Nathalie Dreyfus

On December 12 2012 the Autorité de la concurrence imposed a €900,000 fine on the Danish company Bang & Olufsen for having prohibited its approved distributors from selling its products online¹. The Authority noted that “such anti-competitive practices are systematically considered, both in European Union and National law, as certainly being a serious breach of conduct.”

Bang & Olufsen is a company producing top of the range Hi-fi systems. In its European contract for selective distribution, unaltered since 1989, the aforementioned company banned the sale of its products by mail order. Based on an internal memo and statements by approved distributors, the Authority discovered that online sales had also been prohibited.

This decision corroborates an earlier ruling in 2008², which fined the Pierre Fabre Dermo-Cosmétique company for a ban imposed on its approved distributors against Internet sales of its products unless on medical prescription. A question of prejudice had been lodged with the Court of Justice of the European Union regarding the validity of such practices. The Court ruled that “[the] general and total ban on Internet sales of contractual products to end users effectively constitutes a characteristic restriction of competition by object (…)”.

Only an objective justification could legitimize such a ban but the company provided no such justification in the case in point. Moreover, according to the Court, the protection of the products’ brand image does not constitute adequate justification.

The authorities therefore concluded that the company had weakened competition amongst its approved distributors – intra-brand competition – and had prevented them having access to other consumers. At the same time, the latter were unable to benefit from more attractive pricing and this practice was a disservice to those living a long way from any point-of-sale.

This is therefore a further warning to distribution networks who must be careful about any restrictions imposed on Internet sales.

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[1] Decision n° 12-D-23 – 12 December 2012.

[2] Decision n° 08-D-25 – 29 October 2008.

A limit to trademark restrictions: a brokerage can display the distinctive brand of insurance companies.

By an interim ruling dated 14^th January 2013, the TGI in Paris has stated that an insurance company cannot condemn a brokerage for displaying its brand and logo on a website if deemed necessary for its business activity. This would be in order to inform Internet users of the companies that it represents and whose products it is authorized to market.

The judge considered that there was no possible confusion for Internet users logging onto a site entitled Brokerage since they would automatically know that they were in contact with a broker representing several companies and not with the insurance company itself.

In this case the judge applied the exception of “necessary reference” under article L.713-6 b) of the French Intellectual Property Code (CPI). This exception permits the use of another brand “as a necessary reference to indicate the nature of a product or service, notably as an accessory or separate item, as long as there is no confusion as to product origin.” The displaying of the insurance company’s trademarks by the brokerage was necessary, it was neither an accessory nor a separate item, but these illustrations were only given as examples by the CPI. The use of the word “notably” allows for the broader application of this article. A similar judgment could also be upheld for maintenance or repair services which indicate the make of vehicles, for generic products which made reference to the original medicine in order to guide patients, or for the names of sporting events reproduced on websites for online betting.

This exception to trademark restrictions requires proof that there is no confusion as to the origin of products and services, as demonstrated by the judge referring to the overall understanding of Internet users logging onto the site of a brokerage. The ruling follows the trend of current legal practice on ‘necessary reference’. But it is bolder, in that the few decisions thus far on ‘necessary reference’ were within similar contexts, but in this decision the judge has innovated by entering a new field of insurance broker activities.

However, it is still simply an interim ruling. This decision is only temporary because it will have to be examined in detail and the jurisdiction established will perhaps revoke the extension of the necessary reference exception granted to brokerages.

The World’s Leading Trademark Professionals

In the third edition of The World Trademark Review 1000 (WTR) – The World’s Leading Trademark Professionals, 2013, Nathalie Dreyfus founder of Dreyfus & associés was recognized as a Bronze individual in prosecution and strategy in trademarks in France. In addition, Nathalie Dreyfus is also cited as a recommended expert who takes an “adaptable, forward-thinking” approach to a wide range of trademark matters.

A recent lawsuit was filed between a company and its former president. This case¹ provided the English courts with the opportunity to rule on the question of the legal nature of e-mail contents: are they susceptible to appropriation?

In the case where intellectual property rights would be upheld, the judge distinguished between the status of the e-mail title and that of its contents. Having considered several possibilities in which the content would belong either to the sender or to the recipient, no satisfactory solution could be proposed.

In the judge’s opinion, the recent pattern of jurisprudence could not favor intellectual property rights, whilst recognizing that the question had not been fully explored. In reality, certain decisions have left room for doubt², although not directly related to intellectual property rights pertaining to e-mail content in the strictest sense.

In such cases, jurisprudence would be more inclined to establish protection via copyright or the non-respect of confidential information.

[1] Fairstar Heavy Transport N.V versus Philip Jeffrey Adkins and Claranet Limited [2012] EWHC 2952 (TCC).

[2] Pennwell Publishing v Ornstien [2007] EWHC 1570; WRN Limited v Ayris [2008] EWHC 1080; Boardman v Phipps [1966] UKHL 2

Victoria’s Supreme Court, in its initial findings, condemned Google Inc. on November 12^th 2012 for having reproduced information judged to be defamatory in its natural referencing service.

The plaintiff, Milorad Truklja, a show organizer, had made the headlines in Australian papers after shots were fired at him in a Melbourne restaurant in 2004.

Reporting this event, numerous press reports implied that he was linked to the world of organized crime. In addition, these reports provided links to the site “Melbourne Crime”, specialized in the recording of violent acts purportedly carried out by organized crime.

Google was implicated by the fact that, upon entering the name of the plaintiff in the search engine, the first three pages systematically provided links to articles and images associating him with organized crime.

Milorad Truklja therefore sent a letter of notification to Google asking them to modify the search results.

Having received no reply from Google, he lodged a complaint for defamation with the Court at Victoria.

In their defense, Google submitted that they cannot be held responsible for content generated automatically by a robot. They insisted on the fact that the process is fully automated and requires no human intervention.

Both jury and judge refuted this argument based on their capacity as editors (relating to the law of criminal infringement by the Australian press). The Court insisted on the fact that in Australian law, the mere intention to publish content is sufficient to qualify as defamation. Viewed in this way, the judge stipulated, Google did effectively intend to publish this content, just as a newsagent would do and therefore they were declared guilty of an act of defamation.

On November 19^th, the Mexican Economy Minister lodged a formal request with the Director General of the World Organization for Intellectual Property, for Mexico to join the Madrid Protocol for the international registration of marks, taking the total of member states to eighty-nine.

For Mexico, Latin America’s second-largest economy and member of the G20, this membership is a continuation of the policies initiated by its government which aim to increase its commercial agreements by the diversification of its partners.

Mexico’s membership will take effect from February 19^th 2013 and the designation of Mexico by international mark will thereafter be possible.

In 2012 the Philippines, Colombia and New Zealand had already joined the system of the international mark.

The Madrid System, regulated by two treaties, the Madrid Arrangement (1891) and the Madrid Protocol (1989), enables the mark holder to protect their mark in several countries by making a single demand for registration at their national office (such as the INPI in France) or their regional one (such as the OHMI). Administrated by the international bureau of the OMPI, this system has several advantages: registration in a single language and savings both in the initial and renewal stages.

The EU Parliament has just approved the European Patent, whose not so nice technical name is “the EU patent package”. This package is composed of three parts, the unitary patent, the language regime and the unified patent court.

The new patent will automatically be valid in all 25 EU member states taking part (Spain and Italy are currently outside the new regime, but could decide to join in at any time). The EU patent taxes will costs precisely €4,725 when the new system is up to speed, compared to the average of €36,000 needed today for the same protection. Consequently, the new regime will offer a more effective protection for a lower price.

The application will have to be filed in English, German or French before the European Patent Organisation. If filed in another language, a translation into one of these three languages will be required. The translation costs will be fully refunded for EU-based small and medium-sized companies, non-profit organizations, universities and public research organizations.

Each part of the package should come into effect on January 1^st, 2014.

On October 26, 2012, ICANN’s President, Fadi Chehadé, said that he has continued to negotiate the contracts with IBM and Deloitte, the companies responsible for the technical implementation of the Trademark Clearinghouse. Additional terms will be added to the contracts. One of them will specify that ICANN will retain “all intellectual property rights in the Trademark Clearinghouse data”.

This clause is interesting. In Europe, the producer of a database who is making a substantial investment has a sui generis right by law[1] conferring prerogative on the content of the database. Structural elements of the database are also protected by copyright.

This is not the case in the US, where the database protection is ensured by contract, even if copyright could be invoked if the database presents a creative input in its presentation or its arrangement. However, the US Courts are reluctant to apply copyright without proof of real originality.

Therefore, ICANN will protect itself against any extraction or reuse of the Trademark Clearinghouse data.

In this way, ICANN is improving the situation, as no entity will be able to acquire rights on the Trademark Clearinghouse data.

The 12th edition of the French Legal Awards took place in Paris on November 29, 2012 to reward the best lawfirms.

The Dreyfus Lawfirm has been awarded in the Intellectual Property field and obtained the Silver Trophy.

Already singled out in 2011 as a « rising specialized team », the firm is recognized once again as a leader in the Intellectual Property field.

We kindly thank our clients since without their trust this award would not have been possible.