Nathalie Dreyfus

ICANN 81: Navigating the Future of Internet Governance

ICANN’s Annual General Meeting serves as a cornerstone for discussions on internet governance, policy development, and technical advancements. The 81st meeting in Istanbul was no exception, offering a platform for diverse voices to influence the trajectory of the digital landscape.

Key Highlights

Focus on New gTLDs

A significant portion of ICANN 81 was dedicated to the forthcoming application window for new generic Top-Level Domains (gTLDs), scheduled for the second quarter of 2026. This marks the first opportunity since 2012 for entities to apply for new gTLDs, signaling a monumental shift in domain name expansion. The anticipated release of the updated Applicant Guidebook in early 2025 underscores ICANN’s commitment to a streamlined and efficient application process.

Enhancements in DNS Security

Addressing DNS abuse and enhancing security protocols were paramount during the sessions. Discussions centered on implementing robust measures to mitigate threats, ensuring a safer and more resilient Domain Name System.

Emphasis on the Multistakeholder Model

Reaffirming its dedication to inclusive governance, ICANN highlighted the importance of the multistakeholder model. Engaging various stakeholders, from governments to private entities and civil society, remains crucial for balanced and effective internet governance.

Detailed Session Overviews

New gTLD Program Implementation

The session delved into the specifics of the upcoming gTLD application process. Key topics included applicant support mechanisms, evaluation criteria, and timelines, providing prospective applicants with essential insights.

DNS Abuse Mitigation Strategies

Experts presented comprehensive strategies to combat DNS abuse. Emphasis was placed on collaboration between registries, registrars, and law enforcement agencies to detect and prevent malicious activities.

Universal Acceptance Initiatives

Promoting the acceptance of all valid domain names and email addresses, regardless of script or length, was a focal point. Initiatives aimed at achieving true universality in internet access and communication were discussed extensively.

Looking Ahead to ICANN 82

Building on the momentum from ICANN 81, the upcoming ICANN 82 Community Forum is scheduled from March 8 to 13, 2025, at the Hyatt Regency Seattle Hotel in the United States. As the first meeting in the annual cycle, the Community Forum emphasizes internal work of the Supporting Organizations and Advisory Committees, cross-community interactions, and plenary sessions on topics of community-wide interest. Participants can anticipate in-depth discussions on policy development, technical updates, and strategic planning for the future of internet governance.

Conclusion

ICANN 81 in Istanbul marked a significant milestone in the ongoing evolution of internet governance. The deliberations and decisions made during this meeting have set the stage for future developments, ensuring that the internet remains secure, inclusive, and resilient. As a recognized expert in domain name law and digital brand protection, Dreyfus Law Firm closely monitors these regulatory changes and their impact on businesses. Our firm provides strategic guidance to help clients navigate the complexities of internet governance, enforce their rights against cybersquatting, and anticipate new compliance requirements. With our deep expertise in ICANN policies and domain name dispute resolution, we support companies in safeguarding their online presence and adapting to the ever-changing digital landscape.

Frequently Asked Questions (FAQ)

What is ICANN?

The Internet Corporation for Assigned Names and Numbers (ICANN) is a nonprofit organization responsible for coordinating the maintenance and procedures of several databases related to the namespaces and numerical spaces of the internet, ensuring its stable and secure operation.

What are gTLDs?

Generic Top-Level Domains (gTLDs) are one of the categories of top-level domains (TLDs) maintained by ICANN. Examples include .com, .org, and .net.

When is the next application window for new gTLDs?

The next application window for new gTLDs is scheduled for the second quarter of 2026.

What is the multistakeholder model?

The multistakeholder model is a governance structure that brings together all stakeholders, including businesses, civil society, governments, and technical experts, to participate in policy development processes.

Where can I find more information about ICANN meetings?

Detailed information about past and upcoming ICANN meetings can be found on the official ICANN meetings website.

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Featured in the Press: Dreyfus in the Spotlight in the Expert Guide 2025

When an intellectual property (IP) firm is mentioned and approached by specialized media outlets, it speaks not only to its credibility but also to its ability to innovate and offer concrete solutions to today’s legal challenges. That is precisely the case with Dreyfus, whose expertise in design law—as well as broader IP protection—was recently highlighted in the Expert Guide 2025 – Intellectual Property, published by Corporate LiveWire.

In this article, we take a closer look at that publication, outlining the key points covered in the interview with Nathalie Dreyfus, the firm’s founder, and showing how this recognition by the specialized press reinforces Dreyfus’s status as a leading authority in Europe on the modernization of design law. We also discuss the main issues raised in the Expert Guide 2025 article and explain how the firm puts this knowledge into practice to support its clients.

Dreyfus Intellectual Property Expert Guide 2025


Dreyfus in the Spotlight in the Expert Guide 2025

The Expert Guide 2025 – Intellectual Property Publication

Expert Guide 2025, dedicated to intellectual property, is published by Corporate LiveWire, an international media outlet that regularly provides in-depth analyses and resources on legal and economic trends. In this edition, various renowned experts and specialized firms address critical topics such as:

  • The Unified Patent Court (UPC) regime.
  • Changes to trademark protection rules in certain African countries.
  • Developments in copyright law for utilitarian objects.
  • New digital regulations affecting trade secret protection and the rise of 3D printing.

In this context, a special focus is placed on the modernization of design law in Europe, a topic at the heart of current debates and set to gain new momentum with the phased implementation of revised legislative provisions starting in 2025.

The Article “The Modernisation of EU Design Protection: A New Era for European Creativity”

Written by Nathalie Dreyfus, founder of Dreyfus, this article—featured in Expert Guide 2025—explains the key aspects of the European reform on designs, including:

  • The shift from “Community Designs” to “European Union Designs” (EUD), symbolized by the adoption of the Ⓓ icon to align branding with ® for trademarks and © for copyright.
  • An expanded definition of “designs” and “products” to include virtual or animated objects, as well as user interface elements.
  • A more flexible application process, allowing up to 50 designs to be grouped in a single filing, regardless of their classification under the Locarno Classification.
  • Strengthened rights for owners, now clearly covering 3D reproductions and the unauthorized use of digital files intended for additive manufacturing.

Thanks to this article, which you can find on Corporate LiveWire’s website, readers can appreciate the full scope of the reform and the opportunities it creates, while also understanding the associated risks and challenges.


The Expertise of Dreyfus, an IP Specialist, Recognized by the Specialized Press

A Track Record Built in the Field

From its inception, Dreyfus has stood out thanks to a multidisciplinary approach that combines legal, technical, and strategic capabilities. This versatility allows the firm to:

  • Anticipate market and legislative changes, especially in rapidly evolving areas (digital, AI, 3D printing).
  • Advise a wide range of clients—major corporations, SMEs, startups, and independent creators—on building and defending their portfolios of designs, trademarks, and patents.
  • Play an active role in European discussions through conferences, in-depth articles, and broader initiatives (experience-sharing, public consultations).

Moreover, Nathalie Dreyfus’s direct involvement in leading publications demonstrates the firm’s high-level recognition. Being invited to publish an analysis in a resource such as Expert Guide 2025 not only affirms Dreyfus’s professional legitimacy but also highlights concrete and pragmatic solutions to the challenges of design law.

Concrete Commitments in Response to the Modernization of Design Law

In her article, Nathalie Dreyfus highlights several crucial points on which the firm already assists its clients:

  1. Adapting to the Symbol: educating companies about the importance of clearly indicating the protection of their creations and advising them on strategies for using the symbol (logo, packaging, marketing).
  2. Managing a Design’s Life Cycle: from the conceptual stage to market launch, including potential renewals and defense against counterfeiting.
  3. Addressing New Digital Formats: supporting the development of technical documentation that includes 3D renderings, animations, or screenshots.

These areas of expertise illustrate Dreyfus’s proactive approach and its capacity to provide businesses with ways to capitalize on their creations.


Challenges Raised by the Reform and Practical Solutions

Why Is This Reform Crucial?

  • Uniformity: One of the main objectives of the reform is to further harmonize rules across the European Union, taking into account national specificities and the need to adapt to the digital era.
  • New Forms of Piracy: 3D printing, sharing of STL files, and the rise of the metaverse require rethinking the rights granted to designers and businesses.
  • Strengthening Competitiveness: Better protection boosts investment in design and encourages creativity, two crucial levers for international competitiveness.

The Contributions of Dreyfus, an IP Expert

To address these developments:

  • Portfolio Audits: the firm offers a full audit of existing designs to identify gaps, filing opportunities, or renewal strategies best suited to new fee structures and updated protection durations.
  • Litigation Support: if counterfeiting is detected, Dreyfus has extensive experience in proceedings before the EUIPO, French courts, and other European jurisdictions.
  • Training and Awareness: Nathalie Dreyfus and her team regularly conduct webinars and seminars to demystify legislative developments and enhance the in-house expertise of their clients’ teams.

External Links and Additional Resources

To help you delve deeper into the issues discussed in this article, here are some useful links:

  1. Expert Guide 2025 – Intellectual Property (Corporate LiveWire): you’ll find the full article entitled “The Modernisation of EU Design Protection: A New Era for European Creativity” by Nathalie Dreyfus.
  2. EUIPO – European Union Intellectual Property Office: the EU’s official body for registering trademarks and designs, and the key organization behind the reform.

These resources allow you to gain a clearer understanding of the challenges and opportunities arising from the new European design legislation, as well as to consider potential strategies available to companies and creators.


Conclusion: Dreyfus, a Trusted Partner for the New Era of European Design

Specialized press, through the Expert Guide 2025 published by Corporate LiveWire, emphasizes the relevance of Dreyfus’s work in the intellectual property sphere. The modernization of design law in Europe—and the heightened focus on digital creations—marks a major turning point for both businesses and creators.

By being recognized and cited as an expert, Dreyfus solidifies its position as a leader in providing strategic, legal, and technical support to major corporations, SMEs, and individuals seeking to secure and capitalize on their intangible assets. The firm is at your disposal for further information, personalized case studies, or custom support.


Need Support Protecting Your Designs?

Contact Dreyfus:

Benefit from the expertise of Nathalie Dreyfus and her team to anticipate the effects of the reform and implement the best practices to safeguard your creativity and maintain your competitiveness in the European market.

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How to win a cancellation action against a French trademark or invalidity proceedings before the INPI?

Effective trademark management in France requires a thorough mastery of the administrative procedures needed to challenge a trademark’s validity or obtain its revocation. The French National Institute of Industrial Property (INPI) provides simplified mechanisms for invalidation (nullity) and revocation (déchéance), enabling stakeholders to maintain fair practices in the field of trademarks.

In 2023, trademark-related cases account for 91% of all procedures before the INPI. Invalidation actions have risen to 22% (compared to 19% in 2022), while revocation procedures have decreased from 17% to 9%.

Introduction to Invalidation and Revocation Procedures before the INPI

The procedures for invalidation and revocation, introduced by the EU Trademark Package in 2020, allow you to challenge improper registrations or revoke a trademark. They offer a faster and more cost-effective alternative compared to court proceedings.

  • Invalidation (Nullity): The trademark was invalid from the moment it was registered. It is therefore removed from the register with retroactive effect.
  • Revocation (Déchéance): The trademark has lost its validity due to events occurring after its registration. Its effects end only for the future.

Key statistics:

  • In 2023, 60% of successful invalidation actions were based on absolute grounds.
  • Favorable revocation decisions for non-use represent 75% of cases initiated since 2021.

These tools protect market integrity and ensure fair competitive practices.

The Invalidation Procedure

Invalidation aims to eliminate trademarks that should never have been registered.

Absolute Grounds for Invalidation

A trademark may be invalidated if it:

  • Lacks distinctiveness: e.g., generic or descriptive terms.
  • Is contrary to public policy or accepted principles of morality.
  • Misleads the public: e.g., about the geographical origin or quality of the products.

Relative Grounds for Invalidation

A trademark may be invalidated for infringing prior rights:

  • Identical or similar trademark already registered.
  • Pre-existing copyright, trade names, or domain names.

Dive Deeper: When a trademark is challenged on relative grounds, it is crucial to present a clear comparative analysis of the distinctive elements, including phonetics, appearance, and meaning. Citing relevant case law bolsters your arguments.

Case Law Example: In 2022, a French trademark was invalidated for causing confusion with an EU trademark registered 5 years earlier (Source: INPI).

Extended Practical Example: A competitor registered a trademark using the dominant color of a pre-existing company, combined with similar wording. An expert analysis of consumer perception was crucial in convincing the INPI to invalidate the trademark on relative grounds.

The Revocation Procedure

Revocation addresses abuses or omissions that occur after registration.

Non-Use of a Trademark

If a trademark is not used within 5 years of its registration, it can be revoked. For instance, a trademark registered in 2017 with no proven use by 2023 could be subject to revocation.

Focus: Evidence of use may include invoices, advertising materials, or packaging samples. The absence of such documents weakens the owner’s position.

Becoming a Generic Term

Abusive use can cause a trademark to lose its distinctiveness. Examples include Aspirin or Kleenex, which have become generic terms in some countries.

Misleading Use

Use that misleads consumers about the nature or origin of products may lead to revocation.

Recent Example: In 2021, a trademark was revoked for misleading use after being applied to products radically different from those stated in the registration.

Administrative Process before the INPI

Filing the Application

  • Identify the targeted trademark.
  • State the grounds (invalidation or revocation).
  • Include the supporting evidence (non-use reports, market research, etc.).

Practical Tip: For complex applications, engaging an attorney can be pivotal to avoid rejection for incomplete filings.

Adversarial Phase

Each party presents its arguments and evidence through structured exchanges. Counter-evidence may include customer testimonials or financial data.

Final Decision and Appeals

  • Effects of Decisions:
    • Invalidation: Retroactive effect.
    • Revocation: Future effect only.
  • Appeals may be filed with the Paris Court of Appeal.

Practical Cases and Case Law Examples

  1. Example of an Invalidation Action: A French trademark was invalidated for failing to meet distinctiveness requirements (Source: INPI, case 2022-03).
  2. Example of a Revocation Action: A trademark not used within 5 years of registration was revoked in 2023 for non-use (Source: INPI case law).

Advanced Strategies to Maximize Your Chances of Success

  1. Comprehensive Evidence Analysis: Gather persuasive documents such as expert reports, market studies, or consumer surveys to substantiate your claims.
  2. Leverage Case Law: Reference similar cases to strengthen your position.
  3. Prepare a Strategic File: Ensure each piece of evidence is presented coherently and in an organized manner.
  4. Professional Support: Consult with intellectual property experts to maximize your odds of success.

Analysis of Recent Trends in Invalidation Actions

Increase in International Actions

With the rise of cross-border trade, trademark disputes involving international parties have risen significantly. Many companies seek to extend trademark protection beyond national borders, leading to conflicts with similar or identical trademarks registered in other jurisdictions. This trend is pushing owners to step up monitoring of their intellectual property assets.

Key Statistics:

  • In 2023, 35% of invalidation actions involved international parties (source: INPI).
  • A 15% increase in oppositions to European trademarks was observed during the same period.

The Rise of Digital Tools

The INPI and other organizations have implemented digital platforms to streamline the filing and tracking of procedures. These tools offer greater transparency and faster management of disputes. However, they also demand quick adaptation by companies to ensure accuracy and completeness in their filings.

Focus on Distinctiveness

Invalidation actions based on a lack of distinctiveness have been particularly numerous in 2023. Companies are now using more rigorous methods to demonstrate that contested trademarks are not sufficiently distinct from generic products or services.

Resources and Practical Tools

Useful Links for Professionals:

  1. INPI Platform: Link to the filing portal
    • Enables online submission of invalidation and revocation requests.
    • Provides educational resources on procedures.
  2. INPI Trademark Database: Trademark search
    • Tool for searching registered trademarks and identifying potential conflicts.
  3. WIPO (World Intellectual Property Organization):
    • Platform for monitoring trademarks internationally (WIPO link).
  4. Practical Guides:
    • Download the guide on trademark disputes (INPI).

Analysis and Monitoring Tools:

  • Semrush / Ahrefs / Ubersuggest: Keyword analysis associated with trademarks to anticipate disputes.
  • TrademarkVision: AI-based tool for detecting visual similarities between trademarks.
  • Google Alerts: Track public mentions of your trademark or potential conflicts.

Our Expertise

At Dreyfus & Associés, we understand the importance of protecting your intellectual property assets while maintaining your competitiveness in the marketplace. Our services include:

  1. Audit and Strategy:
    • Evaluation of trademarks and identification of potential risks.
    • In-depth analysis of grounds for invalidation or revocation.
  2. Representation before the INPI and the Courts:
    • Meticulous preparation of case files with convincing evidence.
    • Robust defense in adversarial proceedings.
  3. Strategic Monitoring:
    • Monitoring competing trademarks.
    • Early detection of possible conflicts.
  4. International Management:
    • Coordinating litigation across multiple jurisdictions.
    • Aligning strategies on a global scale.

Contact us for a personalized consultation and learn how we can support you in all your initiatives.

FAQ

  1. What is the difference between invalidation and revocation?
  • Invalidation addresses issues at the time of registration (e.g., lack of distinctiveness).
  • Revocation addresses abuses or omissions that occur after registration (e.g., non-use, misleading use).
  1. What are the deadlines for filing an action?
  • There is no time limit for filing an invalidation action.
  • A revocation action may be initiated as soon as non-use is established (after 5 years).
  1. How much does a procedure before the INPI cost?
  • Filing fees are generally moderate, with a base cost of €600 for an invalidation or revocation procedure. Attorney fees are additional.
  1. Can I appeal an INPI decision?
    Yes, a decision can be appealed before the Paris Court of Appeal within one month of the notification.
  2. Why should I consult an intellectual property expert?
    An expert ensures strategic analysis and thorough case management, significantly increasing your chances of success.
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Understanding the French Trademark Office INPI Decision of October 7, 2024: Implications for Trademark Opposition Procedures

On October 7, 2024, the French National Institute of Industrial Property (INPI) delivered its much-anticipated ruling in case NL 23-0255. The decision, which examined the interplay of trademarks, trade names, and domain names under intellectual property law, rejected LPB SAS’s nullity claims against the contested mark “Les P’tites Bombes LPB.” This ruling highlights critical principles in trademark opposition proceedings, offering key insights into risk of confusion, proof of usage, and procedural nuances.

Understanding the Background of the Dispute

Parties and Context

The case involved LPB SAS, the claimant, challenging the trademark “Les P’tites Bombes LPB,” registered in May 2019. The opposition was based on earlier rights, including:

  • The corporate name “LPB”;
  • The trade name “Les P’tites Bombes”;
  • The domain name lespetitesbombes.com.

LPB SAS argued the contested trademark created a risk of confusion due to the similarity of signs and overlapping goods and services.

LPB SAS argued a risk of confusion, asserting similarity in signs and overlapping goods and services.

Legal Analysis

Applicable Law

The contested trademark was evaluated under provisions in place at the time of its registration. Articles L.711-2, L.711-3, and L.714-3 of the French Intellectual Property Code set forth conditions for nullity, requiring proof of:

  • Earlier rights such as trade names or domain names;
  • A likelihood of confusion between the contested mark and these earlier rights.

Earlier Rights

Under French intellectual property law, trademarks can be opposed based on earlier rights, including:

  • Corporate names: Identifiers of legal entities conducting business. The INPI confirmed LPB SAS’s prior use of its corporate name for wholesale fashion activities. However, the institute found no evidence linking LPB SAS’s corporate name to goods or services overlapping with the contested mark, and insufficient demonstration of confusion due to differences in the signs’ overall impressions.
  • Trade names: Commercial identifiers associated with a specific business reputation. While LPB SAS substantiated limited usage of its trade name, the INPI held that the claimant failed to demonstrate nationwide recognition.
  • Domain names: Online identifiers with established goodwill or recognition. LPB SAS asserted long-standing exploitation of this domain for e-commerce. However, most evidence provided, including web analytics and sales data, was dated after the trademark’s registration. As a result, the INPI ruled out effective use predating May 2019.

Likelihood of Confusion: A Holistic Perspective:

The INPI evaluated confusion using the following factors:

  • Visual and phonetic differences: The contested mark and earlier rights shared limited similarity.
  • Distinctiveness: The claimant failed to show that the earlier rights were distinctive enough to create confusion.
  • Consumer perception: An average consumer with moderate attention would not likely confuse the contested mark with the earlier rights.

The cumulative analysis negated the existence of a risk of confusion.

Practical Implications for Businesses

Clarifying the Burden of Proof

The decision highlights the necessity for claimants to present robust, contemporaneous evidence of their earlier rights’ usage and recognition. Post-registration documentation cannot substantiate claims of prior use. Claimants must demonstrate:

  • Effective prior use of earlier rights;
  • Nationwide recognition where applicable.

Scope of Trademark Nullity

This decision underscores the need to narrowly tailor nullity claims, ensuring:

  • Clear alignment between earlier rights and the contested mark’s goods and services.
  • Direct evidence of overlap and potential consumer confusion.

Broader Legal and Strategic Takeaways

From a strategic perspective, this case exemplifies the challenges businesses face in protecting legacy rights against newer trademarks. Businesses must maintain comprehensive, dated records of usage, reputation, and consumer recognition to safeguard their intellectual property and support future litigation or opposition.

Procedural Changes in Trademark Opposition

The case reflects procedural shifts in French trademark law, notably:

  • Stricter evidentiary requirements.
  • A more streamlined opposition process.

To succeed in nullity claims, opponents must present:

  • Detailed documentation of prior use.
  • Proof of consumer recognition.
  • Clear articulation of harm resulting from potential confusion.

Conclusion

The INPI’s decision in NL 23-0255 sets a high bar for nullity claims and reinforces the importance of proactive intellectual property management. For trademark holders, the ruling serves as a critical reminder to document and safeguard rights effectively.

About Dreyfus Law Firm

Dreyfus Law Firm specializes in intellectual property law, providing expert guidance on trademark protection and opposition procedures. Our global network of attorneys ensures comprehensive solutions tailored to your business needs. Subscribe to our newsletter or follow us on social media for the latest insights in IP law.

FAQ 

What is a trademark opposition in France?

A trademark opposition in France is a legal procedure allowing the holder of earlier rights (such as a prior trademark, trade name, or business name) to oppose the registration of a later mark that may infringe upon their rights. The opposition must be filed with the French National Institute of Industrial Property (INPI) within two months from the publication of the trademark application in the Official Bulletin of Industrial Property (BOPI). The opponent must provide evidence of a likelihood of confusion between their earlier trademark and the contested application.

What is the opposition procedure for WIPO?

For International Trademarks filed under the Madrid System, opposition procedures vary depending on the designated country. The World Intellectual Property Organization (WIPO) itself does not handle oppositions; instead, once an international application is published in the WIPO Gazette of International Marks, each designated country examines the mark according to its national law. Any third party wishing to oppose the registration must do so directly with the national or regional IP office (e.g., INPI for France, EUIPO for the European Union) within the applicable opposition period.

How is EU trademark opposition processed?

In the European Union, trademark oppositions are handled by the European Union Intellectual Property Office (EUIPO).

  • The opposition must be filed within three months of the publication of the EU trademark application in the EU Trademark Bulletin.
  • The opponent must be the owner of an earlier registered trademark or other prior rights.
  • The opposition process consists of a cooling-off period (for possible settlement), followed by an adversarial phase where both parties submit arguments and evidence.
  • The EUIPO then issues a decision, which can be appealed before the Board of Appeal and subsequently before the General Court of the European Union.

What invalidates a trademark?

A trademark can be invalidated if it does not comply with legal requirements. Common grounds for invalidation include:

  • Lack of distinctiveness: The mark is purely descriptive or generic.
  • Earlier conflicting rights: A third party holds prior rights to a similar or identical trademark.
  • Bad faith registration: The mark was filed dishonestly, such as to block competitors.
  • Deceptive nature: The mark misleads consumers about the nature, quality, or origin of the goods/services.
  • Non-use: If a registered trademark is not used for five consecutive years, it may be subject to cancellation for non-use.

How to deal with trademark infringement?

If you believe your trademark is being infringed, you should take immediate action to protect your rights. Possible steps include:

  • Sending a cease-and-desist letter to the infringer, requesting them to stop using the mark.
  • Negotiating an amicable settlement to avoid litigation.
  • Initiating administrative procedures such as opposition or cancellation actions before the relevant IP office.
  • Filing a legal action for trademark infringement before national courts.
  • Monitoring and enforcing your rights by conducting regular brand surveillance to detect unauthorized use.

What is the action for trademark infringement?

Trademark infringement actions typically involve:

  1. Filing a lawsuit before a competent court: The trademark owner must provide evidence of infringement.
  2. Provisional measures: The court may grant injunctions to stop unauthorized use before a final decision is reached.
  3. Damages and penalties: Courts may award financial compensation for losses suffered due to the infringement.
  4. Seizure of infringing goods: Counterfeit or infringing products may be confiscated.
  5. Criminal proceedings (in serious cases): Infringement may be subject to fines or imprisonment, depending on national laws.

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The Challenges of the UDRP Procedure in the Face of the Rise of New gTLDs

The digital landscape has undergone significant transformations with the introduction of new generic Top-Level Domains (gTLDs). This expansion presents both opportunities and challenges, particularly concerning the Uniform Domain-Name Dispute-Resolution Policy (UDRP). As experts in intellectual property law, we aim to elucidate the complexities that brand owners face in navigating the UDRP amidst the proliferation of new gTLDs. This article will provide an overview of the UDRP procedure, discuss the implications of new gTLDs, and explore how brand owners can adapt their strategies to address these challenges.

Understanding the UDRP: A Framework for Resolving Domain Disputes

Definition and Purpose

Established in 1999 by the Internet Corporation for Assigned Names and Numbers (ICANN), the UDRP provides a streamlined mechanism for resolving disputes related to domain names. Its primary objective is to address cases where domain names are registered and used in bad faith, infringing upon trademark rights.

Key Criteria for Filing a Complaint

To initiate a UDRP proceeding, a complainant must demonstrate that:

  • The disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
  • The respondent has no rights or legitimate interests in respect of the domain name.
  • The domain name has been registered and is being used in bad faith.

These criteria ensure that the UDRP targets clear cases of abusive domain name registrations.

The Impact of New gTLDs on the Domain Landscape

Expansion of the Domain Name System

In 2012, ICANN launched the New gTLD Program, significantly expanding the number of available gTLDs beyond the traditional ones like <.com>, <.org>, and <.net>. This initiative introduced a plethora of new extensions, such as <.shop>, <.tech>, and <.paris>, aiming to enhance consumer choice and foster competition. For instance, <.shop> has been widely adopted by e-commerce businesses, while <.tech> has gained traction among technology companies.

Opportunities and Risks for Brand Owners

While new gTLDs offer brand owners the chance to secure domain names that align closely with their trademarks and industries, they also pose increased risks of cybersquatting. The vast array of new extensions provides malicious actors with more avenues to register domain names that infringe upon established trademarks.

Challenges Posed by New gTLDs to the UDRP

Increased Potential for Cybersquatting

The surge in gTLDs has led to a corresponding rise in cybersquatting incidents. According to the World Intellectual Property Organization (WIPO), there has been a notable increase in UDRP cases, with a record number of complaints filed in recent years. WIPO reported a 20% increase in UDRP cases filed between 2015 and 2020, demonstrating the growing impact of cybersquatting in the era of new gTLDs.

Complexity in Brand Protection Strategies

Brand owners now face the daunting task of monitoring and protecting their trademarks across a vastly expanded domain landscape. This complexity necessitates more comprehensive surveillance and enforcement strategies to safeguard intellectual property effectively.

Jurisdictional and Procedural Issues

The introduction of numerous gTLDs has also led to jurisdictional challenges, as different registries may have varying policies and procedures. This fragmentation can complicate the enforcement of UDRP decisions and the overall dispute resolution process. For example, the variation in registry policies across jurisdictions, such as Europe and Asia, often creates hurdles for uniform enforcement of UDRP decisions.

Adaptations and Responses

Evolution of the UDRP Framework

In response to the evolving domain landscape, there have been discussions about reforming the UDRP to address new challenges effectively. Proposals include introducing financial penalties for cybersquatters and extending response times for respondents. However, such changes must be balanced against the need to maintain the UDRP’s efficiency and effectiveness.

Introduction of the URS Procedure

To complement the UDRP, ICANN introduced the Uniform Rapid Suspension (URS) system, designed for clear-cut cases of infringement. The URS offers a faster and more cost-effective means of suspending infringing domain names but does not provide for their transfer to the complainant.

Recommendations for Brand Owners

Given the complexities introduced by new gTLDs, brand owners should:

  • Develop a robust domain name strategy that includes registering key trademarks across relevant gTLDs.
  • Implement continuous monitoring to detect and address potential infringements promptly.
  • Utilize mechanisms like the Trademark Clearinghouse to safeguard their rights during the launch of new gTLDs.

Brand owners should also consider employing AI-powered tools to automate the monitoring of domain name registrations across multiple gTLDs.

Conclusion

The proliferation of new gTLDs has undeniably transformed the domain name ecosystem, presenting both opportunities and challenges for brand owners. While the UDRP remains a vital tool for combating cybersquatting, it must evolve to address the nuances introduced by the expanded gTLD space. As the domain name landscape continues to evolve, staying ahead requires not only vigilance but also an adaptable strategy that leverages legal and technological advancements.

At Dreyfus Law Firm, we offer comprehensive services to protect and enforce your domain name rights, including proactive domain name monitoring, strategic enforcement actions, UDRP complaints, and tailored solutions for brand protection in the digital space. Our expertise spans domain name recovery, litigation, and cybersecurity strategies to mitigate the risks posed by online infringement and cybersquatting.

 

For tailored advice on navigating the complexities of domain name protection, subscribe to our newsletter or contact Dreyfus Law Firm for expert guidance.

 

FAQ

How does UDRP work?

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is an administrative process designed to resolve disputes over domain names that have been registered in bad faith. Complainants must demonstrate that:

  • The disputed domain name is identical or confusingly similar to their trademark.
  • The domain holder has no legitimate rights or interests in the name.
  • The domain name was registered and is being used in bad faith. Decisions under the UDRP are made by dispute resolution providers, such as WIPO, and can result in the transfer or cancellation of the domain.

What are the grounds for a domain name dispute?

A domain name dispute arises when a domain name is alleged to have been registered in bad faith, infringing upon trademark rights. Under the UDRP, the cumulative  grounds for a complaint are:

  • The domain name is identical or confusingly similar to a trademark owned by the complainant.
  • The domain registrant has no legitimate rights or interests in the domain name.
  • The domain name was registered and is being used in bad faith, such as for cybersquatting or phishing.

What is UDRP top-level domains?

UDRP applies to generic Top-Level Domains (gTLDs) such as <.com>, <.org>, <.net>, and to new gTLDs like .shop and .tech, as well as country-code Top-Level Domains (ccTLDs) that have voluntarily adopted the UDRP framework.

What are examples of gTLDs?

Examples of traditional gTLDs include:

  • .com
  • .org
  • .net
  • .info
  • .biz

New gTLDs introduced under the ICANN expansion program include:

  • .shop
  • .tech
  • .law
  • .paris
  • .bank

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

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 29th 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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Can a work generated by artificial intelligence be protected by copyright?

Currently, no, if it is entirely generated without meaningful human input. As clarified by the US Copyright Office report, copyright protection requires human authorship.

What responsibilities does the user of a generative AI have in creating a work?

The user may be seen as a co-author if their contribution is creative and substantial. The USCO notes that a simple text prompt may not be enough to claim copyright ownership.

Does the Copyright Office’s report have immediate legal effect?

No, it is a consultative report that guides future reforms and court decisions. However, it plays a key role in shaping current understanding of copyright limitations in the AI context.

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French Trademark Office INPI Decision of September 13, 2024: Bad Faith Trademark Filing and Its Implications

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:

  1. Register it promptly to prevent third-party claims.
  2. Monitor for potential cybersquatting using watch services.
  3. Secure trademarks corresponding to the domain name, strengthening enforcement rights.
  4. 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.

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Understanding UDRP Jurisprudence: Key Decisions and Practical Insights

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

  1. 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.
  2. 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.
  3. 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.
  4. 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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Sony Computer Entertainment Europe Ltd v. Datel Design and Development Ltd (Case C-159/23)

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:

  1. 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?
  2. 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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How to protect your trademark in the United States ?

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.

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