Amendments regarding industrial design law recently came into force in Montenegro. Industrial design owners wishing to file infringement lawsuits are offered new opportunities.
Previously, an action could be filed within 5 years as from the date of infringement. Henceforth, if the infringer has acted in bad faith, a lawsuit can be filed at any moment during the design protection period, to wit, within 25 years posterior to the filing date.
The owner may in addition of damages claim compensation, evaluated on the basis on a licence agreement which has been concluded.
Finally, if the owner proves that the infringement has been committed during a commercial activity or with the aim of obtaining economic or commercial benefits, the Court will be able to order the seizure of the defendant’s movable and immovable properties, although he is not directly linked to the design infringement.
The new gTLD domain names like .HOME, .BIKE or .PARIS are emerging on the market. Some take advantage of these launches to infringe well-known trademarks and domain names with these gTLD are already subject to UDRP procedures.
On 5 February, the domain name <canyon.bike> has been registered by a privacy shield service at the registrar Godaddy.com.
The German company Canyon Bicycles GmbH has promptly filed a UDRP complaint (Uniform Domain Resolution Policy) at World Intellectual Property Organisation (WIPO). The company intends to act under its intellectual property rights as it is the holder of several Canyon trademarks since 1993.
This complaint is the first UDRP procedure since the introduction of the new gTLD domain names on the market. IBM has also filed two complaints concerning the domain names <ibm.guru> and <ibm.ventures>. However, it concerns the URS procedures (Uniform Rapid Suspension). Unlike the UDRP procedures, the aim is not to result to the transfer or cancellation of the domain name but simply to obtain its suspension. On 12 February, the expert of National Arbitration Forum (NAF) has favourably acceded to the request of IBM and has ordered the suspension of the two domain names.
More than 1000 gTLD domain names will be spread out the coming months and along with these expansions conflicts will intensify. It will be interesting to see which of them will have an interest for the registrants as for the gTLD .CO. The registrant of the domain name <tes.co> was considered infringing the trademark of the company Tesco whereas the extension was not taken into consideration during the assessment of the similarity between the trademark and the domain name.
In the United States like in Europe, the approval of a drug brand name faces many obstacles. Beyond the classical requirements for any trademark filing, the registration of a trademark for a drug largely depends on the approval of the Food and Drug Administration (FDA).
The FDA examines several criteria. First and foremost, the deceptiveness of the sign and the likelihood of confusion (mainly with another drug on the market), are analyzed to ensure safety and to prevent medication errors. Other tests are conducted on packaging, patient populations, generic names, dosage strength or even handwriting. It is indeed essential that the prescription be fully understood by doctors and by the chemist delivering the drug to the patient.
This procedure is fully funded by the PDUFA (Prescription Drug User Free Act), which also obligates the FDA to reach performance goals. Since 1992, this process halved the time it takes for a drug to be approved in the United States. However, a drug trademark will be registered only when the component will be authorized by its agent.
An emergency procedure also exists as regard to treatment of life-threatening diseases which shows a unique potential clinical success. The outcome of this procedure might be disadvantageous for candidates following the ordinary process. A trademark filed with the emergency procedure has priority, even if the application is subsequent.
Due to these monitoring, only 40% of applied drugs names are registered as trademarks – safety of patients being a priority.
By virtue of Federal Law No. 194-FZ adopted on 23 July, 2013, Russian authorities decided to increase fines in case of trademark infringement. The implementation of stricter sanctions aims at deterring third parties from distributing counterfeit goods.
The new Article 14.10 of the Russian Code of Administrative Offences provides new penalties for trademark infringement. These will be proclaimed in case of illegal use of trademarks, appellations of places of origin, production and distribution of counterfeit goods.
Previously, the Russian legislation made no correlation between the amount of fine and the price of infringing goods. It presently differentiates between the penalties depending on whether it is being incurred by the company or its executive businesses. A company will have to pay triple the price of goods with a minimum amount of RUB 40,000 (approximately EUR 850) and counterfeit goods will be seized. Business executives will have to pay twice the price of the counterfeit goods with a minimum amount of RUB 20,000. Finally, individuals will only have to pay the price of the goods with the minimum amount of RUB 2,000 (approximately EUR 50).
Although the struggle against trademark infringement is difficult in Russia, these measures are welcomed and should have a deterrent effect for some.
While the new top-level domain names extensions appear on the market, the Trademark Clearing House (TMCH) has revealed a report highlighting an alarming risk of cybersquatting in relation to major US companies’ domain names.
The TMCH is a mechanism set up by ICANN allowing the protection of trademark owners in the expansion of new top-level domain names. It allows the reporting of data related to trademarks in a centralised database before and during the launch of new top-level domain name extensions.
The TMCH study made on new extensions like <.web>, <.online>, <.blog> <.shop> and <.app> demonstrates that United States’ 50 most famous brands have all been pre-registered by unofficial parties. It further reveals that half of these trademark owners do have any principle domain names in existing extensions like <pepsi.us> or <kelloggs.net>. Also, Jonathan Robinson, Strategic Consultant to TMCH considered that “all brand names are at risk of intellectual property infringement online as the new TLDs are rolled out”.
Nonetheless, mechanisms have been set up to prevent these types of situations. Registration at TMCH therefore allows trademark owners to enforce their brands and to benefit from a preferential right of reservation during the priority period of Sunrise. Registration at TMCH also allows to be informed of all undue registration of domain names reproducing or imitating a trademark. Jonathan Robinson further stated that “prevention is better that cure” and that “by recording marks in the Clearinghouse, businesses will be safe in the knowledge that they have made the cornerstone investment in brand protection in new TLDs”.
More than 80% of the major US brands have already acceded to alternative dispute resolution procedures relating to domain names such as UDRP procedures. While cases of cybersquatting are expected to increase with the new top-level domain name extensions, the TMCH’s objective is to prevent such litigations.
If the aim of cyber squatters is to divert internet traffic on their websites by means of suggestive domain names, the medium-term objective is to negotiate at a reasonable price the domain names registered without the brand owners’ knowledge. The role of the TMCH in this context is essential for brand owners.
Dreyfus & associés is a TMCH accredited agent. For more information, please do not hesitate to contact us.
After ten years of ongoing dialogue, the European Union and China have signed an agreement to strengthen their cooperation on the protection of intellectual property rights, last December. The collaboration extends to all fields of intellectual property through the implementation of twenty framework activities, with an overall budget of 10 million euros over the next three years.
The agreement provides for the adoption of relevant European and Chinese laws, in line with a close collaboration between authorities, the publication of intellectual property databases as well as an enhanced cooperation on customs matters. In an environment of digitization, the objective is to pool resources for the protection of innovations. The agreement also promotes economic and commercial development between the EU and China in the long-run.
The European Union and OHIM experts are already in Beijing, in order to implement the collaboration with China. OHIM President, António Campinos, stressed on “the importance of the EU-China cooperation in a globalized economy”.
This collaboration follows a previous agreement signed in 2009 between China and the European Union.
On the 11th of April 2013, the Court of Justice of the European Union in the case of ASA Sp. Z o.o. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) has pronounced itself on the likelihood of confusion existing between the trademarks FEMIFERAL and FEMINATAL both filed in class 5 concerning pharmaceutical products for children.
The company ASA Sp. Z o.o. has filed the trademark “FEMIFERAL” with OHIM on 18 September 2006; however, Merck sp. Z o.o. who is the proprietor of the prior trademark FEMINATAL has rapidly initiated an opposition proceeding. OHIM has then ruled in favour of Merck sp. Z o.o. on 19 November 2010.
The company ASA Sp. Z o.o. has challenged the OHIM and the General Court of the European Union upheld through the decision of Asa/OHMI – Merck on the 22nd May 2012 rejecting all its demands; formed an appeal in front of the Court of Justice of the European Union (CJEU).
The Court rejected the appeal ruling that the trademarks were similar and constituted a likelihood of confusion. The Court did not retain the argument that the prefix “FEMI” will be understood by average consumers as being products dedicated to women, hence, despite of its location in the pharmaceutical field, it is referring to average consumers and not to the relevant public.
The 100 pioneer domain names of .PARIS have been revealed on last 21st February, but this is just a stage in the project of this new gTLD.
Firstly, it is important to note the 100 pioneers will be able to benefit from an address with .PARIS as from May 2014 during an exclusive period of 6 months whereas other domain names will be visible and accessible for sale only by the end of the year for the general opening.
Moreover, a Sunrise Period of 3 months will be opened for trademark owners as from the month of September 2014. The domain names reserved during this period will be allocated and available online only at its termination.
The new domain names are classified in various categories: Ambassadors (7), Business (8), Ecosystem and Individual Parisians (78), and Namespace Mandate (5). These will be granted to registrants for 3 to 5 years and they are:
livraisons-restaurant.paris: Service connecting restaurateur making deliveries with clients,
m.paris: Service allowing creation of an address like mon.adresse@m.paris,
accessibilite.paris: Service of referencing accessible locations and equipment irrespective of the disability,
reservation-hotels.paris: Service of hotel reservations in Paris approved by the Office of Tourism, and
bandb.paris: Service of room reservations in guesthouses
In fact, there are 98 domain names out of which two have been reserved by the City of Paris for the general opening.
The City of Paris also proposes a procedure to oppose to pioneer names before the 21st March 2014. The request can be presented by any person providing evidence of its interest to act on absence of the Pioneer’s legitimate interest and on his bad faith.
The economic contributions of pioneers amount to 416 000 € in addition to the contribution in kind (for e.g. marketing communications aiming at enhancing the notoriety of the candidate’s project and the .paris project).
Find the list of the domain names in the press release of the City of Paris here.
Our consulting firm is at your disposition to advise you on the forthcoming Sunrise period.
Long viewed as a safeguard against economic espionage and unfair competition, trade secrets now occupy a more complex place within European Union law. By harmonising their protection, the EU has sought to secure undertakings’ know-how, innovation and strategic commercial information. Yet this protection can no longer be considered in isolation. It must now be reconciled with European requirements relating to transparency, the regulated circulation of data, innovation and the protection of the public interest.
From the Europe 2020 strategy to the trade secrets directive: the construction of a common framework
Directive (EU) 2016/943 of June 8, 2016 was adopted in response to the need to harmonise a previously fragmented system of trade secret protection across the European Union. Prior to its adoption, confidential information was protected in varying ways across Member States, either through specific rules or under general principles of civil liability, unfair competition, employment law, criminal law or contract law.
The Directive now establishes a common definition of a trade secret. Information may be protected where it :
is secret;
has commercial value and;
its lawful holder has taken reasonable steps to keep it confidential.
This definition requires undertakings to adopt an active approach: it is not sufficient merely to describe information as confidential; the undertaking must also be able to demonstrate its strategic value and the measures implemented to protect it.
The Directive also harmonises unlawful conduct, such as the unauthorised acquisition, use or disclosure of a trade secret, as well as the principal civil remedies available to bring the infringement to an end and obtain compensation. It nevertheless establishes only a minimum framework: procedural rules, the taking of evidence and the assessment of damages may still vary from one Member State to another.
How has France transposed the European trade secrets regime?
Law No. 2018-670 of July 30, 2018 transposed the Directive into French law by introducing, into the French Commercial Code, a specific regime for the protection of trade secrets.
Article L.151-1 of the French Commercial Code incorporates the three European criteria listed above. Protection is therefore not automatic: the undertaking must be able to demonstrate that it has identified its sensitive information and implemented concrete measures to preserve its confidentiality.
This regime is, however, balanced by a number of exceptions. Trade secrets may not, in particular, be invoked to obstruct freedom of expression and information, the good-faith disclosure of unlawful conduct, or the protection of a legitimate interest recognised by law. The regime therefore protects the strategic information of undertakings without establishing a general right to opacity.
Protection now interacting with new European regimes on transparency and access to data
Since the transposition of the Directive, the legal foundation has remained unchanged. However, trade secrets now operate within a broader regulatory environment, marked by the development of European instruments relating to whistleblower protection, data governance, access to data and artificial intelligence.
The 2019 whistleblower directive: trade secrets must not override the public interest
Directive (EU) 2019/1937 of October 23, 2019, does not call into question the protection of trade secrets. Rather, it strengthens the protection of persons who report certain breaches of Union law. It thus confirms that business confidentiality must be reconciled with the protection of the public interest.
This Directive also helps to clarify the limits of the enforceability of trade secrets where disclosure takes place within a protected whistleblowing framework. For undertakings, this interaction requires more sophisticated governance. It is no longer sufficient to reinforce confidentiality clauses. Undertakings must also implement reporting channels, reliable internal procedures and a compliance culture capable of distinguishing the legitimate protection of secrecy from the abusive use of confidentiality.
The Data Governance Act: towards a regulated circulation of data
In this approach trade secrets are no longer analysed solely as a barrier to access but they become an element to be integrated into mechanisms of governance, control and secure sharing. The European Union does not seek to oppose confidentiality and innovation; it rather seeks to construct a model in which data may circulate without destroying the value of protected information.
The Data Act: a new point of tension between access to data and trade secrets
Regulation (EU) 2023/2854 of December 13, 2023, also known as the Data Act, represents an even clearer development. It organises, in certain circumstances, access to data generated by the use of connected products and related services, including protected data held by public sector entities, while providing safeguards where such data contain trade secrets.
Undertakings must therefore identify sensitive information in advance, provide for confidentiality undertakings and document the risks associated with its disclosure.
The AI Act: transparency in artificial intelligence and the protection of confidential information
Regulation (EU) 2024/1689 of June 13, 2024, on artificial intelligence, known as the AI Act, adds a further dimension. For certain artificial intelligence systems, it imposes obligations relating to documentation, transparency, risk management and compliance. These obligations may entail the production or communication of sensitive technical information potentially covered by trade secret protection.
The AI Act does not remove the protection afforded to trade secrets. It rather requires that such protection be reconciled with the requirements of transparency, security, documentation and oversight applicable to certain artificial intelligence systems.
Conclusion
The European Union has established a common foundation for the protection of trade secrets, without achieving full uniformity, as Member States retain a certain margin of discretion. Today, this protection has not been replaced, but must be articulated with new European instruments relating to whistleblowing, data governance, access to data and artificial intelligence.
Dreyfus law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
1. What is the difference between a trade secret and a confidentiality clause?
A confidentiality clause is a contractual instrument. It requires a person or undertaking not to disclose certain information. A trade secret, by contrast, is a statutory protection regime. The two may complement each other: a properly drafted confidentiality clause may help demonstrate that an undertaking has taken reasonable steps to protect the information.
2. Is information simply marked “confidential” automatically protected?
No. Marking information as “confidential” is useful, but it is not sufficient in itself. The undertaking must be able to demonstrate that the three criteria for trade secret protection are met: the secrecy of the information, its commercial value and the existence of reasonable protective measures. Such marking is therefore an indication, not an absolute guarantee.
3. Can an idea be protected as a trade secret?
Yes, but only if it is sufficiently concrete and confidential. A general or abstract idea is difficult to protect. By contrast, a structured method, a technically documented concept, a development plan or a precise commercial strategy may fall within the scope of trade secret protection if the legal conditions are satisfied.
4. Does trade secret protection replace patent protection?
No. A patent grants an exclusive right in exchange for the public disclosure of the invention. Trade secret protection, by contrast, is based on confidentiality. An undertaking may choose not to patent an innovation in order to avoid disclosing it, but it must then be capable of effectively maintaining secrecy. The choice between patent protection and trade secret protection therefore depends on the nature of the innovation, its expected lifespan, the risk of copying and the undertaking’s commercial strategy.
5. Can trade secrets be enforced against a former commercial partner?
Yes, where that partner obtained the information within a limited contractual framework and subsequently uses it without authorisation. This is why partnership, service, distribution, research and negotiation agreements must precisely define the information transmitted, the authorised use of that information, the duration of protection and the consequences of any disclosure.
The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.
By an application of Swiss law, a WIPO expert has made an innovative decision by requiring the transfer of a domain name pointing to an inactive website (DCH2012-0021 Cash Converters Pty Ltd. against Mr. Botana Adolfo Miguel Rojo).
In the Expert’s opinion, the fact that the website attached to the litigious domain name has not yet been activated does not diminish the risk of confusion. Its registration could indeed presuppose imminent activation, which could lead to a preventive action for counterfeiting in accordance with the article 55. litt (a) of the Swiss Trademark Act.
Moreover, even if he does not apply these dispositions, the Expert notes that the Swiss Unfair Competition Act could be applicable to this kind of situation. Indeed, article 2 of this law asserts that is “unfair and unlawful to allow any conduct or any commercial practice which is misleading or which infringes the rules of the principles of good faith and affects relations between competitors or between suppliers and customers“.
However, it seems that there may be a difference between inactive domain names which are identical to a registered trademark and those which are only similar. While the first category can effectively obstruct the commercial development of a competitor by preventing the latter from offering goods and services via a domain name which reflects its own trademark, this is not the case in the second category.
In France, the Courts have made a very different ruling. Indeed, the Supreme Court has stated on numerous occasions since the Locatour decision (Commercial Division, December 13, 2005) that a domain name must be active before infringement can be recognized, unless in the case of a well-known brand (TGI Paris 3rd, 3rd Sec, October 29, 2010, Free c / Osmozis).
As for the UDRP process is concerned, the Experts are divided. If some adamantly refuse to consider that an inactive domain name may infringe a trademark right, others consider that it is appropriate to take all the elements into account to assess possible infringement, including public awareness of the brand.
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Written by Nathalie Dreyfus27/03/2014 
Amendments regarding industrial design law recently came into force in Montenegro. Industrial design owners wishing to file infringement lawsuits are offered new opportunities.
