Nathalie Dreyfus

Introduction

Trademarks are a key intellectual property asset for companies of all sizes. They enable you to differentiate your products and services from those of competitors and provide legal protection allowing you to defend your protected names and logos. If you are considering filing a trademark benefiting from protection throughout the European Union (EU), this article briefly explains the different steps to follow.

Step 1: Prior art search

The first step is to verify the availability of the trademark you wish to file. Before any filing, it is essential to carry out a “prior rights search” to ensure that the name or logo you wish to protect is not already registered by a third party for identical or similar products or services. This approach helps to prevent the risk of future legal conflicts.

At first, the EUIPO’s trademark search tool is a good starting point to obtain an initial indication of any identical prior rights, both among EU trademarks and national trademarks of the various EU member states.

For an EU trademark project, it is generally essential to carry out a more in-depth search. This can be done with the assistance of an intellectual property attorney who has access to specialized tools and the expertise necessary to identify not only identical but also similar trademarks that basic identity searches may miss.

If no blocking prior rights are detected, you can then move confidently to the next step of the filing process.

Step 2: Filing of the trademark

The second step is to complete a trademark application form. This form must include several pieces of information: the name of the trademark and/or logo, the name of the company that will own the trademark, its contact details, and the classes of the goods and services covered. Drafting the specification of goods and services should be done with the assistance of an attorney. Once the form is completed and submitted, you must pay a so-called “filing” fee.

Step 3: Examination of the trademark application

The third step is no longer under your control. Once the trademark application has been submitted to the EUIPO, it will undergo a rapid examination of the substantive and formal conditions that every trademark application must meet, including notably:

• Are the goods and/or services for which your trademark is filed correctly classified?
• Has the application been correctly completed?
• Has the fee been paid?

Please note: the EUIPO does not carry out a prior check of your trademark’s availability in relation to trademarks already registered in the European Union. However, it informs holders of earlier rights when a trademark application appears similar to their rights.

After this examination, the EUIPO will publish your trademark application in the Official Journal of the European Union. This informs third parties of your filing. From the date of publication, third parties have three months to oppose the registration of the trademark if they believe it infringes their own rights.

Step 4: Trademark registration

At the end of the examination process, the trademark is either accepted or refused for registration. If accepted, you will receive a digital registration certificate. This certificate provides proof of the legal protection granted to your trademark in the EU.

Finally, keep in mind that the EU trademark is protected for 10 years and is indefinitely renewable at the end of the initial protection period. A renewal fee must be paid to extend the protection for a new 10-year period.

Conclusion

To register a trademark in the EU and maintain its protection, each of these steps must be followed. The prior rights search is an essential prerequisite as it helps ensure, as far as possible, that no opposition will be filed after your trademark application.

Dreyfus & Associés can assist you at every stage of your trademark filing, from the prior rights search to its official registration, to secure your rights effectively.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. What is an EU trademark and what are its advantages?
An EU trademark (EUTM) is a single title granted by the EUIPO which provides uniform protection in all 27 Member States. It simplifies and centralizes the filing, management and enforcement of your rights in the EU.

2. How much does it cost to file an EU trademark?
Official fees start at €850 for one class of goods or services. Additional fees apply for each extra class. Attorney’s fees are charged separately.

3. Is it better to file a national trademark or an EU trademark?
This depends on your objectives and geographic scope. Filing a national trademark is often suitable for companies that are just starting out and targeting only the French market. However, opting from the outset for an EU trademark offers the advantage of a single protection in 27 Member States and anticipates future expansion of the project to other countries, even if the activity initially remains focused on France.

4. Is a prior rights search mandatory before filing a trademark?
It is not legally mandatory but is strongly recommended to identify identical or similar trademarks already registered and reduce the risk of opposition.

5. What happens if I forget to renew my trademark?
Do not worry: if you forget to renew your trademark at the end of the 10-year period, the law provides for a six-month grace period from the date of expiration. During this period, you can still renew and preserve your rights, but an additional fee will be charged on top of the standard renewal fee. After this period, the trademark falls into the public domain and must be refiled to regain protection.

Introduction

Registering a trademark is one of the most important steps in protecting it. A trademark is a sign or symbol that distinguishes your products and services from those of your competitors, and it can be a valuable asset for your business. But if you want to register a trademark in the EU, you will need to work with a lawyer or, more specifically, an Industrial Property Attorney (IPA), a professional specially qualified to assist you in this area. This article explains the cost of registering a European trademark when you seek the assistance of a lawyer or industrial property attorney.

Preliminary step: eligibility of the proposed sign as a trademark

The first step in the process of registering a trademark with a lawyer or industrial property attorney in the EU is to determine whether your trademark is eligible for registration. Under European law, a trademark must be capable of distinguishing the goods or services of its owner from those of other companies. It must also meet other strict criteria:

• Non-descriptive character: the trademark must not consist exclusively of signs describing the quality, quantity, intended purpose, value, or origin of the goods/services designated.
• Non-generic nature: the trademark must not consist of signs or indications that have become customary in the current language of trade.
• The sign must not be contrary to public policy or morality.
• The sign must not be deceptive, i.e., it must not be likely to mislead the public as to the nature, quality, or origin of the goods or services.

The trademark must therefore comply with the conditions set out in the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015. If your trademark meets these criteria, you can proceed to the next step.

Determining the cost

The next step is to determine the cost of registering a trademark with a lawyer or industrial property attorney. The cost of registration varies depending on the number of classes of goods and services designated. In addition, the fees of the lawyer or industrial property attorney must also be considered, as well as optional costs such as those related to prior art searches.

Application submission and registration

Once the registration cost has been determined, you will then need to file an application with the EUIPO (European Union Intellectual Property Office). This application must include all the necessary information about your trademark, the subject of the registration, such as the sign (word mark or logo) and the classes of goods and services designated. The EUIPO will then examine your application.

If there are no oppositions filed against the trademark application, the registration process, from the date of filing to official registration, generally takes around four to six months.

Once accepted by the EUIPO, the trademark will be officially registered for a period of 10 years and you will receive a registration certificate.

2025 Update: What you need to know about official taxes

To ensure that this article remains up to date, it is important to note that the official filing fees of the European Union Intellectual Property Office (EUIPO) are subject to annual adjustments. It is essential to check the official fee schedules directly on the EUIPO website at the time of filing each year.

For example, in 2024, the basic fees for a European Union trademark (EUTM) covering one class have generally remained stable compared to 2023, but an increase in agency fees and specialized prior art search fees should be anticipated.

The importance of using an Industrial Property Attorney remains unchanged, as this professional ensures that your application complies with current regulations and administrative practices of the EUIPO.

Conclusion

The cost of registering a European trademark with a lawyer or industrial property attorney is an important consideration for any company wishing to protect its trademark. Although the cost of registering a trademark may vary, it remains a necessary and significant investment in the protection of your intangible assets, guaranteeing you protection for a minimum of 10 years (a trademark can be renewed indefinitely).

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. What is the European Union Intellectual Property Office?

The European Union Intellectual Property Office (EUIPO) is the entity responsible for registering European Union trademarks (EUTMs).

2. Is a prior art search mandatory before filing a trademark?

A prior art search is not strictly mandatory for filing a trademark with the EUIPO, but it is strongly recommended. It allows you to check whether an identical or similar trademark already exists and to assess the risks of opposition, thus avoiding unnecessary costs and procedures.

3. What rights does registering a European Union trademark with the EUIPO confer?

Registering a European Union Trademark (EUTM) with the EUIPO provides uniform protection in all current EU member states. The filing fees cover this pan-European protection.

4. How long is a European trademark valid for?

The registration of a European Union trademark (EUTM) is valid for a period of 10 years from the date of filing the application and is renewable indefinitely for periods of 10 years.

5. What is an opposition procedure and how does it affect the registration timeframe?

An opposition procedure is legal action brought by the owner of an earlier trademark who believes that your new trademark application infringes on their rights. If an opposition is filed, the registration timeframe can be significantly extended (often by more than a year) and requires the intervention of your attorney or industrial property attorney to reply to the opposition.

Introduction

Since the entry into force of the General Data Protection Regulation (GDPR) in 2018, access to domain name registration data via WHOIS has been profoundly disrupted. Faced with increasing opacity adversely affecting trademark owners, cybersecurity professionals, and judicial authorities, ICANN has undertaken a structural overhaul of its data access architecture. From the SSAD project to the RDRS, alongside the adoption of the RDAP protocol and the new Registration Data Policy, the normative framework is being reshaped, with concrete and immediate implications for all intellectual property stakeholders.

WHOIS in the face of the GDPR: a structural reassessment

For more than thirty years, the WHOIS database constituted the reference tool for identifying domain name registrants. Following the entry into force of the GDPR in 2018, ICANN required registrars to remove or mask personal data of registrants in the public WHOIS database, giving rise to what practice has termed the “WHOIS blackout.”

For intellectual property practitioners, the impact is both immediate and lasting: the new opacity surrounding registrant identity directly complicates the enforcement of infringement rights. Henceforth, the only option consists in submitting a request to the relevant registrar, without any assurance as to the outcome, processing timelines, or the existence of a harmonized procedure.

This development places ICANN in a particularly sensitive position: it must reconcile its mission to preserve the stability and security of the global DNS with compliance with legal obligations relating to data protection, the extraterritorial scope of which is now well established. The institutional response to this challenge has been constructed through successive stages, each seeking to refine and further structure the framework.

The SSAD: A normative ambition hampered by its own complexity

Project genesis

The SSAD (System for Standardized Access/Disclosure) constitutes a centralized system project intended to regulate the processing of requests for access to non-public registration data and was published by ICANN in 2022. It follows on from recommendations 1 to 18 of the final report of Phase 2 of the EPDP (Expedited Policy Development Process) of the GNSO (Generic Names Supporting Organization). The objective is to establish a single point of access enabling accredited requesters to obtain data, where appropriate anonymized, under predictable, transparent conditions compliant with GDPR requirements.

Operationally, this mechanism envisages, inter alia, the implementation of a unified process for creating and verifying requester accounts, a standardized request submission mechanism, and partial automation of disclosures in certain limited circumstances, in order to reduce the identification burden on contracted parties.

Obstacles leading to suspension

Despite its conceptual merit, the SSAD encountered prohibitive economic and technical realities. According to ICANN’s Operational Design Assessment, the implementation of the SSAD could require between USD 20 and 27 million in development costs, and more than USD 100 million annually in operating costs depending on adoption rates. The development of the system, entrusted to an external provider, was estimated at between 31.5 and 42 months, following two years of preliminary work by ICANN’s internal review team.

In February 2023, nearly five years after the GDPR entered into force, the SSAD project was officially placed on hold. ICANN then shifted to a more incremental and progressive approach, less ambitious but deployable in the short term: the RDRS.

The RDRS: the operational bridge until 2027

Architecture and functioning of the service

The RDRS (Registration Data Request Service) is a free, centralized system, available on a global scale for managing requests for access to non-public registration data of gTLDs (generic Top-Level Domains). It operates as a platform connecting, on the one hand, requesters demonstrating a legitimate interest and, on the other hand, ICANN-accredited registrars that have chosen to participate.

In practice, the service provides a unified framework for submitting requests, allows supporting legal documentation to be attached, enables the storage of reusable request templates, tracks case progress, and routes requests directly to participating registrars.

Access to the RDRS, is restricted to certain categories of users, including public authorities , intellectual property practitioners, consumer protection actors, cybersecurity specialists, and representatives of public bodies.

Practical Example: A law firm specializing in intellectual property, mandated to identify the registrant of a domain name reproducing a well-known trademark, may submit via the RDRS a request for access to registration data accompanied by relevant supporting evidence (industrial property title, evidence of infringement). The registrar must then respond within a certain timeframe, although disclosure of the requested data is neither automatic nor guaranteed.

Structural Limitations of the System

The RDRS aims to standardize the request submission procedure without harmonizing decisions relating to data disclosure. Each registrar retains decision-making autonomy and conducts its own legal assessment on a case-by-case basis in accordance with applicable law and ICANN policies.

Moreover, as participation is not mandatory, the system covers only a portion of domain names. In this respect, the Governmental Advisory Committee (GAC) indicated during ICANN84 in Dublin that the RDRS provides access, at best, to approximately 60% of gTLDs.

Finally, by decision dated 30 October 2025, ICANN’s Board of Directors extended the system until December 2027, pending the work of the ICANN community aimed at defining a permanent standardized access and disclosure mechanism, such as the SSAD or any successor system.

This extension establishes a hybrid environment for the next two years: rights holders and investigative services retain an operational channel to submit requests; ICANN’s Board encourages the broadest possible use by requesters and registrars without imposing a general obligation; in parallel, ICANN has launched a public consultation on a roadmap addressing structural shortcomings, including access to data via proxy services, timelines applicable to urgent requests, and authentication mechanisms.

The registration data policy and the RDAP protocol: the new normative foundation

The Registration Data Policy effective as of 21 August 2025

The Registration Data Policy (RDP), adopted by ICANN and effective as of 21 August 2025, establishes a harmonized and structured normative framework governing the collection, processing, publication, and disclosure of domain name registration data by registrars and registry operators. It replaces the interim measures implemented in 2018 following the entry into force of the GDPR and aims to standardize data management practices across all gTLDs.

The main obligations introduced by the RDP include in particular:

• Limited publication: only non-personal data may be made publicly available via WHOIS/RDAP;
• Controlled disclosure: any access request must be justified, documented, and processed through a standardized procedure;
• Accuracy and reliability: regular verification of registrant information;
• Retention and security: protection and retention of data for the minimum period defined by ICANN (two years);
• Accountability and compliance: adequate documentation, technical measures, and cooperation with ICANN audits.

The RDAP protocol

Since 28 January 2025, the RDAP (Registration Data Access Protocol) has become the reference mechanism for accessing registration data for generic top-level domains, intended to replace the WHOIS system, whose services are being progressively phased out.

Unlike WHOIS, which is based on plain text responses, RDAP relies on standardized and structured web formats enabling automated data processing by information systems. It also incorporates advanced functionalities, particularly in terms of internationalization, secure access to data, service discovery, and differentiated access to registration data.

Strategic implications for IP rights holders

The GDPR logic at the core of disclosure decisions

For European stakeholders, any disclosure request via the RDRS falls within the scope of Article 6(1)(f) of the GDPR, relating to legitimate interest.

In accordance with ICANN’s Temporary Specification for registration data, registrars may grant access to personal data to third parties demonstrating a legitimate interest.

However, such access is not automatic: it requires a balancing test between the requester’s interest and the fundamental rights and freedoms of the domain name registrant. Disclosure may only occur where the legitimate interest invoked does not disproportionately infringe those rights.

The temporary policy provides that registrars must grant reasonable access to personal data to third parties demonstrating a legitimate interest, unless the interests or fundamental rights of the domain name registrant prevail over those of the requester, in accordance with Article 6(1)(f) GDPR.

Towards a future SSAD reinforced by the NIS2 directive

The NIS2 Directive, with its reference to “legitimate requesters,” strengthens the likelihood that a finalized version of the SSAD will become an official ICANN policy. The envisaged prospects include prior accreditation of requesters, mandatory participation of registrars—unlike the voluntary nature of the RDRS and differentiated access rights depending on the requester’s profile (judicial authorities, law enforcement, IP rights holders).

Key Takeaways:

• The RDRS is operational until December 2027, but its coverage remains partial (~60% of gTLDs);
• The Registration Data Policy of 21 August 2025 now constitutes the new contractual framework for all registrars;
• The RDAP is intended to progressively replace WHOIS for access to domain name registration data, with a key milestone set on 28 January 2025;
• A permanent system (SSAD or successor) remains to be developed; its final architecture will be determined during the RDRS extension period.

Conclusion

The WHOIS data access system is undergoing a profound transformation, the final contours of which will likely only be determined by 2027–2028. Between the normative ambition of the SSAD, the operational pragmatism of the RDRS, and the regulatory consolidation driven by the Registration Data Policy and the RDAP protocol, ICANN is progressively building a GDPR-compliant registration data access ecosystem while seeking to preserve the legitimate interests of rights holders.

For intellectual property professionals, this transitional period requires a dual vigilance: mastering the RDRS procedures currently available while anticipating the normative developments that will reshape data access in the coming years.

Cybersecurity, the fight against cybersquatting, and online trademark enforcement depend directly on this.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

What risks do companies face if they cannot identify a domain name registrant?

The lack of direct access to the identity of a domain name registrant exposes companies to several operational and legal risks. It significantly delays infringement or cybersquatting actions by complicating the identification of the opposing party and the collection of evidence. This opacity may also delay interim measures (blocking, domain transfer) and increase costs associated with technical or judicial investigations. Ultimately, it weakens companies’ ability to effectively protect their intangible assets and to respond swiftly to online infringements.

Are WHOIS data access rules identical across domain name extensions (.com, .fr, .eu)?

No, access rules vary depending on registries and the legal frameworks applicable to each extension. While gTLDs (.com, .net, etc.) are governed by ICANN policies, ccTLDs (.fr, .eu, etc.) are subject to specific national or regional regulations. For example, certain European extensions apply stricter personal data protection rules, while others provide regulated access mechanisms for rights holders. This heterogeneity requires a case-by-case analysis in any international protection strategy.

Do judicial authorities have specific means to access non-public data?

Yes, judicial authorities and certain administrative authorities have specific mechanisms enabling them to obtain access to non-public data. Such access may occur in the context of judicial proceedings, requisitions, or official requests addressed to registrars. In some cases, international cooperation or sector-specific regulatory frameworks facilitate such access. However, these mechanisms remain regulated and subject to strict requirements in terms of proportionality and data protection.

How can companies adapt their trademark protection strategy in light of limited access to WHOIS data?

Companies must adopt a more proactive and structured approach. This includes strengthening domain name monitoring systems, systematically documenting infringements (screenshots, history, content), and using available channels such as the RDRS or alternative dispute resolution procedures (UDRP, URS). Furthermore, resorting to complementary intellectual property strategies (extended trademark filings, defensive domain name registrations) helps anticipate risks. Finally, support from experts becomes essential to navigate a more fragmented legal environment.

Will ICANN developments impact the fight against cybercrime and online fraud?

Yes, these developments have a direct impact on the effectiveness of actions against cybercrime. Limited access to data complicates the rapid identification of perpetrators of unlawful activities, potentially delaying investigations and remediation measures. However, the mechanisms under development aim to restore regulated access for legitimate actors, particularly for security and user protection purposes. The balance sought between data protection and security requirements will ultimately determine the effectiveness of mechanisms to combat online fraud.

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

Introduction : 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.

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.

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.

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.

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.

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.

Introduction

Can a homonymous trademark legitimately coexist with a trademark with a reputation bearing a well-known surname? The answer has evolved considerably since the landmark ruling of the French Court of Cassation of July 10, 2018 (No. 16-23.694). The second judgment rendered in the same proceedings on June 22, 2022 (No. 20-19.025), the reform introduced by Ordinance No. 2019-1169, and a series of recent decisions (Castelbajac, Tour de France, Fauré Le Page) have substantially reshaped the contours of this area of litigation. Both trademark owners and entrepreneurs whose surname coincides with an established trademark must now reconsider the applicable analytical framework

The dual threat facing the homonymous trademark: the analytical framework established by the Taittinger saga

Where a surname coincides with a pre-existing trademark with a reputation, the use of that name in the course of trade opens two distinct, yet frequently cumulative, avenues of litigation:

• Infringement of a trademark with a reputation, now governed by Article L. 713-3 of the French Intellectual Property Code (IPC);
• Action for parasitism under Article 1240 of the Civil Code.

The ruling of July 10, 2018 established a reference methodology: due cause operates only as a post-characterisation defence, the two questions being assessed sequentially and not concurrently.

Background: the Taittinger proceedings

One of the heirs of the Taittinger family had participated in the sale of shares in the family company, proprietor of the TAITTINGER champagne trademark. The share transfer agreement dated July 21, 2005 contained a personal warranty against eviction prohibiting the transferors from making use of the Taittinger name in connection with competing products. Following her dismissal in 2006, the individual concerned filed the trademark Virginie T in respect of, inter alia, champagne, and registered several domain names incorporating her surname. Taittinger CCVC brought proceedings against her on three cumulative grounds:

• Breach of the warranty against eviction;
• Infringement of a trademark with a reputation;
• Parasitism.

The 2022 Taittinger epilogue: recognition of the legitimate use of a patronymic name

Ruling on remand following the 2018 decision, the Paris Court of Appeal (March 3, 2020, No. 18/28501) dismissed the claims of Taittinger CCVC. The court held that the references to the surname were intended to recall Mme Taittinger’s professional career and family background, attesting to her expertise, and that the communication strategy did not establish, in the mind of the reasonably well-informed consumer, any link between the trademarks Virginie T and Taittinger.

On a further appeal, the Court of Cassation (June 22, 2022, No. 20-19.025) upheld that reasoning: Mme Taittinger’s use of her surname was legitimate inasmuch as it sought to evoke her family and professional history, her acquired expertise, and to differentiate the Virginie T products from those of the Taittinger house. The reputation of a trademark does not preclude the legitimate use of a sign as a surname, provided three cumulative conditions are met: good faith, the purpose of evoking a professional career and family heritage, and the absence of any strategy creating a link in the public’s mind with the trademark with a reputation.

This ruling confirms the qualified and conditional primacy of personality rights attached to a name over the exclusive rights conferred by a trademark, where the use remains honest and factual.

The new legal regime for reputed trademarks following the 2019 ordinance

Ordinance No. 2019-1169 of November 13, 2019 brought about a structural transformation. The former Article L. 713-5 IPC, upon which the 2018 ruling was based, was repealed. Infringement of a trademark with a reputation now falls under Article L. 713-3 IPC and constitutes an act of trademark infringement, no longer a tort under general civil liability rules. The available sanctions, procedural remedies and search-and-seizure procedures are considerably strengthened as a result.

The cumulative conditions for establishing infringement

The trademark owner must demonstrate:

• The reputation of the trademark among a significant portion of the relevant public, a concept developed by the CJEU in General Motors v Yplon (C-375/97);
• The identity or similarity of the contested sign;
• The link established in the mind of the relevant public between the contested sign and the trademark invoked.

A likelihood of confusion is not required.

Once those conditions are satisfied, it is necessary to characterise unfair advantage taken of, or detriment caused to, the distinctive character (dilution) or the reputation (tarnishment) of the trademark. Evidence may be adduced by any means, and prior registration with the INPI or the EUIPO constitutes the indispensable foundation for any such action.

Article L. 713-6 IPC: the statutory exception for surnames

The 2019 reform also enshrined, in Article L. 713-6 IPC, an express exception: “A trademark shall not entitle its proprietor to prohibit a third party from using, in the course of trade, in accordance with honest practices in industrial or commercial matters, his or her family name or address where that third party is a natural person.” This provision gives direct statutory grounding to the solution developed by the Taittinger case law.

Due cause: a post-characterisation defence

The two-stage methodology established in 2018 remains fully applicable in light of Directive (EU) 2015/2436. The CJEU ruling in Leidseplein Beheer v Red Bull (C-65/12) clarifies that due cause encompasses the subjective interests of the third party, which ultimately enabled Mme Taittinger to prevail in 2022. This defence may only be assessed once infringement has been established: it has no bearing on the characterisation of the unfair advantage taken.

The post-2022 case law landscape: Castelbajac, Tour de France, Fauré Le Page

The Castelbajac case (Cass. com., February 28, 2024; CJEU, December 18, 2025, C-168/24)

In the Castelbajac case, the dispute concerned a patronymic trademark designating fashion products, which had been assigned to a company. Following that assignment, the question was whether the use of the trademark could become deceptive where the public was likely to believe that the creator was still involved in the design of the products, although this was no longer the case.

By a judgment of February 28, 2024, the Cour de cassation referred this question to the CJEU. In substance, it asked whether a patronymic trademark could be revoked for acquired deceptiveness where its use, after the assignment, misled the public as to the creator’s actual involvement.

In its judgment of December 18, 2025, the CJEU answered in the affirmative. It confirmed that a patronymic trademark may be revoked where its use suggests that the creator is still behind the style or design of the products, although this is no longer true.

The Tour de France Case (Cass. com., March 19, 2025, No. 23-18.728)

The Court of Cassation, in its decision of March 19, 2025, gave express recognition to the concept of exceptional reputation, which affords protection extending beyond the public concerned by the designated goods and services. The degree of reputation must be taken into account in assessing the link in the public’s mind, even in the absence of similarity between the goods or services.

The Fauré Le Page Case (CJEU, March 26, 2026, C-412/24)

In a judgment of March 26, 2026, the Court of Justice held that a trademark may be deceptive where it falsely suggests significant longevity. In particular, the indication of an old date may mislead the public if it suggests long-standing know-how, associated with a particular quality or prestige, where that know-how does not actually exist. For a detailed analysis, we invite you to read our dedicated article on this judgment.

Parasitism: an autonomous cause of action disregarding legitimate grounds

The judgment of July 10, 2018 reiterates the established definition : parasitism “consists, for an economic operator, in positioning itself in the slipstream of another in order to profit, without any expenditure of its own, from the latter’s efforts and expertise, acquired reputation or investments.” Parasitism sanctions the undue saving of investment expenditure, independently of any likelihood of confusion and without any exception on the grounds of due cause.

The Court of Cassation (May 25, 2023, No. 22-14.651) confirmed the “product line effect” : the imitation of a complete product line amplifies the competitive harm and justifies the concurrent pursuit of both a parasitism claim and an infringement action, provided that distinct factual bases are established in support of each. In the Taittinger proceedings, the Court of Cassation had specifically criticised the lower courts in 2018 for failing to take into account the uncontested prestige and reputation of the Taittinger corporate name and trade name.

Conclusion

Between 2018 and 2026, the legal framework governing homonymous trademarks has undergone significant change. While the analytical methodology established by the 2018 case law remains applicable, the 2019 Ordinance recharacterized infringement of a trademark with a reputation as an act of infringement, thereby substantially reinforcing the available sanctions. Recent case law confirms that the use of a surname is permissible only where the requirements of good faith and honest commercial practices are satisfied, to the exclusion of any parasitic exploitation of a reputation. The decisions on acquired deceptiveness and exceptional reputation further illustrate the continuing strengthening of protection afforded to trademarks with a reputation, while parasitism retains its autonomous status and distinct legal regime.

Dreyfus advises clients on complex intellectual property matters, offering tailored legal counsel and comprehensive operational support.

Dreyfus & Associés operates within a global network of attorneys specialised in intellectual property law.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. Is the 2018 Taittinger ruling still good law?
Yes, its methodological contribution remains fully intact: the two-stage approach, first, characterisation of the infringement; then, assessment of due cause, continues to be the reference analytical framework. However, its legislative basis, the former Article L. 713-5 IPC, has been replaced by Article L. 713-3 IPC since the 2019 Ordinance, and the ruling of June 22, 2022 delivered the final resolution of the dispute.

2. May I freely use my family name as a trademark if it coincides with a trademark with a reputation?
Not without restriction. Article L. 713-6 IPC and the 2022 Taittinger ruling permit a natural person to use their surname in the course of trade, subject to three cumulative conditions: good faith, the purpose of presenting a professional career, and the absence of a link created in the public’s mind with the trademark with a reputation. Conversely, filing a trademark incorporating the surname remains risky, as illustrated by the Castelbajac proceedings.

3. What is the difference today between infringement of a trademark with a reputation and parasitism?
Since the 2019 Ordinance, infringement of a trademark with a reputation is governed by the trademark infringement regime, no longer by general civil liability rules. Parasitism, an autonomous cause of action under general tort law, is not susceptible to any defence of due cause. Both actions may nonetheless be pursued concurrently, provided they are grounded on distinct facts (Cass. com., May 25, 2023).

4. Is a personal warranty against eviction sufficient to protect the acquirer of a family trademark?
Not necessarily. Its scope must be expressly defined, and it must be personally undertaken by each transferor (Court of Cassation, 2018). Furthermore, following the Castelbajac ruling (CJEU, December 18, 2025), the assignee may face revocation for acquired deceptiveness if the post-assignment exploitation leads consumers to believe that the creator is still involved in product design. The drafting of assignment agreements must therefore be reinforced accordingly.

5. How can parasitism be established in the absence of a likelihood of confusion?
Three elements are required: the individualised economic value acquired by the claimant (prestige, reputation, investments), the benefit derived by the third party, and the undue nature of that benefit. Our comprehensive guide on unfair competition sets out the relevant means of proof in detail.

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