Nathalie Dreyfus

In a judgment dated January 30, 2015, the General Court (Case T-278/13) rendered an interesting decision on the appreciation of the use of a mark in revocation proceedings.

In this case, the registration in 2004 of the mark “NOW + logo” in respect of the services in classes 35, 41 and 42 was in issue. Now Wireless Ltd, apparently interested in this mark which partly relates to its company name, filed an application for revocation of the mark, claiming that the latter had not been put to genuine use in the European Union for a continuous period of 5 years.

In fact, Community law provides that when the proprietor of a trademark has not been puting it to genuine use in connection with the goods or services listed in the registration, within a continuous period of five years, the result is the revocation of their rights.

Trademark law allows companies to identify their products and services from those of their competitors and since, in contrast to copyright law, it requires no creativity, protection is not justified anymore when the mark is not exploited.

It is therefore natural to give third parties interested in the mark the opportunity to obtain the revocation of the rights owned by the company which monopolizes a trademark without exploiting it.

The proprietor of the mark should then establish that the mark has been exploited in relation to the goods or services in respect of which it is registered, during the relevant period.

In fact, the Cancellation Division declared the revocation of the mark with regard to classes 35 and 41 only whereas the validity of the registration of the mark was upheld for services in class 42.

Consequently, the applicant filed a notice of appeal with the Office for Harmonisation in the Internal Market (OHIM), against this decision in so far as it upheld the registration of the mark in class 42. Since the OHIM dismissed the appeal, the General Court  then had to decide this case and shed more light as to the appreciation of the genuine use of a mark for the goods and services for which it is registered.

In this case, the proprietor of the contested mark proved that he had affixed the mark on modems and 3G keys and also provided services for access to electronic networks, services for rental of equipment and software as well as information to its clients under the contested mark, during the relevant period.

However, the issue was to know whether those services fell under those specified in the application for registration. Indeed, only the evidence of use of the mark relating to the goods or services for which it is protected makes it possible to dismiss the revocation. The applicant claimed that those services fell under only one of the two sub-categories for which the mark is registered and that the revocation should be declared with respect to the other sub-category of services in class 42.

In fact, it all depends on the products and services for which the mark is registered in the registration certificate. If the goods and services for which the mark is registered form part of a broad category, it is well-established case-law that independent sub-categories within this category and evidence of the use of each of those categories need to be identified. However, the products may also be divided into sub-categories otherwise than in an arbitrary manner.

In this case, the Court considered that it was not necessary to define a sub-category of services to the extent that “the services concerned all meet the same need”. In this connection, it has been highlighted that “the end-user of each of the services concerned is the same consumer wishing to access the electronic networks and who relies on all of those services for that purpose”.

What can we finally conclude from such a decision on revocation proceedings? Firstly, it appears that the description of products and services listed on the registration certificate is essential and must not be chosen lightly since it determines the obligation of effective exploitation of the mark. This first finding is however far from being new. It also appears that the products and services of the same class need to be classified according to their purpose and their end-use for the consumer. Hence, if it appears that the goods or services listed aim at the same consumer, they cannot objectively be separated and the evidence of use of one of them will be enough to prove the use for the whole.

It remains unclear what the Court understands by “services meeting the same need” and how to apply this case-law to other categories of services as well as to goods.

The French Highest Court (cour de cassation) has recently reaffirmed the well-established principle that “the likelihood of confusion must be globally assessed, with regard to the content of the trademark registrations regardless of the consumer of the designated goods and the conditions under which the trademarks are used or the goods are marketed”. (Cour de cassation, chambre commerciale, 23 juin 2015, pourvoi n°14-13011)

In this case, a company commercializing vitamin products for kids under the trademark « Min’ours » (“our” meaning “bear” in French) sued for trademark infringement a competitor for the sale of similar products under the trademark in colors « Kid’ours ».

The Court of Appeal of Rennes considered that the similarity between the marks was diminished by the differences in the colors and the dactylography, as well as by the differences between the packaging of the goods at issue and the way the trademarks were displayed on such goodsverturning this judgement, the French Court recalled in a very clear decision that only an in abstracto assessment of the signs shall be conducted for the determination of the likelihood of confusion. This decision is the line with the Court’s traditional jurisprudence. In compliance with French law, the scope of the protection granted to the trademark is limited to the contents of the application filed with the Office.  Use or packaging of the products should have no influence on the Court’s findings on the issue of likelihood of confusion. By this decision, French Supreme Court shows it plays strictly its role of gatekeeper of the trademark system where rights are acquire through registration, not use.

The decision Specsaver of the Court of Justice of the European Communities of 2013 had opened a door to the inclusion of the actual use of a trademark when assessing the likelihood of confusion. This decision hold that “where a Community trademark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.”

However, the facts of the particular matter were different. Besides, packaging and actual use of the marks are traditionally examined by the courts in the light of unfair competition or free riding.

Presenting her best wishes from Ducasse cooking school, Nathalie Dreyfus delivered the present speech.

Good evening all,

 

It is a great pleasure to have you all here at the firm’s annual dinner tonight.

 

I always look forward to this event, one which gives us the opportunity to come together and share a wonderful feast and some celebratory drinks prior to the New Year.

 

This year was a difficult one for France, a year which commenced with the Charlie Hebdo and kosher supermarket attacks and is ending following a series of attacks on the Stade de France, the outdoor cafés of Eastern Paris and the Bataclan concert hall.

 

Throughout the year, we were humbled by the large number of messages of solidarity and support which were sent to us by our colleagues from all around the world. We were also lucky to witness strengthened relationships within the firm itself; it is important to feel part of a strong and solid community at such turbulent times.

 

We as a group at Dreyfus have held firm and have even gone ahead to develop despite these unsettling times in which we now find ourselves.

 

This development was made possible by all of you and all of your hard work, as well as the outstanding display of mutual support you have all shown each other during this past year.

 

The firm has and continues to develop further in the field of Intellectual Property and the digital economy.

 

For better or for worse, these technologies are omnipresent throughout the economy and our daily lives. Naturally the law needs to evolve alongside these changes in order to ensure a certain degree of regulation in a world which we often see as free of any rules.

Even if on a relatively small scale, this is what our firm’s work contributes to.

 

We work in order to protect companies as well as business founders and innovators. France’s current difficult economic situation highlights a key importance of our work: to contribute to the country’s economic development.

 

The financial success of some companies is often displayed on the internet. But we also know that the success of these companies derives from hard work, details of which are kept discreet and behind the scenes. One might say, ‘in the kitchen’.

 

Our firm is in fact one of those kitchens.

 

We help to protect influential entrepreneurs and businesses, those who make up France’s identity and contribute to its diversity. In particular the catering industry!

 

You all already know how important this is to me: you need to eat well and appreciate what goes on in the kitchen. That is why I am very happy to welcome you here this evening to the Ducasse cooking school.

 

However before we eat lets toast to a wonderful New Year ahead. I wish all of you and your loved ones happy holidays and a joyous new year.

 

Nathalie Dreyfus

You may follow the video taping here : youtube

The Eiffel Tower is the most visited (paying) monument in the world and attracts many tourists every year. In the digital era, it is becoming easier for every tourist to immortalize the Eiffel Tower and publish photos on their Facebook or Instagram account. The question which springs to mind and which has been amidst much polemic is whether photos of the Eiffel Tower can be freely published or whether there is copyright infringement.

The Tower, as a work of architecture, has been in the public domain since 1990. Thus, in theory, anyone is free to use a picture of the Eiffel Tower for personal or commercial purposes. The issue became more complicated when the tower was illuminated at night.

The Société d’Exploitation de la Tour Eiffel (SETE) announces, on its website, that the various illuminations are subject to copyright. Thus, [usage of] any nighttime image of the Eiffel Tower is subject to a prior request from the SETE.

The originality of the illuminations is no longer challenged for a long time. This was confirmed by the Cour d’Appel of Paris in a judgment dated June 11, 1990. The Court held that the composition of the lighting effects intending to reveal and highlight the lines and shapes of the monument was an original “visual creation”.

Yet, during the transposition of the Directive of the European Parliament and of the Council, known as Infosoc, France has had the opportunity to craft an exception to copyright in architectural works located in public places. The Directive provides for this exception, but it is optional, which allows Member States of the European Union to elect whether or not to transpose the clause in their domestic law.  Alongside with Belgium and Italy, France has chosen not to allow the use of images of architectural works for private purposes.

Thus, the photographs of the Eiffel Tower taken during daytime are free of any prior intellectual property rights, while those taken at night require the authorization of the SETE.

The World Intellectual Property Organization (WIPO) may modify the international trademark registration system in the near future so as to allow the registration of trademarks comprising Chinese or Japanese characters.

Japan and China are both members of the Madrid Protocol which allows for the submission of requests for international protection covering those two jurisdictions. However the current system only enables submission of figurative, semi figurative or verbal trademarks consisting of Roman characters. It was impossible to register international trademark consisting mainly of Chinese or Japanese characters with WIPO until now.

The director general of WIPO, Francis Garry, stated that the institution will work on these reforms over the next five years. The first changes pertaining to Chinese characters should be approved as early as next autumn.

These changes are supported, in particular, by Asian and Middle East countries and reflect the growing importance of Asian economies globally. A Chinese or Japanese company wishing to undertake an international registration will no longer have to give up its original trademark and register a mere translation of its trademark. According to Zhao Hu, a lawyer who specializes in intellectual property law, this reform will also reduce the number of free riding cases.

Terrorism remains a constant and ever increasing threat. Following the terrorist attacks that took place in Paris earlier this year and on the November 13^th, the French government wishes to increase its cooperation with the Internet’s key players; this, in order to fight terrorism on the Web and prevent the dissemination of Jihadist propaganda. It was in light of this initiative that Manuel Valls, the French Prime Minister met with representatives of Facebook, Twitter, Google, Apple and Microsoft. No concrete measures have been put into place at present but Valls aims to set up a counter-speech strategy against the Islamic State within the next two months.

Bernard Cazeneuve therefore launched a series of initiatives in order to raise awareness among Internet players about these challenges, by meeting with leading Internet companies to discuss the implementation of concrete solutions.

However, the French government does not intend to amend its legal arsenal in the near future. Currently, the “Cazeneuve” bill dated of November 13, 2014 already provides for a number of mechanisms to strengthen the fight against terrorism through Internet surveillance and to promote cooperation between authorities and Internet users in the identification of and fight against content related to terrorism.

The law provides that hosting providers have the obligation to implement simple and accessible mechanisms allowing users to report content which encourages people to commit acts of terrorism or their glorification. Nevertheless, the real innovation of this bill lies in the possibility for administrative authorities to order hosting providers to withdraw such content, failing which they may even block those websites by compelling Internet providers to ban the access to them. These authorities may also request search engines to dereference these websites.

In some cases, the administrative authority may even block the website directly without prior request to editors or hosting providers. The judicial control will be minimal since it will intervene only when the matter will be referred to the relevant administrative court by a “qualified person” appointed by the French data protection authority, la Commission nationale informatique et libertés (CNIL) to monitor these cases of website blockings.

France thus has a particularly tough legal arsenal to fight against terrorism on the Internet and on social networks since the November 2014 bill. The recent statements and efforts made by the Prime Minister and the Minister of the State Affairs are proof that the government is determined to implement these measures.

Following January’s attacks, several measures were put into place in order to fight Internet extremism. A website by the name of “Stop-djihadisme” was launched, allowing families and close relatives to signal cases of extremism and consequently battle extremist propaganda.

Presently, the French authorities consider that the Internet, prisons and prayer centres are all locations from which extremism can originate from.

On 26 June 2008, the ICANN (Internet Corporation for Assigned Names and Numbers) confirmed its decision to provide the public with the opportunity of creating new top level domains. Several hundred generic top level domains have been created since 2012.

What is the purpose of these new top level domains? – As the range of available top level domains became increasingly limited, the creation of top level domains unlocked the opportunity of choosing preferential domain names and to increase the size of the market.

What’s in it for business? – The creation of new generic top level domains raises considerable stakes for businesses. Henceforth, each entity can benefit from a top level domain in its name. These top level domains allow a better exposure on the Internet, bringing real added value to businesses, as a clear and definite top level domain allows Internet users quickly to identify the owner of the website. As the name of the domain is the gateway to e-commerce, an informed choice of the top level domain should be carried out to guarantee cyber traders all chances of success. The acquisition of a new generic top level domain is in effect an advertising investment.

What are the risks? – The first issue raised is that of the identity or similarity between a new top level domain and an earlier right. But the ICANN has introduced a legal system of protection to prevent giving rise to unmanageable legal uncertainty. The next issue is the  registration of generic terms as top level domains. The domain name does not have to be distinctive. A generic, necessary or usual term may be registered as a top level domain if the applicant has a justified interest to proceed with such a registration. Yet monopolising such a top level domain provides for a competitive advantage which is difficult to defend.

Furthermore, the increase in potential domain names may give room for increased cybersquatting activities, which consists in purchasing a domain name to subsequently resell it at an inflated price to companies that need it. Yet a report called The Name Sentry Abuse by Architelos chambers, which specialize in the management of domain names, in order to evaluate the amount of abusive registrations, shows that the number of registrations of new generic top level domains is inferior to that of abusive registrations of domain names comprising of a pre-existent generic top level domain. This outcome should be qualified nevertheless since the number of abusive registrations comprising a new generic top level domain has increased substantially.

Besides these legal problems, there is the issue of the reaction of Internet users towards the creation of these new top level domains. A survey carried out on a thousand of American consumers by Interbrand during October and December 2014 shows that these new top level domains have a lesser influence than .com on Internet users. Firstly, it is shown that people remember the name of domains with .com more easily than the name of domains in a new top level domain. The rate of “clicks” also shows that users are more likely to steer towards an address with .com than towards a new top level domain even if the name of the domain with .com appears lower in search results. It would thus seem that  e-commerce websites run the risk of losing visitors and hence, potential customers. Nonetheless, the outcome of such a survey have to be put into context. The emergence of these new top level domain is still relatively recent. Internet users should be given time to adapt before the attractiveness of these new top level domains can be assessed.

A corporation cannot have authorship of software, according to the judgment of the Cour de Cassation rendered on January 15, 2015 (Cass. Civ. 1, January 15, 2015, No. 13-23566). In this case, a computer engineer and a professor of medicine together founded a company editing cephalometric analysis software. Differences emerged regarding the ownership of the rights arising from the creation of the software and from its later developments.

The Professor of Medicine became the majority manager of the aforesaid company which filed suit against two companies managed by the engineer, petitioning the Court to declare that the two software programs were collective works. The Professor also wished it to be recognized that the authorship rights belonged solely to the company.

 The Cour d’Appel of Rennes held that the company which was originally incorporated by the two protagonists is the sole author, since the development of the software was the result of the work of its partners (CA Rennes, May 28, 2013, No. 11/05770).

Yet, the Cour de Cassation opined that a corporation cannot hold authorship rights. Indeed, Article L113-1 of the French Intellectual Property Code provides that “authorship belongs, unless proven otherwise, to the person or persons under whose name the work has been disclosed.” Accordingly, the Cour de Cassation held that it can only cover one or several individual(s) and quashed the decision of the Cour d’Appel of Rennes. The reasoning behind this judgment is crucial from a legal point of view: the corporation cannot be the author of the software, but it is vested with [its] copyright rights.