News

Introduction

The Anti-Counterfeiting Trade Agreement (ACTA) is an international treaty that has sparked numerous debates and concerns since its creation. The update to this agreement introduces significant changes affecting the intellectual property field, particularly in the fight against counterfeiting and online piracy. This article explores the recent developments of ACTA, its objectives, and the reactions from the various stakeholders involved.

What is ACTA?

The Anti-Counterfeiting Trade Agreement (ACTA) is an international treaty aimed at strengthening the protection of intellectual property rights. It was designed to fight counterfeiting, piracy, and other forms of copyright infringement, both in the physical and digital world. This treaty was signed by several countries, but its implementation was hindered by concerns regarding privacy protection and individual freedoms.

Why is this article relevant?

The ACTA comes in a global context where counterfeiting and online piracy are on the rise. Moreover, technological advancements and new digital challenges make it even more crucial to strengthen international rules concerning intellectual property. This update is therefore relevant for all businesses and content creators, as it changes the way intellectual property will be protected globally.

Objectives of the updated ACTA

The primary modifications to ACTA aim to enhance international cooperation in the fight against counterfeiting, especially on the Internet. These include strict measures regarding the responsibility of online intermediaries, as well as harsher penalties for counterfeiters. ACTA also seeks to harmonize the laws of different countries for more effective combat against digital piracy.

Stakeholders of ACTA

ACTA involves several key actors, including the governments of the signatory countries (Japan, the United States, Canada, New Zealand, Morocco, South Korea, Singapore, and Australia), businesses from the digital industry, copyright defense organizations, and end-users. The stakeholders are primarily businesses with intellectual property rights to protect, such as those in the fashion, media, and music sectors. Civil society also plays an important role, particularly in monitoring the impact of the proposed measures on individual freedoms and privacy protection.

Concerns raised by ACTA

Despite its laudable goals, ACTA raises concerns, particularly regarding the protection of human rights and privacy. Some opponents of ACTA argue that the proposed measures could lead to abuses, such as excessive surveillance of internet users or unjust actions against innocent users. Critics have highlighted the lack of transparency in the negotiations and the risk of excessive global governance in the digital domain.

The European Commission’s position

The European Commission initially supported ACTA but changed its position after negative reactions from civil society and European governments. It decided to suspend its signature of ACTA, citing the need for greater clarity and guarantees concerning the protection of fundamental rights of European citizens. The Commission’s current position is to reassess the impact of ACTA on human rights before any reintroduction into European legislation.

The Obsolescence of ACTA and the Emergence of New Mechanisms to Combat Counterfeiting

ACTA (Anti-Counterfeiting Trade Agreement), although initially signed in 2011 by several countries, is no longer in use today. The agreement was widely contested and failed to gain universal ratification, notably due to its rejection by the European Parliament in 2012. Since then, ACTA has not been implemented and is considered obsolete in the context of international counterfeiting regulation. Today, the fight against counterfeiting is governed by other legal instruments, including agreements from the World Trade Organization (WTO), such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), as well as national legislations and trademark and patent protection systems. Furthermore, mechanisms like the European Directive on the Enforcement of Intellectual Property Rights (Directive 2004/48/EC) effectively address counterfeiting issues within the European Union. Thus, while ACTA had an influence on the initial discussions, other legal tools and international agreements have taken over to ensure the protection of intellectual property rights.

Conclusion

In conclusion, the update to ACTA represented an important step in the fight against counterfeiting and digital piracy worldwide. However, it raises legitimate concerns regarding the protection of individual rights.
Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is ACTA?
ACTA is an international trade agreement aimed at strengthening the enforcement of intellectual property rights and combating counterfeiting and piracy.

2. Who are the main signatories of ACTA?
The main signatories of ACTA include countries like the United States, Japan, the European Union, and other developed nations.

3. What is the primary goal of ACTA?
The primary goal of ACTA is to promote the harmonization of international rules for better combatting counterfeiting and piracy.

4. Does ACTA affect the rights of European citizens?
No, according to the European Commission, ACTA does not change the rights of European citizens but harmonizes the enforcement rules for intellectual property.

5. What is the next important event regarding ACTA?
The next round of negotiations on ACTA is scheduled for June 2010.

Introduction

New genomic techniques (NGTs) offer revolutionary possibilities for plant modification, enabling more precise, rapid, and targeted genetic changes than traditional selection techniques. These innovations provide solutions for more resilient and sustainable agriculture, addressing global environmental challenges such as disease resistance or climate change adaptation. However, their rise raises significant legal, ethical, and economic questions.

The European Regulation proposal on NGTs, put forward by the European Commission in July 2023, marks a decisive turning point in the regulation of plant biotechnology in Europe. However, a major disagreement between the European Parliament, the European Commission, and the European Council complicates the adoption of this regulation, making it uncertain.

Definition and scope of NGTs

New genomic techniques (NGTs) refer to methods that allow for precise modification of the genome of plants, meaning their genetic organism. Unlike traditional selection techniques, NGTs enable targeted modifications to specific genes. Among these, CRISPR-Cas9 is the most well-known, allowing for precise cutting and modification of DNA segments. This technology paves the way for traits of interest, such as disease resistance or tolerance to extreme climatic conditions. This represents a significant advancement for agriculture and could transform plant production, offering more sustainable solutions in the face of environmental challenges.

The current legal framework: PVR and patents

The Plant Variety Rights (PVR) system

In Europe, seed companies benefit from legal protection through Plant Variety Rights (PVR). This system allows breeders of new varieties to protect their inventions, thereby guaranteeing their remuneration and encouraging innovation. However, an important exception exists: the “breeding exception,” which allows for the creation of new varieties using plants protected by a PVR. This enables seed companies to have some freedom in their innovation work without risking violating the rights of previous breeders.

Coexistence with patents

While in other regions of the world, such as the United States, entire varieties can be patented, Europe remains stricter. According to Article L611-10 of the French Intellectual Property Code, a patent can be granted for an invention that meets the following three conditions: novelty, inventive step, and industrial application. Thus, in France and Europe, patents apply only to specific traits or technical methods of improvement, not to entire varieties. For example, a seed company may have a PVR for a particular variety of tomato, but a patent could be filed for a specific gene that improves the resistance of this variety to a disease.

The impact of the New European Regulation on NGTs

Position of the European Parliament and the Council

The European regulation proposal on NGTs, put forward by the European Commission, finds itself in a politically tense situation. The European Parliament expresses major concerns, particularly about the patentability of plants derived from NGTs. It fears that the proliferation of patents on living elements could stifle innovation and increase costs for farmers. On the other hand, the European Commission and the European Council argue that certain genetic innovations derived from NGTs should be able to be protected by patents in addition to PVRs. This would ensure a return on investment for breeders while ensuring that genetic research can be monetized.

Implications for seed companies and farmers

If the Parliament’s position is adopted, the patentability of genetic traits derived from NGTs would be excluded, limiting seed companies’ ability to generate revenue from innovations brought by these techniques. This could reduce the incentive to invest in genetic research, with direct consequences on the cost of seeds for farmers. On the other hand, a hybrid system (which would include patents on certain traits) would complicate the market and could lead to an increase in seed costs, which farmers would then bear.

Concerns about the patentability of traits from NGTs

Debates on the patentability of traits and varieties

The proposed hybrid system could lead to a complex situation where each genetic trait derived from NGTs is protected by a separate patent. This would increase administrative costs for seed companies and complicate the legal landscape, with specific licenses needing to be negotiated for each trait used. This could stifle innovation, as a seed company might have to negotiate licenses for widely used genetic traits.

Economic implications for the seed market

Risks of increased costs for seed companies and farmers

If the patentability of traits derived from NGTs is allowed, seed companies would need to negotiate licenses to use these traits, leading to additional costs for farmers. These costs would be passed on to the price of seeds, making genetic innovation more expensive and limiting access to new technologies.

Implications for innovation and competition

The introduction of patents on genetic traits could have negative consequences by creating a market where access to innovations is restricted by exclusive licenses. This could reduce competition in the seed industry and limit farmers’ access to innovative seeds, with adverse effects on the efficiency and sustainability of agriculture.

The importance of administrative responsiveness in managing NGT and PVR rights

A recent case concerning the cancellation of the Community Plant Variety Right (CPVR) for the “Melrose” potato variety due to non-payment of annual fees illustrates the challenges of managing intellectual property rights in the seed sector. In the case Romagnoli Fratelli SpA v. Community Plant Variety Office (CPVO), the Court of Justice of the European Union (C-426/24 P) confirmed that the CPVO acted correctly in cancelling the right after several electronic reminders via the MyPVR platform to the holder, who failed to respond within the deadlines.

This situation highlights the importance for seed companies and plant breeders to strictly adhere to administrative procedures and closely monitor electronic communications related to their intellectual property rights.

In the context of NGTs, which bring rapid and complex changes to plant genetics, increased vigilance is necessary to avoid valuable rights being cancelled for administrative reasons, such as non-payment of fees or negligence in managing information.

In this context, just as with plant variety rights, it is essential for rights holders to ensure that their contact information and communication settings are up to date, and that they respond promptly to official notifications sent electronically. This is particularly relevant in the context of the proposed European regulation on NGTs, where complex administrative processes are likely to come into play, and where seed companies may find themselves in a similar situation if their rights are poorly managed or neglected.

Conclusion

The legal framework for NGTs is in the process of evolution, and the debates surrounding the proposed European regulation suggest significant changes for the seed industry. The compromise between patents and PVRs will be crucial for the future of innovation in this area, as well as for costs and competition in the seed market. If the system proposed by the Commission and the European Council is adopted, it could radically transform the sector, with significant consequences for seed companies, farmers, and the sustainability of European agriculture.

Dreyfus & Associates advises its clients in managing complex intellectual property matters, offering tailored advice and comprehensive operational support for full intellectual property protection.

Dreyfus & Associates is partnered with a global network of intellectual property lawyers.

Join us on social media!

Nathalie Dreyfus and the entire Dreyfus team.

FAQ

1. How does the PVR protect plant varieties?

The PVR protects plant varieties by granting their creator exclusive rights to production and commercialization. It allows seed companies to collect royalties from seed sales.

2. What are the issues surrounding the patentability of NGTs?

Patentability of NGTs could protect specific genetic traits but might also lead to market complexity with higher costs for seed companies and farmers.

3. Can NGTs be patented in Europe?

Currently, only technical methods or specific genetic traits derived from NGTs can be patented, not the entire variety.

4. How do seed companies negotiate licenses for genetic traits?

Seed companies negotiate licenses to use patented traits, which can lead to additional costs and complex intellectual property management.

5. What is the implication of the case of the cancellation of a plant variety right?

The case highlights the importance of maintaining compliance with seed protection rules, particularly concerning the payment of protection fees.

Introduction

In an increasingly globalized digital market, Universal Acceptance (UA) has emerged as a fundamental standard for businesses and legal professionals. Universal Acceptance ensures that all domain names and email addresses regardless of script, language, or character length are recognized and supported by all applications, devices, and systems connected to the Internet. This inclusivity is not merely a technical requirement, but a strategic necessity for organizations seeking to expand their digital presence and engage with diverse, multilingual audiences.

Understanding universal acceptance

Universal acceptance is a foundational principle that guarantees the interoperability of all valid domain names and email addresses across the Internet. It includes:

• Internationalized domain names (IDN): domain names that incorporate non-Latin characters, such as Arabic, Chinese, Cyrillic, or Devanagari.
• Email address internationalization (EAI): the ability to use email addresses in local scripts and languages, facilitating communication in native tongues.
• Long top-level domains (gTLDs): domain extensions longer than the traditional two or three characters, such as .photography or .technology.

The introduction of these elements has significantly diversified the digital landscape. However, many legacy systems still assume that domain names and email addresses are limited to ASCII characters and short TLDs, leading to compatibility issues and excluding non-Latin scripts from the digital ecosystem.

Benefits of universal acceptance for businesses

For globally oriented businesses, adopting universal acceptance is not optional, it is essential. Key benefits include:

• Enhanced user experience: Customers can interact with digital platforms in their native scripts, building trust and engagement.
• Market expansion: By supporting a wider range of languages and scripts, businesses can access previously untapped markets, driving growth and innovation.
• Legal compliance: In jurisdictions where digital inclusivity is mandatory, UA compliance is crucial for meeting regulatory requirements.
• Brand protection: UA-compatible infrastructure safeguards brand identity across diverse linguistic and cultural contexts.

Legal implications and considerations

From a legal perspective, universal acceptance has significant implications:

• Intellectual property rights: Protecting trademarks and domain names across multiple scripts requires a deep understanding of UA standards and their application.
• Contractual obligations: Agreements with clients, partners, and service providers may require UA compliance to ensure seamless digital interactions.
• Dispute Resolution: Legal disputes related to domain name registration in non-Latin scripts may require specialized knowledge of the principles of Universal Acceptance and their application.

These extrajudicial procedures (such as the UDRP, ADR, and Syreli procedures) require technical expertise to address issues related to Unicode characters and the compatibility of domain name management systems. A specialized approach is essential to effectively resolve these disputes.

Legal professionals must stay informed about developments in UA to provide accurate advice and effectively safeguard clients’ digital interests.

The role of ICANN and available resources

The Internet Corporation for assigned names and numbers (ICANN) leads global efforts to promote Universal Acceptance through several initiatives:

• Universal acceptance steering group (UASG): a community-driven initiative aimed at raising awareness and facilitating UA adoption.
• Universal acceptance training programs: ICANN offers resources and training to help organizations understand and implement UA principles effectively.
• UA readiness reports: annual assessments that provide a global overview of UA adoption and highlight areas for improvement.

Steps to achieve universal acceptance readiness

Organizations can take several measures to ensure compliance with Universal Acceptance:

• System evaluation: Review existing systems and applications for compatibility with IDN and EAI.
• Staff training: Equip technical teams with the knowledge and skills needed to implement UA standards.
• Internal policies: Develop internal policies to promote and enforce UA compliance.
• Stakeholder engagement: Collaborate with industry groups, legal advisors, and regulators to stay updated on UA developments and best practices.

Conclusion

Universal Acceptance is a key element in the evolution toward a truly inclusive and accessible Internet. For businesses and legal professionals, adopting Universal Acceptance standards is not merely a technical update but a strategic decision aligned with global digital trends and regulatory expectations. By embracing Universal Acceptance, organizations can improve user experience, expand their reach into new markets, and ensure legal compliance in an increasingly diverse digital landscape.

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

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is Universal Acceptance?
It is the recognition and support of all domain names and email addresses, regardless of script or length.

2. Why is it important for businesses?
It enables access to international markets and improves user experience.

3. Which types of domain names are concerned?
Internationalized Domain Names (IDNs) and long top-level domains (gTLDs).

4. Does Universal Acceptance have legal implications?
Yes, it affects trademark protection and contractual obligations related to domains and emails.

5. How can organizations prepare for Universal Acceptance?
By evaluating systems, training staff, and implementing internal policies aligned with UA standards.

6. What domain name disputes are related to Universal Acceptance?

They often involve cybersquatting, trademark infringement, or domain registrations in non-Latin scripts, requiring expertise in Universal Acceptance.

Introduction: why protect an innovation?

Filing a patent is a decisive step in securing a competitive advantage and maximizing returns on research and development investments. In today’s globalized context, it is crucial to understand the French national procedure, as well as the European and international mechanisms such as the PCT (Patent Cooperation Treaty).

Filing a patent in France: steps, costs and ownership

The procedure before the INPI

In France, the patent application is filed with the Institut National de la Propriété Industrielle (INPI). The application must contain a technical description, claims, an abstract, and, where relevant, drawings.
After a formal examination, the European Patent Office (EPO) issues a search report, which is then forwarded to the INPI. The applicant may amend the claims before the INPI examines the patentability criteria:

• Novelty: the invention must not already exist in the prior art.
• Inventive step: the invention must not be obvious in light of existing technology.
• Industrial applicability: the invention must be capable of being used in industry or agriculture.

If these requirements are met, the patent is granted and published.

Who owns the patent?

As a general principle, the inventor is the patent holder. However, in the case of employee inventions made in the course of employment, the patent belongs to the employer, pursuant to Articles L.611-6 and L.611-7 of the French Intellectual Property Code. Ownership may also be transferred or shared by contract.

Costs and professional fees

Official fees include:

• filing fee: approx. €26,
• search report: €520,
• annual renewal fees starting in the 2nd year: €38, gradually increasing.

In practice, taking into account the drafting of the application, correspondence, and strategy, the overall cost ranges between €4,000 and €8,000.

The priority period

A French filing establishes a 12-month priority right (Paris Convention). During this time, the applicant may extend protection abroad while retaining the original filing date.

Opposition and duration of protection

The opposition procedure

Since 2020, any third party may file an opposition before the INPI against a granted patent, on grounds such as lack of novelty, inventive step, or clarity. This administrative procedure is faster and less costly than court litigation.

Duration of protection

The duration of a French patent is 20 years from the filing date, subject to the payment of annual renewal fees. For pharmaceuticals and plant protection products, a Supplementary Protection Certificate (SPC) may extend protection by up to 5 additional years.

Comparison between national patent, European patent and PCT

The French patent

The national patent is limited to the French territory. It is a quick and cost-effective option for protecting an invention in the domestic market.

The European patent (EPO procedure)

The application is filed with the European Patent Office (EPO). After a centralized examination, the patent must be validated country by country in the designated states. The European patent thus becomes a bundle of national rights.

The PCT and its strategic role

The Patent Cooperation Treaty (PCT) allows applicants to file a single international application covering more than 150 countries. It does not result in a global patent but extends the decision period to 30 or 31 months. This procedure provides valuable time to assess markets, seek investors, and plan a strategy before entering the national or regional phases.

Strategic impacts to anticipate

Market expansion

Through the PCT and the European patent, companies can progressively expand their protection according to commercial opportunities.

Anticipating litigation

A carefully structured patent portfolio strengthens the company’s capacity to act against infringers and to secure business partnerships.

Enhancing company value

Patents are intangible assets that increase corporate credibility, particularly in fundraising, licensing, or acquisition operations.

Conclusion

The French patent filing procedure, combined with the European and PCT systems, provides a powerful framework for innovation protection. By mastering costs, deadlines, and strategic options, companies can optimize the value of their creations and strengthen their competitiveness.

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

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is the cost of filing a patent in France?
Official fees are modest, but including drafting and professional support, the overall cost ranges from €4,000 to €8,000.

2. How long does a French patent last?
20 years from filing, subject to annual renewal fees.

3. What is the deadline to extend a French patent abroad?
12 months (priority right).

4. Is the PCT a global patent?
No, it is an international procedure that centralizes and defers the process.

5. Who owns an invention created by an employee?
As a rule, the employer owns the patent, pursuant to the Intellectual Property Code.

Introduction

In the luxury perfume industry, each fragrance represents much more than just a product: it embodies the identity of a brand, the result of unique craftsmanship, and a sensory promise. However, the rise of “dupes“, affordable imitations of high-end perfumes, challenges the legal protection of olfactory creations. This article explores the legal challenges posed by dupes and the strategies brands can use to defend their creations.

Dupes: A threat to brand integrity

Dupes, often marketed as “inspired by” famous perfumes, seek to circumvent legal protections. These products imitate fragrances, packaging, and sometimes even names, misleading consumers without explicitly infringing on intellectual property rights. For instance, brands like Dossier offer alternatives to perfumes such as Le Labo Santal 33 or Gucci Bloom, providing a similar olfactory experience at a fraction of the price.

1. Threat to Intellectual Property Rights of brands

Dupes dilute the value of brands by imitating their products at a lower cost, which harms their exclusivity and prestige. They hijack the image of well-known brands, thereby reducing their market impact. Additionally, unfair competition hinders innovation in the industry by exploiting creations without investing in originality.

2. Risks for consumers

Dupes pose quality and safety risks because they do not adhere to the standards of luxury perfumes. Their composition may be of lower quality, or even dangerous to health. By misleading consumers, these imitations also distort the perception of the true value of authentic products, creating confusion in the minds of consumers.

3. Unfair competition and distorted market

Dupes take advantage of the efforts of established brands without respecting their rights, creating unfair competition. This situation harms market transparency, making it harder for consumers to distinguish between authentic products and imitations, destabilizing the industry as a whole.

The L’Oréal v Bellure case (2009) perfectly illustrates this issue. In this case, the defendant produced perfume dupes and distributed them to retailers with a product list referencing the names of L’Oréal’s well-known fragrances. The European Court of Justice ruled that this behavior constituted unfair conduct equivalent to trademark infringement, as it exploited the reputation of L’Oréal to attract consumers without financial compensation. The use of well-known brand names in product lists, even without deceiving consumers about the origin, was considered unlawful comparative advertising.

This decision highlights the dangers of dupes, which, by imitating established brands, distort competition and threaten market clarity, contributing to consumer confusion and the erosion of the differentiation between authentic products and imitations.

The limits of legal protection for perfumes

1. Odor: A difficult-to-protect intangible property

Unlike other sensory creations, the odor of a perfume is difficult to protect. Copyright law, for example, requires a graphic representation, which is impossible for a fragrance. Additionally, the subjective nature of olfactory perception complicates the precise identification necessary for legal protection.

2. Olfactory trademarks: A complex registration process

Registering olfactory trademarks remains a major challenge. The primary difficulty lies in the precise description of an odor, which remains a subjective sensation that is hard to capture objectively. Moreover, in order for an olfactory trademark to be registered, it must demonstrate distinctiveness, meaning it must be proven that it allows consumers to identify the commercial origin of a product.

3. Trade secrets: A strategic alternative

The chemical formula of a perfume, although valuable, can be protected as a trade secret. This protection is based on:

• Confidentiality
• Absence of public disclosure
• Appropriate security measures

However, this strategy presents risks, especially in cases of information leakage or employee poaching.

Combating dupes: Strategies and actions

1. Active market surveillance

Brands must implement continuous monitoring to detect imitations of their products. This includes surveillance of online platforms, marketplaces, and physical retail points.

2. Tailored legal actions

When facing dupes, legal actions must be targeted. Sending cease-and-desist letters can be an initial step. In case of recidivism, more formal judicial procedures, such as actions for unfair competition or parasitism, may be considered.

3. Collaboration with Intellectual Property experts

Brands should collaborate with intellectual property experts to develop effective protection strategies. This includes drafting solid contracts, setting up internal confidentiality procedures, and training staff on intellectual property matters.

Conclusion

Fighting dupes in the perfume industry requires a proactive, multidimensional approach. While current legal protections have limitations, well-tailored strategies—combining market surveillance, targeted legal actions, and collaboration with experts—can help brands preserve the integrity of their olfactory creations.

Dreyfus & Associés is partnered with a global network of intellectual property lawyers.

Nathalie Dreyfus, with the help of the entire Dreyfus team

FAQ

1. What is a “dupe” in perfumery?
A “dupe” is an imitation of a luxury perfume, often sold at a lower price, that attempts to replicate the scent, packaging, and sometimes the name of a famous fragrance without guaranteeing the same level of quality.

2. Why is the odor of a perfume difficult to protect legally?
Odor cannot be protected by copyright because it is a subjective sensation and cannot be represented graphically in a precise way, which prevents stable identification.

3. How can a brand protect its fragrances from dupes?
Brands can protect their olfactory creations by using trade secrets to protect the formula and by actively monitoring the market for imitations.

4. Is it possible to protect a perfume formula?
Yes, the formula of a perfume can be protected as a trade secret, provided strict security measures are in place to ensure confidentiality.

5. Can the packaging of a perfume be protected by copyright?
Yes, the design of a perfume’s packaging can be protected by copyright if it presents original characteristics and is recognized as an artistic work.

Introduction

In a constantly evolving digital environment, the protection of intellectual property and the safeguarding of individual rights online have become essential. In the United States, the fight against copyright infringement has relied for more than twenty years on the Digital Millennium Copyright Act (DMCA). However, with the rise of new threats, particularly linked to deepfakes and the non-consensual dissemination of intimate images, a new piece of legislation has emerged: the Take It Down Act.

This article examines the scope, functioning, and impact of this law, comparing it with the DMCA to better understand their complementarity.

What is the take it down act?

The take it down act is a recent US legislative initiative designed to allow the removal of intimate images of minors and non-consensual sexual content, including those artificially generated through deepfakes.

Unlike traditional copyright-centered legislation, this Act aims to directly protect victims of image-based abuse. Online platforms are now required to establish accessible, fast, and effective takedown procedures.

This mechanism reflects a strong societal priority: safeguarding the dignity and privacy of individuals in an age of algorithmic manipulation.

The DMCA: origins, objectives, and scope

Why was the DMCA adopted?

Enacted in 1998, the Digital Millennium Copyright Act is the cornerstone of online copyright enforcement in the United States. It was designed to align US law with the WIPO Internet treaties and to adapt legislation to the growing use of the Internet.

Its primary purpose is to combat large-scale piracy, while establishing a safe harbor regime for online service providers that comply with takedown requests.

How does it work in practice?

The DMCA allows rights holders to:

• Send a takedown notice to hosting providers and platforms;
• Obtain the prompt removal of infringing content without prior court intervention;
• Benefit from deterrent sanctions against persistent infringers.

Nevertheless, it has been criticized for its abuses, with some parties misusing it to censor legitimate content.

How does take It down Act differ from the DMCA?

A targeted response to deepfakes and intimate images

Whereas the DMCA applies to copyright-protected works, the Take It Down Act addresses personal and intimate content over which victims may not hold intellectual property rights. It therefore fills a significant legal gap.

The obligations under the Act include:

• Implementing verification procedures for requests made by minors or adults;
• Complying with short response deadlines for removals;
• Ensuring greater transparency in complaint mechanisms.

New obligations for platforms

Social networks, hosting providers, and specialized websites are subject to:

• Reinforced compliance standards;
• Increased liability in the event of inaction;
• Financial and reputational risks in case of non-compliance.

This evolution marks a major shift in responsibility towards digital intermediaries.

Strategic consequences for rights holders and businesses

Risks, compliance, and reputation management

For companies, particularly in the technology, cultural, and luxury sectors, both the DMCA and Take It Down Act raise significant challenges:

• Enhanced monitoring of platforms to detect unauthorized use;
• Anticipation of identity and image-related infringements;
• International cooperation to address the cross-border nature of online violations.

The role of specialized legal counsel

A specialized law firm can provide:

• Monitoring and detection services to identify online infringements;
• Drafting and transmission of notices in line with applicable frameworks;
• Strategic advice to mitigate risks and protect brand reputation.

Such support enables businesses to strengthen their digital resilience and secure their intangible assets.

Conclusion

The take it down act does not replace the DMCA, but rather serves as a necessary complement. While the DMCA remains central in the fight against copyright infringement, The take it down Act provides a legal response adapted to abuses linked to intimate images and deepfakes.

Companies must now consider a comprehensive compliance strategy, combining intellectual property protection with the defense of personal rights.

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

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is the take it down act?
A US law requiring the removal of non-consensual personal images, including AI-generated content.

2. How does the take it down act differ from the DMCA?
The DMCA protects copyright, while Take It Down Act addresses abuse of personal and private images.

3. Are online platforms legally required to comply?
Yes, they must implement effective mechanisms or face sanctions.

4. Can the take it down act be used to protect trademarks?
No. Trademarks and copyright issues fall under the DMCA and traditional IP enforcement.

5. Is the DMCA still relevant?
Yes, it remains the primary tool for combating online copyright infringement.

Introduction

The Internet’s naming system is expanding again. After the landmark 2012 round of new gTLD applications (which saw more than 1,900 applications and over 1,200 delegated domains), the Internet Corporation for Assigned Names and Numbers (ICANN) is preparing to open the Next Round of the New generic Top-Level Domain (New gTLD) Program in April 2026.

Much has changed since 2012: the rules, the support mechanisms, the financial model, and the governance structure. For businesses, communities, and organizations considering applying for their own top-level domain (TLD), preparation today is essential.

Key changes from 2012 to the 2026 round

• Updated Applicant Guidebook (AGB)

In 2012, the Applicant Guidebook (AGB) (will add link) was introduced for the first time, with a steep learning curve.

For the 2026 round, ICANN has committed to publishing a new version of the AGB in mid-2025. This updated guide clarifies evaluation criteria, dispute procedures, and timelines.

• Applicant Support Program (ASP)

The Applicant Support Program (ASP) is already open and accepting applications as of November 2024, well before the main round. The ASP provides financial aid and non-financial assistance to applicants from developing regions or with limited resources. Several applications have already been submitted under this track, showing growing interest from communities that were largely absent in 2012.

• Registry Service Provider (RSP) Evaluation Program

In 2012, every applicant’s backend provider was evaluated separately, creating redundancies.
The RSP Evaluation Program, which also opened in November 2024, is now active. Providers can undergo one pre-evaluation, and applicants can then choose from this pool of approved providers.
This reduces duplication, speeds up the process, and provides greater assurance to ICANN and applicants alike.

• Governance, planning, and budget

The 2012 round faced criticism for backlogs and unclear governance. In the Next Round, ICANN is implementing a multi-year plan, with four workstreams and nine projects, alongside structured risk management. The ICANN Board has allocated $70 million for implementation, of which $45 million has already been deployed.

• Internationalized Domain Names (IDN) and Root Zone Label Rules

In 2012, IDN applications were allowed but not uniformly regulated. The Root Zone Label Generation Rules (RZ-LGR) Version 6, which defines valid top-level IDN labels, has been updated to include the Thaana script, representing the 27th script in the RZ-LGR. This expansion allows for the introduction of new IDN gTLDs in previously unsupported scripts. Communities continue to define rules for additional scripts to be adopted.

• Application fees

In 2012, the application fee was 185,000 USD. For the 2026 round, the expected fee is around 227,000 USD. However, there will be various additional fees applicable to certain types of applications, while objections, challenges and appeals will require additional fees. In order to keep the price as stable as possible ICANN has put in place the Registry Service Provider Evaluation Program and the re-ordering of the evaluation timeline to deal with contention resolutions early in the process.

How to prepare for the 2026 application window

• Study the framework and monitor updates

The 2012 AGB remains a valuable reference. The new AGB draft is due in 2025,  applicants should watch for its release and adjust their strategy accordingly.

• Engage with support programs now

• Applicant Support Program (ASP): Already open since November 2024 and currently receiving applications.
• RSP Evaluation Program: Active since November 2024. Applicants should ensure that their chosen backend provider is pre-evaluated.

• Build a robust application strategy

Applicants must demonstrate:

A clear governance model for the proposed TLD.

Technical and operational capacity (with or without an RSP).

Financial sustainability.

Public interest commitments where relevant.

• Coordinate with language or community groups

For IDN applications, confirm that your script is covered by the RZ-LGR. If not, engage early with linguistic communities.

• Assemble your team and advisors

Legal, financial, and technical expertise are critical. Many applicants are already turning to specialized consultants and law firms to prepare complete applications.

• Stay informed

ICANN continues to release regular status updates at each public meeting. These documents are essential for aligning with evolving requirements and timelines.

What’s different for brand owners in 2026

The 2012 round was the first time businesses could apply for “.brand” top-level domains (TLDs). Many companies hesitated, viewing the model as experimental. Today, the situation has shifted significantly.

• .Brand registries are proven: More than 500 brands now operate their own TLDs, such as .bmw .microsoft, .fox, .amazon, and .sky. Lessons learned over the past decade show clear branding and security benefits, while also clarifying operational challenges.
• Simplified technical path: In 2012, brand owners had to secure bespoke backend technical evaluations. With the new Registry Service Provider (RSP) Evaluation Program, companies can rely on pre-approved providers, lowering technical and financial barriers.
• Predictable compliance: ICANN now enforces Public Interest Commitments and registry obligations with a decade of experience. Brand TLD owners can expect more consistency, but also tighter oversight.
• Transparent financial model: Fees are higher (expected around USD 227,000) but clearer. Ongoing costs are better defined, enabling more accurate long-term planning.
• Rights Protection Mechanisms (RPMs) are mature: The Trademark Clearinghouse, Sunrise, and dispute systems that debuted in 2012 are now well established. This maturity reduces risk for brand TLDs and provides stronger enforcement tools.
• International reach with IDNs: Non-Latin scripts (Chinese, Arabic, Cyrillic, etc.) can now be applied for under the Root Zone Label Generation Rules. Global brands gain more opportunities for consistent identity across markets.

For brand owners, the Next Round represents a shift from “exploration” to strategic necessity. Owning a TLD is increasingly tied to digital trust, consumer engagement, and long-term sovereignty over online identity.

Conclusion

The Next Round of new gTLDs, opening in April 2026, is a more structured, better funded, and more inclusive process than was the 2012 round. With the Applicant Support Program and RSP Evaluation Program already underway the window for early preparation is open now.

The time to act is now. For businesses, communities, and innovators, owning a TLD is not only about branding, but also about digital trust, sovereignty, and long-term visibility.

Dreyfus & Associates works in partnership with a global network of Intellectual Property law firms.

Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

What is the New gTLD Program and why is it important in 2026?

The New gTLD Program allows businesses, communities, and organizations to apply for their own top-level domain. The 2026 round is more structured, better funded, and more inclusive than the 2012 round, making preparation essential.

How much does it cost to apply for a new gTLD in 2026?

The expected application fee is around USD 227,000, higher than the USD 185,000 charged in 2012. Additional fees may apply for objections, challenges, or appeals.

What support programs are available for applicants?

Two programs are already active: the Applicant Support Program (ASP), which provides financial and technical aid for applicants from developing regions, and the Registry Service Provider (RSP) Evaluation Program, which pre-approves backend providers.

What opportunities exist for brand owners?

Over 500 brands (.bmw, .microsoft, .amazon) already operate their own registries. In 2026, brand owners benefit from simplified technical requirements, predictable compliance, mature rights protection mechanisms, and new opportunities with IDNs.

How can companies prepare for the 2026 application window?

Preparation should include studying the upcoming Applicant Guidebook, engaging with ASP and RSP programs, building a robust governance and financial model, working with advisors, and monitoring ICANN updates.

Introduction

Before launching a brand, a clearance search is indispensable. It verifies the existence of prior rights (trademarks, trade names, domain names, unregistered uses) that could block registration or prohibit the use of the mark. In France, in the European Union, and more generally worldwide, this verification is the responsibility of the applicant.

Overlooking this step may have serious consequences: opposition proceedings, infringement litigation, or even the obligation to rebrand after considerable marketing investments. Conversely, a well-conducted search not only secures the filing but also anticipates disputes and enables smooth negotiations with prior right holders.

Why is a clearance search indispensable?

Definition and legal imperative (France and the European Union)

A clearance search aims to identify existing signs likely to prevent registration. In France and for EU trademarks, the trademark offices (INPI and EUIPO) do not examine potential conflicts, since this analysis lies with the applicant. In international trademark procedures, WIPO merely transmits the application to the designated offices.

Practical stakes and concrete risks

Without a clearance search, you risk:

• Opposition before the trademark offices once the application is published;
• Cancellation actions after registration;
• Infringement actions with damages once the mark is on the market;
• Prohibition of use and costly rebranding;
• Delayed launches and loss of competitive advantage.

By contrast, a sound search assesses the likelihood of confusion, anticipates objections, and optimises the scope of goods and services.

Comparative frameworks: United States, France and the European Union

An instructive U.S. example: the Huella case (TTAB, May 7, 2025)

In the United States, the USPTO refuses registration where there is a “likelihood of confusion” between signs and the goods and services are related. This is one of the most common grounds for refusal. Indeed, the USPTO carries out its own clearance search during examination.

In the Huella case of 7 May 2025, the registration of a mark for leather bags (Class 18) was refused because of an earlier registration for cosmetics (Class 3). The Board found:

• extensive evidence of cross-use by third-party brands (cosmetics and bags marketed under the same mark);
• an inherent connection, since leather bags includes cosmetic cases;
• no limitations on distribution channels in the identification, which implied overlapping trade channels and consumer bases.

The refusal was therefore upheld. Even if classes differ, goods may still be deemed related. A clearance search must therefore cover not only the intended classes but also related ones, taking into account distribution channels.

French and European references (INPI, EUIPO, WIPO)

In France, searches rely on INPI’s database; at the EU level, on EUIPO; for global strategy, WIPO is essential. These tools help identify prior signs, but interpretation always requires legal expertise, considering confusion risks, market practice, and possible notoriety of existing marks. Engaging a specialist is strongly advised, as practitioners have access to enhanced databases and can deliver an optimal risk assessment.

Best practices for comprehensive and strategic searches

Key steps not to be overlooked

1. Define precisely the sign to be protected (word mark, logo, variations).
2. Identify relevant classes and related classes under the Nice Classification.
3. Conduct searches among registered trademarks in France, the EU, and, if expansion is envisaged, in the U.S. and other countries of manufacture, marketing, or projection.
4. Review the results with legal analysis (visual, phonetic, conceptual)while considering recent case law.
5. Assess the likelihood of confusion in light of goods and services and the relevant public.
6. Determine the appropriate strategy: filing, adapting the mark, coexistence agreement, or abandoning the project.

Complementary searches to be conducted simultaneously

Beyond registered trademarks, it is vital to check:

• Corporate names and trade names (Infogreffe, SIRENE).
• Domain names and use on social networks.
• Copyrights and/or designs.

These elements may present legal obstacles just as serious as a registered trademark.

Conclusion and call to action

A clearance search is the first safeguard against legal uncertainty. It enables confident investment, avoids costly disputes, and strengthens brand strategy. This indispensable step requires the expertise of a professional able to “read between the lines” and measure the commercial impact of existing signs.

Dreyfus & Associés works in partnership with a global network of intellectual property attorneys.
Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

How does a clearance search differ from a simple Google search?

An online search does not cover official registers and cannot assess legal risk. INPI, EUIPO, and WIPO databases are indispensable. Legal expertise is required to interpret results and to propose a clearance strategy if conflicts arise.

Is a search mandatory before filing?

No, but it is strongly recommended: failing to conduct one transfers the entire legal risk to the applicant and creates a permanent threat. At any time—even years after launch—you may face infringement claims and substantial damages. Moreover, rebranding costs after years of investment may be enormous.

Do searches limited to the exact class of goods/services suffice to avoid conflicts?

Not always. Case law shows that market connections (e.g. fashion and cosmetics) can establish a likelihood of confusion. This is why the involvement of an IP specialist is essential to determine the appropriate scope of the search.

Can a mark be filed despite a similar prior right?

Yes, provided that consent is obtained, a coexistence agreement is signed, or the goods/services are restricted.

Can an unregistered mark block an application?

Yes. If it is well-known or significantly used, it can be opposed to a filing in France. In addition, “common law” rights may arise through use, notably in the United Kingdom, the United States, and Canada.