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The zombie trademark: the resurrection of a trademark with a particular level of notoriety

nathalie dreyfus Written by Nathalie Dreyfus08/07/2016

 

Although perpetually renewable, in practice the vast majority of trademarks have a limited life expectancy. They are born and they die. Yet, some experience a different type of fate fate: they resuscitate.

Needless to say, the term “zombie trademark” does not refer to the recent surge in popularity of zombie culture or the slew of trademark applications it has inspired. The term refers to the rebirth of an otherwise dead trademark. These so-called zombie trademarks are connected to the past: they are in fact former trademarks, often iconic, that have an established reputation.

Unlike patents and copyright, a trademark can exist perpetually as long as it is used and renewed every 10 years. However, a company may cease to use a mark. This abandonment can occur at any time, whether it is while the application is still being examined or even when the trademark has already been in use for some time. In terms of non-use, according to Article L 714-5 of the French Intellectual Property Code, a trademark will be abandoned when an owner stops using it for five consecutive years with no intention of resuming use of the trademark. But as we can see with the zombie trademark, abandonment is not necessarily permanent. Thus, these trademarks are defined as signs which have been abandoned but that still have marketing potential, a reputation: “residual goodwill.” The zombie trademark however, requires undeniable divestiture, that is abandonment both from a practical and a legal standpoint. The trademark will then fall into the public domain.

There are many arguments in favour of reviving zombie trademarks. They spark up nostalgia and an emotional connection with the past, and their reputation reflects consumer trust and loyalty. As the brand already has an established reputation, it also saves time and money which would otherwise be invested in marketing. As a result, the adoption of such a trademark can be less of a commercial risk.

However, some legal scholars do not speak in favour of the zombie trademark. Indeed, it would supposedly lead to an unfair advantage for the company which takes over the trademark. Furthermore, the trademark is said to  be fundamentally misleading.

If a company no longer uses a trademark, isn’t there a risk that protecting that trademark would result in a market freeze? Reuse of an old trademark by a new owner can well be perceived as being legitimate use. Furthermore, what is the advantage to keep protecting a trademark which, in any case, would remain dead and buried?

One should also be mindful of trademarks which have not been fully abandoned: for example, a trademark that is not effectively used by the owner but one that has still not reverted to the public domain. In that case, there is a risk of recovery while the trademark sign is still held by its owner. Here, we are no longer in the scope of common law but in that of counterfeit.

The notoriety of a trademark

A notorious trademark remains vivid in the consumer’s mind. The goal is that the consumer continues to associate the trademark to the goods or services of origin. The new trademark must however consist of entirely different products and services to avoid its new owner facing a lawsuit.

The reputation of the old trademark offers a twofold advantage for the new trademark. First of all, it can trigger instant demand for the new product, even if this interest is distorted because it is aimed at different products and services, not provided by the original owner. Finally, the reputation factor may reduce advertising costs for the new product and thus allow for increased profit.

Building a reputation is the very objective of any trademark. From a legal standpoint, this reputation is normally related to the trademark and to the company which registered and exploited it. But, in the context of the zombie trademark, the trademark does not symbolise the reputation of the present owner but that of the original owner.

Resurrecting a trademark therefore seems to pursue an essential goal:  making it so that consumers link the trademark to the original product.

Protection against the rise of zombie trademarks

Normally, a company who has abandoned its trademark rights cannot prevent a newcomer from bringing the dead trademark back to life. Indeed, the disputed trademark has reverted into the public domain, theoretically allowing anyone to use it freely.

An abandoned trademark is in principle, available to anyone.

In the United States, there is legal uncertainty surrounding the issue of consumer protection against zombie trademarks. Therefore, it is appropriate to turn to the US trademark law, the “Lanham Act”, effective on July 5, 1947, and the case law interpreting the Act. Three consecutive years of non-use is prima facie evidence of trademark abandonment. US federal law states however, that this is a rebuttable presumption.

An opposition filed by General Motors Corp against Aristide & Co., Antiquaire de marques (TTAB, Opposition, 21 avril 2008, General Motors Corp. c/ Aristide & Co., Antiquaire de Marques, n°91167007) helps us better understand the notion of the zombie trademark as well as the limitations regarding the protection of well-known trademarks which have fallen into the public domain. In the early 20th century, General Motors Corp. introduced cars under the brand “La Salle.” However, the company has not used that trademark since the 1940’s. In 2004, a company called Aristide & Co applied for the registration of the expression “La Salle” as a trademark for products in Class 12. When the application was published, the famous motor vehicles company decided to oppose it, unsuccessfully. Indeed, the “Trademark Trial and Appeal Board” (TTAB) wasn’t convinced by General Motors Corp’s arguments. It was held that after 65 years of non-use, General Motors did not have any serious intent of reintroducing the trademark. The focus here is on the parties’ intentions.

Furthermore, the TTAB did not find that there was sufficient residual goodwill attributable to the “La Salle” trademark owned by General Motors. According to the Board, the mere recognition of the trademark by car collector clubs was not sufficient evidence.

In this case, the “La Salle” trademark had not been used for many years. One might ask what happens to a popular trademark that has been abandoned for a shorter period of time, say, ten years. In that case, the transformation of the trademark seems more difficult and will depend on its residual goodwill with the public. North-American courts state that successful resurrection will depend on the popularity of the original trademark but also to what extent it is recognizable by consumers as a source indicator of the original products and services. In addition, it will also depend on arguments which courts welcome favourably.

In France, legal proceedings can be initiated on the grounds of misleading trademarks. Indeed, article L. 711-3 c) of the French Intellectual Property Code states that signs “liable to mislead the public, particularly as regards to the nature, quality or geographical origin of the of the goods or services” may not be adopted as trademarks. The former owner might also sometimes act on the grounds of passing off and unfair competition.

One can try to avoid that a zombie trademark be confusing or deceiving to the public. The new owner may duplicate the goods and services linked to the original brand, while making sure the quality remains unaltered. The new owner will also have to notify the public that he is not in any case connected with the original trademark owner. However, this is possible only if the goods and services are not protected by another Intellectual Property Right like design law, patents or copyright. Ultimately, any infringement to the original trademark will depend on the sovereign power of assessment of the courts.

Resurrecting a trademark can thus be of great interest for a business wishing to take advantage of the fame of a trademark that has reverted to the public domain.  However, some of these trademarks are not legally quite dead nor alive and one should be cautious as the French and  North-American caselaw on this issue is still rare and uncertain.

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France: in abstracto assessment of the likelihood of confusion between two trademarks is reaffirmed

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Can a semi-figurative trademark used without its logo constitute genuine use? Key lessons from the “Fuette / Fusette” case law

nathalie dreyfus Written by Nathalie Dreyfus08/07/2016

Introduction: a landmark dispute

In its decision of February 16, 2016, delivered by the Commercial Chamber of the Cour de cassation, the dispute opposed Le Fournil, the owner of the French semi-figurative trademark “ la fuettela fuette nb” designating bread and bakery services and used as a trade name and shop sign, to the company Coup de Pâtes, which marketed a pre-baked bread product called “Fusette.” Claiming that this designation infringed its trademark rights, Le Fournil brought an action for trademark infringement.. In response, Coup de Pâtes sought the revocation of the trademark for lack of genuine use.

The Paris Tribunal de grande instance, upheld by the Paris Court of Appeal declared the revocation of the “La Fuette” trademark. However, the Cour de cassation overturned that decision, providing important clarifications regarding the requirement of genuine use of a trademark. The following article examines this ruling and outlines the practical lessons to be drawn for managing and protecting a trademark.

The legal framework: Article L. 714-5 of the French Intellectual Property Code and the notion of genuine use

Article L. 714-5 of the French Intellectual Property Code provides that the owner of a trademark may be subject to revocation if the trademark has not been put to genuine use for an uninterrupted period of five years, unless there are proper reasons.

Genuine use implies that the use is real, public, and in line with the essential function of the trademark: to guarantee the commercial origin of the goods or services. Evidence may be submitted by any means, provided that it reflects authentic and sufficiently significant commercial exploitation, rather than merely token use.

pillars genuine use

The system also includes a specific rule: use resumed within the three months preceding the filing of a revocation action can only be taken into account if it occurred before the owner became aware of the action or its imminence. This often-overlooked rule plays a decisive role in assessing whether genuine use has been proven.

All these elements show that the assessment of genuine use is highly contextual, depending both on the nature of the goods or services and on the concrete conditions under which the trademark is exploited. These are precisely the aspects on which the decision analysed here offers valuable guidance.

Detailed analysis of the February 16, 2016 ruling of the Cour de cassation

In its judgment of October 11, 2012, the Paris Tribunal de grande instance, followed by the Paris Court of Appeal in its decision of January 17, 2014,revoked the “La Fuette” trademark on the grounds that its use was not genuine: the trademark was neither affixed to the bread nor used with its figurative logo, and the evidence provided (receipts, bags, display panels) merely reflected the bakery’s activity rather than genuine trademark use.

The courts also held that using the verbal element alone altered the distinctiveness of the registered sign. Lastly, certain evidence of use was disregarded because they were dated after the three-month period prior to the revocation action, without verifying whether the trademark holder was aware of that action.

In its judgment of February 16, 2016 (No. 14-15.144), the Commercial Chamber of the Cour de cassation overturned and cancelled the decision of the Paris Court of Appeal.

The need for a complete and coherent body of evidence

The Cour de cassation criticised the lower courts for adopting an excessively restrictive approach to evidence of use.

Since the trademark could not physically be affixed to bread produced in a bakery, it was incumbent upon the Court of Appeal to take into account all relevant supports on which the trademark could also be used: bread bags, labels, advertising materials, the store sign, and invoices linked to the products sold, rather than relying solely on the absence of affixing on the product itself.

The Court reaffirmed that genuine use must be assessed globally, on the basis of a set of converging indicators, rather than a single isolated element.

Use of the verbal element alone: an acceptable modified form of use

Another key aspect of the ruling concerns the use of the term “La Fuette” without its figurative component “ la fuette.”

The Cour de cassation held that Court of Appeal should have determined whether the verbal element constituted the dominant and distinctive component of the semi-figurative trademark. If so, the use of the verbal element alone could be sufficient to demonstrate genuine use, provided that such use does not alter the distinctive character of the registered trademark.

This reasoning is consistent with established European case law, including the landmark Sabel judgment of 11 November 1997 (ECJ, C-251/95), which holds that a “global assessment must be based on the overall impression conveyed by the trademarks, taking into account their distinctive and dominant elements. The perception of the average consumer plays a decisive role, and the consumer normally perceives a trademark as a whole rather than analysing its individual details.”

Considering evidence within the critical three-month period

The ruling also recalls that resumed use within the three months prior to the revocation action can preserve the trademark, but only if the proprietor had not yet become aware of the impending action.

The Court of Appeal had rejected some evidence simply because it was dated after this period. The Cour de cassation held that this was legally incorrect: before excluding such evidence, the appellate judges should have verified whether Le Fournil was aware of the revocation action at the relevant time.

Practical implications for trademark owners

This decision highlights several essential points for effective portfolio management:

  • Semi-figurative trademarks must be used on all supports adapted to the nature of the product, even where the product itself cannot bear the trademark.
  • Evidence of use may consist of a wide variety of documents: receipts, display materials, commercial documentation, packaging, digital and traditional communications.
  • Using only the verbal element may be sufficient where it is the dominant component of the trademark.
  • Timing is critical: any threat of revocation must be anticipated so that a documented and timely resumption of use can be secured.

For more detailed guidance on assessing the genuine use of a trademark, please refer to our previously published article on the subject.

Strategic recommendations

In light of this case law, trademark owners should adopt a rigorous and proactive approach to documenting use. Systematic and dated retention of all materials demonstrating commercial exploitation (packaging, display items, advertising, digital content, invoices) remains essential.

From the moment the trademark is filed, identifying its dominant distinctive element helps guide how the trademark should be used and ensures consistency between the registered sign and its actual use.

If commercial exploitation becomes limited, a documented and timely resumption of use should be organised to avoid revocation. Evidence should always rely on a consistent and converging set of documents rather than a single isolated document.

Finally, when actual use differs from the registered sign, filing complementary variants may be an effective way to secure long-term protection.

Conclusion

The decision of February 16, 2016 adopts a pragmatic approach: genuine use must be assessed in light of commercial reality and the constraints inherent to the product. It also confirms that using only the verbal element of a semi-figurative trademark can amount to genuine use when that verbal element is the dominant component of the sign.

This decision is therefore a key reference for owners of semi-figurative trademarks, particularly where the nature of the product does not allow the sign to be affixed directly. It encourages trademark owners to document use rigorously, make systematic use of all available supports, and develop a proactive and structured evidentiary strategy.

 

Q&A

1. What is genuine use of a trademark?

It is the real and effective use of the trademark in the course of trade, enabling it to fulfil its essential function of identifying the commercial origin of goods or services.

2. Can a trademark be preserved if the owner proves that the lack of use is due to “proper reasons” under Article L. 714-5?

Yes. Article L. 714-5 explicitly provides that revocation cannot be ordered if non-use is justified by proper reasons. Case law interprets this narrowly: the obstacles must be beyond the owner’s control, directly linked to the trademark, and must objectively prevent its exploitation. Force majeure, administrative bans, pending litigation, or insurmountable regulatory barriers may be accepted; economic or strategic choices are not.

3. How can evidence of use be effectively secured?

The owner should systematically retain dated materials showing commercial use, regularly document actual exploitation, analyse the trademark’s structure to identify its dominant element, and, where necessary, file variants corresponding to the forms actually used.

4. Is use of a modernised version of a trademark (new design, updated typography) considered genuine use?

Yes, provided that the modernisation does not alter the distinctive character of the registered sign. Updated versions, such as changes in typography, simplified graphics, refined styling, are generally acceptable as long as the dominant element remains recognisable. A thorough redesign may, however, break the continuity of use.

5. Can digital use (website, social media) constitute evidence of use?

Yes. Digital materials showing visible and commercially meaningful use of the trademark can be accepted as part of a broader body of evidence demonstrating genuine use

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Long live Marseille! The trademark “P’tit Zef” copies the trademark “Le Petit Marseillais” but the latter is not misleading

nathalie dreyfus Written by Nathalie Dreyfus08/07/2016

Introduction

The decision rendered on April 12, 2016 by the Paris Court of Appeal  in the dispute between the “Le Petit Marseillais” and “Le P’tit Zef” trademarks constitutes a landmark ruling in the field of trademark protection in the cosmetics and hygiene sector. By confirming the distinctiveness of the earlier trademark and sanctioning the imitation embodied by the later trademark, the Court reaffirmed a rigorous approach to addressing parasitic appropriation strategies.

Beyond the specific dispute, this decision illustrates how French courts currently assess the economic value of trademarks, the construction of a coherent commercial identity, and the protection of intangible investments. It forms part of an evolving body of case law aimed at ensuring enhanced legal certainty for rights holders.

Assessment of the validity of the trademark “Le Petit Marseillais”

The company CILAG GmbH International, owner of the trademark “Le Petit Marseillais” , registered in Class 3 for soaps and cosmetic products, initiated counterfeit proceedings against Sir Philippe LE HIR, owner of the trademark “Le P’tit Zef” . In response, the latter sought to invalidate the earlier trademark on the ground that it was deceptive in character.

In the present case, the owner of the “Le P’tit Zef” trademark attempted to justify its position by arguing that the “Le Petit Marseillais” trademark was liable to mislead the public, by suggesting that the products were genuine Marseille soap, whereas this was allegedly not the case. Article L.711-3 of the French Intellectual Property Code provides that a sign may not be adopted as a trademark if it is likely to mislead the public, in particular as to the nature, quality, or geographical origin of the goods or services.

The Court of appeal recalled that the term “Marseille soap,” although deeply embedded in the collective imagination, does not constitute a protected geographical indication but rather refers to a traditional manufacturing method. This conclusion was supported in particular by a Wikipedia page submitted as evidence, according to which Marseille soap is defined by its production process rather than by an exclusive geographical origin. This interpretation is consistent with the regulatory framework overseen by the DGCCRF (branch of the French Ministry of the Economy).

The Court therefore inferred that, in the mind of the average reasonably attentive consumer, the name “Le Petit Marseillais” does not necessarily designate a product manufactured in Marseille or Provence. Instead, it refers to an evocative brand embedded in a recognizable marketing universe, reinforced by the figurative element depicting a child in maritime attire on the product packaging.

This analysis led the court to dismiss the argument alleging that the sign was deceptive and, consequently, to reject the counterclaim for invalidity brought in response, thereby confirming the validity of the “Le Petit Marseillais” trademark as a protectable distinctive sign.

Assessment of the infringing nature of the trademark “Le P’tit Zef”

Once the validity of the earlier trademark had been confirmed, the Court proceeded to analyze the likelihood of confusion between “Le Petit Marseillais” and “Le P’tit Zef,” in light of the products designated, all falling within Class 3.

The Court of Appeal first noted that the signs share a strong linguistic similarity in their structure, the initial element of both trademarks being almost identical (“Le Petit” / “Le P’tit”). Although the terms “Marseillais” and “Zef” differ visually and phonetically, this distinction is not sufficient to rule out any likelihood of confusion.

From a conceptual standpoint, the judges considered that both signs refer to comparable images, namely that of a child associated with a major French port city, Marseille for the earlier trademark and Brest for “Le P’tit Zef.” This interpretation led the Court to conclude that the public might perceive “Le P’tit Zef” as a regional variation or thematic extension closely associated with the earlier trademark.

The Court also took into account the figurative elements displayed on the packaging, which showed comparable visual configurations, thereby reinforcing the impression of association between the two trademarks.

This overall assessment led the judges to find the existence of a likelihood of confusion and association and, consequently, to characterize the use of the trademark “Le P’tit Zef” as an infringement of the trademark “Le Petit Marseillais”

trademark infringing

Practical and strategic lessons for trademark owners

The decision of April 12, 2016 confirms, first, that a trademark referring to a region or a traditional product, in this case, Marseille soap, is not, per se, liable to mislead the public, provided that an overall assessment of the elements perceived by consumers, including figurative components, clearly identifies the true origin of the goods and rules out any false geographical representation.

Second, the assessment of likelihood of confusion extends beyond purely verbal elements. The ruling illustrates that a judge’s global analysis include conceptual and figurative elements relating to the visual representation of the signs, thereby strengthening the protection afforded to a strong trademark when a competitor adopts a similar graphic or conceptual universe.

Conclusion

The judgment of April 12, 2016 rendered by the Court of Appeal of Paris confirms that the “Le Petit Marseillais” trademark, registered in Class 3, is not misleading within the meaning of Article L.711-3 of the French Intellectual Property Code, even though it evokes a reputed traditional manufacturing method.

This decision validates a contextual reading of consumer behavior and of the perception of signs as a whole. It also demonstrates that the overall comparability of trademarks may suffice to establish infringement when a competitor develops a similar brand, both visually and conceptually.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can a trademark evoke a geographical origin without being considered misleading?
Yes. A trademark may refer to a region or territory provided that this reference does not lead consumers to believe, incorrectly, that the products actually originate from that place. In this case, the Court held that “Le Petit Marseillais” referred to a marketing universe rather than to a geographical guarantee.

2. Is the actual place of manufacture decisive in assessing trademark validity?
Not systematically. The place of manufacture becomes legally relevant only if the trademark explicitly suggests a protected or certified origin. In the absence of an official geographical indication, a mere discrepancy between the evocation of the sign and the actual production site is insufficient to establish deception.

3. Is the mere use of different terms sufficient to exclude a likelihood of confusion?
No. The presence of different terms does not, in itself, exclude the likelihood of confusion. Judges assess the sign as a whole, including its structure, rhythm, positioning, and overall impact. In this case, despite the differences between “Marseille” and “Zef,” the overall similarity was decisive.

4. Do packaging and commercial presentation influence legal analysis of counterfeiting?
Yes. Courts take into account the overall presentation of products, including graphic elements, colors, illustrations, and visual identity. When these elements reinforce the proximity between two brands, they may contribute to a finding of imitation.

5. What risks does a company face when adopting a trademark too close to that of an established competitor?
It may face counterfeit proceedings resulting in a prohibition on use, withdrawal of products from the market, payment of damages, and, in some cases, destruction of infringing materials. It may also suffer lasting commercial harm due to loss of credibility.

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

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The rise of counterfeiting in international trade

nathalie dreyfus Written by Nathalie Dreyfus08/07/2016

 

According to the OECD and European Union Intellectual Property Office report published on April 18, 2016 on the impact of imports of counterfeit and pirated products in international trade (“Trade in Counterfeit and Pirated Goods: Mapping the Economic Impact, imports of counterfeit goods”), the import of counterfeit goods amounts to US $461 billion, accounting for about 2.5% of imports globally. At European level, counterfeiting constitutes up to 5% of products imported into the EU territory, which equals 85 billion euros.

No category of product is free from counterfeiting

The report also points out that counterfeiting may affect any product protected by intellectual property law. Luxury goods such as watches, perfumes or leather goods are those affected the most. Business to business goods such as chemicals or spare parts, but also general commodities such as toys, medicines or cosmetics are affected by counterfeiting. Even more striking, there have been customs seizures on counterfeit goods such as strawberries, bananas and cinnamon.

 OECD countries most affected

The countries most affected by counterfeit trade are the United States (20% of counterfeit goods), Italy (15%), France (12%) and Switzerland (12%). Consequently, French trademarks are among those most affected. French Customs specifies that “France is particularly at risk due to its famous brand names and the creativity of its artistic firms.”

“Originating economies”

“The countries of origin are the producing countries and the countries which have transit points for international trade. Most counterfeit products originate in China, which is the largest counterfeit producer (more than 60% of counterfeit products in the world) and more than 20% originate from Hong Kong. China is far ahead of Turkey (3.3%), Singapore (1.9%), Thailand (1.6%) and India (1.2%). Middle-income countries and emerging economies are the main players on the international markets.

The negative impact on the e-commerce boom

Trade routes taken by counterfeiters are developing very rapidly. There are different intermediary transit points. Some, such as Hong Kong or Singapore are considered important platforms for international trade. Others, such as Syria or Afghanistan on the other hand, make use of weak governance and the presence of criminal or even terrorist networks.

Historically, means of transport used by counterfeiters included planes, boats and freight cars. Because of the increasing importance of e-commerce, delivery by post is today the primary delivery method of counterfeit goods. Selling online has considerable benefits for counterfeiters because it helps them to sell their goods in the least costly and most efficient way. Moreover, this delivery method significantly reduces the risk of being caught and getting fined.

Following long court battles between eBay and large commercial groups, LVMH and L’Oréal have decided to collaborate with the online trading company in order to “protect intellectual property rights and fight against the online sale of counterfeit products”. No sector has been spared and anti-counterfeiting remains a priority nowadays for many economic stakeholders.

Dreyfus & associés can assist you all over the world by choosing the best strategy for promoting and protecting your rights.

Read more on this topic:

WCO reports tremendous increase in counterfeit goods: trademarks and individuals take the hit

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The cancellation of a Registered Trademark: the choice between NIIP or court proceedings will soon be available in France

nathalie dreyfus Written by Nathalie Dreyfus08/07/2016

 

The long awaited reform of trademark law or as it is more commonly known, the “trademark package”, was finally adopted by the European Parliament on 16 December 2016. In an effort to upgrade and adapt the present European legislation with the Internet, this Directive allows Directive 2008/95/CE to be rebuilt.

A trademark is an essential component of the business strategy of a company and it should therefore be protected. The Court of Justice of the European Union recalls in a judgment of the 12 November 2012 that the essential concept of trademark use is to in fact guarantee consumers the true origin of a product or service. (CJEU 12/11/2002 Arsenal Football Club v. Matthew Reed).

Nonetheless the protection of the trademark should not interfere with principles such as the freedom to provide services.

The classic revocation of rights due to non-use

As per Article 16 of Directive 2015/2436 the proprietor of a trademark who, without good reason, has not put the trademark to genuine use in connection with the goods and services in respect of which it is registered for an uninterrupted period of five years, may find the trademark revoked for non-use. However this provision does not apply if there are good reasons for non-use of the trademark.

This is also clear from Article L. 714-5 of the French Code of Intellectual Property, which further provides that “the revocation may be sought in court by any interested person.”

The administrative procedure: an innovative Directive

The Directive (EU) 2015/2436 brings about significant developments in trademark law and revocation of rights arising from non-use. Article 45 provides that: “Without prejudice to the rights of the parties to appeal to the courts, Member States shall provide for an efficient and expeditious administrative procedure before their offices for the revocation or declaration of invalidity of a trade mark.”

The administrative procedure for revocation on the grounds of non-use was already in place in a number of European Union countries. However, other countries such as France simply allowed for the bringing of an action before a court of law.

Following this reform, the National Institute of Industrial Property (NIIP) will now have jurisdiction to decide on a claim for revocation or invalidity of the trademark. Clearly the parties still have the opportunity, if they wish, to bring action before the court.

Until now, revocation for non-use could be invoked before the NIIP only by the defense in opposition proceedings under Article R. 712-17 of the French CPI. To challenge this defense, the opposing party was not required to demonstrate before the INPI that it had made genuine use of the trademark for all the goods invoked in the opposition (Article 712 R -17 para. 2 of the French CPI). It was enough to simply demonstrate genuine use during the last five years of only one of the goods.

When claiming revocation, the trademark owner will not be able to defend himself by merely demonstrating use of only one of the goods and this is due to the combination of Articles 19, 21 and 45 of Directive 2015/2436.

Moreover, Directive 2015/2436 states that the transposition by Member States of the provisions on the administrative procedure for revocation and invalidity benefits from an extensive deadline. Indeed, it is explained in the preamble of the Directive that in order to promote efficiency, “Member States should provide for an administrative procedure for revocation or declaration of invalidity within the longer transposition period of seven years.” Member States must therefore make the necessary changes before 14 January 2023.

With Regard to European trademarks, the EUIPO (formerly “OHIM”) has the jurisdiction to receive applications for revocation by the EU trademark holders. This administrative procedure has already shown its advantages such as its efficiency, speed and cost effectiveness.

Undoubtedly, this development will play a major role in the future with respect to the defense of trademarks.

See our other articles on the topic: European Union: appreciation of evidence of use in revocation proceedings of a trademark

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Can we freely register an expired domain name?: the case of a competitor whose website is under construction (Cass. com., Feb. 2, 2016, n° 14-20.486, “Sté Les Vents du Nord v. Sté Cuivres et bois”)

nathalie dreyfus Written by Nathalie Dreyfus08/07/2016

 

A case of unfair competition may arise if a competitor registers the domain name of a company which it no longer uses. This is the case when the confusion was deliberately maintained by the competitor and if it causes prejudice to the former holder according to the Commercial division of the Cour de cassation on February 2, 2016 (Cass. com., 2 février 2016, n° 14-20.486, « Sté Les Vents du Nord c/ Sté Cuivres et bois »).

A company selling and restoring wind instruments which operated a store under the name, the logo and the trademark “Les Vents du Nord”, was the holder of the domain name ” lesventsdunord.fr “, a website under construction.

The company Cuivres et Bois, which was in the same business and which operated a nearby store, bought the domain name “lesventsdunord.com” the day after it settled back in the public domain.

Les Vents du Nord served a formal notice to Cuivres et Bois to stop using the sign “Les Vents du Nord” and to transfer the disputed domain name to its name.

The right to a domain name is not expressly recognized by the French Code of Intellectual Property. However, a domain name is a distinctive sign. To maintain this right, it is compulsory to pay a renewal fee to the registry, often via the registrar. The penalty for non-payment is the loss of the right of the sign.

Thus, Article 6.7 of the Naming policy of AFNIC provides that “once deleted, the domain name re-enters back into the public domain and can be registered by a new applicant”.

The effective operation of the “website under construction”

The mere registration of the domain name is not enough for its defense. Effective use is also required. It is then necessary that the website under that name be open and running. Established case law states that the protection of a domain name can only be acquired through its operation. (Cass. com., 13 December 2005, n° 04-10.143, « Locatour »).

Despite this, although the website still bears the words “website under construction” on its landing page and has limited operations, the French Supreme Court deemed, as did the appellate judges, that since the landing page included the company logo, address, telephone number, its schedules and the purpose of its activities and was inserted as a link on other websites, there existed an effective and public operation of the domain name “lesventsdunord.fr “.

Purchase of expired domain name: an obvious abuse of right

Confusion between the two companies is bound to arise in the eyes of the public if a competitor purchases the disputed domain name on the day after it settled back in the public domain Additionally, the Court noted that both companies practiced exactly the same highly specialized activities in nearby locations.

The High Court states that the acquisition of this domain name by Cuivres et bois allowed it to capture the clients of Les Vents du Nord, including through links which automatically redirect the user to the company’s website.

The French Supreme Court concludes that Cuivres et bois committed acts of unfair competition. The situation between the parties has in fact harmed the attractiveness of Les Vents du Nord’s website and led to it being downgraded by search engines. In addition, the reputation of the latter has been affected by the confusion maintained by Cuivres et bois and this decreased the attractiveness of the sign “Vents du Nord.”. The High court approves the Court of Appeal decision to have ordered Cuivres et bois to pay 15, 000 euros in damages, resulting from acts of unfair competition on its part.

There is little case law penalizing an abuse of a non-renewed domain name, which is why this judgment is important. It allows for a clarification of the circumstances under which the registration of a non-renewed domain name may or not be lawful. Furthermore, this judgment clarifies the concept of operation of a domain name, which has been given a wide interpretation in this particular decision.

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The consequences of a Brexit on trademarks and patents

nathalie dreyfus Written by Nathalie Dreyfus09/06/2016

 

westminster-1176318_960_720On June 23rd, 2016, UK citizens will vote on whether or not to remain part of the European Union. In case of a Brexit, the United Kingdom will have to leave the European Union within the next two years.

Whilst we are currently witnessing a harmonization of European patents and trademarks,  a Brexit would have a significant impact on intellectual property law in Europe. If ever there were to be a  “Brexit”, both British and European intellectual property title holders would suffer alike.

What are the implications for trademark owners?

The new EU Regulation No 2015/2424 regarding Community trade marks, which entered into force on March 23rd this year, brought about certain amendments; in particular, it changed the term “Community trade mark” to “European Union trade mark”. The European Union trademark, the only one of its kind in existence for the protection or trademarks across 28 member States of the European Union, will be significantly affected if a Brexit were to occur. In fact, the Regulation will no longer have any legal effect in the United kingdom.

The current holders of European Union trademarks would lose their rights to a trademark in the United Kingdom. Entities wishing to register a European Union trademark would not benefit from the automatic protection of their trademark in the United Kingdom. Consequently, they would need to file two trademark applications: one for the European Union trademark before the EUIPO and a specific application in the United Kingdom before the IPO. An application therefore may be a domestic one but can also be made on the basis of an international trademark.

In order to appease potential case law divergence, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trademark (CTM), imposed an obligation on each Member State to designate courts at both first and second instance who would have jurisdiction in cases of community trademark infringement. In the event of  aBrexit, the European Union trademark courts in Britain would no longer have that jurisdiction.

What are the consequences for patents?

On the one hand, if Britain were to eventually leave the EU, the European patent with unitary effect would no longer apply to the United Kingdom given that one of the conditions of the effect, is to be a Member State.

Despite this, there are two possible scenarios for the Unified Patent Court (UPC) if the British vote in favor of a Brexit. The first, is the setting up of the UPC without the United Kingdom being part of it. The second and less likely scenario, is that the United Kingdom’s exit from the European Union in turn, prevents the implementation of the JUB.

For the UPC to be set up, the agreement signed by 25 countries had to be ratified by at least 13 countries and mandatorily by France, Germany and the United Kingdom. Italy would therefore replace the United Kingdom since it is the country with the highest number of valid European patents in 2012 after Germany, France and the United Kingdom. An addendum to the agreement will therefore be required. Even where the United Kingdom did leave the EU, it is unlikely that this would prevent the setting up of the UPC: rather, its entry into force would be simply delayed throughout the EU.

What are the consequences for trademark and patent licenses?

The jurisdiction covered by licenses for intellectual property rights will also be affected if the United Kingdom leaves the EU. This is an issue of contract interpretation. Parties should ensure that licenses still cover the same territory and thus include the United Kingdom. This also applies to co-existence or franchise agreements.

A change to the principle of the exhaustion of rights

Moreover, we must not forget that if the United Kingdom leaves the EU, the scope of the exhaustion rule would also be amended. According to the exhaustion doctrine, goods can freely move across the territory of the EU or the EEA after an initial trading in the market made by the rights holder or with his consent. Consequently, the owner of a trademark or patent would not be able to oppose the use of any patent or trademark for goods which have been traded for the first time in the EU or EEA with his consent. If the UK were to leave the EU as well as the EEA, trademark and patent owners could prohibit the export of UK goods to Europe and vice versa.

Transitional Mechanisms for European trademarks

In order to ensure the protection of existing EU trademarks, the implementation of transitional mechanisms is essential. In light of the uncertain legal consequences, certain companies will register trademarks both on a domestic and European level so as to ensure maximum protection.

At present, it is possible to convert the registration of a European trademark to a domestic one (Articles 112-114 of Council Regulation (EC) No 207/2009) but the above requires a reconsideration of the application process and payment of taxes.

Additional legal consequences

Other legal consequences, going beyond intellectual property can be expected.

By leaving the European Union, the United Kingdom would no longer have a representative in the European Parliament nor in the European Council, and there would no longer be a British judge in the Court of Justice of the European Union (CJEU).  EU legislation and the CJEU’s cases would inevitably be affected by a Brexit.

While this is an extreme scenario, alternative arrangements can of course be considered, such as the negotiation of special arrangements through the European Economic Area (EEA), the European Free Trade Association (EFTA) or the World Trade Organisation (WTO).

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Women in Law Awards 2016: Nathalie Dreyfus named Trademark Attorney of the Year (France)

nathalie dreyfus Written by Nathalie Dreyfus19/05/2016

 

Nathalie DreyfusDreyfus & associés is proud to announce that founder, Nathalie Dreyfus has been named Trademark Attorney of the Year (France) by Lawyer Monthly’s Women in Law Awards 2016.

A full-page article covering her and her team’s expertise and active role in various international IP organisations and associations has been published online and can be viewed here.

http://www.lawyer-monthly.com/wp-content/uploads/2016/04/LMWILA16_17.pdf

To view all the winners, please click on the following link

http://womeninlawawards.lawyer-monthly.com/2016-winners/

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Unified Patent Court: will it come into effect in the second quarter of 2017?

nathalie dreyfus Written by Nathalie Dreyfus19/05/2016

 

europe-1395916_960_720Margot Frohlinger, Principal Director for Patent Law and Multilateral Affairs at the European Patent Office (EPO) has announced that the Unified Patent Court (UPC) could finally be operative in the spring of 2017.

The Agreement on the Unified Patent Court was signed by 25 Member States of the European Union on 19 February 2013. However, it needs to be ratified by at least 13 states, including France, Germany and the United Kingdom, to enter into force.

A Simplified Process

The advantage of the European patent with unitary effect is that only one application will have to be filed, leading to a single patent being obtained and thus to the payment of a single annual fee. This patent will initially be valid in thirteen countries before being applicable to all European Union countries.

The Unified Patent Court will have exclusive jurisdiction for litigation relating to European patents and European patents with unitary effect. It will be possible for the holders of European patents to opt-out for a transitional period (of up to seven years), thus allowing them to continue to benefit from the current system. This is subject to one condition: no action should have been brought before the unified court.

The UPC will comprise a Court of First Instance, composed of a central division (with seat in Paris and two sections in London and Munich) and local and regional divisions in each Member State as well as a Court of Appeal and a Registry.

Eight ratifications so far

So far, the agreement has been signed by France and eight other states. The ratification of Germany and the United Kingdom is still amiss. The United Kingdom is clearly committed to ratifying the agreement in the summer of 2016. The German parliament meanwhile could ratify the agreement at the end of 2016 according to Mrs Frohlinger. The European patent with unitary effect and the UPC could therefore be born in the spring of 2017.

Preservation of national sovereignty

The adoption of the European patent with unitary effect and the Unified Patent Court is a step forward in the harmonization process of intellectual property law.

Although the trend is towards growing harmonization, Member States will always retain some of their sovereignty. Indeed, the substantive law as well as the procedure relating to the European patent with unitary effect will be harmonized while all issues relating to ownership and taxation would still depend on national legislation.

“Brexit”: what will the consequences be for the UPC?

Should the UK decide to leave the European Union, this would not be without consequence since membership to the European Union is one of the requirements to be part of the UPC. If the English vote to leave the EU in June 2016, two scenarios are possible:

  • Either the European patent and the UPC will come into effect without the United Kingdom being included,
  • Or the UK’s exit from the EU will prevent the European patent with unitary effect and the UPC to come into effect.

Ms. Frohlinger assured that the consequences of a possible “Brexit” would not be as dramatic as that as because of the UK’s significant involvement in the development of the UPC, ratification of the agreement should not be a problem.

As for Benoit Battistelli, EPO President, he appears confident and considers that “we are now ready from a legal, technical and operational point of view, to issue unitary patents. The only remaining steps are the setting up of the unified patent court and the finalisation of the ratification process at national level”.

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Multi-class trademark filing in Laos

nathalie dreyfus Written by Nathalie Dreyfus19/05/2016

 

laos-26833_960_720Following a notification from the Intellectual Property department of the Ministry of Science and Technology, the Lao People’s Democratic Republic establishes the filing of multi-class trademarks.

A trademark could not be filed in several classes until recently in Laos, such that it was required to file several different trademarks.

Extended protection across the Asian market

Laos finally adopted the multi-class filing system on 1 February 2016, in order to comply with the practice of most of the other countries.

It should be kept in mind that the multi-class system provides many advantages.

As such, this system particularly provides:

  • Declining rates with regards to the taxes of additional classes
  • Simplified management and administration of filing of trademarks
  • Reduced analysing period for the filing of trademarks
  • Easy follow-up and renewal procedures of trademarks

Through their membership to the multi-class system, worldwide trademark owners may extend their protection to the significant Asian market by means of simplified and inexpensive proceedings.

Dreyfus & associés can assist you in any filing procedure for trademark registration while ensuring the best enforcement strategy and protection of your rights.

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