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Understanding the European Union trademark (EUTM)

nathalie dreyfus Written by Nathalie Dreyfus03/02/2025

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

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

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

What is the European Union Trade Mark (EUTM)?

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

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

A key feature of the EUTM is its uniformity:

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

Who can register an EUTM?

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

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

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

Benefits of Registering a European Union Trade Mark (EUTM)

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

Key benefits:

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

Industry-specific advantages:

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

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

How to Apply for an EUTM

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

Step-by-step application process:

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

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

EUTM vs. National Trademarks vs. Madrid System

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

Which one to choose?

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

After Registration: Rights & Responsibilities

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

Your rights:

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

Your responsibilities:

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

Consider using trademark monitoring services to detect infringement early.

The Impact of Brexit on EUTM

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

Key Brexit changes:

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

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

Common Mistakes & How to Avoid Them

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

Conclusion: Why a Strategic Approach Matters

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

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

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

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

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

FAQ: European Union Trade Mark (EUTM)

  1. What is the EUTM, and how does it differ from national trademarks?
    The EUTM is a single trademark registration valid across all EU member states. Unlike national trademarks, it offers uniform protection in 27 countries through one application.
  1. How much does it cost to register an EUTM?
    The basic fee is €850 for one class of goods or services. Additional classes cost €50 for the second class and €150 for each subsequent class.
  1. Can I modify my EUTM after registration?
    Yes, but modifications are limited to minor changes that do not alter the trademark’s identity. Adding new goods or services requires a new application.
  1. What happens during the opposition period?
    The opposition period lasts three months after publication. Third parties can challenge the trademark based on prior rights, requiring the applicant to provide evidence to defend their case.
  1. How long does the EUTM registration process take?
    Typically, it takes 4–6 months, provided there are no oppositions or complications.
  1. What rights does the ® symbol grant?
    The ® symbol indicates that your trademark is officially registered. It serves as a deterrent to infringers and enhances your brand’s credibility.
  1. Can an EUTM be revoked?
    Yes, an EUTM can be revoked for non-use over five consecutive years or if it becomes generic or misleading.
  1. How does Brexit affect my EUTM?
    Since Brexit (January 1, 2021), EUTMs no longer cover the UK. Existing EUTMs were automatically converted into comparable UK trademarks.
  1. What should I do if my trademark application is rejected?
    You can file an appeal or amend your application to address the reasons for rejection. Consider legal counsel for complex cases.
  1. How do I enforce my EUTM rights?
    You can take legal action against infringers in any EU member state. Monitoring tools and legal support help detect and address violations effectively.

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

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How to win a cancellation action against a European trademark ?

nathalie dreyfus Written by Nathalie Dreyfus31/01/2025

How to win a cancellation action before the EUIPO?

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

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

Introduction to Invalidity and Revocation Procedures

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

Invalidity Procedure

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

Absolute Grounds for Invalidity

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

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

Relative Grounds for Invalidity

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

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

Revocation Procedure

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

Non-use of the Trademark

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

Becoming a Generic Term

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

Misleading Character of the Trademark

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

Procedure Before the EUIPO

Application Filing by Your Representative

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

Adversarial Phase

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

Decision and Effects

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

Appeal Process

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

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

Recent Trends and Emerging Practices

Use of Artificial Intelligence in Trademark Searches

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

Impact of Blockchain on Trademark Authenticity

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

Practical Tips for Success in Cancellation Actions

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

Strategic Approaches to Cancellation Actions

Proactive Risk Assessment

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

Collaborating with Regional Experts

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

Tailoring Arguments for Absolute and Relative Grounds

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

Case Studies: Lessons from Recent Decisions

Case Study 1: Revocation for Non-Use

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

Case Study 2: Genericization of a Trademark

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

Emerging Trends in Trademark Cancellation

AI-Driven Case Analysis

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

Globalization of Trademark Disputes

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

Sustainability as a Grounds for Contestation

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

Practical Insights: Preparing Evidence for Success

  1. Collect Robust Documentation

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

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

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

  1. Monitor Competitors Proactively

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

Strengthening the Legal Framework: Recommendations for Businesses

Policy Alignment with Sustainability Goals

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

Adapting to Regulatory Changes

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

Strengthening Evidence Practices

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

Our Expertise

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

Why Choose Dreyfus Law Firm?

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

Comprehensive Services

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

Client Success Stories

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

Commitment to Results

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

Frequently Asked Questions (FAQ)

  1. What is the difference between cancellation and opposition actions?
    Opposition actions occur before a trademark is registered and aim to block the application. Cancellation actions, on the other hand, target trademarks that are already registered.
  2. How long does the cancellation process take at the INPI?
    The average timeline for cancellation actions at the INPI is 6 to 12 months, depending on the complexity of the case and the volume of evidence submitted.
  3. Can I initiate a cancellation action if I am outside France?
    Yes. Non-French entities can initiate cancellation actions, but they must appoint a local representative or authorized attorney to act before the INPI.
  4. What are the costs associated with a cancellation action?
    The INPI charges a fixed administrative fee of €600 for filing a cancellation action. Additional legal fees depend on the complexity of the case and the attorney’s expertise.
  5. Can a cancellation action be appealed?
    Yes. Decisions made by the INPI can be appealed to the Court of Appeal of Paris within one month of notification. Further appeals can be made to the Court of Cassation.
  6. What evidence is required for revocation due to non-use?
    To support a revocation action based on non-use, you must demonstrate:
  • The absence of sales or marketing activities related to the trademark.
  • Lack of trademark visibility in commercial contexts.
  1. How do cancellation actions impact brand reputation?
    While cancellation actions can protect your business, they may also generate publicity. Managing public relations alongside legal strategy is essential.
  1. How do I prove non-use of a trademark?
    To prove non-use, collect evidence such as market analyses, online presence checks, and absence of sales records during the relevant period.
  1. Can I initiate cancellation proceedings outside the EU?
    Yes, parallel actions can be initiated in jurisdictions where the trademark is also registered, provided local laws allow for cancellation based on similar grounds.
  1. What is the success rate for cancellation proceedings at the EUIPO?
    Recent EUIPO data suggests that approximately 40% of invalidity and revocation applications are successful, emphasizing the importance of presenting strong evidence.

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

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The Evolution of UDRP Procedures: What You Need to Know in 2025

nathalie dreyfus Written by Nathalie Dreyfus29/01/2025

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

Overview of the UDRP

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

Key Developments in UDRP Procedures

Increased Caseload and Efficiency

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

Adaptation to New gTLDs

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

Integration of Electronic Procedures

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

Proposed Reforms and Future Perspectives

Calls for Financial Penalties

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

Addressing Privacy Regulations

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

Conclusion

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

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

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

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

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Unlocking Financial Support: The EUIPO SME Fund Relaunches

nathalie dreyfus Written by Nathalie Dreyfus29/01/2025

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

Overview of the EUIPO SME Fund

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

Eligibility Criteria for SMEs

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

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

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

Application Process

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

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

Benefits of Protecting Intellectual Property

Securing IP rights offers numerous advantages for SMEs:

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

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

Conclusion

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

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

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

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Dreyfus: A Unique Expertise in Intellectual Property and Trademarks in France

nathalie dreyfus Written by Nathalie Dreyfus28/01/2025

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

A Strong Legal Framework for Trademarks

Legislative Foundations

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

An International Dimension

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

Role of the INPI

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

Trademark Registration and Management Process

Eligibility Requirements

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

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

Unregistered Trademarks

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

Administrative Procedures

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

Benefits of a Registered Trademark

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

Validity Period and Renewal

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

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

Opposition and Litigation

Opposition

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

Cancellation Actions

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

New Perspectives: NFTs and Artificial Intelligence

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

Dreyfus’s International Recognition of Excellence

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

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

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

Dreyfus’s Judicial and International Expertise

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

Conclusion

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

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Intellectual Property Law in the Wine Sector: Protecting heritage and innovation

nathalie dreyfus Written by Nathalie Dreyfus27/01/2025

The wine industry represents a unique confluence of tradition, innovation, and commerce. Intellectual property (IP) law plays a pivotal role in preserving this delicate balance by safeguarding trademark identities, regional heritage, and innovative practices. This article delves into the intricacies of IP law in the wine sector, examining the role of trademarks, geographical indications, and other IP tools in protecting the interests of stakeholders while fostering innovation.

The pillars of intellectual property in the wine industry

I – Trademarks: Securing brand identity

Trademarks are vital for distinguishing one producer’s products from another. In a competitive market, a strong trademark ensures brand recognition, consumer loyalty, and legal protection against imitation.

There are challenges in trademark registration :

  • Similarity of Products: Many wine trademarks fall under Class 33 (alcoholic beverages excluding beers). The dense registration landscape often leads to disputes regarding the similarity of products and signs.
    • Example: Opposition cases where trademarks like “MARQUIS DELATRE” and “MARQUÈS DEL ATRIO” were scrutinized for phonetic and visual resemblance.
  • Distinctiveness: Terms such as “Château” or “Domaine”, often used descriptively, require additional elements for registration.

Recent rulings from bodies like the French INPI and the EUIPO emphasize the need for trademarks to exhibit clear distinctiveness and avoid consumer confusion. For instance, rulings on marks like “LOUIS DE LA ROCHE” and “DOMAINE DE LA ROCHE” underline the importance of evaluating the overall impression of signs.

II- Geographical Indications: Preserving regional heritage

Geographical indications protect the names of regions associated with specific qualities or reputations, ensuring authenticity and preserving cultural heritage. Examples include Champagne, Bordeaux, and Chianti.

The EU’s comprehensive framework, such as the recent Regulation (EU) No. 2024/1143, governs the use and protection of GIs.

Some case studies :

  • Evocation and Misuse: Attempts to register terms evocative of protected geographical indication, such as “TIZZANO” for Corsican wines, often lead to legal challenges. Courts examine whether such terms might mislead consumers.
  • Modification of Specifications: Changes to PDO (Protected Designation of Origin) rules, such as permitting new grape varieties, must align with preserving the essence of the GI.

III – Innovation and patents in viticulture

Innovations in vineyard management and winemaking—from advanced irrigation systems to fermentation techniques—can be patented. Such protection incentivizes R&D while allowing producers to capitalize on their ingenuity.

While patents foster innovation, the wine sector’s reliance on tradition necessitates careful consideration of cultural impacts. For example, patents related to non-traditional production methods, like de-alcoholized wines, must respect established GI rules.

IV – Design Protection: Packaging and presentation

The aesthetic appeal of wine packaging often influences consumer choice. Design rights protect elements like bottle shapes, labels, and closures, ensuring that unique presentations remain exclusive to their creators.

Innovative designs, such as eco-friendly packaging, have gained traction. Protecting these designs reinforces a producer’s commitment to sustainability and brand differentiation.

Enforcement and Dispute Resolution

Infringement Challenges

The wine industry’s premium products are frequent targets of counterfeiting. IP enforcement mechanisms, such as customs interventions and litigation, are essential for combating this issue.

Domain Name Disputes

Cybersquatting cases, such as those involving domain names mimicking famous wine brands, highlight the need for vigilance in digital spaces. The UDRP (Uniform Domain-Name Dispute-Resolution Policy) provides an effective resolution mechanism.

Arbitration and Mediation

Given the international nature of the wine trade, alternative dispute resolution methods like WIPO arbitration offer efficient solutions to cross-border IP conflicts.

Navigating the Future of IP in the Wine Sector

Sustainability and IP

As sustainability becomes a market priority, producers are leveraging IP to protect eco-friendly innovations and branding strategies.

Digital Marketing and E-commerce

With the rise of e-commerce, protecting trademarks and designs in digital marketplaces is increasingly critical.

Strengthening International Cooperation

Harmonizing IP standards through international agreements, such as the Lisbon Agreement and TRIPS, is essential for ensuring robust protection across jurisdictions.

Conclusion

The wine industry’s reliance on intellectual property law underscores its commitment to preserving heritage while embracing innovation. By navigating the complexities of trademarks, geographical indications, patents, and design rights, stakeholders can protect their assets and ensure a thriving future for viticulture worldwide. Effective enforcement and adaptation to emerging trends will further solidify the role of IP as a cornerstone of the wine sector’s success.

Dreyfus Law Firm excels in protecting and promoting wine trademarks, as well as managing appellations of origin (AOC/AOP) and geographical indications (GI). With our deep expertise in intellectual property and wine law, we support producers, trade unions, and other stakeholders in safeguarding and enhancing their products.

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Generic trademarks: good practices to avoid ‘genericide’

nathalie dreyfus Written by Nathalie Dreyfus09/08/2019

Protecting intellectual property assets is a major concern of companies. Trademarks are a subject of immediate interest, because they allow consumers to associate products and/or services with a specific company. The company is therefore more easily recognized and is more likely to see customers buy its products.

 

Once a trademark has been duly registered, a company can start to exploit it.  That is when we must be most vigilant. Indeed, a trademark may lose its distinctiveness after its registration, by becoming a generic trademark.

 

What is a generic trademark?

 

Put simply, a generic trademark is one that has become “The common name in trade for a product or service” One of the main criteria for the validity of a trademark is its distinctiveness (Article L. 711-2 of the French Intellectual Property Code). Under the article L. 714-6 of the French Intellectual Property Code, a generic trademark is devoid of distinctiveness because it has become “The common name in trade for a product or service”.

 

In other words, a generic trademark is a trademark that has become a common term for a type of product or service. It is used by both consumers and competitors of the trademark to refer to the product or service no matter by whom it has been provided. As a victim of its success, the trademark no longer enables consumers to identify products and services as coming from the company concerned. It falls therefore into the public domain.

 

As such, the company that created the trademark loses its exclusive right of exploitation. It will no longer be able to oppose the use of its trademark by third parties who seek to use it as the descriptive or ‘generic’ name of the product or service for which it has become famous. This is called genericide of a trademark.

 

Under the aforementioned article L. 714-6, an action for revocation or cancellation for genericide of a trademark that became generic requires two conditions:

– the trademark must have become the common name of the product or service;

– such use must be caused by the trademark owner, namely mostly his inaction.

 

Hence, the need for a company to act effectively against any use of its trademark as a generic term. If the owner acts effectively against any generic use, the trademark will continue to be protected by law.

 

Good practices to prevent a trademark from becoming generic

 

Acting before any commercialization, is the most effective way to prevent a trademark from becoming generic. It is also advisable not to misuse the trademark later on.

 

If you have created a totally new product or seek to become a brand leader in a new market, it is imperative to create – or use -a term to designate the new product, as there is a strong risk of confusion between the trademark and the product. For example, Apple’s trademark is iPhone, and the product to which it is applied is a “smartphone”.  Similarly, if a generic term exists but is particularly complex, it is useful to provide a simpler term, where your trademark is the market leader. It is also recommended to use the term defined in this way in agreements with third parties (e.g. letter of commitment, coexistence agreement, etc.).

 

In addition, the trademark must be used correctly in all circumstances, both externally and internally.

 

The use of the trademark must be particularly monitored during advertising campaigns. The trademark should be distinguished from the surrounding text promoting the marketed product or service by placing it in BLOCK LETTERS or, by Capitalising the first letter.

Using the trademark as a noun makes it more likely to be confused as the generic name. This practice should be discarded in favour of using it as an adjective. For example; “a Kleenex handkerchief” rather than “a Kleenex”.

Another good practice is to use the ® symbol or the ™ symbol. Although the latter have no legal value in France unlike in the United States, their use on the market is common. Promoting the trademark as an asset belonging to the company discouraging its use as a common term.

 

A trademark becomes generic mainly because of its misuse by the public. This misuse is not necessarily the result of an intend to harm. As such, it is recommended to carry out advertising campaigns aimed at consumers promoting correct use in order to avoid misuse. Preparing written standards defining the correct use of the trademark that can be easily distributed to third parties (licensees, consumers, etc.) also participates to this public education.

Avoiding misuse of the trademark also requires protection against abusive use of the trademark by third parties. It is therefore necessary to monitor product and service descriptions for new trademark applications and press publications mentioning the trademark.

 

Finally, because a trademark may be declared generic as a result of the owner’s actions or lack of action, it is in the company’s best interest to ensure that it can prove that it has taken steps to avoid the trademark becoming generic. In this respect, marketing files (advertising costs, unsolicited mentions in the press, etc.), letters of formal notice, summonses or even court decisions are all evidence to be kept.

 

In short, a potentially generic trademark remains protectable under trademark law if its owner has enforced actions against its misuse and gathered supporting evidences to prove that extent.

 

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.

FAQ

What is a generic trademark?
A trademark that, through being used as a common name to designate a product or service, loses its distinctive function and falls into the public domain.

Can a trademark be protected against genericide?
Yes, by monitoring its use, educating the public and distributors, and ensuring it is always perceived as a trademark and not as a common name.

Can a generic trademark be recovered?
No, once a trademark has become generic and lost its legal protection, it is very difficult — if not impossible — to recover it as a registered trademark.

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