Nathalie Dreyfus

Introduction

The infringement of a Community Plant Variety Right (CPVR) raises particularly sensitive issues. Behind these technical terms often lie years of research, selection, and substantial investment. Council Regulation (EC) No 2100/94 grants the breeder an exclusive right valid throughout the European Union, enabling them to control the production, reproduction, and marketing of the protected plant material.

A recurring difficulty arises in practice: when a plant has been lawfully acquired, may it be freely propagated or commercially exploited without authorization? This raises a central legal question: can the doctrine of exhaustion of rights be invoked to defeat an allegation of infringement of a Community plant variety right? In the field of plant variety protection, the answer requires considerable caution. While European Union law recognizes the principle of exhaustion, its application in this area remains strictly circumscribed.

Understanding the boundary between lawful use and infringement of a Community plant variety right, as well as the limits of the exhaustion doctrine, is therefore essential in order to ensure the secure exploitation of a protected variety and to avoid litigation with potentially significant economic consequences.

What is the Community plant variety protection system?

Community plant variety right constitutes a sui generis industrial property right established by Council Regulation (EC) No 2100/94 and administered by the Community Plant Variety Office (CPVO), based in Angers.

Pursuant to Article 13 of the Regulation, it confers upon the breeder a unitary and exclusive right effective throughout the territory of the European Union. This right enables the breeder to authorise or prohibit the production, reproduction, conditioning for the purpose of propagation, offering for sale, marketing, export, import, or stocking for any of those purposes of propagating material of the protected variety.

The creation of a new plant variety requires years of selection, agronomic trials, genetic stabilization, and technical evaluation. Costs are substantial, biological cycles are lengthy, and the risk of failure is significant. In the absence of legal protection, third parties could easily reproduce the plant material, depriving the breeder of any return on investment. The regime therefore pursues a clear objective: to safeguard varietal innovation by granting a unitary exclusive right across the internal market.

Infringement of a Community plant variety right

Infringement of a Community plant variety right consists of any violation of the exclusive rights conferred upon the holder under Regulation (EC) No 2100/94. The breeder’s right extends to propagating material of the protected variety and, in certain circumstances, to harvested material and essentially derived varieties.

Pursuant in particular to Article 94 of Regulation (EC) No 2100/94, the following acts constitute infringement when carried out without the authorisation of the right holder:

• The production or reproduction (multiplication) of protected plant material (including grafting, cuttings, sowing, or in vitro propagation);
• Offering for sale, selling, marketing, or otherwise placing on the market the protected material;
• Exporting, importing, or stocking for commercial purposes infringing plants, grafts, or seeds.

The material element of infringement lies in the performance of one of these acts. Fault or intent is, in principle, irrelevant: infringement gives rise to strict liability, and the infringer’s good faith does not preclude a finding of liability.

By way of illustration, a nurseryman who lawfully acquires a plant of a protected variety may not, in the absence of a licence, take grafts from that plant in order to produce dozens of trees intended for commercial sale. Such a practice would constitute an act of reproduction of the protected material and could therefore be characterized as an infringement of a Community plant variety right.

Certain statutory exceptions must nevertheless be taken into account under Regulation (EC) No 2100/94, which provides for limitations to the breeder’s exclusive right, including:

• The breeder’s exemption: the use of a protected variety for the purpose of breeding a new variety remains free, except in the case of essentially derived varieties;
• The so-called “farmers’ privilege” (subject to specific conditions and limited to certain species), permitting the reuse on the holding of the product of the harvest;
• Acts done privately and for non-commercial purposes, or for experimental purposes.

Alongside these exceptions, European Union law also recognizes a distinct mechanism: the doctrine of exhaustion of rights. However, this mechanism does not constitute a comparable derogation; it does not authorize the performance of acts reserved to the right holder, but merely limits the latter’s ability to control the circulation of protected material. The question therefore arises as to whether this doctrine is applicable to plant varieties.

Absence of exhaustion of rights under Community plant variety right

Under the doctrine of exhaustion of rights, once a protected product has been placed on the market within the European Economic Area by the right holder or with their consent, the holder may no longer oppose its resale. The exclusive right is thus “exhausted” in respect of that specific item.

Within the system of Community plant variety protection, this mechanism does exist, but it remains strictly circumscribed. Exhaustion applies only to acts relating to plant material that has been placed on the market with the authorization of the right holder, and solely with regard to its resale in the same form, pursuant to Article 16 of Regulation (EC) No 2100/94.

However, exhaustion never extends to acts of reproduction, multiplication, production, or the further cultivation of protected material. Accordingly, the lawful marketing of a plant or graft does not authorize its subsequent propagation without a licence. As a result, the doctrine of exhaustion cannot, in principle, be invoked to justify such acts.

The significance of this limitation is particularly evident in the field of plant variety protection. If exhaustion were to extend to acts of multiplication, the lawful acquisition of a single plant could allow for its indefinite reproduction and the establishment of an entire commercial production, thereby depriving the breeder of any remuneration and effectively undermining the protection afforded by the Community plant variety right.

This restriction is explained by the very nature of plant material: unlike an industrial product, a plant variety can be biologically reproduced and multiplied on a large scale from a very limited number of initial plants. Allowing exhaustion to apply to acts of reproduction would therefore neutralize the effectiveness of the exclusive right granted under the Regulation and would compromise the economic balance of the plant variety protection system.

In practice, even where a professional operator has lawfully acquired propagating material, they remain bound to respect the breeder’s exclusive rights for any exploitation exceeding mere resale. The right is therefore not extinguished by the first act of marketing; it subsists in respect of any act liable to encroach upon the monopoly conferred by the CPVR, in accordance with the Regulation’s logic of enhanced protection for varietal innovation.

Conclusion

The infringement of a Community plant variety right engages a strong exclusive right designed to protect long-term scientific and economic investments. Although the principle of exhaustion of rights exists under EU law, it remains strictly confined to the resale of material placed on the market with the holder’s authorization and cannot be invoked to justify acts of reproduction or multiplication of the protected variety.

Any reproduction or multiplication carried out without the authorization of the right holder may constitute an act of infringement, even where the plant material has been lawfully acquired. A clear understanding of this distinction is therefore essential for operators in the sector in order to ensure the secure exploitation of protected plant varieties.

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.

Dreyfus law firm works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. What is the difference between a national plant variety right and a community right?

The national plant variety right is granted by the competent national authority (in France, the National Plant Variety Office, also known as INOV). The Community plant variety right is granted by the Community Plant Variety Office (CPVO) and produces effects throughout the entire territory of the European Union.

2. May a variety purchased in another Member State be freely exploited in France?

No. The Community plant variety right is a unitary right: the absence of authorization in one Member State applies across the entire European Union.

3. Can incorrect labeling of a variety constitute infringement?

Yes, where the marketed variety in fact corresponds to a protected variety. Mislabeling does not exclude liability.

4. May a licence agreement impose stricter restrictions than those provided by the Regulation?

Yes. The parties may agree on more stringent contractual obligations (territorial scope, quotas, traceability), subject to compliance with EU competition law.

5. How can one verify whether a plant variety is protected by a Community Plant Variety Right?

Protection may be verified through the public database of the Community Plant Variety Office, which lists both protected varieties and pending applications. Such verification is particularly recommended prior to any commercial exploitation of a plant variety.

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.

Introduction

The Uniform Domain Name Dispute Resolution Policy (UDRP) constitutes the principal extrajudicial mechanism for resolving domain name disputes at the international level. Established by ICANN (Internet Corporation for Assigned Names and Numbers) in 1999, it enables trademark owners to challenge the abusive registration and use of domain names commonly referred to as cybersquatting without resorting to traditional court proceedings, which are typically lengthier and more costly.

Since March 9 2026, one of the five providers accredited to administer UDRP proceedings, namely the WIPO Arbitration and Mediation Center, has introduced an optional priority processing service (“UDRP Priority Service”), enabling the expedited examination of certain UDRP complaints. This optional mechanism allows complainants, upon request and subject to the Center’s acceptance, to benefit from an accelerated review of their complaints.

Overview of the UDRP procedure

The UDRP primarily applies to domain names registered under generic top-level domains (gTLDs), including new gTLDs, as well as certain country-code top-level domains (ccTLDs) that have contractually adopted the Policy.

To succeed in a UDRP complaint, the complainant must establish the following three cumulative elements:

• Identity or confusing similarity: the disputed domain name must be identical or confusingly similar to a trademark or distinctive sign in which the complainant has rights.
• Absence of rights or legitimate interests: the domain name holder must lack rights or legitimate interests in respect of the domain name, such as prior bona fide use or legitimate non-commercial use.
• Registration and use in bad faith: the domain name must have been registered and used in bad faith, typically for purposes such as diversion, speculative resale, or exploitation aimed at harming or capitalizing on the trademark owner’s reputation.

Within this framework, the administrative Panel may order the transfer or cancellation of the disputed domain name. The UDRP does not provide for monetary damages. The parties nevertheless retain the right to initiate proceedings before competent national courts.

On average, a UDRP proceeding lasts between 45 and 60 days. While significantly shorter than conventional litigation, this timeframe may remain considerable in cases involving manifest infringement of prior rights. During this period, the continued operation of the disputed domain name may cause substantial harm, including reputational damage and diversion of customers.

For more information on the classic UDRP procedure, you can read the previously published article on the subject: https://www.dreyfus.fr/en/2025/01/29/the-evolution-of-udrp-procedures-what-you-need-to-know-in-2025/

It was in this context that the Uniform Rapid Suspension (URS) mechanism was introduced to address clear-cut cases of cybersquatting more swiftly. However, while the URS enables the rapid suspension of a domain name, it does not result in either its transfer or its definitive cancellation. It applies primarily to the gTLDs launched under ICANN’s 2012 “New gTLD Program”, as well as to certain pre-existing extensions that have incorporated the URS following the renewal of their registry agreements, such as, for example, “.org, .info, .biz, .mobi, .travel, .jobs, .pro”. Its scope and remedial effect therefore remain restricted, prompting renewed consideration of genuinely expedited UDRP procedures.

Implementation of an expedited UDRP procedure

In response to the need for more rapid dispute resolution while preserving the substantive effects of the traditional UDRP, WIPO has recently introduced an expedited UDRP mechanism. This service is intended to be used in relatively straightforward or clear-cut disputes, particularly where the facts and legal arguments do not raise any particular complexity and therefore allow for expedited processing of the case.

The principal advantage of this framework lies in the fact that it remains a fully-fledged UDRP proceeding capable, in particular, of transferring the domain name while operating under a significantly compressed timeline. Accordingly, the legal criteria of the UDRP Policy remain unchanged: the complainant must still establish the three cumulative elements required under the Policy.Under this mechanism, a decision may be notified within approximately 30 days from the filing of the complaint.

It should, however, be noted that this timeframe remains subject to certain external factors, including the response times of the registrar and the parties, which may affect the overall duration of the proceedings.

How does the expedited UDRP procedure operate?

• Number of Panelists

Under this system, the case is decided by a sole Panelist. Any request for the appointment of a three-member Panel automatically removes the case from the expedited track and results in its treatment under the standard UDRP procedure.

• Number of domain names

The expedited procedure may apply up to five domain names, provided that they are all held by the same registrant.

This requirement inherently excludes any request for consolidation involving multiple respondents or necessitating proof of common control among different entities.

• Costs of the procedure

The fees are structured as follows:

• USD 4,000 in administrative fees;
• USD 3,000 corresponding to the Panelist’s fees.

Conclusion

In summary, the expedited UDRP procedure reflects an effort to adapt dispute resolution mechanisms to the need for increased speed in online infringement matters. It preserves the essential effects of the traditional UDRP while substantially reducing processing time. As such, it offers an intermediate solution between the standard UDRP procedure and the URS. Its practical effectiveness will ultimately depend on its implementation conditions and its attractiveness to rights holders.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Why does the URS procedure not replace the UDRP procedure?
Because it does not allow for the transfer of the domain name and applies within a more limited scope of domain names.

2. Who may initiate a UDRP proceeding?
Any individual or entity holding prior rights (including registered or recognized unregistered trademarks, trade names, etc.).

3. What language governs the UDRP proceedings?
In principle, the language of the domain name registration agreement, unless otherwise determined by the Panel.

4. What happens if the respondent fails to reply to the complaint filed against its domain name?
The proceeding continues, and the Panel renders its decision on the basis of the evidence submitted by the complainant.

5. Is there a risk of procedural abuse by complainants?
Yes. A Panel may find that a complaint constitutes Reverse Domain Name Hijacking where the complainant has brought the UDRP proceeding in bad faith (notably where it knew, or should have known, that the Policy requirements were not met). Such a finding is purely declaratory: it entails no monetary award and no order for reimbursement of the administrative fees.

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.

Introduction

In a context where plant innovation is rapidly evolving through biotechnology, plant breeding and genetic engineering, economic actors increasingly seek to maximize the legal protection of their innovations while securing their competitive advantage in the marketplace. A recurring question concerns the compatibility of filing both a plant variety right and a patent in relation to the same research subject: is it possible to obtain both a Plant Variety Right (PVR) and a patent without creating conflicts between these rights?

This issue lies at the heart of intellectual property strategies in the plant sector. It raises questions regarding the scope of protection, commercial exploitation and potential litigation risks, all of which must be carefully managed by innovative companies.

Conditions of protection and protected subject matter: patent and plant variety right (PVR)

The consistency of a simultaneous filing strategy relies on a fundamental distinction: a patent protects a technical invention, whereas a plant variety right protects a specific plant variety. The legal criteria and underlying logic of these two regimes differ significantly.

The patent: protection of a technical solution

A patent protects a technical solution to a technical problem. However, no patent is granted for plant varieties as such. Plant varieties are defined subgroups of a plant species that are distinguished from other varieties by specific hereditary characteristics.

In other words, plants obtained through crossing and selection are excluded from patentability under Article 53(b) of the European Patent Convention (EPC).

In the plant field, a patent may therefore cover only:

• An isolated gene with an identified technical function;

• A genetic transformation process;
• A technical breeding method.

To be patentable, the invention must satisfy the classical criteria of novelty, inventive step and industrial applicability (Article 52 EPC).

In order to prevent patents relating to plants obtained by technical processes from inadvertently covering plants obtained through essentially biological processes, the European Patent Office often requires the introduction of a disclaimer.

In practice, the claims, which define the scope of protection sought, must therefore explicitly specify that the invention does not cover plants obtained by essentially biological processes.

The patent thus protects a technology or functional mechanism, independently of any specific plant variety.

The plant variety right (PVR): protection of a plant variety

Plant varieties are protected under a separate intellectual property regime: plant variety protection.

A Plant Variety Right protects a distinct plant variety that satisfies the following criteria:

• Commercial novelty,
• Distinctness,
• Uniformity,
• Stability.

The PVR grants its holder an exclusive right over the production, commercialization and exploitation of the reproductive material of the protected variety.

However, the regime includes specific features, such as:

• The farmer’s privilege (Article 14 of the Council regulation (EC) no 2100/94).

• The breeder’s exemption (Article 15(c) of Council Regulation (EC) No 2100/94).

Unlike patents, the PVR does not protect a technical process, but rather the plant variety itself, defined by its genetic and phenotypic characteristics.

Possible compatibility or legal barriers?

What European and French law allow

According to case law and the practice of the offices (notably the European Patent Office), it is possible to obtain both a patent and a PVR for different aspects of the same innovation:

• The PVR protects the variety as such (its genetic and phenotypic definition).
• The patent protects a technical invention that may be used across several varieties such as a gene conferring resistance or an innovative cultivation method.

Protection may therefore be cumulative where the protected subject matter is legally distinct, for example, a patented genetic mechanism applicable to multiple varieties and a specific variety protected by a PVR.

Potential areas of conflict and exclusion

Nevertheless, conflicts may arise in certain situations, particularly where patent claims are drafted too narrowly or too specifically, leading in practice to coverage of an identifiable plant variety. This could create an overlap with the scope of the PVR and raise issues of exclusion from patentability under European and French law, since plant varieties cannot be patented.

These grey areas require very careful claim drafting and, in some cases, dialogue with patent offices, to ensure that the two forms of protection remain clearly distinct.

In some configurations, the exploitation of one right may depend on the use of the other. To prevent technological deadlock, the law allows, under certain conditions, the granting of compulsory licences in cases of dependency between a patent and a plant variety right, particularly under Directive 98/44/EC on the legal protection of biotechnological inventions.

This mechanism ensures a balance between exclusive rights and the dissemination of innovation, while guaranteeing equitable remuneration for the holder of the earlier right.

Strategic trade-offs for plant innovators

Impact on commercial exploitation

A simultaneous filing strategy must be aligned with commercial and profitability objectives:

• Market coverage: a patent may deter competitors from using a patented technology in other varieties, while the PVR guarantees exclusive control over the protected variety’s name and propagating material.
• Cross-licensing: it may be strategic to structure separate licence agreements: one PVR licence for varietal exploitation and one patent licence for the underlying technology, to maximise revenues without unduly restricting innovation.
• Management of exceptions: certain European legal systems allow exceptions such as the farmer’s privilege or farm-saved seed under specific conditions, which directly affect commercial strategy.

A coordinated approach enables protection of the varietal creation while ensuring maximum commercial impact, particularly in highly competitive sectors such as commercial agriculture or specialised horticulture.

Management of litigation risks

The simultaneous filing of a patent and a PVR may give rise to specific disputes, in particular concerning:

• Definition of the scope of protection: divergent interpretations of patent claims or of the scope of the protected variety may lead to infringement or invalidity actions.
• Scientific developments: where varietal traits are progressively optimised, it must be assessed whether such improvements remain within the scope of the existing PVR or justify a new patent filing, in order to avoid overlap and portfolio fragility.

In this context, it is essential to draft clear and differentiated claims and to conduct a structured analysis of the respective fields of protection of the patent and the COV in order to avoid any overlap that could weaken the rights.

Conclusion

The simultaneous filing of a plant variety right and a patent can constitute a powerful strategy when structured around legally distinct and complementary subject matter. It requires disciplined drafting, a precise understanding of European legal regimes, and careful anticipation of commercial and litigation risks.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can a PVR be filed first and a patent later?
Yes, both sequences are possible. Filing a PVR first does not in itself destroy the novelty of a patent, provided that the technical invention has not been publicly disclosed. However, commercialisation or detailed technical disclosure of the variety may jeopardise patentability.

2. Does simultaneous filing affect a company’s financial valuation?
A combined patent and PVR portfolio may enhance valuation during fundraising, M&A transactions or due diligence. Investors assess the robustness, remaining term and strategic coherence of the rights.

3. Are the rules identical outside the European Union?
No. Legal regimes vary by jurisdiction. Some countries strictly apply the UPOV Convention, while others adopt broader interpretations of patentability in the life sciences. An international strategy requires a country-by-country analysis.

4. Can trade secrets complement a patent and a PVR?
Yes. Technical information such as protocols, parental lines or agronomic data may be protected as trade secrets. This does not replace patent or PVR protection but may strengthen the overall strategy.

5. Can a patent block exploitation of a variety protected by a third party?
Yes. If a variety incorporates a trait covered by a third party’s patent, exploitation may require a licence, even if the variety itself is protected by a PVR. Ownership of a PVR does not guarantee freedom to operate.

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

Introduction

Consumer law is undergoing a major development with the introduction of a new mechanism: the “three-click” right of withdrawal for contracts concluded online within the European Union. Stemming from Directive (EU) 2023/2673, which amends Directive 2011/83 on consumer rights, this reform requires professionals to fundamentally rethink their digital interfaces, customer journeys and internal compliance processes.

This transformation forms part of the European Consumer Agenda 2030 and reinforces a well-established objective: ensuring a fair, transparent digital environment free from misleading practices or dark patterns.

A new digital right of withdrawal: the “three-click” mechanism

Strengthening the 14-day right of withdrawal

The right of withdrawal, enshrined in Directive 2011/83 and transposed in France under Articles L.221-18 et seq. of the Consumer Code, allows consumers to withdraw from a contract within 14 days without providing any justification.

The novelty does not lie in the duration of the withdrawal period itself, but in the way this right must now be exercised online.

Professionals must implement a clear, accessible and permanent electronic mechanism enabling consumers to withdraw from the contract through:

• A clearly identifiable button labelled “Withdraw from the contract here” or similarly unambiguous wording;
• An explicit confirmation via a second button labelled “Confirm withdrawal”;
• A confirmation sent to the consumer on a durable medium.

This feature must remain available throughout the entire withdrawal period.

A response to manipulative interfaces

This reform is part of the broader fight against manipulative interfaces. European authorities have identified that certain websites made cancellation complex, concealed or discouraging.

Making withdrawal difficult may now be classified as:

• A misleading commercial practice;
• An aggressive commercial practices;
• A dark pattern.

The principle is straightforward: the ease of subscribing must correspond to the ease of cancelling.

Technical obligations imposed on e-commerce operators

UX/UI and digital architecture adaptation

Operators must review their interfaces to:

• Ensure the withdrawal button is clearly visible and unambiguous;
• Maintain access to the mechanism throughout the withdrawal period;
• Allow easy identification of the contract concerned;
• Record each step of the process for evidentiary purposes.

Traceability and proof

Professionals must be able to demonstrate:

• The effective presence of the withdrawal button;
• The proper functioning of the withdrawal pathway;
• The sending of confirmation on a durable medium (e-mail, downloadable PDF).

A lack of traceability will significantly increase litigation risk.

Territorial scope and contracts concerned

A clearly extraterritorial reach

EU consumer law applies not only to businesses established within the EU but also to third-country operators targeting EU consumers.

Businesses will be deemed to target the EU market where they:

• Deliver to a Member State;
• Use a specific EU Member State language;
• Accept payment in euros;
• Conduct marketing campaigns directed at EU consumers.

Which contracts are concerned?

The reform applies to:

• Distance contracts;
• Financial services concluded at a distance;
• Digital subscriptions;
• Tangible goods sold online.

Traditional exceptions remain (immediately executed digital content with express consent, personalised goods, etc.).

Sanctions, risks and interaction with unfair commercial practices

Significant financial penalties

Each Member State determines applicable sanctions. In France, non-compliance may result in:

• A fine of up to €75,000 for legal entities;
• Additional administrative penalties;
• Enforcement action by the DGCCRF.

European authorities cooperate through the CPC (Consumer Protection Cooperation) network, reinforcing cross-border enforcement risks.

Heightened legal risk: extension of the withdrawal period

In the absence of a compliant mechanism:

• Consumers may exercise withdrawal by any means;
• The 14-day period may be extended;
• The company may be accused of obstructing consumer rights.

National authorities are already demonstrating increased vigilance in this regard.

Conclusion

European consumer law continues to pursue transparency and contractual balance in the digital environment. The three-click right of withdrawal represents a major regulatory development, combining enhanced consumer protection with increased accountability for economic operators.

This reform should not be viewed as a purely technical adjustment but as a central component of digital contractual governance and overall compliance (Digital Services Act, unfair commercial practices framework, GDPR).

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Does the withdrawal period remain 14 days?

Yes, except for specific exceptions applicable to certain services.

2. Can a consumer withdraw by other means than the designated button?

Yes. The three-click mechanism does not eliminate other lawful methods of exercising the right (e-mail, letter, model withdrawal form).

3. Does the right of withdrawal apply to immediately accessible digital content (streaming, downloads)?

It remains applicable unless the consumer has expressly waived the right before immediate performance and acknowledged the loss of that right.

4. Must the consumer provide justification?

No. Withdrawal remains without cause.

5. Does this mechanism apply only to financial services?

No. Although the amending directive concerns financial services, it modifies the general directive on consumer rights.

6. How can compliance be demonstrated during an inspection?

The professional must retain comprehensive documentation: time-stamped screenshots, technical logs, proof of confirmation sent on a durable medium, archived withdrawal requests and refund traceability.

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

Introduction

Genuine use of a trademark constitutes a fundamental condition for maintaining balance within trademark law. In response to the proliferation of filings, defensive registration strategies, and overly broad specifications covering entire classes of goods and services, the legislature has enshrined the requirement of actual commercial exploitation of the sign. Protection is legitimate only insofar as the trademark effectively fulfills its essential function of indicating origin on the market.

This requirement of genuine use is not merely theoretical. In contentious proceedings, it operates as a substantive filter of the validity and enforceability of the monopoly right. A registered trademark that is insufficiently exploited becomes vulnerable to revocation.

The legal framework governing genuine use: requirements and assessment

The concept of genuine use is clarified under French law by in Article L. 714-5 of the French Intellectual Property Code, as amended pursuant to Directive (EU) 2015/2436, and forms part of the harmonized framework established by Regulation (EU) 2017/1001 on the European Union trademark .

Under this regime, a trademark owner incurs total or partial revocation where, without proper reasons, the trademark has not been genuinely used for a continuous period of five years in respect of the goods or services for which it has been registered. Revocation may be sought by any third party upon proof of absence of genuine use.

The concept of genuine use must not be equated with token or purely formal use intended solely to preserve the rights conferred by the trademark. According to settled case law of the Court of Justice of the European Union, genuine use consists in use that is consistent with the essential function of the trademark namely, to guarantee the identity of origin of the goods or services and that seeks to create or maintain market share for those goods or services (CJEU, Ansul, C-40/01). Such use must be public and external to the undertaking; purely internal or symbolic use is insufficient. However, genuine use may be effected by a third party with the consent of the proprietor.

Furthermore, the assessment of genuine use must be carried out globally, taking into account  the nature of the goods or services concerned, the characteristics of the relevant market, the territorial scope, and the frequency and intensity of the use (General Court, Sunrider Corp., T-203/02). In this respect, no minimum quantitative threshold of use may be required in the abstract (CJEU, La Mer Technology, C-259/02).

Moreover, genuine use must occur within the relevant territory covered by the protection conferred by the trademark. In the case of a French trademark, use must take place in France, it being accepted that use confined to a particular geographical area may suffice where it is economically justified. As regards an EU trademark, use must extend to a substantial part of the territory of the European Union; this requirement is assessed qualitatively rather than purely geographically, having regard in particular to the characteristics of the relevant market (CJEU, Leno Merken, C-149/11).

The burden of proof of genuine use

The assessment of genuine use of a trademark is subject to a concrete and contextual review carried out by the INPI or the EUIPO or the competent court, which determines, on the basis of a consistent body of converging evidence, whether the alleged use fulfills the essential function of the  trademark, namely to guarantee the identity of origin of the goods or services on the market.

Use must be established for the relevant reference period and within the legally pertinent territory that is, France in the case of a French national  trademark and, in the case of a European Union trademark, within the European Union, pursuant to a concrete appraisal taking into account the market concerned, without any automatic requirement of proof in  several Member States.

Genuine use must also be demonstrated in respect of the specific goods or services relied upon and in a form of the sign that corresponds to the registration or does not alter its distinctive character. The assessment is both qualitative and quantitative in nature: the economic consistency of the evidence, its expression, and its capacity to demonstrate an actual presence on the market prevail over its mere isolated volume.

The nature of admissible evidence

Proof of genuine use rests primarily on objective, external and economically verifiable evidence demonstrating that the  trademark has been effectively exploited on the market in relation to the goods or services concerned. The courts and the INPI as well as the EUIPO expect documentary evidence such as invoices, contracts, purchase orders or accounting records referring to the sign at issue, enabling the identification of the nature of the goods or services marketed, their volume, their frequency and their geographical destination. Catalogues, brochures, price lists, packaging, advertising materials or product photographs likewise carry probative value, provided that they are precisely dated and establish actual commercial circulation rather than merely preparatory acts.

Digital and marketing evidence now plays a decisive role, subject to proper contextualization: dated and archived screenshots of websites, sales data drawn from e-commerce platforms, media coverage or market studies, for example. Such evidence derives its probative force not from its abstract existence, but from its capacity to demonstrate an effective interface between the trademark and the relevant public, thereby evidencing concrete commercial activity on the relevant goods and services.

The scope of proof: preservative effect and delimitation of enforceable rights

In litigation, these principles assume a decisive procedural dimension. In revocation proceedings, the burden of proof lies with the trademark owner, who must demonstrate genuine use during the relevant period; failing such proof, revocation is ordered in respect of those goods or services not substantiated by the evidence produced by the adverse party. In opposition or  invalidity proceedings, where the earlier trademark has been registered for more than five years, proof of use is required upon request by the contested applicant/trademark holder and constitutes a condition for both the admissibility and the effectiveness of the pleas relied upon by the adverse party. The adjudicating authority does not confine itself to noting the formal existence of documents, but assesses their economic consistency, their concordance and their precise correspondence to the goods claimed.

The issue of autonomous sub-categories reinforces this requirement: where the specification is broad and divisible, proof must relate to each distinct segment, as sporadic use in respect of a single good or service is insufficient to maintain protection for the entirety of the abstractly claimed category. An overextended portfolio, not aligned with actual exploitation, mechanically increases the risk of partial revocation.

From this perspective, proof of use does not merely establish that exploitation has occurred; it determines the exact scope of the right maintained and legally enforceable. Its effect is strictly proportionate to the evidence adduced: protection subsists only for those goods or services for which genuine use is demonstrated, within the relevant period and territory, and in the registered form or an equivalent form. Proof of use thus produces a limited preservative effect, reducing the title to its economically justified perimeter and transforming the abstract wording of the registration into an effective monopoly. In practice, it redefines the scope of actions and pleas available in contentious proceedings.

Conclusion

Proof of genuine use constitutes a central issue in trademark litigation. The burden rests on the proprietor and must relate to a relevant period, territory and scope, supported by dated and verifiable documentation.

In a context where courts undertake a nuanced assessment particularly where autonomous sub-categories are at issue evidentiary management becomes a major strategic concern. Assembling a robust and structured evidentiary record is no longer optional, but a condition for the survival of trademark rights when faced with revocation actions or challenges in opposition proceedings.

While genuine use is not a condition for the initial validity of a trademark, it is a condition for the continued maintenance of the monopoly over time.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. Can late resumption of use prevent revocation?
Yes, but only if it occurs prior to the filing of the revocation action and is not artificially organized for the sole purpose of avoiding the proceedings.

2. Is use by a licensee valid?
Yes. Use by a licensee, with the consent of the proprietor, is legally deemed equivalent to use by the proprietor.

3. Is internal use (internal documents, prototypes) sufficient?
No. Use must be public and market-oriented. Purely internal or preparatory use is insufficient.

4. Can limited commercial activity amount to genuine use?
Yes, provided it is consistent with the size and structure of the relevant market. Assessment is always contextual.

5. Is proof of use examined ex officio?
No. It is examined only when expressly raised in the context of contentious proceedings.

6. Why must evidentiary management be anticipated?
Assembling an evidentiary record retrospectively is often complicated. Regular archiving of evidence of use is an essential measure to secure and preserve a trademark portfolio.

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.

Introduction

Filing an opposition against a European Union Trademark (EUTM) application without holding a registered prior right may appear intuitive where a sign has been used for several years. In practice, however, acting without an enforceable title is often a legally fragile and economically risky strategy.

In a context of increasing filings before the EUIPO and intensified competition among European market players, it is essential to assess the strength of one’s rights before taking action. A poorly grounded opposition may not only fail but also weaken a company’s strategic position.

The legal framework for opposing an EU trademark

Regulation (EU) 2017/1001 on the European Union Trademark (EUTMR) provides that an opposition must be based on a prior right valid within the European Union.

Such prior rights may include in particular:

• a national trademark registered in a Member State;
• an earlier European Union trademark;
• an international registration designating the EU;
• a well-known trademark within the meaning of the Paris Convention.

In the absence of such a right, an opposition is, in principle, bound to fail.

Contrary to common belief, mere commercial use of a sign in several Member States is not sufficient. The EU system is built upon the legal certainty attached to registration.

Earlier unregistered use: limited and strictly regulated protection

The exception under article 8(4) EUTMR: a narrow path

There is a limited exception. Article 8(4) EUTMR allows an opposition to be based on a non-registered sign used in the course of trade, provided that:

1. the right is recognised under the national law of a Member State;
2. that right entitles its holder to prohibit use of the later trademark;
3. the use predates the contested filing;
4. the sign is of more than mere local significance.

There is no EU-wide “unregistered European trademark.” The assessment must be conducted country by country.

A demanding evidentiary burden

In practice, the EUIPO requires substantial evidence, such as:

• dated invoices and contracts;
• detailed turnover figures;
• documented advertising campaigns;
• media coverage;
• proof of geographic market presence.

EU case law confirms that the burden of proof is heavy and the interpretation strict. For example, in a decision of July 9, 2010 (T-430/08), concerning the company name “Grain Millers GmbH & Co. KG,” invoked for flour products in Germany, it was argued that the company could not rely on its trade name.

The General Court of the European Union held, however, that under German law, pursuant to Article 5(2) of the Markengesetz, rights in a trade name arise from its first use in the course of trade, without the need for formal registration.

Procedural and strategic risks of opposing without prior rights

A high risk of rejection

A poorly founded opposition may result in:

• loss of official opposition fees;
• legal costs;
• a possible order to bear the other party’s costs;
• loss of strategic credibility.

Furthermore, a rejection decision may be used by the applicant to strengthen its commercial position.

A boomerang effect on trademark strategy

Acting without registered rights often reveals a structural weakness: lack of anticipation in protection strategy.

This may:

• encourage third parties to file similar signs;
• weaken the company’s position in negotiations;
• expose it to counterclaims.

In some cases, an unsuccessful opposition may even prompt the applicant to initiate infringement proceedings once registration is granted.

Alternatives and effective strategies to secure your position

1. Prompt filing of a national or EU trademark

If the contested application is still under examination, a coordinated strategy may be considered. However, a later filing does not allow action against an earlier application.

2. Subsequent invalidity action

Once the trademark is registered, an invalidity action may be appropriate, particularly if based on:

• a demonstrable prior right;
• the applicant’s bad faith (Article 59 EUTMR);
• infringement of a personality right or recognised trade name.

3. Strategic negotiation

In many cases, a transactional approach is more effective than a fragile opposition.

A well-reasoned cease-and-desist letter may assert the rights relied upon, outline the risks incurred, and open the door to an amicable solution: withdrawal of the application, limitation of goods and services, or a coexistence agreement.

This strategy often produces faster, more controlled and less costly results than formal EUIPO proceedings.

4. Preventive portfolio management

We systematically recommend:

• Conducting regular audits of signs in use;
• Filing defensive applications;
• Implementing EUIPO monitoring;
• Defining a coordinated multi-jurisdictional strategy.

Conclusion

Taking action against a European Union trademark application without a registered prior right is rarely a winning strategy.

Before filing any opposition, a thorough legal assessment is essential. Holding a solid prior right remains the cornerstone of any effective action.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. What is the difference between an opposition and an invalidity action?
An opposition is filed during the examination phase of a trademark application and aims to prevent registration based on prior rights. An invalidity action is brought after registration and seeks retroactive cancellation of the trademark, based on relative grounds (prior rights, bad faith) or absolute grounds (lack of distinctiveness, public policy, etc.).

2. Is prior use of a trade name sufficient?
Only if the applicable national law allows the holder to prohibit use of a later trademark and if the sign is of more than mere local significance.

3. Can bad faith be invoked without holding a formal prior right?
Yes. Bad faith may be relied upon, particularly in invalidity proceedings, even without a registered trademark. However, evidence must demonstrate an intention to harm or unfairly appropriate the value of an existing sign.

4. Is there an EU-wide “unregistered European trademark”?
No. There is no unitary protection for an unregistered trademark across the European Union. Only certain national laws recognise non-registered signs under strict and territorially limited conditions.

5. Can a domain name used for several years constitute an enforceable prior right?
Yes, but only if it is recognised as a distinctive sign protected under applicable national law and if it entitles its holder to prohibit use of a later trademark. Mere use is insufficient; it must be substantial, prior and legally enforceable.

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

Introduction

The launch of professional accounts on Instagram marked a decisive step in the evolution of corporate communication. Social media platforms are no longer merely channels for institutional expression; they are now fully integrated into business development strategies, customer relations, and the enhancement of intangible assets.

However, this evolution entails a specific and often underestimated legal risk : “username squatting”, namely the appropriation by a third party of a username corresponding to a trademark or distinctive sign. In a digital environment where control over identity determines credibility and visibility, securing identifiers has become a major strategic issue.

Instagram and professional accounts : a strategic asset at risk

The shift to professional accounts has significantly transformed the nature of Instagram profiles. Access to audience analytics, promotional tools and commercial features has turned the account into a genuine business asset.

In this context, the username is no longer a secondary choice. It concentrates trademark visibility on the platform and determines how easily consumers can identify and find the company. It also contributes to consistency across digital channels, including domain names and other social media platforms.

When a third party registers or exploits this identifier, the consequences go beyond mere technical inconvenience: public confusion, loss of traffic, trademark dilution and a weakening of the overall digital strategy may result.

Username squatting : definition, mechanisms and legal risks

Username squatting refers to the registration of a username identical or similar to a trademark, generally with speculative or harmful intent. This practice follows the logic of cybersquatting observed in domain names, now transposed to social networks.

Motivations may vary : resale at a high price, traffic diversion, exploitation of a trademark’s reputation, and more generally, of a company, or even identity impersonation intended to mislead consumers.

From a legal perspective, the risks are significant. Where a trademark is registered, the use of a username incorporating the protected sign may constitute trademark infringement if it amounts to use in the course of trade likely to create a likelihood of confusion. Case law acknowledges that a digital identifier may qualify as trademark use where it seeks to attract public attention in a commercial context.

In the absence of a sign being filed, action may be brought on the grounds of unfair competition or parasitism. In such cases, fault, damage and a causal link must be demonstrated, requiring a detailed analysis and solid evidentiary support.

Beyond litigation, damage to online reputation may occur rapidly and have lasting consequences, particularly where the disputed account disseminates misleading or harmful content.

Legal grounds for taking action against the misappropriation of a username

Trademark law constitutes the primary legal tool. Registration with the INPI, EUIPO, or through an international filing provides an exclusive right that may be enforced against unauthorized third-party use.

In parallel, Instagram, and more generally the Meta group, provides internal reporting procedures in cases of intellectual property infringement. These mechanisms require evidence of ownership and proof of the alleged infringement. The strength of the file and the rights holder’s responsiveness are decisive factors.

Where necessary, a formal cease-and-desist letter based on trademark infringement or unfair competition may have a strong deterrent effect. In certain cases, the intervention of specialized counsel is sufficient to secure voluntary transfer of the username.

Prevention : protecting your trademark before opening a professional account

Prevention remains the most effective strategy. Reserving usernames should be integrated into any trademark launch or development strategy, alongside trademark filing and domain name registration.

Implementing digital monitoring enables early detection of abusive registrations and allows prompt action. Such monitoring forms part of a broader policy for managing intangible assets and governing digital identity.

To learn more about the importance of monitoring your trademark on social media, we invite you to read our previously published article.

A global strategic approach : digital consistency and trademark protection

Username squatting should not be viewed in isolation. It forms part of a broader reflection on the consistency and security of a company’s digital presence.

Alignment between the registered trademark, domain names and social media identifiers strengthens commercial credibility and limits the risk of impersonation. Rigorous digital identity governance helps prevent fraud, reputational damage and traffic loss.

Today, digital identity constitutes a fully-fledged intangible asset. Its protection should be approached with the same level of rigor as other intellectual property rights.

Conclusion

The launch of professional accounts on Instagram offers considerable commercial opportunities and plays a key role in corporate visibility strategies.

However, the risk of username squatting requires increased vigilance. Effective protection relies on a combination of prior trademark registration, strategic reservation of identifiers and swift action in the event of infringement.

In a competitive digital environment, securing a username is not a minor operational detail; it is a major legal and strategic issue.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

Dreyfus & Associés works in partnership with a global network of specialized intellectual property lawyers.

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. Can a company reserve a username without immediately using the account ?
Yes. Preventive reservation of a username is recommended even if the account is not immediately active. It prevents third-party appropriation and secures future digital strategy.

2. Does the inactivity of a squatted account make transfer easier ?
Not automatically. Inactivity alone is insufficient; infringement of prior rights or violation of platform rules must be demonstrated.

3. Can a slightly different username still create legal issues ?
Yes, if the similarity creates a likelihood of confusion in the public’s mind. Assessment is case-specific and depends on the trademark’s reputation and the context of use.

4. Is a username considered a company asset ?
Indirectly yes. As part of digital identity, it contributes to trademark recognition and coherence, potentially impacting the overall valuation of intangible assets.

5. Is social media monitoring truly necessary for SMEs ?
Yes. The risk of impersonation does not only affect large corporations. Appropriate monitoring enables early detection of infringements and limits their impact.

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

Introduction

In its Deity Shoes case of December 18, 2025, the Court of Justice of the European Union (CJEU) clarified with remarkable precision the conditions for protection of community designs.

Through this decision, the Court reaffirmed two fundamental principles: first, that protection under Regulation (EC) No 6/2002 is subject solely to novelty and individual character. Second, that the existence of fashion trends cannot lower the threshold required to establish individual character.

In recent years, fast fashion has profoundly transformed the fashion industry. Within weeks sometimes days a trend spotted on a runway or social media platform is reproduced on a large scale. The phenomenon of “dupes” products openly marketed as near-identical alternatives at lower prices further intensifies this pressure. We invite you to read our article previously published on this issue.

This judgment arises in a context marked by increasing litigation related to fashion, product customization and rapid reproduction practices. It now stands as a key reference for design right holders throughout the European Union.

The background of the case: A revealing illustration of contemporary creative practices

Deity Shoes marketed footwear protected by community design registrations. Its creative process relied on selecting and combining components sourced from catalogues of Asian suppliers. Colors, materials, decorative elements and accessories were chosen from pre-defined options and assembled into a final product intended for the European market.

When sued for counterfeiting, the defendant companies challenged the validity of the asserted rights. In their view, the designs merely resulted from the juxtaposition of pre-existing elements, without genuine creative contribution, and therefore could not meet the statutory requirements.

The CJEU was asked to clarify two sensitive issues:

• Whether a minimum threshold of creativity exists under EU design law;
• Whether fashion trends affect the assessment of individual character.

Fundamental reminder: no “minimum degree of creativity” required for design protection

One of the central questions referred to the Court concerned the possible existence of a minimum creativity threshold. The defendants argued that the contested designs reflected nothing more than combinations of existing elements and did not demonstrate any particular intellectual effort.

The Court rejected this reasoning unequivocally. Protection under Regulation No 6/2002 cannot be made conditional upon a “minimum degree of creativity” or a “particular intellectual effort.”

The Court clearly distinguished design law from copyright law. While copyright protects original “works” reflecting the author’s personality, design law protects new and individualized objects, often of an utilitarian nature and intended for mass production.

Accordingly, the assessment does not focus on the intensity of the creative process but on the final product. Novelty and individual character must be evaluated through an objective comparison with prior designs. The concept of “designer,” referred to in Article 14 of the Regulation, is relevant only for determining ownership and does not introduce any additional substantive condition for protection.

Design law: is the customization of a pre-existing design sufficient to establish individual character?The Court further clarified that “the fact that a design results from the personalization of a basic model […] is not, in itself, an obstacle to recognizing its individual character.”

The decisive factor remains the overall impression produced on the informed user. Even when composed of known elements, a design may be protectable if the specific combination creates an overall impression that differs from that produced by any individual prior design.

This clarification is crucial for the fashion industry, where creativity often operates through selection, adaptation and recombination rather than radical invention.

The informed user and the requirement of a global comparison

The Court adopted a rigorous approach to the assessment of individual character. The analysis must be conducted from the perspective of the informed user, defined as a person possessing a high degree of attention and extensive knowledge of the sector concerned.

This informed user is familiar with prevailing fashion trends. However, such knowledge does not reduce the level of scrutiny. On the contrary, it makes the user more attentive to differences in detail.

The Court emphasized that the assessment must be based on a global comparison, independent of aesthetic considerations, commercial positioning or the popularity of certain elements. The reasoning cannot rely on the notoriety of a trend or market saturation.

Practical implications of the case for fashion stakeholders

The judgment comes at a time of modernization of EU design law. The ongoing reform seeks to adapt the system to digital environments, clarify key concepts and enhance legal certainty.

In this context, the Deity Shoes ruling consolidates the theoretical foundations of the regime. It reassures right holders by confirming that protection is not dependent on fluctuating subjective criteria. At the same time, it prevents an excessive dilution of the individual character requirement in a sector heavily influenced by trends.

For businesses, this case law calls for a structured filing strategy. It is essential to:

• Clearly define the scope of claimed protection;
• Identify the visually dominant features of the design;
• Anticipate potential comparisons with prior art.

A proactive and strategic approach significantly enhances enforceability against fast fashion operators.

Conclusion

Design rights constitute an effective legal weapon against fast fashion, provided they are deployed within a coherent strategy. The Deity Shoes ruling clarifies that protection does not depend on subjective creative effort or the existence of fashion trends, but rather on the overall perception of the product by the informed user.

This strengthens business models based on adaptation and combination while maintaining a high and objective threshold for individual character. For fashion creators who invest in structured intellectual property protection, the legal framework offers robust and predictable safeguards.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of their intellectual assets.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Can fast fashion reduce the effectiveness of design protection?

Fast fashion does not alter the legal validity criteria. However, rapid production cycles and widespread copying may complicate enforcement. Effectiveness therefore largely depends on the filing, monitoring and enforcement strategy implemented by the right holder.

2. Can a design inspired by a supplier’s catalogue be protected?

Yes. The CJEU confirmed that a design resulting from the personalization or combination of pre-existing elements may be protected, provided that the chosen combination produces a distinct overall impression. The originality of each component taken individually is irrelevant.

3. Does commercial success influence the assessment of individual character?

No. The analysis is strictly legal and objective. Market popularity, aesthetic appeal or branding strategy do not affect validity. Only the overall impression on the informed user is decisive.

4. How long does protection of a community design last?

A registered community design is protected for an initial period of five years, renewable in five-year increments up to a maximum of 25 years. An unregistered community design benefits from three years of protection from the date of disclosure within the European Union.

5. Is it necessary to demonstrate significant creative effort to obtain protection?

No. Unlike copyright law, EU design law does not require a minimum degree of creativity or particular intellectual effort. Novelty and individual character are the only substantive requirements.