of the “TAITTINGER” trademark, nor did she prejudice its distinctive value. The Court had then added that her name sufficed to identify her career path or her past experience, even with added photographs. In its order of 10 July 2018, the Supreme court of appeal therefore censored the judgement of the Court of appeal on this point. The Court emphasised that, in the light of the European directive, article L713-5 must be applied in two stages. The owner of the reputed trademark must first of all demonstrate that unfair advantage had been taken of the reputation of the trademark, then the third party must establish that there is just cause for the use of this reputed trademark, or a similar sign. Consequently, the Court of appeal should not have assessed the unfair advantage taken of the trademark in relation to the possible existence of just cause but should have assessed the unfair advantage once the infringement had been established. The novelty contributed by this judgment therefore resides in the fact, for the Supreme court of appeal, to indicate that the exception of just cause is not an element of the infringement against the trademark noted, but a fact that exonerates and applies once the infringement has been established. No further details were given, however, as to a possible definition or application of the concept of just cause. The fact that a well-known trademark is identical to the surname used by the third party could have been the occasion for the Supreme court of appeal to use this concept and, consequently, to clarify it.

 

Unfair commercial use

The Supreme court of appeal’s assessment of unfair commercial use in the judgement of 10 July 2018 constitutes its second contribution. In this respect, as recalled by the Supreme court of appeal, unfair commercial use “consists, for an economic operator, of placing itself in the wake of another in order to take advantage, at no expense, of their efforts and know-how, the recognition acquired or investments made”. The Court of appeal had thus also rejected the claims of Taittinger CCVC on the basis of unfair commercial use. According to the judges, the company had not established how adopting a corporate name or a commercial name as such would alone express the efforts and investments, in particular promotional, necessary to establish an act of unfair commercial use. Here again, the Supreme court of appeal therefore censored the judgement of the Court of appeal. According to the judges of cassation, the latter should have taken into consideration the prestige and recognition acquired, and not disputed, of the corporate name and of the commercial name of the company to examine whether or not an instance of unfair commercial use was present in the case in hand.

This judgement is therefore not only to be placed among the affairs dealing with a well-known trademark that is a homonym of a surname, but also provides a better understanding of the use of the concept of just cause in the context of the infringement of a well-known trademark, as well as the criterion of recognition in the framework of what constitutes an instance of unfair commercial use. Taking advantage of the reputation of a trademark does not necessarily therefore constitute infringement of a well-known trademark, but this can be a decisive factor with regard to establishing an instance of unfair commercial use for which there is no exception for just cause.

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French Data Protection Act: What’s New?

nathalie dreyfus Written by Nathalie Dreyfus04/12/2018

 

The new version of the French Data Protection Act (law n ° 2018-493 of June 20, 2018) was adopted on June 20, 2018. The first version (entered into force on January 6, 1978) was modified twice: in 2004 following the transposition of Directive 95/46 on the protection of personal data, and in 2016 following the French digital republic law. The latest version was adopted following  the General data protection Regulation 2016/679 on the protection of data (GDPR). The GDPR was adopted in May 2016 and implemented on May 25, 2018. The GDPR is directly applicable to all the EU member states. The new French Data Protection Act facilitates an effective application of the RGPD and the directive (UE) 2016/680. The new version is composed of 72 articles and includes the changes made to the previous French Data Protection Act. The GDPR replaces the national law in some areas like rights of data subjects, legal bases of the treatments, security measures, transfers, etc..

In other areas, the new French Data Protection Act integrates the GDPR. It applies to health data, criminal convictions and offense records, data processing for journalistic purposes, etc. Moreover, the GDPR includes 56 references to national laws of the EU member states. Thus, Data Protection legal framework is a mixed legal framework composed of national and European laws.

To reinforce the legibility of the composite legal framework, a Government Ordinance was adopted to add more details to the French Data Protection Act within six months. A new decree implementing the Data Protection Act is also expected to be adopted in the coming weeks. In the meantime, it is recommended by the French Data Protection Authority (CNIL) to pay particular attention to the legal framework applicable in each processing.

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Dreyfus – The Respect Zone Initiative

nathalie dreyfus Written by Nathalie Dreyfus30/11/2018

Respect Zone is a French nongovernmental organization that protects freedom of expression on the Internet through non-violent communication methods. The organization developed a cyber-violence prevention program that includes children protection as the most vulnerable group.

Dreyfus is an intellectual property boutique firm focusing on digital economy issues. The firm participates in the program and proudly displays Respect Zone ethical label on its website!

We support the initiative and encourage Internet users to moderate disrespectful comments, insults and bullying.

By displaying the Respect Zone label our firm affirms its’ commitment to online dignity and respect on our website and social media channels.

In an ever more complex digital environment, it is now imperative to effectively protect victims of cyber-violence and defend our right to freedom of expression.

For more information: http://www.respectzone.org/en/

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Dreyfus welcomes middle school and high school students as a part of the “Mieux Vivre Ensemble 16.93” initiative

nathalie dreyfus Written by Nathalie Dreyfus26/11/2018

After joining forces with Respect Zone in the fight against cyber violence, Dreyfus continues the pro bono initiative by participating in an event organized by the “Mieux Vivre Ensemble 16.93” group.

The group’s aim is to help middle school students who live in the Seine-Saint-Denis department, in Paris region finding their first internship and actively contribute to their career development by offering them new perspectives.

The group organizes the first Internship Forum event on December 8th, 2018 at the Chamber of Trades and Crafts in Bobigny for 9th grade students.

The students will get a chance to participate in a variety of workshops and activities including discovering trades, getting access to internship offers and coaching and mentoring programs. The event also includes a workshop for parents as well as a Parcoursup presentation.

Dreyfus is proud to be among the companies that offer internship opportunities for students. Our firm looks forward to welcoming a young intern who will learn about the importance and the means of protecting innovation.

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Brexit –Automatic conversion of European trademarks and designs and the withdrawal agreement

nathalie dreyfus Written by Nathalie Dreyfus21/11/2018

On November 14th, 2018 Theresa May’s   draft withdrawal agreement was approved by the British Government after 5 hours of deliberation by the Council of Ministers. A step has been taken towards securing a smooth withdrawal from the European Union (EU). However, two more steps need to be taken: obtaining an agreement of the 27 UE’s countries and, most importantly, the ratification of the agreement by the British Parliament.

 

If the withdrawal agreement is able to overcome both of these hurdles, what will be its impact on trademark rights?

 

There is no need to worry about intellectual property rights as EU directives have already been transposed into British legislation, and the level of protection remains unchanged.

 

For industrial property  rights, on the other hand, the withdrawal agreement intends to preserve the EU legal framework. Therefore, the transition of the protection of EU law to UK law will be ensured by several measures.

 

  • European trademarks and designs registered before December 31st, 2020 (the date EU treaties will no longer apply to the UK) will be automatically, converted into UK national rights, without re-examination or additional costs,
  • EU trademark and design rights declared invalid or revoked in proceedings that were initiated prior to December 31st, 2020, will also be declared invalid or revoked in the UK.
  • The holders of trademarks and designs registered before EUIPO (European Union Intellectual Property Office) with a pending application status at the time of the UK’s exit, will have 9 months as of the exit date to file a national application in the UK.
  • Applications filed through the UK national office will benefit from the same filing date and priority date as the original application filed with EUIPO.
  • Furthermore, the withdrawal agreement stipulates that IP rights exhausted both in the EU and in the UK before the end of the transition period shall remain exhausted.
  • However, European trademark owners will not lose their UK trademark rights due to lack of use of the European trademark in the UK before the end of the transition period.

 

The great innovation of the withdrawal agreement lies in a procedural clarification. The question that until recently remained unanswered by the withdrawal agreement was the process for obtaining protection in the UK. The new agreement now provides for  a cooperation between European and UK authorities. Therefore, all the information necessary to renew rights, held by EUIPO, must be transmitted to the UK authorities. Thus, European IP rights holders do not need to submit any documents or  pay additional fees.

These measures allow right holders to maintain protection in the EU by preserving an equivalent level of protection in the UK. . Nevertheless, if Brexit takes place without agreement, these transitional measures will not enter into force. For the moment such a possibility cannot be ruled out. That is the reason why every decision on EU trademark strategy must be considered very carefully. Dreyfus, trademark law experts, is able to assist you in the decision-making process in order to protect your intellectual property rights in this current climate of uncertainty.

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