AI and Copyright: Understanding the U.S. Copyright Office’s Second Report on Copyrightability

Written by Nathalie Dreyfus10/02/2025

The evolution of AI and Copyright

The United States Copyright Office has released the second part of its comprehensive study on artificial intelligence and copyrightability. This latest report, dated January 29^th 2025, titled “Copyright and Artificial Intelligence, Part 2: Copyrightability“, delves into one of the most contentious legal questions of the modern digital era: Can AI-generated content receive copyright protection?

As AI tools like ChatGPT, MidJourney, and DALL·E continue to evolve, artists, musicians, and content creators are leveraging these technologies to assist in their creative processes. However, where does the boundary between human creativity and AI automation lie? This report provides critical insights into how the U.S. Copyright Office currently addresses AI-generated works and their copyrightability.

Background: A recap of Part 1 – Digital Replicas

Before discussing AI-generated works, it is essential to recall the findings from the first part of the U.S. Copyright Office’s AI report, which focused on digital replicas (e.g., deepfakes and AI-generated voices). Key takeaways from Part 1:

Digital replicas (AI-generated likenesses of individuals) raise significant legal and ethical concerns.
The report emphasized the lack of clear legal frameworks to address the unauthorized replication of an individual’s image or voice.
The Copyright Office recommended further legislative action to protect against AI-generated deepfakes and potential misuse of identity rights.

With Part 2, the focus has now shifted to an equally pressing issue: the copyrightability of AI-generated content.

AI-Generated works and copyrightability

The fundamental question addressed in Part 2 of the report is: To what extent can AI-generated content be considered copyrightable under U.S. law?

1 – Human authorship requirement

According to the U.S. Copyright Act, only works created by a human author qualify for copyright protection. The Copyright Office reaffirms this principle, stating that:

Copyright protection does not extend to material generated wholly by AI.
AI-assisted works may qualify for copyright protection if there is sufficient human involvement in the creative process.
The determination of copyrightability will be handled on a case-by-case basis.

There is a key precedent: Thaler v. Perlmutter (2023) – The U.S. courts upheld that AI-generated works cannot be copyrighted, reinforcing the human authorship requirement.

2 – The role of AI in creativity

The Copyright Office differentiates between AI as a tool and AI as an autonomous creator.

AI as an assistive tool meaning that if AI is used to enhance human creativity, the final work may be eligible for copyright protection.
AI as an autonomous creator meaning that if AI produces a work without human creative input, it cannot be copyrighted.

For example: a human artist using Photoshop, AI-based filters, or generative AI as part of their creative workflow can still claim copyright. However, a fully AI-generated artwork created without human selection, arrangement, or modification is not copyrightable.

3 – The significance of prompts

One of the most controversial topics covered in the Copyrightability Report is whether AI-generated content based on human prompts qualifies for copyright protection.

The Copyright Office’s stance:

Writing a prompt alone is not sufficient for copyright protection.
Prompts must involve “sufficient creative expression” and “substantive human input” to be considered authorship.
A person modifying, arranging, or selecting elements of AI-generated content may qualify for partial copyright protection.

Therefore, an AI-generated images or texts created using a prompt may not belong to the user unless they demonstrate clear human creativity in the final output.

4 – Legal analysis and international approaches

Different countries are addressing AI and copyright in varying ways:

United States: AI-generated content is not eligible for copyright protection unless there is substantial human involvement.
United Kingdom: AI-generated works may receive limited protection under existing copyright laws.
European Union: The EU AI Act mentions the obligation for AI systems to comply with intellectual property rights.
China: AI-generated works can be copyrighted, but liability and authorship rules remain ambiguous.

The lack of global harmonization in AI and copyright laws could create significant legal uncertainties for creators using AI worldwide.

Implications and potential legal changes

The Copyright Office recognizes the complexity of AI copyrightability and explores potential legal reforms, including:

Clarification of “substantial human involvement” in AI-assisted works.
New guidelines for AI-generated content registration.
Possible introduction of a sui generis (unique) legal framework for AI-generated creative works.

However, the report does not recommend legislative changes at this time, instead emphasizing case-by-case assessments.

Conclusion: The Future of AI and Copyright

The U.S. Copyright Office’s second report on AI and copyrightability establishes that:

AI-generated works are not independently copyrightable unless there is clear human authorship.
Prompts alone do not establish copyright ownership.
The legal framework remains flexible but requires further clarification.

As AI technology continues to evolve, creators, businesses, and policymakers must navigate an uncertain legal landscape.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters. Our experts stay ahead of AI and copyright developments!

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Written by Nathalie Dreyfus10/02/2025

The INPI’s decision of September 13, 2024, in case NL 23-0183, addresses the critical issue of bad faith in trademark law. The cancellation of the “POMPON” trademark, which was registered to monopolize a name linked to the renowned sculptor François Pompon, underscores the misuse of intellectual property rights for undue commercial advantage. This article dissects the legal reasoning, evidence, and implications of this decision for businesses operating in intellectual property and cultural heritage sectors.

Case Summary

Background

The trademark “POMPON,” registered by a museum boutique operator, faced cancellation proceedings initiated by Dixit Arte SAS. The latter argued that the registration aimed to monopolize the name “Pompon,” associated with the renowned sculptor François Pompon, whose works are part of the public domain.

Key Arguments

At the heart of the case were allegations of bad faith. The plaintiff contended that the trademark holder sought to exploit the public domain status of François Pompon’s name by imposing licensing fees on other legitimate users. This was seen as an attempt to gain undue control over a name that should remain accessible to all stakeholders within the art and heritage sector. The registrant countered that the trademark was filed to protect the integrity of Pompon’s legacy and ensure high-quality reproductions.

Legal Framework

Establishing Bad Faith

The INPI based its decision on Article L.714-3 of the French Intellectual Property Code, which allows for the cancellation of trademarks filed in bad faith. It requires a comprehensive assessment of the registrant’s intent at the time of filing, as established by European case law. Factors such as knowledge of prior use by third parties and the broader context of the registration play a decisive role in determining bad faith.

The Role of Evidence in Establishing Intent

Key factors included the registrant’s activity as the manager of museum boutiques in Dijon, which gave him direct exposure to Dixit Arte’s products. Additionally, email correspondence proposing royalty-bearing licenses substantiated the claim that the registration was a deliberate attempt to monetize a name integral to the public domain. The registrant’s argument of safeguarding the artist’s legacy was found to lack credibility given the financial motivations reflected in the evidence.

Decision and Implications

Cancellation of the Trademark

The INPI concluded that the “POMPON” trademark was filed with the intent of creating an undue monopoly on a public domain name. By restricting access to a term essential for the reproduction and sale of François Pompon’s works, the registrant sought to exploit the trademark system in a manner inconsistent with its intended purpose.

Implications for Future Trademark Applications

This decision underscores the necessity of ensuring good faith in trademark applications, particularly in cases involving public domain elements. Businesses must exercise due diligence to confirm that their filings align with the principles of fairness and do not obstruct legitimate commercial practices. This ruling also highlights the importance of preserving access to cultural heritage symbols for all stakeholders.

Broader Lessons from the Decision

Safeguarding Public Domain Names

The decision underscores that names linked to public domain works, such as those of François Pompon, should remain freely available to stakeholders. Attempts to impose exclusivity through trademark registration risk contravening the principles of intellectual property law.

Ethical Licensing Practices

The case serves as a reminder of the importance of transparency and fairness in licensing agreements. Leveraging trademarks to extract royalties on public domain names undermines the spirit of free competition and innovation.

Conclusion

The cancellation of the “POMPON” trademark by the INPI sets a precedent against bad faith filings, emphasizing the need for ethical practices in intellectual property management. Businesses must align trademark strategies with the principles of fairness and competition.

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FAQ

What is bad faith in trademark?

Bad faith in trademark law refers to a situation where an applicant files for a trademark with dishonest intentions. This may include registering a mark solely to block competitors, exploit the reputation of an existing brand, or prevent others from using a term that should remain available in the public domain.

What is bad faith EU trademark?

In the EU, bad faith is defined under Article 59(1)(b) of the EU Trademark Regulation. It applies when a trademark application is filed with the intention of misleading, obstructing competitors, or unfairly benefiting from another party’s reputation. The European courts assess factors such as prior knowledge of third-party use, the applicant’s commercial strategy, and any attempt to abuse trademark law.

How do you cancel a trademark?

A trademark can be canceled through invalidity or revocation proceedings:

Invalidity: If the mark was registered in bad faith, lacks distinctiveness, or infringes prior rights.
Revocation: If the trademark has not been used for a continuous period of five years or has become misleading to consumers.
Proceedings can be initiated before the relevant intellectual property office (e.g., EUIPO, INPI) or in court, depending on the jurisdiction.

How to withdraw a trademark?

A trademark can be withdrawn voluntarily by submitting a request to the relevant trademark office. The applicant or owner may request total or partial withdrawal, meaning it may apply to all goods/services or just specific ones.

How do you protect your domain name?

To protect a domain name:

Register it promptly to prevent third-party claims.
Monitor for potential cybersquatting using watch services.
Secure trademarks corresponding to the domain name, strengthening enforcement rights.
Enforce rights through legal actions, such as Uniform Domain-Name Dispute-Resolution Policy (UDRP) or national court procedures.

What are the conflicts of trademarks with domain names?

Conflicts arise when a domain name incorporates a registered trademark without authorization. Key issues include:

Cybersquatting: A third party registers a domain with the intent to profit from the trademark owner.
Trademark infringement: If a domain creates confusion among consumers, misleading them into thinking it is affiliated with the trademark owner.
Reverse domain name hijacking: When a company tries to obtain a domain name illegitimately by claiming false trademark rights.

Resolving such conflicts may involve legal action under UDRP, court proceedings, or negotiations with the domain holder.

Written by Nathalie Dreyfus05/02/2025

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) was established by the Internet Corporation for Assigned Names and Numbers (ICANN) in 1999 to provide a streamlined and cost-effective for resolving disputes related to domain name registrations. This policy effectively addresses challenges such as cybersquatting and trademark infringement in the constant evolving digital landscape. Over the past two decades, UDRP precedent has evolved significantly, setting critical benchmarks that guide current and future domain name dispute resolutions.

Key Cases Shaping UDRP Jurisprudence

Madonna.com: Protecting Celebrity Names

In Ciccone p/k/a Madonna v. Parisi (2000), Madonna filed a complaint against Dan Parisi and challenged the registration of <madonna.com>, which was used to redirect users to inappropriate content. The WIPO panel ruled in favor of Madonna, emphasizing her rights as a globally recognized artist and the protection afforded by her established trademarks. This case underscored UDRP’s role in safeguarding celebrity identities against misuse.

Takeaway: In these types of cases, demonstrating fame and trademark rights, even for personal names, is crucial to success under UDRP.

Panavision.com: Battling Cybersquatting

Panavision Int’l, L.P. v. Toeppen (1999) sets the stage for addressing cybersquatting. The respondent, Dennis Toeppen, registered <panavision.com> to demand payment from the trademark holder. The panel ruled this conduct constituted bad faith, highlighting the UDRP’s utility in combating such exploitative practices.

Takeaway: Registering domains primarily for financial extortion constitutes clear evidence of bad faith.

Sting.com: Navigating Generic Terms

In Sumner p/k/a Sting v. Urvan (2000), the musician Sting failed to secure the domain <sting.com>, as the respondent demonstrated its generic nature and lack of exclusive association with the complainant. The panel noted that UDRP protects trademarks, not dictionary words, unless secondary meaning is proven.

Takeaway: The generic nature of a domain name complicates claims under the UDRP unless clear trademark rights are demonstrated.

Wal-MartSucks.com: Protecting Trademarks from Misuse

This case involved the domain <wal-martsucks.com>, registered by Richard MacLeod. The panel concluded that MacLeod had registered the domain in bad faith, aiming to attract users by creating confusion with the Wal-Mart trademark. The decision emphasized the UDRP’s stance against domains that incorporate trademarks to mislead or criticize without legitimate non-commercial use.

Takeaway: The UDRP consistently upholds the principle that domain names incorporating trademarks cannot be used to mislead, tarnish, or exploit the brand’s reputation under the guise of criticism unless supported by legitimate non-commercial use. This case reinforces the need for complainants to demonstrate how such domains create confusion or harm their brand’s integrity.

Trends and Practical Recommendations for UDRP Practitioners

Rising Caseloads:

WIPO reported over 6,000 cases in 2023, marking a 7% increase from the previous year. This surge reflects the growing challenges faced by brand owners in protecting their trademarks online. Notably, 82% of these cases resulted in the transfer of the disputed domain names to the complainants, demonstrating the effectiveness of the UDRP process in addressing cybersquatting. With the introduction of new gTLDs, vigilance and proactive measures are essential for brand protection.

Critical Elements for Success:

Complainants must establish:

The domain name is identical or confusingly similar to their trademark.
The respondent has no legitimate interest in the domain.
The domain was registered and is being used in bad faith.

Strategic Considerations:

Preemptive Registrations: Secure key domains proactively.
Evidence Collection: Document respondent behavior indicating bad faith.
Supplementary Responses: Address gaps or rebuttals proactively where panels permit.

Practical Examples:

com: This case demonstrated the value of early action when the complainant reclaimed her name from misuse in an auction setting.
com: Highlighted the necessity of proving bad faith beyond legitimate business use to succeed under the UDRP.

Conclusion: The Role of Expertise in Domain Disputes

The evolution of UDRP jurisprudence over the past two decades has provided a robust, internationally recognized framework for resolving domain name disputes efficiently. Landmark decisions have clarified the policy’s application, balancing the rights of trademark holders with legitimate domain name registrants. As the digital landscape continues to evolve, staying informed about UDRP developments and best practice is crucial for brand owners and legal practitioners alike.

FAQ on UDRP and Domain Name Disputes

What are the three elements of UDRP?
The UDRP requires the complainant to prove: (1) the domain name is identical or confusingly similar to a trademark in which they have rights, (2) the domain holder has no legitimate interests in the domain, and (3) the domain was registered and is being used in bad faith.
What are the grounds for a domain name dispute?
A domain name dispute arises when a registered domain is alleged to infringe on another party’s trademark rights. Common grounds include cybersquatting, bad faith registration, and unauthorized commercial use of a trademarked term.
What is the UDRP dispute-resolution policy?
The UDRP (Uniform Domain-Name Dispute-Resolution Policy) is a procedure established by ICANN for resolving domain name disputes related to trademark infringement. It provides an alternative to litigation, allowing trademark owners to recover domains through arbitration.
What are the three key domains?
In domain name disputes, the three key domains often refer to: (1) Generic Top-Level Domains (gTLDs) such as .com, .net, and .org, (2) Country Code Top-Level Domains (ccTLDs) like .fr or .uk, and (3) New gTLDs introduced to expand the domain space (e.g., .store, .tech).

For comprehensive assistance in navigating domain name disputes and protecting your intellectual property rights, our firm offers expert legal services tailored to your needs. Dreyfus Law Firm is in partnership with a global network of attorneys specializing in Intellectual Property.

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Written by Nathalie Dreyfus04/02/2025

On October 17, 2024, the Court of Justice of the European Union (CJEU) delivered a pivotal judgment in the case of Sony Computer Entertainment Europe Ltd v. Datel Design and Development Ltd (Case C-159/23). This decision addresses the extent of copyright protection for computer programs under Directive 2009/24/EC, particularly concerning software that modifies variable data during program execution without altering the program’s source or object code.

Background of the case

Sony, a leading developer and distributor of PlayStation consoles and associated video games, initiated legal proceedings against Datel, a company specializing in software and devices that interact with gaming consoles. It identified that Datel was marketing products such as the “Action Replay PSP” software and the “TiltFX” device. These products allowed users to alter gameplay by unlocking features or modifying controls, achieved by running concurrently with Sony’s games and altering variable data in the console’s random access memory (RAM) during execution. Sony contended that such modifications infringed upon its exclusive rights to authorize alterations of its computer programs, as protected under Directive 2009/24/EC on the legal protection of computer programs.

Legal questions referred to the CJEU: Analysis and judgment

The Bundesgerichtshof (Federal Court of Justice, Germany) referred two primary questions to the CJEU:

Scope of Protection: Does the modification of variables transferred to a computer’s RAM by a protected program, without altering its source or object code, fall within the protection afforded under Article 1(1) to (3) of Directive 2009/24/EC?
Definition of Alteration: Does such modification constitute an “alteration” under Article 4(1)(b) of the Directive, which grants the copyright holder exclusive rights to authorize or prohibit any alteration of their computer program?

In its deliberation, the CJEU focused on the interpretation of “forms of expression” of a computer program as protected under Article 1 of Directive 2009/24/EC. The Court emphasized that protection extends to the program’s source code and object code, as these are the expressions that enable the reproduction or subsequent creation of the program. Conversely, elements such as functionalities, programming languages, and data file formats do not constitute protected forms of expression.

The Court concluded that the content of variable data inserted by a program into a computer’s RAM during execution does not fall within the protection conferred by the Directive, provided that such content does not enable the reproduction or subsequent creation of the program. Consequently, modifying these variables without altering the source or object code does not constitute an infringement of the copyright holder’s exclusive rights under Article 4(1)(b).

Implications of the decision

This judgment delineates the boundaries of copyright protection for computer programs within the EU, clarifying that:

Variable Data vs. Source Code: Alterations to variable data during program execution, which do not impact the source or object code, are outside the scope of protection under Directive 2009/24/EC.
Functional Modifications: Software that interacts with existing programs by modifying runtime variables, without altering the program’s code, does not infringe upon the exclusive rights of the original program’s copyright holder.

This decision has significant ramifications for developers of ancillary software, such as game enhancement tools or customization applications, affirming that certain modifications at the execution level are permissible under EU copyright law.

Conclusion

The CJEU’s ruling in Case C-159/23 provides critical guidance on the interpretation of copyright protection for computer programs, particularly concerning the distinction between protected forms of expression and permissible modifications during program execution. This clarification is essential for both software developers and rights holders in understanding the legal parameters of program modification and the scope of intellectual property rights within the European Union.

At the Dreyfus firm, we bring expertise across all areas of intellectual property, including copyright law, to provide you with the highest level of guidance and protection for your rights and innovations.

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Written by Nathalie Dreyfus04/02/2025

The United States is a key market for many businesses. Registering a trademark in this country helps secure your brand identity and avoid legal disputes related to unauthorized use of your distinctive sign. However, the U.S. trademark registration process differs from that in Europe and other jurisdictions. This guide outlines the filing options, registration process, and associated costs.

Why Register a Trademark in the United States?

A registered trademark in the U.S. provides several benefits:

Legal Protection: Prevents third parties from using an identical or similar sign in a commercial context.
Exclusive Usage Rights: Registration grants a monopoly over the trademark for the designated goods/services.
Increased Commercial Value: A registered trademark can be sold, licensed, or used as an asset in investments.
Simplified Legal Recourse: In case of infringement, the trademark owner can take legal action in federal courts.

Different Bases for Filing a U.S. Trademark

In the United States, the legal basis for a trademark application refers to the foundation on which the filing is made. Unlike in some jurisdictions, the United States Patent and Trademark Office (USPTO) generally requires proof of use before granting full registration. The choice of filing basis depends on the applicant’s business strategy, the current use of the mark, and any existing international trademark portfolio.

Application Based on Actual Use in Commerce (§1(a))

This option applies to businesses that are already using the trademark in the United States at the time of filing. The applicant must submit a specimen of use demonstrating that the mark is actively used in commerce in connection with the claimed goods or services. Acceptable specimens include packaging, labels, website screenshots, advertisements, or invoices that clearly display the trademark in a commercial context. The applicant must also provide the first use date (when the mark was first used anywhere) and the first use in commerce date (when it was first used in a way that affects interstate or international commerce in the U.S.).

One of the main advantages of this basis is that it allows for a faster path to registration since no further proof of use is required later in the process. However, the applicant must maintain continuous use of the mark to avoid cancellation for non-use.

Application Based on Intent to Use (§1(b))

This option is available for businesses that have a bona fide intent to use the trademark in the United States but have not yet started using it at the time of filing. After the USPTO examines and approves the application, a Notice of Allowance (NOA) is issued. From that point, the applicant has six months to provide proof of actual use by submitting a Statement of Use. If the applicant is not ready to prove use, they can request up to five six-month extensions, subject to additional fees.

This basis allows applicants to secure an earlier filing date while preparing for market entry in the U.S. However, the trademark will not be registered until actual use is demonstrated.

Application Based on a Foreign Registration (§44(e))

This option is available to businesses that already hold a registered trademark in their country of origin. Unlike the previous bases, the USPTO does not require immediate proof of use in the United States. However, the applicant must submit a copy of the foreign registration, which must remain valid.

One key advantage of this basis is that it allows an applicant to register a trademark in the U.S. without proving use initially. However, after five years of registration, the applicant must submit a declaration of use to maintain the trademark and avoid cancellation.

Application Based on a Foreign Application (§44(d))

If an applicant has filed a trademark application in another country within the past six months, they may claim priority rights in the United States. This allows them to benefit from the earlier foreign filing date for their U.S. application.

No proof of use is required before the fifth year of registration. However, to finalize the registration process, the applicant must submit a copy of the foreign registration certificate. This option is particularly advantageous for businesses looking to secure U.S. trademark rights while relying on an international application.

The choice of filing basis depends on the applicant’s strategic objectives and readiness to use the mark in U.S. commerce.

The U.S. Trademark Registration Process

Registering a trademark with the USPTO involves several key steps:

Step 1: Trademark Search

Before filing, it is highly recommended to conduct an availability search to ensure that no similar or identical trademark already exists. This search can be performed via the USPTO’s TESS database or by consulting a trademark attorney.

Step 2: Choosing the Filing Method

The USPTO offers two options for filing a trademark application:

TEAS Plus: Lower cost but requires strict compliance with the USPTO’s Goods & Services Manual.
TEAS Standard: More flexibility in product/service descriptions, but with higher fees.

Step 3: Examination by the USPTO

Once the application is submitted, a USPTO examiner reviews it and may:

Approve it directly.
Request additional details through an Office Action (e.g., clarification of descriptions, proof of distinctiveness).
Reject it if it is too similar to an existing trademark or considered descriptive.

Step 4: Publication in the Official Gazette

If the application is accepted, the trademark is published in the Trademark Official Gazette. Any third party who believes the trademark may harm their interests has 30 days to file an opposition.

Step 5: Registration or Notice of Allowance

If the trademark is already in use, a registration certificate is issued.
If the application was based on intent to use, the USPTO issues a Notice of Allowance, and the applicant must submit proof of use within six months (with the possibility of extensions).

Trademark Filing Costs in the U.S.

The cost of filing depends on several factors, including the number of classes and the filing method chosen.

Filing Method	First Class	Additional Class
TEAS Plus	$665	$455
TEAS Standard	$765	$555

Additional Fees:

Declaration of First Use: $350 for the first class, $250 per additional class.
Six-month extension to submit proof of use: $350 for the first class, $250 per additional class.

Choosing the Right Trademark Type

Word Mark

Protects only the name, regardless of font or logo.

Offers broader protection since it covers all typographical variations.

Logo Mark

Protects only the design of the logo, not the name.

Useful if the visual identity is crucial to the brand.

Combined Mark (Name + Logo)

Protects both the name and design, but with limited flexibility if changes are made later.

Recommended if the brand identity is strongly tied to a specific visual representation.

Trademark Renewal and Maintenance

Once registered, a trademark must be maintained to remain valid:

Between the 5th and 6th year: A Declaration of Use (Section 8) must be filed.
Between the 9th and 10th year: A Declaration of Use and Renewal (Sections 8 and 9) must be filed.
Every 10 years: The trademark must be renewed to retain protection.

Failure to meet these requirements may result in cancellation by the USPTO.

Handling Oppositions and Disputes

If a third party contests the trademark after publication, an opposition can be filed before the Trademark Trial and Appeal Board (TTAB). In case of a refusal or objection from the USPTO:

The applicant can modify the application and respond to the Office Action.
If the issue persists, a trademark attorney may be necessary to defend the registration.

Conclusion

Registering a trademark in the United States is a crucial step to protect your business identity. Choosing the right filing basis, anticipating costs and timelines, and proactively managing legal obligations will help ensure optimal protection for your brand in the U.S. market.

Dreyfus Law Firm supports clients throughout the entire trademark registration and protection process in the United States. Our intellectual property experts conduct availability searches, handle all USPTO filing procedures, and provide tailored assistance for renewal and enforcement. Through our global network of IP-specialized attorneys, we ensure effective protection of your trademarks both in the U.S. and internationally.

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FAQ

How do I register a trademark in the United States?

Trademark registration is done online through the USPTO (United States Patent and Trademark Office) using the TEAS (Trademark Electronic Application System). You must choose a filing basis (actual use, intent to use, or foreign registration), complete the application form, and pay the required fees.

How much does it cost to register a trademark?

TEAS Plus: $665 for the first class, $455 for each additional class.

TEAS Standard: $765 for the first class, $555 for each additional class.
Additional fees may apply for proof of use or extensions.

How can I register a trademark internationally?

You can register a trademark internationally through the Madrid System with WIPO (World Intellectual Property Organization) or by filing directly in each target country. A U.S. registration can serve as a priority basis for international filings.

What are the requirements for trademark registration?

A trademark must be distinctive, available, and associated with specific goods or services. Proof of use is required unless filing under a foreign registration basis.

How long does it take to register a trademark?

On average, 12 to 18 months, depending on examination timelines, possible objections, and proof of use requirements.

Do I need to prove use of my trademark?

Yes, except when filing based on a foreign registration. Proof of use is required to finalize the registration and must be submitted between the 5th and 6th year after registration, and every 10 years thereafter.

How long does a U.S. trademark last?

A U.S. trademark is valid indefinitely, provided it is renewed and proof of use is submitted every 10 years.

Can I protect a logo and a name separately?

Yes. A word mark protects the name alone, while a logo mark protects the visual design. A combined mark covers both but offers more limited flexibility if changes are made later.

What happens if my trademark is challenged?

After publication, third parties have 30 days to file an opposition. If opposed, you must either negotiate or defend your case before the Trademark Trial and Appeal Board (TTAB).

What happens if I don’t renew my trademark?

If you fail to submit the required renewal or proof of use, the USPTO cancels the trademark, making it available for new registration.

Written by Nathalie Dreyfus03/02/2025

Navigating the world of trademarks can be complex, especially when it comes to the European Union Trade Mark (EUTM).
This system offers a unique opportunity: it allows businesses to protect their brand across all EU member states with a single application.

But what does the process involve? How does it differ from national trademarks?
This article provides a comprehensive guide to the EUTM, covering the application process, benefits, and legal considerations.

Whether you’re a business owner, a legal professional, or just curious, keep reading. Let’s explore the world of the European Union Trade Mark.

What is the European Union Trade Mark (EUTM)?

The European Union Trade Mark (EUTM) is a crucial asset for businesses. It is a unified trademark system that grants protection across all EU member states with just one application.

Managed by the European Union Intellectual Property Office (EUIPO), the EUTM offers a cost-effective and streamlined registration process. This is particularly beneficial for businesses looking to expand their market reach across Europe.

A key feature of the EUTM is its uniformity:

One trademark = protection in all EU countries
The same rights and legal standing apply in every member state

Who can register an EUTM?

To qualify, a trademark must be distinctive—it must clearly distinguish goods or services from those of competitors.

Generic or purely descriptive names cannot be registered
The trademark can be a word, logo, shape, color, sound, or even a combination of these elements

In short, the EUTM is a powerful tool for businesses seeking to protect their brand across the European Union.

Benefits of Registering a European Union Trade Mark (EUTM)

Registering an EUTM comes with significant advantages, especially for businesses operating across multiple EU countries.

Key benefits:

Single registration = protection in all EU member states
Cost-effective: One application is cheaper than multiple national filings
Simplified administration: Manage your trademark centrally via EUIPO
Stronger brand protection: Enforce rights across all EU countries
10-year protection, renewable indefinitely

Industry-specific advantages:

Fashion & luxury goods: Protects against counterfeit sales across the EU
Tech & software: Secures brand identity in a rapidly evolving market
Agriculture & regional products: Helps protect geographical indications (GI) and designations of origin

By securing an EUTM, businesses strengthen their brand presence in one of the world’s largest markets.

How to Apply for an EUTM

The European Union Intellectual Property Office (EUIPO) handles all EUTM applications.

Step-by-step application process:

Conduct a trademark search
- Use TMview to check for existing trademarks and avoid conflicts
Prepare your application
- Choose your trademark type (word, logo, etc.)
- List goods & services using the Nice Classification system
File your application online via EUIPO
- The basic fee is €850 for one class of goods/services
- Additional fees apply for extra classes (€50 for the second, €150 for each extra class)
EUIPO examination
- EUIPO checks if your trademark meets legal requirements (e.g., distinctiveness)
Publication & opposition period
- Your trademark is published in the EU Trade Marks Bulletin
- Third parties have three months to file oppositions
Final registration
- If no opposition is filed, or if opposition is rejected, your trademark is officially registered
- You receive a registration certificate valid for 10 years

A well-prepared application reduces delays and increases approval chances.

EUTM vs. National Trademarks vs. Madrid System

Feature	EUTM	National Trademark	Madrid System
Coverage	All EU countries (27)	One country only	Multiple countries (incl. non-EU)
Cost-effectiveness	One fee for the entire EU	Separate fees per country	Covers global markets
Enforcement	Unified rights across EU	Must enforce in each country separately	Protection varies by country
Best for…	Businesses targeting the entire EU	Local businesses	Companies expanding worldwide

Which one to choose?

If your focus is the EU market, an EUTM is the best option
If you only operate in one or two countries, a national trademark might be more practical
For international protection, consider using the Madrid System to cover multiple regions

After Registration: Rights & Responsibilities

Once your EUTM is registered, you gain exclusive rights across all EU member states.

Your rights:

Use the ® symbol to signal trademark protection
Take legal action against infringers anywhere in the EU
License or sell your trademark

Your responsibilities:

Use it or lose it: If your trademark isn’t used for five consecutive years, it can be revoked
Monitor for infringements: Regularly check online & offline markets for unauthorized use
Renew every 10 years to maintain protection

Consider using trademark monitoring services to detect infringement early.

The Impact of Brexit on EUTM

Since Brexit (January 1, 2021), EUTMs no longer cover the UK.

Key Brexit changes:

EUTMs remain valid in the EU (27 countries)
Existing EUTMs were automatically converted into UK trademarks
New UK trademarks must now be filed separately

If you operate in both the EU and UK, you must manage your trademarks separately.

Common Mistakes & How to Avoid Them

Mistake: Not conducting a trademark search
Solution: Use TMview to check for conflicts before applying
Mistake: Choosing a generic name
Solution: Pick a distinctive and non-descriptive brand name
Mistake: Submitting an incomplete application
Solution: Double-check that all details and classifications are correct
Mistake: Not renewing on time
Solution: Set reminders for the 10-year renewal deadline

Conclusion: Why a Strategic Approach Matters

Registering an EUTM is a valuable investment for businesses expanding across Europe.

It provides strong legal protection
It helps build a unified brand identity
It simplifies trademark management across 27 countries

By carefully planning your application, avoiding common pitfalls, and actively protecting your trademark, you can ensure long-term brand success in the European market.

Ready to register your EUTM? Start your application today at EUIPO.

Would you like any additional refinements or industry-specific details?

FAQ: European Union Trade Mark (EUTM)

What is the EUTM, and how does it differ from national trademarks?
The EUTM is a single trademark registration valid across all EU member states. Unlike national trademarks, it offers uniform protection in 27 countries through one application.

How much does it cost to register an EUTM?
The basic fee is €850 for one class of goods or services. Additional classes cost €50 for the second class and €150 for each subsequent class.

Can I modify my EUTM after registration?
Yes, but modifications are limited to minor changes that do not alter the trademark’s identity. Adding new goods or services requires a new application.

What happens during the opposition period?
The opposition period lasts three months after publication. Third parties can challenge the trademark based on prior rights, requiring the applicant to provide evidence to defend their case.

How long does the EUTM registration process take?
Typically, it takes 4–6 months, provided there are no oppositions or complications.

What rights does the ® symbol grant?
The ® symbol indicates that your trademark is officially registered. It serves as a deterrent to infringers and enhances your brand’s credibility.

Can an EUTM be revoked?
Yes, an EUTM can be revoked for non-use over five consecutive years or if it becomes generic or misleading.

How does Brexit affect my EUTM?
Since Brexit (January 1, 2021), EUTMs no longer cover the UK. Existing EUTMs were automatically converted into comparable UK trademarks.

What should I do if my trademark application is rejected?
You can file an appeal or amend your application to address the reasons for rejection. Consider legal counsel for complex cases.

How do I enforce my EUTM rights?
You can take legal action against infringers in any EU member state. Monitoring tools and legal support help detect and address violations effectively.

Protect your trademarks and business reputation with expert legal guidance. Contact Dreyfus Law Firm today for strategic advice on EUTM registration, enforcement, and cancellation actions before the EUIPO. Secure your brand’s future now!

Written by Nathalie Dreyfus31/01/2025

How to win a cancellation action before the EUIPO?

Protecting trademarks effectively within the European Union requires a deep understanding of the legal mechanisms available to challenge the validity or use of a registered trademark. The invalidity and revocation procedures, collectively referred to as “cancellation proceedings,” before the European Union Intellectual Property Office (EUIPO) provide rights holders and third parties with tools to maintain the integrity of the trademark register.

In 2024, approximately 2,000 cases have been consistently initiated each year since 2021, showing a stable trend with a slight decrease. Meanwhile, revocation proceedings have remained stable at approximately 500 per year since 2021, with a slight upward trend observed.

Introduction to Invalidity and Revocation Procedures

The invalidity and revocation procedures aim to challenge the validity or continued use of a registered European Union trademark (EUTM). Invalidity disputes the trademark’s validity at the time of registration, while revocation addresses the loss of the trademark owner’s rights due to post-registration circumstances.

Invalidity Procedure

A trademark can be declared invalid based on absolute or relative grounds.

Absolute Grounds for Invalidity

A trademark may be invalidated if, at the time of registration, it:

Lacked distinctiveness.
Was descriptive of the goods or services in question.
Contravened public order or morality.
Was liable to mislead the public regarding the nature, quality, or geographical origin of the goods or services.

Relative Grounds for Invalidity

A trademark may also be invalidated if it infringes upon prior rights, such as:

An earlier identical or similar trademark for identical or similar goods or services, creating a likelihood of confusion.
Copyright, design, trade name, or company name rights.

Revocation Procedure

Revocation addresses the improper use or non-use of a trademark following its registration.

Non-use of the Trademark

The owner may lose their rights if the trademark has not been put to genuine use in the European Union for an uninterrupted period of five years without valid reasons.

Becoming a Generic Term

If, due to the owner’s actions or inaction, the trademark has become a generic term in the trade for the goods or services it covers, it may be revoked.

Misleading Character of the Trademark

A trademark may also be revoked if its use by the owner or with their consent has become misleading regarding the nature, quality, or geographical origin of the goods or services.

Procedure Before the EUIPO

Application Filing by Your Representative

To ensure a smooth and effective application process before the EUIPO, it is essential to engage a qualified counsel who can provide strategic advice and represent your interests effectively. While it is not mandatory to appoint a representative to file a cancellation action, parties without a domicile, principal place of business, or an effective and genuine industrial or commercial establishment within the European Economic Area (EEA) must be represented by an authorized representative in EUIPO proceedings. Even for those with a presence in the EEA, appointing a representative ensures the process is handled with the expertise required to maximize efficiency and effectiveness.

Adversarial Phase

Once the application is received, the EUIPO verifies its admissibility. If deemed admissible, an adversarial phase begins, allowing the parties to present arguments and evidence. The EUIPO may also request additional information or clarification from the parties.

Decision and Effects

Following the review of arguments and evidence, the EUIPO issues a decision. If the application is successful, the trademark is either invalidated retroactively or revoked from the date of the decision. These decisions can significantly impact the trademark landscape within the EU.

Appeal Process

Decisions by the EUIPO can be challenged through a well-defined appeal process:

Appeal to an EUIPO Board of Appeal: This must be filed within two months from the date of notification of the decision. A written statement detailing the grounds of appeal is required.
Appeal to the General Court of the European Union: If dissatisfied with the Board of Appeal’s decision, an appeal can be lodged within two months from the notification of that decision. This process examines the legality of the decision but does not re-assess the facts.
Referral to the Court of Justice of the European Union (CJEU): A further appeal on points of law can be made within two months of the General Court’s decision. The CJEU reviews legal errors but does not revisit the case’s substance.

Recent Trends and Emerging Practices

Use of Artificial Intelligence in Trademark Searches

With the increasing reliance on AI tools, many businesses now utilize AI-driven platforms for pre-registration trademark searches. These tools enhance precision and speed in identifying potential conflicts, reducing the likelihood of disputes.

Impact of Blockchain on Trademark Authenticity

Blockchain technology offers a secure and transparent method for proving trademark use. By maintaining immutable records, it ensures authenticity and provides robust evidence in revocation proceedings.

Practical Tips for Success in Cancellation Actions

Conduct Comprehensive Pre-Filing Research: Ensure thorough investigation of potential conflicts or grounds for cancellation using tools like TMview.
Maintain Robust Documentation: Keep detailed records of trademark usage to counter non-use allegations.
Engage Expert Counsel Early: Involve experienced legal professionals to navigate the complexities of EUIPO procedures.
Leverage Evidence Effectively: Present compelling evidence, such as market surveys or sales data, to support your claims or defense.

Strategic Approaches to Cancellation Actions

Proactive Risk Assessment

Before initiating a cancellation action, it is critical to conduct a comprehensive risk assessment. This involves analyzing the targeted trademark’s weaknesses, such as lack of distinctiveness or non-use, and identifying supporting evidence to strengthen your case. Using tools like TMclass and DesignView can streamline this process and ensure a strategic approach.

Collaborating with Regional Experts

Trademark laws and practices can vary subtly between EU member states. Collaborating with local IP experts who understand jurisdictional nuances ensures your cancellation strategy aligns with both EUIPO standards and local regulations.

Tailoring Arguments for Absolute and Relative Grounds

When challenging a trademark based on absolute grounds, highlight legal principles such as descriptiveness or violation of public order. For relative grounds, focus on substantiating prior rights through market research, survey evidence, and sales data.

Case Studies: Lessons from Recent Decisions

Case Study 1: Revocation for Non-Use

In 2023, a tech company successfully revoked a competitor’s trademark on the grounds of non-use. The claimant demonstrated that the trademark owner had not used the mark in commerce for over five years. This case underscores the importance of maintaining detailed records of trademark use.

Case Study 2: Genericization of a Trademark

A recent case involved a prominent food brand losing its trademark due to genericization. The opposing party presented consumer surveys and industry reports showing that the mark had become synonymous with the product category, no longer serving as a source identifier.

Emerging Trends in Trademark Cancellation

AI-Driven Case Analysis

Artificial intelligence tools are being adopted by law firms and businesses to analyze previous EUIPO decisions. These tools can predict potential outcomes and identify the most persuasive arguments, streamlining the preparation process for cancellation proceedings.

Globalization of Trademark Disputes

With the rise of global commerce, trademark disputes increasingly involve cross-border issues. EUIPO decisions are often referenced in cases involving parallel trademarks filed in other jurisdictions, emphasizing the need for a unified global strategy.

Sustainability as a Grounds for Contestation

As sustainability becomes a consumer priority, trademarks misleadingly suggesting eco-friendliness are increasingly being challenged. Leveraging environmental claims can form a compelling basis for cancellation under absolute grounds.

Practical Insights: Preparing Evidence for Success

Collect Robust Documentation

Evidence is crucial in trademark cancellation cases. Compile a comprehensive portfolio that includes:

Historical usage records (e.g., invoices, advertising campaigns).
Market surveys demonstrating consumer confusion or genericization.
Third-party testimonials or affidavits supporting your claims.

Engage Technical Experts

For cases involving complex goods or services, expert opinions can provide critical insights. For example, a technical expert can validate claims about the functionality of a product, supporting arguments for invalidity based on lack of distinctiveness.

Monitor Competitors Proactively

Use trademark monitoring tools to track potential infringements or misuse by competitors. This allows you to initiate cancellation proceedings promptly, protecting your brand equity.

Strengthening the Legal Framework: Recommendations for Businesses

Policy Alignment with Sustainability Goals

Aligning trademark strategies with broader corporate sustainability goals can strengthen the defensibility of trademarks. For example, ensuring that trademarks promoting eco-friendly products are substantiated with solid evidence mitigates the risk of misleading claims.

Adapting to Regulatory Changes

With the EU’s continuous evolution of IP laws, businesses must stay updated on new directives and regulations. Engaging with IP attorneys who monitor these changes can ensure that strategies remain compliant and forward-looking.

Strengthening Evidence Practices

Regularly collect and update documentation related to the use of trademarks, including marketing materials, sales records, and consumer studies. Proactively preparing this data not only strengthens your defense against cancellation actions but also positions you better for asserting your rights in cross-border disputes.

Our Expertise

Handling invalidity and revocation proceedings before the EUIPO demands expertise, precision, and a results-oriented approach. At Dreyfus Law Firm, we specialize in intellectual property law, offering extensive experience in managing cancellation actions and defending trademarks.

Why Choose Dreyfus Law Firm?

Proven Expertise: Our attorneys possess deep knowledge of EUIPO procedures and case law, ensuring robust representation for clients.
Tailored Strategies: We analyze each case individually, crafting solutions that align with our clients’ business objectives and maximize their chances of success.
Cross-Border Capabilities: Our team seamlessly manages cases that span multiple jurisdictions, ensuring a cohesive strategy for global trademark protection.

Comprehensive Services

Pre-Filing Analysis: Conducting in-depth assessments of trademarks for invalidity or revocation risks.
Preparation and Filing: Drafting detailed and persuasive cancellation applications supported by strong evidence.
Effective Advocacy: Representing clients during adversarial proceedings and appeals before the EUIPO and EU courts.

Client Success Stories

Revocation for Non-Use: Successfully revoked a dormant competitor’s trademark, allowing our client to expand its brand presence in the EU market.
Invalidity on Absolute Grounds: Achieved invalidity of a trademark for being descriptive, ensuring our client’s unique branding was safeguarded against dilution.
Defending Against Cancellation: Protected a client’s established trademark by demonstrating genuine use through robust documentation and market evidence.

Commitment to Results

At Dreyfus Law Firm, we are dedicated to providing practical solutions and achieving results that protect our clients’ business interests. Whether filing a cancellation action or defending against one, we deliver unparalleled legal expertise and strategic insight.

Frequently Asked Questions (FAQ)

What is the difference between cancellation and opposition actions?
Opposition actions occur before a trademark is registered and aim to block the application. Cancellation actions, on the other hand, target trademarks that are already registered.
How long does the cancellation process take at the INPI?
The average timeline for cancellation actions at the INPI is 6 to 12 months, depending on the complexity of the case and the volume of evidence submitted.
Can I initiate a cancellation action if I am outside France?
Yes. Non-French entities can initiate cancellation actions, but they must appoint a local representative or authorized attorney to act before the INPI.
What are the costs associated with a cancellation action?
The INPI charges a fixed administrative fee of €600 for filing a cancellation action. Additional legal fees depend on the complexity of the case and the attorney’s expertise.
Can a cancellation action be appealed?
Yes. Decisions made by the INPI can be appealed to the Court of Appeal of Paris within one month of notification. Further appeals can be made to the Court of Cassation.
What evidence is required for revocation due to non-use?
To support a revocation action based on non-use, you must demonstrate:

The absence of sales or marketing activities related to the trademark.
Lack of trademark visibility in commercial contexts.

How do cancellation actions impact brand reputation?
While cancellation actions can protect your business, they may also generate publicity. Managing public relations alongside legal strategy is essential.

How do I prove non-use of a trademark?
To prove non-use, collect evidence such as market analyses, online presence checks, and absence of sales records during the relevant period.

Can I initiate cancellation proceedings outside the EU?
Yes, parallel actions can be initiated in jurisdictions where the trademark is also registered, provided local laws allow for cancellation based on similar grounds.

What is the success rate for cancellation proceedings at the EUIPO?
Recent EUIPO data suggests that approximately 40% of invalidity and revocation applications are successful, emphasizing the importance of presenting strong evidence.

Protect your trademarks and business reputation with expert legal guidance. Contact Dreyfus Law Firm today for tailored advice on cancellation actions before the EUIPO. Let us help safeguard your intellectual property rights!

Written by Nathalie Dreyfus29/01/2025

The Uniform Domain-Name Dispute-Resolution Policy (UDRP), established in 1999, has been a cornerstone in addressing cybersquatting and domain name disputes . As we move into 2025, it is imperative for trademark owners, legal professionals, and businesses to understand the recent advancements and the anticipated changes shaping this critical mechanism. Awareness of these developments is essential to safeguard intellectual property in an increasingly complex digital environment.

Overview of the UDRP

The UDRP provides a streamlined, cost-effective alternative to litigation for resolving disputes over domain names registered in bad faith. This non-judicial policy is administered by renowned arbitration providers, including the World Intellectual Property Organization (WIPO), and has resolved over 76,000 cases concerning more than 143,000 domain names as of 2023. In 2023 alone, WIPO received a record-breaking 5,616 UDRP complaints, reflecting a 7% increase compared to 2022. Its enduring success lies in its efficiency, typically achieving resolution within 60 days, and its global applicability across multiple top-level domains (TLDs).

Key Developments in UDRP Procedures

Increased Caseload and Efficiency

The number of UDRP cases has surged in recent years, demonstrating the policy’s effectiveness in tackling domain-related infringements. Between 2019 and 2023, the number of cases handled by WIPO increased by 36%, highlighting the growing reliance of trademark owners on this mechanism. Despite this rising caseload, the system continues to resolve disputes promptly, maintaining its hallmark efficiency

Adaptation to New gTLDs

The expansion of the domain name system, particularly with the introduction of new generic top-level domains (gTLDs), has presented challenges and opportunities for the UDRP. The policy has proven adaptable, extending its applicability to these new gTLDs and ensuring that trademark owners can address infringements across a broader spectrum of domain names. In 2023, nearly 30% of UDRP complaints concerned domains registered under new gTLDs such as .xyz, .online, and .shop.

Integration of Electronic Procedures

In response to the digital transformation of legal processes, the UDRP has integrated electronic procedures to enhance efficiency and accessibility. The World Intellectual Property Organization (WIPO) has implemented fully electronic procedures for UDRP cases, eliminating the need for paper filings and streamlining the dispute resolution process. This modernization ensures that the UDRP remains relevant in a fast-evolving technological era.

Proposed Reforms and Future Perspectives

Calls for Financial Penalties

Since 2015, there have been discussions about introducing financial penalties for respondents found guilty of cybersquatting under the UDRP. Proponents argue that such measures would serve as a stronger deterrent against bad-faith registrations. However, critics caution that imposing financial penalties could complicate the UDRP’s streamlined process and potentially deter legitimate claims.

Addressing Privacy Regulations

The implementation of privacy regulations, such as the General Data Protection Regulation (GDPR) in the European Union, has impacted the availability of domain registrant information. This has posed challenges for complainants in identifying and pursuing cases against infringing domain name holders. The UDRP is exploring mechanisms to balance the need for transparency in dispute resolution with compliance to privacy laws.

Conclusion

The UDRP continues to play a pivotal role in protecting intellectual property rights in the digital realm. Its adaptability to increasing caseloads, new gTLDs, and digital processes has cemented its position as an indispensable tool for combating cybersquatting. Nevertheless, ongoing discussions about reforms, including financial penalties and privacy compliance, highlight the dynamic nature of the UDRP and its capacity for evolution.

As we advance into 2025, staying informed about these changes is essential for stakeholders to effectively navigate domain disputes.

Contact Dreyfus Law Firm today to discuss your UDRP dispute resolution needs. With recognized expertise in domain name protection, we assist you at every stage of the process, from identifying infringements to resolving disputes. Thanks to our strategic approach and international network, we help you secure and defend your digital identity against cybersquatting attempts.

Dreyfus Law Firm partners with a global network of intellectual property law specialists.

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Written by Nathalie Dreyfus29/01/2025

In today’s increasing competitive market, safeguarding intellectual property is crucial for small and medium-sized enterprises (SMEs). Recognizing this need, the European Union Intellectual Property Office (EUIPO) is set to relaunch the SME Fund on February 3, 2025, offering financial assistance to SMEs seeking IP protection. This initiative program allows businesses to claim reimbursements of up to €1,000 for IP applications, reducing the financial barriers to securing vital protections.

Overview of the EUIPO SME Fund

The SME Fund is a well-established reimbursement initiative designed to support European SMEs in protecting their intellectual property rights. By offering financial aid, the fund encourages businesses to register trademarks, designs, and patents, thereby securing their innovations and enhancing market position. The 2025 relaunch continues the success of previous years, reflecting the EUIPO’s commitment to fostering a robust IP framework within the SME community.

Eligibility Criteria for SMEs

To qualify for the SME Fund, enterprises must meet the European Union’s definition of an SME, which includes:

Employing fewer than 250 persons.
Having an annual turnover not exceeding €50 million or a balance sheet total not exceeding €43 million.

Eligible SMEs can apply for vouchers covering up to 75% of certain IP service fees, including trademark and design applications. It’s important to note that specific eligibility criteria and services covered may vary; reviewing the EUIPO’s official guidelines is essential for clarity.

Application Process

Applying for the SME Fund is a streamlined process that involves several key steps:

Preparation: Evaluate your current IP assets to identify which require protection, ensuring the application aligns with business priorities.
Registration: Create an account on the EUIPO’s SME Fund portal to access application forms and resources.
Voucher Application: Submit an application specifying the IP services and attach necessary documentation.
Service Utilization: Upon approval, use the voucher to cover eligible IP service fees within the stipulated timeframe.
Reimbursement Claim: After completing the IP service, submit proof of payment to claim reimbursement up to the voucher’s value.

Benefits of Protecting Intellectual Property

Securing IP rights offers numerous advantages for SMEs:

Market Exclusivity: Protects products and services from unauthorized use by competitors.
Enhanced Brand Recognition: Enhances brand value and consumer trust through trademark registration.
Revenue Opportunities: Enables licensing opportunities and potential revenue streams.
Increased Business Valuation: Increases overall business valuation by safeguarding intangible assets.

By leveraging the SME Fund, businesses can overcome cost barriersassociated with IP protection, thereby fostering innovation and long-term growth.

Conclusion

The relaunch of the EUIPO SME Fund on February 3, 2025, presents a valuable opportunity for SMEs to secure financial support for intellectual property protection. By understanding the eligibility criteria and following the application process, businesses can obtain reimbursements of up to €1,000, ensuring their innovative assets remain safeguarded.

At Dreyfus Law Firm, we specialize in intellectual property law and are dedicated to assisting clients in navigating the complexities of IP protection. Our expertise guarantees that your business innovations are secure and legally protected. Dreyfus Law Firm is in partnership with a global network of attorneys specializing in Intellectual Property.

Contact us today for personalized support in accessing the SME Fund or securing your IP rights.

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Written by Nathalie Dreyfus28/01/2025

The Dreyfus firm is a key player in the French intellectual property landscape. Specializing in trademark management, it supports its clients in all stages of protection, from registration to defense against counterfeiting. This article outlines the essential elements of French trademark regulations while highlighting Dreyfus’s role in this field.

A Strong Legal Framework for Trademarks

Legislative Foundations

In France, trademark protection is based on Law No. 91-7 of January 4, 1991, updated by Ordinance No. 2019-1169 and Decree No. 2019-1316. These reforms ensure alignment with European standards, facilitating trademark registration and management procedures.

An International Dimension

France is a party to several international conventions, including the 1883 Paris Convention and the 1994 TRIPS Agreement. It also participates in the Madrid systems for international trademark registration, ensuring protection beyond national borders.

Role of the INPI

The National Institute of Industrial Property (INPI) plays a central role by managing filings, oppositions, and invalidity actions. This institution ensures rigorous enforcement of trademark regulations, supporting innovation and brand integrity.

Trademark Registration and Management Process

Eligibility Requirements

Distinctiveness remains a cornerstone of trademark registrability. Recent case law highlights evolving consumer perception standards, particularly concerning basic English terms used in France (e.g., MySunbed, INPI, 27 May 2024). Meanwhile, decisions on deceptiveness emphasized the need for claimants to demonstrate misleading potential at the time of filing, rather than relying on post-registration evidence (INPI, 3 April 2024, NL 22-0199).

Non-traditional trademarks, such as holograms or sounds, are also accepted under specific technical conditions.

Unregistered Trademarks

French law does not recognize unregistered trademarks. However, well-known trademarks enjoy protection against misappropriation based on principles of unfair competition. Proving renown remains challenging, as it requires robust evidence such as prior judicial recognition or extensive consumer exposure (INPI, 12 July 2024, Immo Angels). Meanwhile, allegations of parasitic intent require clear links between the litgious trademark and a recognizable external reference, as demonstrated in the Cadault case (INPI, 29 April 2024).

Administrative Procedures

Trademark applications are submitted via the INPI’s online platform. While a prior search is not mandatory, it is highly recommended to prevent conflicts with existing rights.

Benefits of a Registered Trademark

Legal Protection: A registered trademark provides a presumption of validity and enables legal action in cases of infringement.
Ease of Management: Registration simplifies oppositions and cancellations while allowing the blocking of counterfeit product imports.
Strengthened Identity: A well-protected trademark enhances brand recognition and competitive advantage.

Validity Period and Renewal

A trademark is valid for 10 years and can be renewed indefinitely. Failure to use a trademark for five consecutive years risks cancellation, but the INPI provides solutions to justify its use.

Recent decisions reflect the broad evidentiary approach adopted by the INPI. Undated documents such as marketing materials and screenshots, when evaluated collectively with dated items, have been deemed admissible (e.g., INPI, 2 May 2024, Bob dépannage!). This flexibility underscores the importance of maintaining detailed usage records.

Opposition and Litigation

Opposition

Any interested party can oppose a trademark application within two months of its publication. This procedure is crucial to protect pre-existing rights.

Cancellation Actions

Trademarks can be canceled on various grounds, such as lack of distinctiveness or bad faith registration. These mechanisms remain vital tools for preserving registry integrity.

New Perspectives: NFTs and Artificial Intelligence

With the emergence of NFTs and AI, new trademark challenges are arising. Businesses must adapt their trademark portfolios to cover these new technologies and anticipate the legal challenges they entail.

Dreyfus’s International Recognition of Excellence

Dreyfus law has earned widespread acclaim for its outstanding expertise in intellectual property law, consistently ranking among the best in the field:

WTR1000 2024: Nathalie Dreyfus has been ranked among the top professionals in intellectual property law, reflecting her unparalleled expertise and commitment to client success.
Legal 500: Nathalie Dreyfus was referenced in the 2023 edition for her innovative approach to trademark management and strategic advice.
Who’s Who Legal Thought Leaders France 2024: Nathalie Dreyfus was distinguished in this prestigious report, highlighting her thought leadership and significant contributions to the field.

These prestigious accolades highlight the Dreyfus firm’s unwavering dedication to excellence, its commitment to delivering exceptional legal services, and its reputation as a trusted partner in protecting intellectual property rights.

Dreyfus’s Judicial and International Expertise

Founding and managing partner of Dreyfus Law Firm, Nathalie Dreyfus is an officially accredited judicial expert with the Paris Court of Appeal in trademark and design law, as well as with the Court of Cassation in trademark matters. Her recognized expertise extends internationally, as she is also an accredited expert with WIPO (World Intellectual Property Organization) in Geneva, where she issued 17 decisions in 2024, and with the Forum (USA). Her unique combination of judicial and international experience positions her as a leading authority in the field, providing unparalleled insights and solutions to complex intellectual property issues.

Conclusion

By combining local expertise with an international vision, Dreyfus law firm offers an innovative approach to protecting trademarks in a constantly evolving world. Whether through advisory services, management, or litigation, Dreyfus remains a trusted partner for companies looking to enhance their intangible assets.

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