Zombie Trademarks / Revival of Brands: How to manage the reactivation of old and abandoned trademarks while respecting legal imperatives?

Written by Nathalie Dreyfus14/01/2026

Introduction

In an environment where competition is growing increasingly fierce, the idea of resurrecting abandoned trademarks, known as zombie trademarks , has become a major strategic shift. Far from being a mere trend, trademarks revival has become a true economic lever. This article explores the assessment criteria, differences in treatment between jurisdictions, and the often underestimated legal risks associated with the reactivation of dormant trademarks.

What is a Zombie Trademark?

Zombie trademarks are those that have been registered but are no longer actively used, either because they have expired or because they have not been put to genuine use. These brands are often considered “dead” in the sense that they are not exploited commercially. However, under certain circumstances, they can be reactivated or “resurrected.”

What motivates the resurrection of old Trademark ? Nostalgia is a key factor: consumers are drawn to the nostalgic aspect of these trademarks, especially when they evoke cultural memories. Furthermore, reviving trademarks can provide a competitive advantage by reducing the need to build a new brand identity while capitalizing on some residual reputation.

An emblematic example of this strategy is Old Spice, a men’s grooming brand, which was relaunched in the 2010s with a modern marketing approach and saw its sales double.

Legal risks associated with the revival of an abandoned trademark

Reactivating a trademark after revocation for non-use

Trademark law is based, inter alia, on the concept of use, the effective absence of which may lead to the revocation of the trademark registration. Failing serious use over an uninterrupted period of five years, a trademark is exposed to revocation, in accordance with Regulation (EU) 2017/1001 on the European Union trade mark. Once revocation is declared, the exclusive rights on the trademark cease to exist. From a strictly legal standpoint, the sign then becomes available again and may, in principle, be the subject of a new filing by a third party.

For a new applicant, the disappearance of the earlier right may appear to create an opportunity. Nevertheless, this opportunity remains fragile, particularly where the sign continues to enjoy a lasting presence in the public’s mind.

The role of residual reputation

Certain historical trademarks, although legally revoked, continue to benefit from persistent public recognition. This phenomenon is commonly referred to as residual reputation.

When a third party files a trademark that was previously well known, it may be exposed to the risk that the new filing is characterised as an opportunistic appropriation of pre-existing goodwill. In such circumstances, the challenge no longer concerns the existence of an earlier trademark right, but rather the legitimacy of the new applicant’s conduct.

The Question of Good Faith According to the European Approach

Reactivating a trademark must be done carefully. If a third party attempts to re-register an abandoned trademark and uses it in a way that could create a misleading impression of continuity, it could be interpreted as bad faith.

In the Nehera case (T-250/21, judgment of July 6, 2022), the European Court ruled that the lack of use and protection of the “Nehera” trademark for several decades, combined with the absence of any surviving reputation and exploitation, excluded any bad faith on the part of the applicant. Mere knowledge of past use was not sufficient to establish bad faith.

In the present case, the applicant had undertaken its own commercial efforts to relaunch the mark without creating a misleading impression of continuity, such that bad faith could not be established.”

In contrast, in the Simca case (T-327/12, judgment of May 8, 2014), the European Court confirmed that the Simca brand still enjoyed a residual reputation in 2007 despite its historical use. The applicant, fully aware of this reputation and the absence of serious prior use, filed the application intending to exploit that reputation, which constituted parasitism.

Therefore, the existence of a surviving reputation, combined with positive knowledge and the intent to take advantage of that reputation, led to the determination of bad faith, resulting in the invalidation of the European Union trademark.

Diverging National Approaches in Europe on the Good Faith Issue

An analysis of national case law reveals a marked divergence among EU Member States in the assessment of good faith in the context of the re-filing of abandoned trademarks. This heterogeneity highlights the absence of a unified approach as regards the weight given to a sign’s past notoriety and to the applicant’s intention at the time of filing.

In Germany, in the Testarossa case involving Ferrari (29 W (pat) 14/21), the court adopts a restrictive conception of bad faith. It holds that the residual reputation of a sign, taken in isolation, is not sufficient to preclude a new filing. In the absence of a current likelihood of confusion or a clearly established infringement of an existing protected trademark, the re-filing is not considered unlawful.

By contrast, the Court of Appeal of Paris, in the VOGICA case (May 16, 2025, RG No. 23/17886), adopts a significantly more protective approach. Although the trademark had not been subject to any genuine use since 1991, the court acknowledged the existence of a substantial residual reputation on the French market. Noting, moreover, the applicant’s inability to substantiate an autonomous and credible economic project, the court inferred an intention to unduly appropriate the economic value attached to the sign’s past notoriety. This strategy was characterised as parasitic behaviour, leading to the invalidation of the filing.

More generally, national courts do not assess good faith in a uniform manner when it comes to the re-filing of trademarks that have been abandoned or revoked for non-use.

What are the major legal risks identified in reviving a trademark?

Reviving a brand becomes legally risky when the following conditions are met:

A current residual reputation, a proven knowledge of this reputation,
And the absence of an independent economic project,

which exposes the applicant to:

Invalidity for bad faith,
Parasitic actions,
And the lasting blockage of any revival strategy.

Conclusion

The revival of brands is a powerful strategy, but it must be approached with caution. A zombie brand can offer a significant competitive advantage, but the legal risks are also substantial. A successful resurrection relies on good faith, genuine use, and a thorough understanding of European case law. Therefore, a detailed analysis of the brand’s history, its prior use, and its residual reputation is essential.

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. What is a parasitic act in the context of brand revival?
A parasitic act involves exploiting the reputation of a historical brand without bringing any real innovation or added value, with the aim of unduly benefiting from its image.

2. What are the legal risks associated with reviving a dormant trademark?
Reviving a brand involves several legal risks, including cancellation for non-use if the brand has not been used for an extended period, bad faith, or a risk of confusion with other brands.

3. Can a dormant trademark be revived if it has been cancelled for non-use?
Reviving a dormant brand cancelled for non-use is possible, but it is subject to strict conditions. If a brand has been cancelled for non-use, it is necessary to prove that it has been used again in a serious and continuous manner in commerce.

4. Does residual good faith protect a trademark?
It depends on the assessment of the courts, based on whether the brand’s notoriety is still active in the public’s mind.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Written by Nathalie Dreyfus13/01/2026

Introduction

In the field of intellectual property, sound trademarks have become a powerful differentiating tool for businesses. Protecting a sound as a trademark offers many unique opportunities for businesses seeking to secure their identity. This article explores the strategic advantages, legal considerations, and best practices related to the protection of sound trademarks.

What is a sound trademark?

Since December 15, 2019, it’s possible to register an MP3 file as a trademark with the INPI. A sound trademark is a trademark consisting of a sound or a combination of sounds. To be registered, the sound trademark must comply with the existing validity requirements in trademark law. IP Offices often emphasize the importance of distinctiveness when registering a sound trademark.

According to the European Union Intellectual Property Office (EUIPO), in order for a sound to be protected as a trademark, it must be distinctive and capable of distinguishing the products or services of one company from those of others

This criterion implies that the sound must be unique, non-functional, and directly associated with the brand’s identity. For example, a jingle or a specific sound effect used in advertisements can be registered as a trademark.

The benefits of protecting a sound trademark

Sound trademarks help create a distinct identity for a company, thereby differentiating it from its competitors.

Examples of registered sound trademarks:

Six notes on a piano No. 17672932
• MGM’s lion roar No.005170113.

These sounds are closely associated with the undertaking from which they originate, representing a powerful lever for fostering brand loyalty and public recognition.

By registering a sound trademark, companies can license it for use in various media, advertisements, and products, generating new revenue streams while protecting their intellectual property from unauthorized use (legal action for infringement could then be pursued). Therefore, the sound trademark represents a significant and valuable asset for a company.

The legal framework for sound trademarks

Several landmark cases have established the legal precedent for sound trademarks. A notable example is the EUIPO’s refusal to register the jingle of Netflix after several attempts

As the sound is too short and too simple, it would not be sufficiently distinctive in the mind of the relevant public. In other words, consumers would not automatically perceive this sound as a distinctive sign linked to Netflix. However, the company succeeded in registering its jingle as a multimedia trademark, combining both its logo and jingle, as well as the term “TUDUM” as a word trademark.

However, a decision handed down by the General Court of Justice of the European Union on September 10, 2025, appears to point towards a more favourable assessment of the registrability of sound marks.

In this case, a Berlin public transport company sought the registration, as a European Union sound trademark, of a two-second jingle composed of four notes.

The application was rejected by the EUIPO, and then by its Board of Appeal, on the grounds that the sign was too short and too simple to be perceived as a trademark by the relevant public.

In its ruling, the Court annulled the decision of the Board of Appeal and held that the disputed jingle was eligible for registration as a European Union trademark.

He first considers that the requirement for a sign to “differ from the norms and practices of the sector,” often applied to figurative marks, does not apply to sound marks, which constitutes a favorable decision.

The Court further highlighted that only a minimal degree of distinctiveness is required. In this case, several factors favored the registrability of the jingle: its brevity, which aids in memorization, its structure composed of successively distinct sounds, its originality, and, most importantly, the fact that it does not reproduce a sound directly related to the execution of the transport service.

It also appears that the fact a sound serves a practical function, such as attracting the attention of passengers, does not prevent it from simultaneously functioning as a trademark. The Court thus recognizes that a sound sign can be both functional and distinctive, as long as it is perceived by the public as an indicator of commercial origin.

This ruling represents a notable relaxation in the assessment of the distinctiveness of sound marks. Unless overturned in the future, it serves as a favorable signal for trademark holders wishing to protect sound identities within the European Union.

Best practices for protecting your sound trademark

When choosing a sound to protect as a trademark, it is essential to select a sound that is memorable, distinctive, and consistent with the brand’s image. It is advisable to consult intellectual property experts to ensure that the sound is both effective and protectable.
The registration process involves selecting the appropriate intellectual property office (INPI, EUIPO, USPTO) depending on the desired scope of protection, submitting the sound file, and verifying that it meets all the necessary legal criteria for registration. Seeking advice from experts throughout this process can significantly enhance the likelihood of a successful registration.

Conclusion

In conclusion, protecting a sound as a trademark offers numerous strategic advantages in today’s competitive market. By securing the legal protection of a distinctive sound, businesses can enhance the visibility, recognition, and profitability of their brand.

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. What types of sounds can be registered as a trademark?
Any type of sound can be registered as a trademark if it is distinctive and non-functional.

2. How long does it take to register a sound trademark?
The registration process for a sound trademark can take several months, depending on the IP office and whether objections are raised.

3. Can I use a sound trademark in different countries?
Yes, it is possible to protect a sound trademark internationally through systems like the Madrid Protocol, which allows for global trademark protection.

4. What are the costs of registering a sound trademark?
Costs vary depending on the jurisdiction, and may be substantially higher if you opt for additional services such as legal consultation.

5. How can the evidence of unauthorized use of a sound trademark be proven?
To prove the unauthorized use of a sound trademark, it is necessary to gather concrete elements showing that the sound is being used without authorization: audio recordings, screenshots of advertisements, websites, or products using the sound trademark. It is also possible to use media monitoring tools or online platforms to detect unauthorized use.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Written by Nathalie Dreyfus06/01/2026

Introduction

The Uniform Rapid Suspension (URS) procedure is particularly effective when the primary goal is to stop a clear trademark infringement quickly through a domain name, without initiating a heavier procedure aimed at transferring the domain. It complements the UDRP by offering a faster and generally less expensive route, but with a deliberately limited remedy: suspension (not recovery) of the domain name.

URS: what the procedure can do (and what it cannot)

The promise: fast suspension, no transfer

URS allows a trademark owner to file a complaint for infringement of its rights, leading to the temporary suspension of the disputed domain name without any transfer of ownership. The suspension remains in place until the end of the registration period, after which the domain name is expected to become available again.

Strategic implication: URS is ideal when the priority is to stop a fraud or abusive use, rather than to recover a digital asset.

The standard: a procedure reserved for “clear-cut” cases

URS is designed for the most obvious infringements. It is not comfortable territory where the file involves a serious factual or legal dispute (plausible competing rights, potentially descriptive use, broader commercial dispute). This approach is expressly supported by ICANN: URS is intended as a fast-track mechanism for clear cases.

The three elements to prove (the “three-part test”)

To succeed in an URS complaint, the complainant must establish three cumulative elements:

The domain name is identical or confusingly similar to a word trademark or figurative trademark owned by the complainant (a valid national/regional registration in current use, or judicially validated), and the complainant must be able to prove both the registration and the use;
The domain name holder has no legitimate right or interest;
The domain name was registered and is being used in bad faith.

Which Top-Level Domains (TLDs) are eligible for URS?

Before recommending URS, it is essential to verify the eligibility of the relevant extension, as URS is not intended to apply indiscriminately to all TLDs. As a rule, URS was designed for the new gTLDs introduced under the ICANN program, meaning it primarily applies to domain names registered under those new extensions. Conversely, for legacy gTLDs (for example, .com, .net, or .org), URS is not automatically available and the “standard” route generally remains the UDRP.

There are, however, specific cases: certain so-called “legacy” extensions have incorporated URS following amendments or renewals of their Registry Agreement, so that an extension historically “outside URS” may become eligible depending on the applicable framework. In practice, the most robust approach is therefore to confirm, on a TLD-by-TLD basis, whether URS is available, and then to choose between URS and UDRP depending on the objective pursued (rapid neutralization or transfer).

When URS is strategically better than the UDRP

1) Phishing, fake shop, impersonation: neutralization comes first

When the domain name is used for fraud (phishing, payment pages, a fake store replicating the trademark, misleading redirects), the economic priority is often to stop the abuse before anything else. In this context, URS is strategic because it specifically targets obvious abuse and can lead to rapid suspension.

2) Short-window campaigns: sales, launches, events

Where infringement is opportunistic (Black Friday, holiday season, product launches, influencer-driven campaigns), the key issue is not the ownership of the domain name but the loss of revenue and consumer confusion over a short time frame. URS is then a proportionate response: fast, tailored to obvious cases, and compatible with a multi-channel enforcement strategy.

3) Volume: “cloned” series of registrations (same pattern, same actor)

URS is also relevant where multiple domains follow the same abusive pattern: trademark + generic term, typos, geographic variants, or multiple extensions. Providers offer fee schedules adapted to volume, which can make URS economically rational in “anti-raid” operations.

4) When transfer offers no immediate value

If the domain name has no real portfolio value (no marketing value, no “clean” traffic, no portfolio coherence), pursuing a transfer under the UDRP may be disproportionate. URS allows us to cut the abuse and let the domain expire, with a possible one-year extension if needed.

Limitations: when URS is not the right tool

1) Where recovering the domain name is a business issue

URS does not transfer ownership. If the domain name is strategic (trademark + core business term, product name, recurring campaign name), the UDRP (or a national procedure) is more suitable, as it can result in a transfer.

2) Where there is a serious dispute

URS is designed to exclude “debatable” situations. If a potentially legitimate use exists (criticism site, parody, descriptive use, plausible prior rights, contractual dispute), the URS complaint may be denied, as the examiner must reject the complaint whenever a substantial factual dispute arises.

3) Where evidence of trademark use is weak

URS requires a clean file (rights, use, bad faith, lack of legitimate interest). Operationally, the procedure is strict and leaves little room to “fix” weaknesses afterwards: an incomplete or poorly structured filing can significantly undermine the case.

Conclusion

URS is a strategic route when a rapid response is required, focused on neutralizing a clear infringement, on an eligible TLD, with an evidentiary record capable of meeting the clear and convincing evidence standard. Conversely, as soon as the goal is to recover the domain name, or where a serious dispute is foreseeable, the UDRP (or a targeted court action) becomes the natural option again.

It is also advisable to strengthen your upstream framework through an integrated strategy combining targeted filings for key signs, continuous monitoring of risky registrations and content, and a graduated response depending on urgency (notice, takedown requests to intermediaries, then URS or UDRP where suspension or transfer is required).

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. What is the deadline to respond to an URS complaint?

In principle, the respondent has 14 calendar days to file a response.

2. What level of proof does URS require?

The complainant must prove its case by clear and convincing evidence and show that there is no substantial factual dispute.

3. How much does an URS proceeding cost?

Costs depend on the provider and the number of domain names involved. By way of indication, centers such as Forum, ADNDRC, and MFSD publish fee schedules: for a straightforward case (1 domain), fees usually start at a few hundred, then increase by tiers or with an additional per-domain fee.

4. Is there an appeal mechanism under URS?

Review/appeal mechanisms exist under the URS rules and the provider’s supplemental rules (deadlines, fees, conditions).

5. In which cases is URS not recommended?

Where the objective is transfer, or where the case raises serious factual or legal issues (potentially legitimate use, credible competing rights).

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Written by Nathalie Dreyfus06/01/2026

Introduction

ICANN’s Board decision of 30 October 2025 keeps the Registration Data Request Service (RDRS) running until December 2027, while the community debates whether RDRS should evolve into a long-term, standardised access model (such as SSAD or a successor). The practical consequence is immediate: for the next two years, stakeholders must operate in a “hybrid” environment where disclosure requests are increasingly standardised in format, but still uneven in coverage, timelines, and authentication.

RDRS: what it is (and what it is not)

The Registration Data Request Service (RDRS) is a pilot service launched on 28 November 2023 to standardise the submission format of requests to obtain non-public gTLD registration data from ICANN-accredited registrars. It is intentionally not a final policy framework: it is a “real-world instrument” to measure demand, collect operational metrics, and identify policy gaps, so the community can decide what a durable system (e.g., SSAD) should look like.
What this means concretely: RDRS standardises the front door, not the outcome. Each registrar still applies its own legal assessment and decision-making, within applicable law and ICANN policy.

What ICANN’s 30 October 2025 resolution changes in practice?

ICANN’s Board confirmed that RDRS will continue operating for up to two years beyond the pilot, i.e., until December 2027, while the community works through next steps and policy alignment.
From an operational perspective, three points matter most:
• Continuity: rights-holders and investigators can keep using RDRS as a live channel rather than losing it at the end of the pilot.
• Pressure to expand uptake: the Board explicitly encouraged comprehensive usage by requestors and registrars, without (yet) converting it into a mandatory regime.
• Policy alignment is now the battlefield: ICANN opened a public comment process on the “RDRS Policy Alignment Analysis”, positioning it as the roadmap for addressing gaps (privacy/proxy underlying data, urgent timelines, authentication, etc.).

What ICANN84 in Dublin revealed: the real friction points

ICANN84 (Dublin, 25–30 October 2025) made one reality unavoidable: RDRS is useful, but incomplete, and its weakest points sit exactly where brand protection and law enforcement most need predictability.

Voluntary participation creates structural blind spots

A recurring concern is that participation is not universal. The Governmental Advisory Committee (GAC) highlighted that optional registrar participation translated into about 60% of gTLD domains under management being reachable via RDRS, which inevitably depresses requestor adoption and undermines “single-channel” expectations.

Authentication (especially for law enforcement) is a gating item

Community discussions repeatedly return to one practical question: who is the requestor, and can the registrar rely on that identity fast enough for urgent cases? ICANN’s own communications refer to ongoing work on an authentication protocol for law enforcement users during the extension period.

Integration and workflow efficiency are decisive

Registrars with mature disclosure processes are reluctant to “duplicate” work. The direction of travel is therefore technical: API-based integration that lets registrars map RDRS inputs into their internal tooling, reduce manual handling, and improve turnaround consistency, without forcing a single UI on everyone.

RDRS vs SSAD: why the distinction matters for strategy and compliance

SSAD (System for Standardised Access/Disclosure) is not a synonym for RDRS. SSAD is a policy construct developed through the EPDP Phase 2 process, with 18 interdependent recommendations covering accreditation, request criteria, response requirements, logging, auditing, and service levels.
ICANN’s Operational Design Assessment work illustrates why SSAD has remained complex and resource-intensive to implement, and why the community is now testing what can be improved incrementally via RDRS while policy deliberations continue.
Practical takeaway: RDRS is the operational “bridge” through 2027; SSAD (or a successor) is the potential “highway.” Planning must therefore assume evolution, not stability.

European data protection: how GDPR logic shapes disclosure decisions

For European stakeholders, the disclosure decision is rarely “policy-only.” It is a legal risk assessment structured around GDPR principles: lawful basis, necessity, proportionality, transparency, minimisation, retention, and accountability.

Lawful basis and the “legitimate interest” test

In most rights-holder scenarios, disclosure requests are framed around legitimate interest (Article 6(1)(f) GDPR logic), which requires (i) a legitimate interest, (ii) necessity, and (iii) balancing against the data subject’s rights and reasonable expectations. The CNIL and French legal materials frequently reflect this three-step logic.

Cross-border reality: one DNS, many legal regimes

A single domain name can involve a registrar in one jurisdiction, a registrant in another, and harm occurring across markets. RDRS helps standardise inputs, but it does not harmonise legal thresholds. As a result, outcomes will continue to vary unless and until enforceable service standards and authentication mechanisms mature.

A useful comparison point for France: AFNIC’s disclosure logic

While RDRS targets gTLDs, French operators and rights-holders are already familiar with structured disclosure models at the ccTLD level. AFNIC, for example, provides a formal route to request disclosure (lift of anonymisation) for .fr-type namespaces, illustrating that “structured request + evidence + legitimate interest” is operationally feasible, yet still fact-dependent.

Operational implications by stakeholder type

Registrars and registries: prepare for “standardisation pressure”

• If you are not participating, you risk being operationally and reputationally out of step with ICANN’s “comprehensive usage” direction, even before any mandatory shift occurs.
• If you are participating, the competitive differentiator becomes process maturity: intake quality, documented decision criteria, escalation paths for urgent cases, and technical integration capacity.
For further reading, we invite you to consult our analysis of ICANN registration data policy measures and their impacts.

Rights-holders and investigators: treat RDRS as one channel in a layered toolkit

RDRS remains a valuable path, but not a complete one. We recommend positioning it as:
• a first-line standardised intake for gTLD non-public data; and
• a case-building instrument that strengthens follow-on actions (takedown, registrar escalation, UDRP/URS, court measures) when disclosure is denied or delayed.
For further reading, we invite you to consult our complete guide to UDRP, Syreli, and international alternatives.

Privacy/proxy services: expect policy alignment to narrow discretion

One of the most sensitive gaps concerns access to underlying data behind privacy/proxy services, and how such requests should be handled in a standardised architecture. The policy alignment track explicitly connects RDRS evolution with privacy/proxy workstreams.

Corporate stakeholders: anticipate governance questions, not only “legal” questions

Large organisations operating globally should expect internal questions such as:
• Who is authorised to submit RDRS requests?
• What evidence threshold is required (fraud indicators, brand rights, consumer harm, phishing signals)?
• How do we log, retain, and audit outgoing requests and incoming data to meet internal compliance expectations?

Conclusion

The Registration Data Request Service (RDRS) is no longer a short experiment: with operations maintained through December 2027, it becomes the reference bridge for non-public gTLD registration-data requests, while the community debates whether to harden it into mandatory, authenticated, SLA-driven infrastructure. For European organisations, success will depend on combining high-quality evidence, disciplined disclosure theories, and well-sequenced enforcement paths that remain robust even when disclosure is refused.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1) Does RDRS replace WHOIS/RDDS?

No. WHOIS/RDDS remains the system for accessing registration data (often partially redacted), while RDRS is a separate channel for submitting disclosure requests.

2) Does RDRS provide automatic access to non-public WHOIS data?

No. There is no automatic disclosure: each request is assessed by the registrar on a case-by-case basis, based on the applicable legal framework and the supporting evidence provided.

3) What is SSAD and how is it different from RDRS?

SSAD is the policy framework proposed by the EPDP Phase 2 process, including recommendations on accreditation, request criteria, response requirements, auditing, and SLAs. RDRS is a pilot operational service collecting data and experience while those policy questions remain unresolved.

4) Why is “law enforcement authentication” such a central issue?

Because urgent, cross-border cases require reliable requestor identity verification. ICANN has identified authentication work as a priority improvement track during the extension period.

5) How should EU rights-holders frame RDRS requests under GDPR constraints?

Requests should be tightly scoped, evidence-driven, and aligned with lawful-basis logic (often legitimate interest), necessity, proportionality, and documented balancing, consistent with CNILstyle reasoning around Article 6(1)(f).

6) If RDRS fails, what are the fastest alternatives to stop abuse?

Depending on the facts: registrar/hosting takedown routes, platform abuse channels, and, when transfer or suspension is needed, UDRP/URS or ccTLD-specific procedures.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Written by Nathalie Dreyfus05/01/2026

Introduction

In corporate life, the issue of ownership of intangible assets is far from secondary. The filing of a trademark or the registration of a domain name in the personal name of a company director, even though such signs identify the company’s business, regularly gives rise to disputes. This practice is not automatically unlawful. However, it may become fraudulent where the filing is carried out with knowledge of the company’s prior rights or use, or as part of a strategy aimed at the personal appropriation of a strategic asset. This issue was recently illustrated by a noteworthy decision of the Douai Court of Appeal dated June 12, 2025.

The stakes are significant: judicial transfer of the trademark, loss of the domain name, civil liability, and potentially unfair competition claims.

When may a director file a trademark or register a domain name in their own name?

The principle: freedom to file

Under French law, the right to file belongs to the first applicant. As a matter of principle, no provision prohibits a director from filing a trademark or registering a domain name in their personal name, including where a company is still in the process of being formed. This formal freedom explains many “anticipatory” filings, particularly prior to incorporation.

The limit: corporate interest and loyalty

This freedom nevertheless reaches its limit where the filing takes place in the context of a joint project, a company in formation, or collective exploitation of the sign. A director may not divert to their own benefit an asset intended to identify the company.

To learn more about recent case law developments relating to trademarks filed on behalf of companies in formation, we invite you to consult our previously published article.

The criteria applied by French courts

Prior use for the benefit of the company

Use of the sign prior to filing, even informal, for the benefit of the future company or its associates constitutes a strong indication of fraud where the filing is made in a personal capacity.

The context of a company in formation

Where the filing takes place while the company is in the process of being formed, and the sign has been chosen collectively, courts frequently consider that the applicant acted in the corporate interest, even if the company had not yet acquired legal personality.

The director’s subsequent conduct

Fraud is not presumed. It is based on an intentional element: the applicant’s knowledge of existing rights or prior use that they seek to neutralise or appropriate. Case law consistently recalls that fraudulent intent must be assessed in light of all the circumstances, including those arising after the filing. Fraud is often revealed by subsequent conduct, such as:

Proposing a licence agreement to the company,
Threatening to prohibit use of the sign,
Retaining control of the domain name or professional email addresses.

In a recent case, the Douai Court of Appeal ruled on this issue.

The decision of the Douai Court of Appeal, June 12, 2025, No.22/05989

Facts of the case

A founding associate, who later became president of a company in formation, personally filed several trademarks and registered a domain name corresponding to the sign intended to identify the company’s business. After his dismissal, he claimed ownership of these rights and proposed a licence agreement to the company, while retaining control over the domain name and the professional email addresses.

Decision of the Douai Court of Appeal

In its decision of 12 June 2025, the Douai Court of Appeal held that these filings constituted fraudulent filings, as they had been carried out with full knowledge of the circumstances, within the framework of a collective business creation project, and exclusively in the interest of the company in formation. The Court ordered the transfer of the trademarks and the domain name to the company, finding that the director had sought to appropriate a strategic intangible asset for personal purposes.

The Court also found the existence of acts of unfair competition and parasitism, as the former president, following his dismissal, pursued a competing activity through a newly created company while improperly exploiting the signs and identifying elements of the original company.

Scope of the decision

This decision confirms settled case law: the filing of a trademark or the registration of a domain name by a director is not unlawful per se, but becomes fraudulent where it diverts a sign intended to identify and develop the company’s business, in disregard of the collective interest and the duty of loyalty.

Trademarks and domain names: a converging legal approach

Courts apply a similar line of reasoning to domain names. Personal registration of a domain name corresponding to the corporate name or an exploited trademark may be characterised as fraud or unfair competition where it disrupts the company’s operations or diverts an element of its intangible assets.

Issues relating to identification data and access retention are also assessed in light of loyalty requirements and, where applicable, the principles recalled by the CNIL regarding the use of professional data.

Best practices to secure ownership of rights

Anticipate ownership issues from the creation phase.
Include an asset transfer clause in the articles of association or shareholders’ agreements.
File trademarks directly in the name of the company once incorporated.
Centralise domain name management at company level.
Document collective decisions relating to the choice and exploitation of distinctive signs.

Conclusion

The filing of a trademark or the registration of a domain name in the name of a director is not, in itself, fraudulent. It becomes so when the facts demonstrate a disloyal appropriation of a sign intended to identify the company’s business, to the detriment of the company and its associates.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can a company recover a trademark filed by its director?
Yes, through an action for ownership claim where fraud is established.

2. What if the articles of association do not provide for the transfer of trademarks?
The absence of a transfer clause does not prevent legal action, but it weakens the company’s position and makes proof of fraudulent intent more complex.

3. Is an oral agreement between associates sufficient?
It is risky. A written agreement is strongly recommended.

4. Is payment of filing fees by the company decisive?
It is a strong indication, but not an exclusive one.

5. Is the registration of a domain name treated in the same way as a trademark?
The legal reasoning is largely similar, particularly where company operations are disrupted.

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

Written by Nathalie Dreyfus05/01/2026

Introduction

An M&A deal is often decided on an element that is mistakenly viewed as “technical” until the documentation is scrutinized: the trademark. Where ownership is clear, registers are properly updated and use is consistent, the trademark supports a significant portion of the valuation, reduces legal uncertainty and facilitates post-acquisition implementation.
Conversely, an unclear chain of title, rights scattered across territories, or a trademark that is challenged or vulnerable (cancellation or revocation) may lead to price renegotiation, reinforced protections, or even the termination of the transaction.

Why trademarks are a decisive asset in M&A?

A trademark is not merely a graphic sign: it is an enforceable right…or a fragile advantage

A trademark is an asset because it grants an exclusive right to use a sign for designated goods and services. It enables the owner to prevent confusing uses, structure a distribution policy, support international expansion and protect marketing investment. However, its value depends on verifiable facts: who owns the trademark, in which territories, for which goods/services, and subject to which contractual constraints?

Common situations in which trademarks weaken the transaction

• Uncertain ownership: the seller uses the sign but is not (or is no longer) the recorded proprietor. This undermines enforcement against third parties and complicates transfer. Under French law, recording transfers and changes is a key condition for opposability.
• Territorial fragmentation: the same sign is owned by different entities depending on the country, complicating a global strategy (communications, social media, distribution, parallel imports). This is common in older portfolios or those built through successive acquisitions.
• Risk of invalidity or revocation: descriptive trademark, serious prior rights, insufficient use for certain classes, overly broad specifications disconnected from actual activity, a portfolio that is “theoretical” rather than defensible.
• Contracts that dilute value: exclusive licenses, imbalanced coexistence agreements, security interests, non-challenge commitments, transfer restrictions or change-of-control clauses.

Trademark audit: the checks that protect price and completion

1) Start from the business strategy

First, identify the portfolio’s strategic marks: the main trademark, sub-trademarks, slogans, logos, country-specific marks, flagship product names, and their role in the company’s growth (line extensions, new markets, new channels). The goal is not merely to take stock, but to confirm that the portfolio truly supports the post-acquisition plan (roll-out, expansion, diversification, internationalisation).

2) Secure the chain of title and opposability

Next, the asset must be regularised before being transferred. In France, INPI sets out the recording of events affecting a trademark’s life (assignment, change of name, merger, etc.), which contributes to publicity and opposability.
Key points of attention: in France and in the European Union, an up-to-date register is a condition for a transfer that is fully opposable and practically usable; for international trademarks, changes of ownership are handled through WIPO procedures.

3) Verify the validity of the sign

A portfolio can be extensive and yet fragile. It is therefore necessary to assess the likelihood that a third party could obtain invalidation of the trademark in contentious proceedings, by examining distinctiveness, relevant prior rights and the market context. This assessment is decisive: it determines the ability to defend the trademark, to invest, and to expand the commercial strategy without paralysing disputes.

4) Verify use and the administrative regularity of the titles

A trademark must remain “alive”. This requires checking renewals, the consistency of recorded data (owner, address, goods/services) and the existence of strong evidence of use (packaging, invoices, campaigns, dated screenshots, commercial documents). Portfolios that have undergone multiple restructurings can become difficult to operate if evidence and documentation have not been centralised.

5) Review the contracts

The buyer acquires a right to use and exploit. Change-of-control provisions, exclusivity clauses, territorial limits, quality-approval obligations, or sub-licensing restrictions can reduce value, constrain strategy or trigger renegotiation. A licence misaligned with the post-acquisition strategy may, in practice, neutralise a portion of the valuation.

6) Integrate the digital perimeter

A trademark’s digital footprint is inseparable from the trademark: domain names, marketplaces, social media, content and accounts. On certain platforms, access to trademark-protection tools requires proof of ownership and consistency between the recorded proprietor and the operating entity. Any inconsistency in the register can delay critical actions (content removal, seller blocking, internal trademark-protection processes).

7) Do not overlook data

Where valuation relies on customer relationships, marketing performance and customer files, compliance becomes an economic parameter. CNIL recalls the rules applicable to the sale/transfer of customer databases (information, rights, proportionality, security, etc.).

From the audit report to transaction clauses: securing the transaction without unnecessary over-negotiation

Match each identified risk with an appropriate measure

A weakness in title or a latent dispute does not automatically require abandoning the transaction. However, it must be translated into a clear mechanism: price adjustment, price holdback, escrow, capped indemnity, or a targeted condition precedent (recording an assignment, releasing a security interest, contractual regularisation). The logic is straightforward: a specific risk calls for a specific, proportionate and verifiable response.
Organise pre- and post-completion regularisation while protecting the timetable
Regularisation takes time: recordals, multi-territory signatures, supporting documents and historical corrections. For sellers, putting IP assets “in order” ahead of time reduces negotiation fatigue and strengthens the file’s credibility. For buyers, the audit should be approached as a structuring decision: what must be resolved before completion and what can be treated afterwards, with appropriate protections and a controlled timetable.

Conclusion

In M&A, trademarks can make or break the transaction: they concentrate value, but also potentially decisive weaknesses (opposability, territorial scope, use, contracts, disputes, digital issues). A structured audit and rigorous contractual implementation turn trademarks into a tool for security and negotiation, rather than a late-stage source of uncertainty.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1) What does a trademark audit cover in an M&A transaction?
It involves reviewing ownership, validity, use, contracts and disputes relating to trademarks in order to secure price and completion.

2) What documents should the seller prepare to avoid delays?Up-to-date certificates and register extracts, assignment deeds and evidence of recordal, renewal schedules, evidence of use (invoices, catalogues, packaging, campaigns), contracts (licences, distribution, coexistence, security interests) and any litigation history.

3) What are the most frequent chain-of-title issues?
Trademarks filed in a founder’s name and used by the company without recorded transfer; intra-group transfers not recorded after restructuring; errors in corporate name or address; partially executed assignments; assignments unclear as to scope (territories/classes).

4) How should a trademark owned by different entities across territories be handled?
Through a rights map and a strategy combining additional filings, coexistence agreements, licences, intra-group reorganisation, or a trademark adjustment aligned with commercial priorities.

5) What if the audit reveals a missing recordal or a missing deed?
Implement a regularisation plan (reconstituted deeds, signatures, recordals), typically through a condition precedent or a specific covenant, supplemented where necessary by a holdback or escrow.

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

Written by Nathalie Dreyfus30/12/2025

Introduction

French and European regulations on labelling, packaging and sorting are undergoing a major transformation with the entry into force of Regulation (EU) 2025/40, also known as the PPWR (Packaging and Packaging Waste Regulation). Published on January 22, 2025, this regulation replaces Directive 94/62/EC and establishes a harmonised and binding framework for all packaging placed on the European market, with clear objectives aimed at reducing waste and promoting the circular economy.

This represents a structural legal turning point, engaging not only environmental law, but also consumer law and trademark law, for both food and non-food packaging. Companies must now integrate these obligations into their compliance strategies and legal governance frameworks.

What is the legal framework governing labelling, packaging and sorting?

A directly applicable and strengthened European framework

Regulation (EU) 2025/40, adopted on December 19, 2024 and published on January 22, 2025, now constitutes the core European legal instrument governing packaging and packaging waste. It replaces Directive 94/62/EC and introduces binding rules on the design, durability, recyclability, labelling and management of packaging waste across all Member States.

This harmonisation aims to:

Reduce packaging waste,
Promote reuse and recycling,
Foster the circular economy throughout the internal market.

At national level, these provisions interact with the existing French regulatory framework, in particular the AGEC Law, which already imposes obligations relating to the reduction and recycling of packaging.

When do the main measures enter into force?

A progressive yet legally binding timetable

The PPWR entered into force on January 22, 2025. Its main milestones are structured as follows:

August 12, 2026: mandatory application of the new rules on packaging design, harmonised labelling and consumer information for companies and Member States.
2028: introduction of a minimum recycled content requirement for certain categories of plastic packaging, for example at least 30% recycled plastic in PET packaging.
2030: more ambitious reuse and recycling targets must be met.
2035: extension of recycling obligations to additional types of packaging, with a goal of large-scale recyclability.

What obligations apply to food and non-food packaging?

Challenges specific to food packaging

Food packaging combines environmental constraints with strict health and safety requirements.
Packaging must ensure product safety while avoiding any misleading information regarding the nature, composition or preservation of the product.

From 2026, new rules will apply, reinforcing in particular:

the clarity and legibility of sorting instructions,
consistency between the packaging and the environmental message conveyed,
traceability of the materials used.

Constraints for non-food packaging

For non-food products (cosmetics, household products, electronics, textiles, etc.), obligations will also apply from 2026, covering new standards of design and labelling. Companies will need to anticipate reuse requirements and the reduction of unnecessary packaging in product design, relying on technical data and documented evidence of compliance.

Why are sorting and recycling at the heart of the new rules?

Persistent complexity for consumers

Despite the widespread use of the Triman logo in France, studies show that consumers still have difficulty understanding sorting instructions.

The European regulation now requires a clear hierarchy of information, combined with standardised pictograms.

Companies must explain:

what can be recycled,
how to dismantle the packaging where applicable,
what must not be disposed of in recycling bins.

The central role of environmental instructions for use

Instructions for use will no longer concern solely the use of the product, but also its end of life.
This obligation directly extends the consumer law duty to provide clear and accurate information.

What impact do these rules have on trademarks and environmental claims?

The PPWR has a direct impact on the use of environmental claims on packaging. From 2026, statements such as “recyclable”, “eco-friendly” or “biodegradable” may only be used if they are based on objective and verifiable criteria. The new regulatory framework requires absolute consistency between the trademark message and the technical reality of the packaging.

The absence of technical substantiation for such claims may be considered a misleading commercial practice, engaging the company’s liability regardless of its status as a trademark owner. From 2028, enforcement is expected to intensify, particularly in the context of market surveillance and product compliance checks.

To learn more about green brands and greenwashing, we invite you to read our previously published article.

Conclusion

French and European regulations on labelling, packaging and sorting now form a structuring legal framework, with obligations progressively applicable between 2026 and 2035, aimed at strengthening recyclability, reducing waste and harmonising practices across the internal market.

Integrating these constraints into companies’ legal and operational strategies is essential to ensure compliance and to mitigate significant legal risks.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. How can regulatory developments be anticipated?
To anticipate these developments and minimise legal risks, it is recommended to:

conduct packaging audits incorporating the new European obligations;
document evidence of recyclability and recycled content;
align environmental claims with certified technical data;
involve legal, CSR and marketing teams from the product design stage.

2. What sanctions apply in the event of non-compliance?
Administrative penalties, unfair competition actions, consumer litigation and reputational damage.

3. Does the Triman logo remain mandatory?
Yes, the Triman logo remains mandatory in France, but it will gradually have to be coordinated with the harmonised European pictograms provided for under the PPWR. In the medium term, companies will have to manage the coexistence of different systems, requiring particular vigilance in terms of clarity and hierarchy of information.

4. Does the regulation require a complete redesign of existing packaging?
Not systematically, but in many cases adaptation will be unavoidable, particularly for:

packaging that is not recyclable by design,
packaging using complex composite materials,
packaging containing non-compliant environmental claims.

5. Why anticipate obligations that only apply in 2028 or 2030?
Because current decisions relating to design, supplier contracts and trademark strategy commit the company for several years. Anticipation helps secure investments legally, avoid rushed redesign costs and transform regulatory compliance into a controlled competitive advantage.

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

Written by Nathalie Dreyfus29/12/2025

Introduction

The decision delivered by the Court of Justice of the European Union on September 2, 2025 (Case C-426/24 P) marks a decisive turning point in the management of Community Plant Variety Rights (CPVRs). By confirming the definitive cancellation of a right for non-payment of an annual fee, the CJEU forcefully reiterates that the protection of plant innovations depends as much on the legal robustness of the title as on the administrative discipline of its holder.

This ruling, with major practical implications for breeders, seed companies, and agri-industrial groups, calls for a strategic and operational reading of plant variety protection law in the era of dematerialisation.

The legal framework governing the payment of fees in plant variety protection

The fundamental principle of maintaining the right

Regulation (EC) No 2100/94, which establishes the Community system for the protection of plant varieties, is based on a clear balance: in return for an exclusive right of exploitation, the holder must pay an annual maintenance fee.

In principle, failure to pay this annual fee within the prescribed time limits results in the definitive forfeiture of the plant variety right, save for limited circumstances in which the holder demonstrates, pursuant to Article 80 of Regulation (EC) No 2100/94, that an involuntary, exceptional, and duly justified impediment prevented compliance with the deadline.

A logic comparable to other intellectual property rights

Like patents or trademarks, a plant variety right is a living right, dependent on continuous vigilance. However, the specific feature of the CPVO system lies in its European centralisation and the growing use of digital tools dedicated to relations with right holders, in particular the MyPVR electronic platform, used for the notification of official acts, deadline management, payment of annual fees, and procedural exchanges with holders.

**The Melrose case: a landmark dispute before the CJEU**

The facts giving rise to the dispute

Romagnoli Fratelli SpA, the holder of a Community plant variety right for the potato variety Melrose, failed to pay the annual fee within the prescribed time limits.

The CPVO (Community Plant Variety Office) had nevertheless issued a debit note and several reminders, all made available via the MyPVR platform, with notifications sent by email.

The attempted restitutio in integrum

The holder applied for restitutio in integrum under Article 80 of Regulation (EC) No 2100/94, arguing that it had been prevented from meeting the payment deadline due to the lack of effective receipt of the notifications and contesting the validity of MyPVR as an official means of communication.

These arguments were rejected successively by the CPVO, the General Court of the European Union, and ultimately by the Court of Justice of the European Union, which held that failure to consult electronic notifications does not constitute an involuntary impediment within the meaning of Article 80.

Validation of electronic communications via MyPVR

An explicitly recognised legal basis

The CJEU confirms that the President of the CPVO is empowered, under Regulation 2100/94, to determine the modalities of electronic notification. Accordingly, the MyPVR system is recognised as an official and legally valid channel for the service of acts.

The importance of the holder’s consent

A decisive factor lies in the fact that the holder had opted for electronic communication. This choice entails clear legal consequences: failure to consult the platform cannot invalidate the notification.

Burden of proof and the holder’s heightened responsibility

A firm position of the CJEU

The Court unequivocally states that the burden of proof lies with the holder. It was for the holder to demonstrate that the documents had not been made available in its MyPVR space or that the notification emails had not been sent. Failing such proof, the notification is presumed valid.

A heightened duty of diligence

This approach enshrines a logic of proactive responsibility: not seeing a notification does not mean it does not exist.

The CJEU thus elevates the administrative management of a CPVR portfolio to a strategic obligation, inseparable from legal protection.

Essential best practices for holders of plant variety rights

To avoid irreversible losses, we notably recommend:

Regular monitoring of MyPVR;
Continuous updating of electronic contact details;
The implementation of redundant internal alerts;
The use of a professional representative for portfolio management.

Conclusion

The CJEU decision of September 2, 2025 starkly illustrates the cost of administrative negligence in plant variety protection law. Failure to pay an annual fee, even in the absence of bad faith, may result in the definitive loss of a right of significant economic value. In a digital environment fully embraced by European institutions, vigilance is no longer optional; it is the very condition for the sustainability of rights.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Can a cancelled plant variety right be refiled at a later stage?

In practice, refiling a plant variety right is very limited, as any new protection remains subject to novelty within the meaning of Regulation (EC) No 2100/94, as well as the DUS criteria, conditions that are rarely met after prior exploitation of the variety.

2. Is appointing a professional representative mandatory?

No, but it is strongly recommended to secure effective portfolio management.

3. Can the loss of a plant variety right affect a company’s valuation?

Absolutely. Plant variety rights are often strategic intangible assets. Their cancellation may impact financial valuation, acquisition audits, fundraising operations, or mergers and acquisitions.

4. Can failure to pay a CPVO fee trigger internal liability within a company?

Yes. In structured groups, forfeiture resulting from non-payment may give rise to contractual or disciplinary liability of the department or service provider responsible for portfolio management, particularly where economic harm can be demonstrated.

5. Does forfeiture of a plant variety right affect ongoing licence agreements?

Yes. Cancellation of the right generally removes the legal basis for licences, with potentially significant contractual consequences, particularly regarding royalties, warranties, and liability vis-à-vis licensees.

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

Written by Nathalie Dreyfus29/12/2025

In the luxury industry, perfume is far more than just a fragrance: it is a complex intangible asset composed of multiple layers of creation. For effective protection, it is imperative to dissect the product into its four major components: the scent (the juice), the formula (the recipe), the packaging (the bottle/box), and the name (the trademark).

Each of these elements falls under a distinct legal regime. Dreyfus Law Firm offers this expert guide to navigating between Copyright, Trademark Law, Designs & Models, and Trade Secrets.

The scent (The Fragrance): The challenge of the intangible

This is the soul of the perfume, yet it remains the most difficult element to protect legally in France today. This is a subject we monitor closely, and one we have already addressed particularly in our article entitled Fragrance and Intellectual Property: which protection?.

Why copyright does not (yet) apply to scent

Unlike music or literature, current French case law refuses to consider the fragrance (the perceived scent) as a “work of the mind” (œuvre de l’esprit) protected by copyright.

The Judicial Position: The French Cour de cassation considers that a fragrance proceeds from the implementation of technical know-how, rather than from a purely creative artistic endeavor identifiable with sufficient precision.
The Consequence: One cannot sue for “copyright infringement” for the reproduction of a scent alone.

The solution: Acting on grounds of unfair competition

While the scent is not a “work,” servile imitation remains punishable. To protect a scent against “dupes” or copies, we take action based on unfair competition (concurrence déloyale) or free-riding (parasitisme).

The Legal Argument: The goal is to prove that the competitor sought to appropriate the wake (sillage) of your perfume to benefit from your investments without cost, creating a risk of confusion or undue value capture.

The formula (the recipe): The realm of secrecy

If the scent is the result, the formula is the technical process (the list of chemical ingredients and their dosage) used to achieve it.

Trade secrets rather than patents

Patent filing is rare in perfumery because it requires disclosing the formula to the public (which enters the public domain after 20 years). The preferred strategy is that of Trade Secrets (Secret des affaires).

The Principle: The formula must remain confidential information, known only to a very restricted number of people (the “nose,” the laboratory).
Legal Protection: This relies on the implementation of reasonable protection measures (physical and digital) to prevent the theft of the formula.

Contractualization as a shield

For the secret to hold, it must be legally secured by contracts:

Non-Disclosure Agreements (NDAs): Essential with laboratories, raw material suppliers, and employees.
Non-Compete Clauses: To prevent a perfumer from joining a competitor with your formulas in mind.

Packaging (bottle and box): The alliance of design and trademark

The bottle is the first visual point of contact with the consumer. It is an industrial art object that benefits from powerful cumulative protections.

Designs & models and copyright

Designs & Models: This is the premier protection for the aesthetic appearance of the bottle (its shape, lines). Filing must be done before the product is disclosed to guarantee its novelty.
Copyright: If the bottle is original and bears the imprint of its author’s personality, it is protected by copyright from the moment of its creation, without formal registration (although a probatory deposit is recommended).

The three-dimensional trademark

In exceptional cases, the shape of the bottle itself can be registered as a trademark (3D trademark) if it is sufficiently distinctive for the consumer to recognize the origin of the product by its shape alone (e.g., the iconic Jean Paul Gaultier torso bottle).

The name: The trademark monopoly

The name is the most valuable asset in the long term. Once the scent has evaporated, the name remains.

Word mark registration

The perfume name (e.g., “N°5”) and the House name must be registered as word marks.

Filing Classes: It is crucial to target Class 3 (cosmetics, perfumes) but also Class 35 (advertising, business management) for retail and distribution.
Availability: An in-depth clearance search is indispensable to ensure the name is not already taken.

Protection against cybersquatting

The name must also be protected online. Reserving domain names (.com, .fr, and new extensions like .luxury) must be synchronized with trademark filing, as we explain in our article on Domain Names and New gTLDs.

Litigation expertise of Nathalie Dreyfus

Protecting these four elements requires a global strategy, but also the ability to defend one’s rights in court when counterfeiting occurs.

Dreyfus Law Firm stands out through the specialized expertise of its founder, Nathalie Dreyfus. As a French and European Trademark Attorney, she possesses recognized experience not only in strategic consulting but also in handling complex litigation.

Her expertise is regularly sought in high-stakes cases, requiring perfect mastery of case law from the French Cour de Cassation and Courts of Appeal regarding intellectual property. This fine-tuned knowledge of judicial decisions allows for the anticipation of legal risks linked to scent or shape protection and the construction of solid defense cases for perfume houses.

You can view our founder’s full profile here: Nathalie Dreyfus.

FAQ: Frequently asked questions

Can you patent a scent?
No. A scent cannot be patented. Only the technical manufacturing process (the chemical formula) could theoretically be patented, but this requires publication, which contradicts the industry’s secrecy strategy.

How do I prove my scent was copied?
Proof is generally established via chromatography analysis (chemical analysis) comparing the original juice and the copy, combined with olfactory tests by experts, to demonstrate economic parasitism.

Should my perfume name be descriptive?
Absolutely not. A trademark must be distinctive. Naming a perfume “Rose Scent” may be refused registration because the term describes the product. It is recommended to choose an arbitrary or fanciful name.

What is the difference between a “dupe” and a counterfeit?
Counterfeiting copies a registered right (the name, the logo, the bottle shape). A “dupe” often imitates the scent (not protected by copyright) and the vibe, while changing the name. Against a dupe, we act on grounds of unfair competition; against a counterfeit, we act for trademark or design infringement.

Dreyfus Law Firm is your strategic partner for securing your intangible assets. Contact us to audit the protection of your olfactory creations.

Written by Nathalie Dreyfus26/12/2025

Introduction

In an economic environment characterised by intensified competition, the digitalisation of exchanges and the rapid circulation of content, trademarks have become a key strategic asset. They embody economic value, reputation and consumer trust. Yet many companies still underestimate the technical complexity of trademark law and intervene too late, when the legal risk has already materialised.
Knowing when to seek the assistance of a trademark law expert is not a matter of legal comfort, but a strategic decision. Whether it involves creating a distinctive sign, preventing an infringement action or deploying an effective defence strategy, the involvement of a specialist makes it possible to anticipate, secure and, above all, arbitrate risks.

Understanding distinctive signs and the challenges of their protection

What is a distinctive sign under trademark law?

A distinctive sign is a sign capable of identifying the commercial origin of goods or services and distinguishing them from those of competitors. It may take various forms: a word trademark, logo, slogan, shape, colour, or even a sound or animation in certain cases.
However, not all signs are eligible for protection. Trademark law excludes, in particular, descriptive, generic or customary signs, as well as those contrary to public policy. Assessing distinctiveness requires a refined legal analysis, which is often underestimated at the filing stage. Independently of these absolute grounds for refusal, a sign may also be legally unavailable due to prior rights held by third parties, such as registered trademarks, company names, trade names or domain names, even if it is distinctive in itself.

Why is distinctiveness a critical point of attention?

A trademark that is weakened from the outset exposes its owner to significant risks: refusal of registration, third-party oppositions, or subsequent invalidity or revocation. A trademark law expert plays a key role in securing the choice of the sign, taking into account the relevant sector of activity, the target public and applicable case law.
Example: the French Supreme Court (Cour de cassation) set aside an appellate decision that had considered the trademark “Silhouette” to be distinctive on the grounds that the goods concerned were slimming-related substances, from which it followed that the sign could designate a characteristic of those goods (Cass. Com., July 12, 2005, No. 04-12.146).

When does trademark law expertise become essential?

Upstream: creation, filing and protection strategy

The first reflex must be anticipation. Before any commercial launch, the expert conducts in-depth prior rights searches and designs a coherent filing strategy, both at national and international levels. This approach helps avoid marketing investments in a sign that is legally unavailable.
Companies can file their trademarks with INPI for protection in France, with the EUIPO for a European Union trademark, or use the Madrid System managed by WIPO for streamlined international protection.

During use: monitoring and risk management

A registered trademark is not automatically protected in practice. Monitoring trademark registers, domain names, marketplaces and social networks is essential. The expert identifies potential infringements and recommends proportionate actions, ranging from cease-and-desist letters to litigation.

In crisis situations: opposition, disputes or litigation

Once a conflict has arisen, the intervention of a specialist becomes decisive. Opposition proceedings before the INPI or the EUIPO, infringement actions, settlement negotiations: each decision is based on a precise legal and strategic assessment, taking into account evidence, deadlines and economic stakes.

Trademark infringement: identifying, qualifying and acting effectively

How can a situation of infringement be identified?

Trademark infringement involves the unauthorised use of an identical or similar sign for identical or similar goods or services, creating a likelihood of confusion. The analysis is not limited to a visual comparison; it also incorporates phonetic, conceptual and contextual criteria.

Why is acting quickly essential?

Inaction weakens the trademark owner’s position and may be interpreted as acquiescence. A trademark law expert assesses the urgency, the seriousness of the infringement and the most appropriate course of action, whether judicial or extrajudicial.

Example: a company discovers the exploitation of its trademark through a fraudulent domain name used for online sales. A strategy combining a cease-and-desist letter, a UDRP procedure and platform takedown notices allows the risk to be neutralised swiftly. The firm has recognised expertise in domain name matters.

Building a defence and trademark valorisation strategy

Legal defence and overall consistency

Defending a trademark is not limited to reacting to infringements. It forms part of a broader strategy, aligned with the company’s commercial objectives and communication policy. The expert supports decision-making by assessing the cost/risk/opportunity balance.

Valorisation and securing intangible assets

Beyond litigation, trademark law is a powerful tool for valorisation: licensing, assignments, partnerships and fundraising. A legally robust trademark strengthens a company’s credibility with investors and business partners.

Conclusion

Seeking the assistance of a trademark law expert is a structuring step at every stage of a trademark’s life cycle: creation, use, defence and valorisation. In a context where infringements are multiplying and becoming increasingly complex, legal expertise makes it possible to turn risk into a competitive advantage.
Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.
Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. When should a trademark law expert be consulted?
As early as the reflection phase on the choice of a name or logo, and before any filing or commercial launch.
2. Is an expert indispensable to file a trademark?
Filing is possible without an expert, but professional support significantly reduces legal risks.
3. What are the risks of a poorly drafted trademark filing?
An imprecise or overly broad specification may weaken the trademark, limit its enforcement or expose it to invalidity or revocation actions.
4. Is an unused trademark protected?
The absence of genuine use may lead to revocation of trademark rights.
5. Is trademark monitoring mandatory?
It is not legally mandatory, but it is essential in practice to preserve trademark rights.
6. What is the difference between opposition and infringement?
Opposition arises during the trademark application phase, whereas infringement sanctions the unauthorised use of a protected sign.
7. Can a company defend itself alone against an infringement claim?
In practice, this entails significant risks. Incorrect legal qualification or an inappropriate response may aggravate the situation. Expert support helps structure a coherent and proportionate defence.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.