The future of ICANN represents a strategic issue for the entire global digital ecosystem. Entrusted with coordinating the Internet’s unique identifiers, including domain names and IP addresses, the Internet Corporation for Assigned Names and Numbers (ICANN) occupies a singular institutional position: ensuring the stability, security, and interoperability of the Domain Name System (DNS).
The landscape of Internet governance is shaped by several converging dynamics.: the expansion of new generic top-level domains (gTLDs), international debates surrounding digital governance, the emergence of decentralized technologies, and the evolving framework of global digital regulation.
For corporations, trademark holders, and technology stakeholders, understanding these developments is essential in order to anticipate the evolution of domain name law and global Internet governance frameworks.
Why is the future of ICANN strategic for global internet governance?
The future trajectory of ICANN extends far beyond the mere technical administration of domain names. The organization plays a fundamental role in the global coordination of Internet infrastructure.
In practical terms, ICANN is responsible for several critical functions, including:
This architecture ensures the uniqueness and interoperability of digital identifiers, which constitutes an essential condition for the proper functioning of the global Internet.
In a context marked by the rise of digital sovereignty policies, the growing prevalence of cyber threats, and the emergence of decentralized identification systems, ICANN’s mission assumes an increasingly strategic dimension. Its role is becoming central to ensuring the stability and coordination of the domain name system within a rapidly evolving digital environment.
ICANN’s major strategic directions toward 2030
In order to anticipate the transformations affecting the Internet ecosystem, ICANN has adopted a Strategic Plan covering the period 2026–2030. This framework is built around several structural priorities designed to ensure the long-term sustainability of the domain name system.
Preserving a single and interoperable internet
One of ICANN’s foundational principles is the preservation of a single global Internet, thereby preventing technical fragmentation.
This objective relies in particular on the centralized coordination of the Domain Name System (DNS) root, which ensures the universal compatibility of domain names on a global scale, as well as on close cooperation among the various technical operators and stakeholders within the Internet ecosystem.
In this context, the potential fragmentation of the Internet sometimes referred to as the “splinternet” currently as one of the most significant risks to the global digital ecosystem.
Strengthening DNS security and resilience
The DNS constitutes a critical global infrastructure. Any compromise of this system could result in significant disruptions to the accessibility of digital services.
The application window is expected to open on 30 April 2026, marking the first major expansion of the DNS since the 2012 round.
The initiative pursues several structural objectives:
Increasing competition in the domain name space
Promoting linguistic and cultural diversity
Stimulating digital innovation
Creating new branding opportunities
Registry Service Provider evaluation program (RSP)
In practice, the vast majority of new gTLD applicants do not manage the technical infrastructure of the registry themselves. They rely on technical registry operators, known as Registry Service Providers (RSPs).
As part of the next cycle, ICANN has introduced a major innovation: the implementation of a program to evaluate technical registry operators.
This mechanism aims to:
Assess the technical capabilities of registry operators prior to application submission,
Ensure the technical stability of the DNS,
Reduce operational risks associated with the introduction of new TLDs.
This approach reflects institutional learning derived from the 2012 expansion round.
Applicant Support Program (ASP)
In order to promote more balanced participation in the new gTLD program, ICANN has established the Applicant Support Program (ASP).
This initiative aims to facilitate access to the application process for certain stakeholders by providing, in particular, reduced application fees, technical and legal assistance, as well as access to pro bono expertise. Its objective is to enable broader participation by entities from developing countries, non-profit organizations, and communities that have historically been underrepresented within the Internet governance ecosystem.
Governance documents of the New gTLD Program
The Applicant Guidebook (AGB) and the Base Registry Agreement constitute two central governance documents within the framework of the new gTLD program. Developed through ICANN’s bottom-up decision-making process, they define both the requirements applicable to applicants seeking to operate a gTLD and the contractual obligations imposed on registry operators once an application has been approved. As the implementation of the program progresses, these documents continue to be refined and are subject to public consultations in order to further clarify and improve their provisions.
The multistakeholder model and international debates on internet governance
Unlike a purely intergovernmental governance framework, this model relies on the simultaneous participation of multiple categories of stakeholders, including governments, the private sector, civil society, the technical community, and academia. This approach seeks to ensure a more open and inclusive form of Internet governance, based on cooperation among the various stakeholders within the digital ecosystem.
The conclusions of this international summit emphasize:
The necessity of open international cooperation,
The importance of stakeholder participation,
The need for transparent and inclusive governance.
For ICANN, these outcomes reinforce the institutional legitimacy of its governance framework.
Technological developments shaping the future of the DNS
ICANN’s evolution cannot be analyzed without considering the rapid expansion of digital technologies.
The emergence of decentralized naming systems
The evolution of ICANN cannot be analyzed without taking into account the rapid development of digital technologies. Among the most significant transformations is the emergence of decentralized naming systems, such as blockchain-based domain names, decentralized digital identity solutions, and certain architectures associated with Web3.0.
These technologies seek to introduce alternative models for the management and resolution of Internet identifiers by reducing reliance on centralized coordinating authorities.
These solutions seek to reduce reliance on centralized authorities. However, they raise several critical questions:
Compatibility with the global Internet architecture,
Security of digital identifiers,
Technical interoperability.
ICANN continues to monitor these developments closely while maintaining its priority on preserving the integrity of the global DNS.
Interactions with international digital regulation
Public policy frameworks also influence the evolution of the domain name ecosystem.
Among the legal frameworks indirectly influencing the DNS ecosystem are the General Data Protection Regulation (GDPR), cybersecurity legislation, and the growing number of digital sovereignty policies adopted by various States.
These regulatory developments require ICANN to strike a delicate balance between compliance with applicable legal requirements, the preservation of its technical neutrality, and the maintenance of the operational stability of the domain name system.
Conclusion
The future of ICANN extends beyond the expansion of domain names. It also depends on the organization’s ability to address several key challenges, including preserving the stability of the global DNS, safeguarding the multistakeholder model of Internet governance, adapting to technological innovations, and maintaining international trust in the mechanisms governing the Internet.
In an increasingly complex digital environment, ICANN remains a cornerstone of the global Internet infrastructure. Firms that anticipate these developments will be better positioned to secure their digital assets and leverage the opportunities created by the expansion of the domain name system.
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.
1. Why does the expansion of gTLDs generate debate? The expansion of the domain name space raises several concerns, including trademark protection, the management of domain name abuse and cybersquatting, the technical stability of the DNS, and the economic implications for the domain name market. Some stakeholders believe that the proliferation of extensions may dilute the value of traditional domain names.
2. Could governments eventually control ICANN directly? This possibility is regularly discussed in international policy debates. Certain states advocate for a more intergovernmental governance model, particularly through institutions such as the International Telecommunication Union (ITU). However, such a shift could lead to increased politicization of Internet governance, which remains a concern for many actors within the technical community.
3. What is the difference between a ccTLD and a gTLD? Top-level domains are divided into two principal categories: ccTLDs (country-code top-level domains), which are national extensions such as .fr, .de, or .jp. and gTLDs (generic top-level domains), which include extensions such as .com, .org, or .tech., ccTLDs are generally administered by national authorities or designated local organizations.
4. What is the DNSSEC protocol? The Domain Name System Security Extensions (DNSSEC) protocol enables the authentication of DNS responses. It prevents certain attacks designed to redirect users toward fraudulent websites and is widely considered a cornerstone of global DNS security.
5. What is the RDAP protocol? The Registration Data Access Protocol (RDAP) is the successor to the traditional Whois system. It provides structured data access, enhanced security, and improved compatibility with data protection regulations.
The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.
Registering a surname as a trademark is a common practice in business. However, this strategy may give rise to disputes when the surname is already used by other economic actors.
The Supreme Court recalls an essential principle: the mere intention to protect a family name is not sufficient, by itself, to exclude bad faith on the part of the applicant. Courts must verify whether the filing reflects a genuine intention to use the trademark commercially and whether it was not carried out with the purpose of depriving a third party of a sign necessary for its business activity.
This decision forms part of established case law aimed at preventing the misuse of trademark law for anti-competitive purposes.
Registering a surname as a trademark: an accepted principle
French and European trademark law does not prohibit the registration of a surname as a trademark. A family name may constitute a distinctive sign provided it satisfies the usual validity requirements.
This practice is particularly widespread. Some of the most famous trademarks are based on surnames that have become distinctive identifiers of goods or services. A surname can therefore represent a strategic asset for a company, as it enables consumers to identify the commercial origin of a product while conveying a certain reputation.
However, this possibility may also be used opportunistically. In certain cases, the filing of a surname aims less at protecting a business activity than at preventing a third party from using the name or capturing the reputation associated with it. It is precisely in this context that the notion of bad faith plays a central role.
Background of the case: a family dispute over a surname
In this case, two brothers were carrying out competing activities in the carpentry sector. One of them had for several years operated a business using the trade name “Huynen Fermetures”, composed of the surname “Huynen” combined with the term “Fermetures”.
His brother managed another company bearing the same surname and had filed several trademarks incorporating this sign, including the trademark “Huynen Fermetures”.
Subsequently, the business assets operating under this trade name were transferred to a competing company. The latter continued to use the sign “Huynen Fermetures” in the course of its activities. The company owning the trademarks then initiated legal proceedings against it, alleging trademark infringement and acts of unfair competition.
In response, the defendant company challenged the validity of the trademarks and requested their transfer in its favor, arguing that the trademarks had been filed fraudulently and therefore in bad faith.
The Court of Appeal rejected this argument. The judges held that the filing of a trademark containing a surname could legitimately be motivated by the intention to protect one’s own family name. According to them, this circumstance alone was sufficient to rule out any fraudulent intent in the trademark filing.
The ruling of the French Supreme Court: judicial assessment of bad faith
The French Supreme Court partially overturned the decision of the Court of Appeal and criticized the lower court for failing to properly examine the issue of bad faith. More specifically, the Supreme Court held that the appellate judges should have examined several essential factors.
The sign filed did not consist solely of the surname
The disputed trademark did not merely consist of the surname “Huynen”, but also included the term “Fermetures”, which corresponded exactly to the trade name already used by another company.
The Supreme Court therefore considered that the lower court should have examined whether this choice revealed an intention to appropriate a sign already used in the market.
Knowledge of the prior use of the sign
The Supreme Court also emphasized that the filing company was aware of the existence of this sign in the course of trade.
Knowledge of the prior use of a sign by a third party constitutes an important indicator in the assessment of bad faith.
Failure to investigate the intention to use the trademark
The judgment particularly stresses a central issue: the lower courts should have verified whether the applicant genuinely intended to use the trademark.
The Court recalls that a filing may be considered fraudulent when:
• the applicant has never used the trademark,
• or when the applicant had no intention of using it at the time of filing.
Characterisation of bad faith in the absence of a specifically identified third party
Finally, the Court clarifies that bad faith does not necessarily require the applicant to have intended to harm a specific person. It is sufficient that the trademark filing was made for a purpose contrary to honest commercial practices, for example to obtain an unjustified monopoly over a sign.
The characterization of bad faith therefore becomes a decisive element in determining whether the action is admissible.
A trademark filing made without a genuine intention to use the mark may be considered contrary to the essential function of a trademark.
Conclusion
This ruling constitutes an important decision in trademark law. The French Supreme Court reiterates that registering a surname as a trademark does not exclude the possibility of bad faith. Courts must conduct a concrete analysis of the circumstances surrounding the filing, particularly by examining whether there was a genuine intention to use the sign.
The decision confirms the courts’ willingness to sanction filings intended to block competitors or to appropriate a sign already used by others.
This approach aligns with European case law, according to which a trademark filing made for purposes unrelated to the functions of a trademark may constitute an act of bad faith.
Dreyfus & Associates assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support to ensure the full protection of intellectual property rights.
Nathalie Dreyfus, with the assistance of the entire Dreyfus team.
Q&A
Can a surname or pseudonym be invoked against a trademark?
Yes, under Article L.711-3 of the French Intellectual Property Code, a person’s surname or pseudonym constitutes a prior right that may prevent the registration of a trademark. However, to rely on such a right, it must be demonstrated that the name was used in the course of trade at the time the trademark was filed and that there is a likelihood of confusion with the goods or services concerned.
Can the absence of trademark use constitute evidence of bad faith?
It may constitute a relevant indicator. In particular, if the applicant had no genuine intention to use the trademark at the time of filing, the absence of use may contribute to demonstrating a fraudulent strategy.
What is the time limit to act against a fraudulently filed trademark?
In principle, an action for ownership claim must be brought within five years from the publication of the trademark application. However, when the filing was made in bad faith, this limitation period does not apply, meaning that the action may be brought without time limitation.
What is the difference between an ownership claim action and an action for trademark invalidity?
An invalidity action seeks to cancel a trademark that has been registered improperly, whereas an ownership claim action allows the injured party to obtain the transfer of ownership of the trademark that was filed fraudulently.
Is bad faith assessed at the time of filing or afterwards?
Bad faith must be assessed at the time the trademark is filed, taking into account all the circumstances surrounding the filing.
This publication is intended to provide general information to the public and highlight certain legal issues. It is not intended to apply to specific situations nor to constitute legal advice.
The infringement of a Community Plant Variety Right (CPVR) raises particularly sensitive issues. Behind these technical terms often lie years of research, selection, and substantial investment. Council Regulation (EC) No 2100/94 grants the breeder an exclusive right valid throughout the European Union, enabling them to control the production, reproduction, and marketing of the protected plant material.
A recurring difficulty arises in practice: when a plant has been lawfully acquired, may it be freely propagated or commercially exploited without authorization? This raises a central legal question: can the doctrine of exhaustion of rights be invoked to defeat an allegation of infringement of a Community plant variety right? In the field of plant variety protection, the answer requires considerable caution. While European Union law recognizes the principle of exhaustion, its application in this area remains strictly circumscribed.
Understanding the boundary between lawful use and infringement of a Community plant variety right, as well as the limits of the exhaustion doctrine, is therefore essential in order to ensure the secure exploitation of a protected variety and to avoid litigation with potentially significant economic consequences.
What is the Community plant variety protection system?
Community plant variety right constitutes a sui generis industrial property right established by Council Regulation (EC) No 2100/94 and administered by the Community Plant Variety Office (CPVO), based in Angers.
Pursuant to Article 13 of the Regulation, it confers upon the breeder a unitary and exclusive right effective throughout the territory of the European Union. This right enables the breeder to authorise or prohibit the production, reproduction, conditioning for the purpose of propagation, offering for sale, marketing, export, import, or stocking for any of those purposes of propagating material of the protected variety.
The creation of a new plant variety requires years of selection, agronomic trials, genetic stabilization, and technical evaluation. Costs are substantial, biological cycles are lengthy, and the risk of failure is significant. In the absence of legal protection, third parties could easily reproduce the plant material, depriving the breeder of any return on investment. The regime therefore pursues a clear objective: to safeguard varietal innovation by granting a unitary exclusive right across the internal market.
Infringement of a Community plant variety right
Infringement of a Community plant variety right consists of any violation of the exclusive rights conferred upon the holder under Regulation (EC) No 2100/94. The breeder’s right extends to propagating material of the protected variety and, in certain circumstances, to harvested material and essentially derived varieties.
Pursuant in particular to Article 94 of Regulation (EC) No 2100/94, the following acts constitute infringement when carried out without the authorisation of the right holder:
The production or reproduction (multiplication) of protected plant material (including grafting, cuttings, sowing, or in vitro propagation);
Offering for sale, selling, marketing, or otherwise placing on the market the protected material;
Exporting, importing, or stocking for commercial purposes infringing plants, grafts, or seeds.
The material element of infringement lies in the performance of one of these acts. Fault or intent is, in principle, irrelevant: infringement gives rise to strict liability, and the infringer’s good faith does not preclude a finding of liability.
By way of illustration, a nurseryman who lawfully acquires a plant of a protected variety may not, in the absence of a licence, take grafts from that plant in order to produce dozens of trees intended for commercial sale. Such a practice would constitute an act of reproduction of the protected material and could therefore be characterized as an infringement of a Community plant variety right.
Certain statutory exceptions must nevertheless be taken into account under Regulation (EC) No 2100/94, which provides for limitations to the breeder’s exclusive right, including:
The breeder’s exemption: the use of a protected variety for the purpose of breeding a new variety remains free, except in the case of essentially derived varieties;
The so-called “farmers’ privilege” (subject to specific conditions and limited to certain species), permitting the reuse on the holding of the product of the harvest;
Acts done privately and for non-commercial purposes, or for experimental purposes.
Alongside these exceptions, European Union law also recognizes a distinct mechanism: the doctrine of exhaustion of rights. However, this mechanism does not constitute a comparable derogation; it does not authorize the performance of acts reserved to the right holder, but merely limits the latter’s ability to control the circulation of protected material. The question therefore arises as to whether this doctrine is applicable to plant varieties.
Absence of exhaustion of rights under Community plant variety right
Under the doctrine of exhaustion of rights, once a protected product has been placed on the market within the European Economic Area by the right holder or with their consent, the holder may no longer oppose its resale. The exclusive right is thus “exhausted” in respect of that specific item.
Within the system of Community plant variety protection, this mechanism does exist, but it remains strictly circumscribed. Exhaustion applies only to acts relating to plant material that has been placed on the market with the authorization of the right holder, and solely with regard to its resale in the same form, pursuant to Article 16 of Regulation (EC) No 2100/94.
However, exhaustion never extends to acts of reproduction, multiplication, production, or the further cultivation of protected material. Accordingly, the lawful marketing of a plant or graft does not authorize its subsequent propagation without a licence. As a result, the doctrine of exhaustion cannot, in principle, be invoked to justify such acts.
The significance of this limitation is particularly evident in the field of plant variety protection. If exhaustion were to extend to acts of multiplication, the lawful acquisition of a single plant could allow for its indefinite reproduction and the establishment of an entire commercial production, thereby depriving the breeder of any remuneration and effectively undermining the protection afforded by the Community plant variety right.
This restriction is explained by the very nature of plant material: unlike an industrial product, a plant variety can be biologically reproduced and multiplied on a large scale from a very limited number of initial plants. Allowing exhaustion to apply to acts of reproduction would therefore neutralize the effectiveness of the exclusive right granted under the Regulation and would compromise the economic balance of the plant variety protection system.
In practice, even where a professional operator has lawfully acquired propagating material, they remain bound to respect the breeder’s exclusive rights for any exploitation exceeding mere resale. The right is therefore not extinguished by the first act of marketing; it subsists in respect of any act liable to encroach upon the monopoly conferred by the CPVR, in accordance with the Regulation’s logic of enhanced protection for varietal innovation.
Conclusion
The infringement of a Community plant variety right engages a strong exclusive right designed to protect long-term scientific and economic investments. Although the principle of exhaustion of rights exists under EU law, it remains strictly confined to the resale of material placed on the market with the holder’s authorization and cannot be invoked to justify acts of reproduction or multiplication of the protected variety.
Any reproduction or multiplication carried out without the authorization of the right holder may constitute an act of infringement, even where the plant material has been lawfully acquired. A clear understanding of this distinction is therefore essential for operators in the sector in order to ensure the secure exploitation of protected plant varieties.
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.
1. What is the difference between a national plant variety right and a community right?
The national plant variety right is granted by the competent national authority (in France, the National Plant Variety Office, also known as INOV). The Community plant variety right is granted by the Community Plant Variety Office (CPVO) and produces effects throughout the entire territory of the European Union.
2. May a variety purchased in another Member State be freely exploited in France?
No. The Community plant variety right is a unitary right: the absence of authorization in one Member State applies across the entire European Union.
3. Can incorrect labeling of a variety constitute infringement?
Yes, where the marketed variety in fact corresponds to a protected variety. Mislabeling does not exclude liability.
4. May a licence agreement impose stricter restrictions than those provided by the Regulation?
Yes. The parties may agree on more stringent contractual obligations (territorial scope, quotas, traceability), subject to compliance with EU competition law.
5. How can one verify whether a plant variety is protected by a Community Plant Variety Right?
Protection may be verified through the public database of the Community Plant Variety Office, which lists both protected varieties and pending applications. Such verification is particularly recommended prior to any commercial exploitation of a plant variety.
The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.
European and French case law now imposes a renewed discipline on trade mark filing. The days when a broad specification was enough to guarantee solid protection are over. Here is a breakdown of the key issues and best practices.
Why case law on sub-categories is changing the game
Filing a trade mark confers an exclusive right. But this right only exists in relation to the specific goods and services designated in the registration. In practice, the value of a trade mark depends as much on the sign itself as on the specification accompanying it.
For several years now, European and French case law has consistently reiterated a straightforward principle: a trade mark must not confer a purely theoretical monopoly over markets that its owner does not actually exploit. This requirement finds very concrete expression in the concept of autonomous sub-categories and in the strengthened control of genuine use.
This context is all the more significant as companies face an increase in oppositions, invalidity actions and counterclaims for revocation, especially where older trade mark portfolios cover very broad specifications.
The specification of goods and services: the trade mark’s true legal perimeter
For a long time, a “broad filing” approach prevailed. Applicants sometimes opted for generic wording or simply reproduced class headings, with the aim of maximising protection without having to anticipate in detail how the trade mark would be used.
Today, however, this strategy entails increased risk. Where a trade mark is registered for a broad category but is only used for part of that category, it may be partially revoked. Protection then remains only for the segments actually used, which can drastically reduce the scope of enforcement.
The legal framework: genuine use, revocation and the burden of proof
One essential point for businesses: the burden of proof lies with the trade mark owner. In the event of a challenge, it is not for the third party to demonstrate non-use, but for the proprietor to prove genuine, relevant and dated use.
Furthermore, where the specification is broad and divisible, proof must be provided for the relevant sub-categories. This explains why certain portfolios, despite being intensively exploited, are nevertheless weakened.
Understanding autonomous sub-categories: a jurisprudential concept
The concept of an autonomous sub-category does not stem from any express statutory definition. It is a concept developed through case law to reflect economic reality: within a broad category, certain goods or services may form distinct, identifiable and coherent groups.
Case law focuses in particular on criteria relating to the purpose and intended use of the goods and services. What matters is the expected use by the public and the economic function of the product or service, rather than its formal classification.
In practice, an overarching category such as “transport”, “cosmetics” or “software” may cover very different realities. The court may therefore consider that such a category is divisible into autonomous sub-categories and require segmented proof of use.
The European “Ferrari” case law: balancing protection and proportionality
The Ferrari cases (C-720/18 and C-721/18) of 22 October 2020 clarified the CJEU’s reasoning on use in relation to specifications covering categories of varying breadth. The logic is structured around a practical distinction:
Where a trade mark covers a precise and indivisible category, use in relation to part of that category may be sufficient.
Conversely, where the category is broad and divisible, use must be proven for each identifiable autonomous sub-category.
This distinction is particularly useful when building a filing strategy. It prompts a simple question: will the category claimed be perceived tomorrow as a “homogeneous whole”, or as a set of distinct segments?
French case law: the Court of Cassation decisions of 14 May 2025
First decision (No. 23-21.296): taxi services and the “transport” category
In a first decision (Cass. com., 14 May 2025, No. 23-21.296), the French Court of Cassation provides a very concrete illustration of the requirement to segment goods and services into sub-categories. The trade marks at issue were registered for “transport” and “passenger transport” services. The proprietor demonstrated genuine use for taxi services, and the Court of Appeal had considered this sufficient.
The Court of Cassation adopted a more demanding approach. It criticised the lower court for failing to assess whether taxi services constituted an autonomous and coherent sub-category within the broader category of transport services. It recalled that such an assessment must be objective and based on the purpose and intended use of the services.
Second decision (No. 23-21.866): cosmetics and essential oils
The second decision rendered on the same day (Cass. com., 14 May 2025, No. 23-21.866) further confirms and refines this requirement. The trade mark was registered for several broad categories of goods, including cosmetics and essential oils. The proprietor relied on use relating to specific products such as textiles impregnated with active substances or composite products incorporating essential oils.
The Court of Cassation overturned the Court of Appeal’s reasoning, criticising it for failing to examine whether those products genuinely corresponded to the goods as registered or whether they constituted autonomous sub-categories requiring specific proof of use.
These decisions confirm that the French Supreme Court now requires a strict alignment between the evidence of use relied upon and the exact scope of the specification.
The court’s power to subdivide the specification
One of the key lessons from recent case law is that the court is not bound by the wording of the specification as drafted. Even if the applicant has not provided for any subdivision, the court may carry out an objective division into autonomous sub-categories where justified by the purpose and intended use of the goods or services.
This power has very tangible effects. A simple and overarching specification may, in litigation, be broken down into multiple segments. The proprietor then faces a heavier evidentiary burden than anticipated.
In practice, this mechanism makes the filing strategy inseparable from the evidentiary strategy. Filing broadly is not merely a legal decision; it is also a documentary, internal and operational decision.
Filing a trade mark: the right level of precision
An effective filing strategy is based on a careful balance. If the specification is too broad, the trade mark may be vulnerable to revocation. If it is too narrow, the trade mark may be insufficient to support commercial development or to act against close competitors.
The question is therefore not whether to file broadly or narrowly, but how to file intelligently, calibrating the specification so that it is both commercially useful and legally defensible in the long term.
Anticipating proof of use: an operational component of trade mark strategy
In practice, the most sensitive issue is proof of use. When a trade mark is challenged, the question is not merely to prove that it is used. It is necessary to prove that it is used for the goods and services covered by the registration, and sometimes for autonomous sub-categories identified in litigation.
For each plausible sub-category, it is recommended to gather specific and segmented evidence:
Invoices or order forms identifying the type of product or service, with dates and geographical areas.
Catalogues, brochures, commercial leaflets or archived web pages showing the trade mark associated with the relevant segment.
Targeted advertising campaigns, announcements or promotional materials, dated and linked to a specific product or service.
Internal reports by business segment, where their content can be produced and relied upon in litigation.
Relevant contracts, in particular licences, distribution, maintenance, or evidence showing exploitation by an authorised third party.
Each item of evidence should be preserved within a structured file: not as an undifferentiated mass of documents, but as an organised set by sub-category.
Use by subsidiaries, licensees or distributors
In many corporate groups, trade mark use may be carried out by subsidiaries, distributors or licensees. Case law, in line with Article 18(2) EUTMR, generally accepts that use by an authorised third party may be taken into account, provided that such use takes place with the proprietor’s consent.
This nevertheless requires contractual and documentary organisation. It must be possible to establish the existence of authorisation and to demonstrate the reality of exploitation under the trade mark.
Use in a modified form: securing trade mark variants
Companies rarely use a trade mark in a form identical to the registered version. European and French courts, in line with Article L.714-5(3) of the French Intellectual Property Code and Article 18 EUTMR, accept use in a modified form provided that the modification does not alter the distinctive character of the sign.
As part of a filing strategy, it may therefore be advisable to anticipate certain variants by filing the word trade mark alone or by securing the main versions actually used.
Sub-categories and litigation: impact on opposition, invalidity and competition
The issue of sub-categories is not limited to revocation. It also affects disputes relating to likelihood of confusion, as the similarity of goods and services is assessed with increasing granularity.
For businesses, the key takeaway is that filing strategy must now be read in mirror with litigation strategy. A well-filed trade mark is easier to defend, easier to enforce, and more dissuasive.
Conclusion – Filing today means preparing tomorrow’s defence
Case law on autonomous sub-categories imposes a new discipline in trade mark filing strategy. Filing can no longer be conceived as abstract protection disconnected from actual use. It must be calibrated according to real markets and the evidence the company will be able to produce.
In practice, an effective filing strategy combines three dimensions:
An intelligently structured specification.
Anticipation of possible segmentation.
Proactive organisation of evidence.
This approach transforms the trade mark into a genuinely defensible and sustainable asset, serving the company’s growth and legal security.
FAQ – Frequently Asked Questions on Sub-Categories and Proof of Use
What is an autonomous sub-category in trade mark law? An autonomous sub-category is a coherent group of goods or services, identifiable within a broader category, based on its purpose and intended use. This concept, developed through European case law (notably the CJEU’s Ferrari rulings) and adopted by the French Court of Cassation, allows the court to segment a trade mark specification and verify that genuine use is demonstrated for each relevant segment.
What is the time limit for demonstrating genuine use of a trade mark in France? Under Article L.714-5 of the French Intellectual Property Code, the trade mark owner must demonstrate genuine use within five years following registration. After this period, the mark is exposed to a revocation action if no genuine use can be proven.
Who bears the burden of proving use? It is the trade mark owner who must prove genuine use when challenged, not the third party initiating the revocation action. This rule follows from the principle that it would be disproportionate to require the applicant to prove a negative fact (non-use).
My trade mark is used by a licensee: does that count as genuine use? Yes, case law accepts that use by an authorised third party (licensee, subsidiary, distributor) may constitute genuine use, provided it takes place with the proprietor’s consent and the mark continues to fulfil its essential function of guaranteeing origin. However, this must be properly documented (licence agreement, distribution agreement, group policy).
Can I use my trade mark in a slightly different form from the registered version? Yes, both French and European law accept use in a modified form, provided the modification does not alter the distinctive character of the sign. However, substantial visual or conceptual changes may prevent recognition of use of the registered mark. It may be prudent to also register the main variants in use.
How should I organise my proof of use in practice? It is recommended to build a structured file for each sub-category of goods or services, including dated invoices, catalogues, advertising materials, website screenshots, internal reports by business segment, and licence or distribution agreements. Each item should be dated, geographically located, and linked to a specific product or service.
Is an overly broad specification automatically vulnerable? Not necessarily, but the risks are increased. If the mark is registered for a broad and divisible category, the court may subdivide that category into autonomous sub-categories and require segmented proof of use. If the proprietor only exploits part of the category and cannot document use for the other segments, the mark may be partially revoked.
What is the difference between the Nice Classification and autonomous sub-categories? The Nice Classification is an international administrative tool that organises goods and services into 45 classes. Autonomous sub-categories are a jurisprudential concept based on economic and functional logic. The French Court of Cassation has expressly stated that the Nice Classification is merely an indication and does not bind the court in its analysis of genuine use.
This article is based on the contribution of Dreyfus & Associés to the “Trade Marks & Copyright 2026” Practice Guide published by Chambers and Partners.
For any questions regarding your trade mark filing strategy or the organisation of your proof of use, contact us: contact@dreyfus.fr
The Uniform Domain Name Dispute Resolution Policy (UDRP) constitutes the principal extrajudicial mechanism for resolving domain name disputes at the international level. Established by ICANN (Internet Corporation for Assigned Names and Numbers) in 1999, it enables trademark owners to challenge the abusive registration and use of domain names commonly referred to as cybersquatting without resorting to traditional court proceedings, which are typically lengthier and more costly.
Since March 9 2026, one of the five providers accredited to administer UDRP proceedings, namely the WIPO Arbitration and Mediation Center, has introduced an optional priority processing service (“UDRP Priority Service”), enabling the expedited examination of certain UDRP complaints. This optional mechanism allows complainants, upon request and subject to the Center’s acceptance, to benefit from an accelerated review of their complaints.
To succeed in a UDRP complaint, the complainant must establish the following three cumulative elements:
Identity or confusing similarity: the disputed domain name must be identical or confusingly similar to a trademark or distinctive sign in which the complainant has rights.
Absence of rights or legitimate interests: the domain name holder must lack rights or legitimate interests in respect of the domain name, such as prior bona fide use or legitimate non-commercial use.
Registration and use in bad faith: the domain name must have been registered and used in bad faith, typically for purposes such as diversion, speculative resale, or exploitation aimed at harming or capitalizing on the trademark owner’s reputation.
Within this framework, the administrative Panel may order the transfer or cancellation of the disputed domain name. The UDRP does not provide for monetary damages. The parties nevertheless retain the right to initiate proceedings before competent national courts.
On average, a UDRP proceeding lasts between 45 and 60 days. While significantly shorter than conventional litigation, this timeframe may remain considerable in cases involving manifest infringement of prior rights. During this period, the continued operation of the disputed domain name may cause substantial harm, including reputational damage and diversion of customers.
It was in this context that the Uniform Rapid Suspension (URS) mechanism was introduced to address clear-cut cases of cybersquatting more swiftly. However, while the URS enables the rapid suspension of a domain name, it does not result in either its transfer or its definitive cancellation. It applies primarily to the gTLDs launched under ICANN’s 2012 “New gTLD Program”, as well as to certain pre-existing extensions that have incorporated the URS following the renewal of their registry agreements, such as, for example, “.org, .info, .biz, .mobi, .travel, .jobs, .pro”. Its scope and remedial effect therefore remain restricted, prompting renewed consideration of genuinely expedited UDRP procedures.
Implementation of an expedited UDRP procedure
In response to the need for more rapid dispute resolution while preserving the substantive effects of the traditional UDRP, WIPO has recently introduced an expedited UDRP mechanism. This service is intended to be used in relatively straightforward or clear-cut disputes, particularly where the facts and legal arguments do not raise any particular complexity and therefore allow for expedited processing of the case.
The principal advantage of this framework lies in the fact that it remains a fully-fledged UDRP proceeding capable, in particular, of transferring the domain name while operating under a significantly compressed timeline. Accordingly, the legal criteria of the UDRP Policy remain unchanged: the complainant must still establish the three cumulative elements required under the Policy.Under this mechanism, a decision may be notified within approximately 30 days from the filing of the complaint.
It should, however, be noted that this timeframe remains subject to certain external factors, including the response times of the registrar and the parties, which may affect the overall duration of the proceedings.
How does the expedited UDRP procedure operate?
Number of Panelists
Under this system, the case is decided by a sole Panelist. Any request for the appointment of a three-member Panel automatically removes the case from the expedited track and results in its treatment under the standard UDRP procedure.
Number of domain names
The expedited procedure may apply up to five domain names, provided that they are all held by the same registrant.
This requirement inherently excludes any request for consolidation involving multiple respondents or necessitating proof of common control among different entities.
Costs of the procedure
The fees are structured as follows:
USD 4,000 in administrative fees;
USD 3,000 corresponding to the Panelist’s fees.
Conclusion
In summary, the expedited UDRP procedure reflects an effort to adapt dispute resolution mechanisms to the need for increased speed in online infringement matters. It preserves the essential effects of the traditional UDRP while substantially reducing processing time. As such, it offers an intermediate solution between the standard UDRP procedure and the URS. Its practical effectiveness will ultimately depend on its implementation conditions and its attractiveness to rights holders.
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.
1. Why does the URS procedure not replace the UDRP procedure? Because it does not allow for the transfer of the domain name and applies within a more limited scope of domain names.
2. Who may initiate a UDRP proceeding? Any individual or entity holding prior rights (including registered or recognized unregistered trademarks, trade names, etc.).
3. What language governs the UDRP proceedings? In principle, the language of the domain name registration agreement, unless otherwise determined by the Panel.
4. What happens if the respondent fails to reply to the complaint filed against its domain name? The proceeding continues, and the Panel renders its decision on the basis of the evidence submitted by the complainant.
5. Is there a risk of procedural abuse by complainants? Yes. A Panel may find that a complaint constitutes Reverse Domain Name Hijacking where the complainant has brought the UDRP proceeding in bad faith (notably where it knew, or should have known, that the Policy requirements were not met). Such a finding is purely declaratory: it entails no monetary award and no order for reimbursement of the administrative fees.
The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.
In a context where plant innovation is rapidly evolving through biotechnology, plant breeding and genetic engineering, economic actors increasingly seek to maximize the legal protection of their innovations while securing their competitive advantage in the marketplace. A recurring question concerns the compatibility of filing both a plant variety right and a patent in relation to the same research subject: is it possible to obtain both a Plant Variety Right (PVR) and a patent without creating conflicts between these rights?
This issue lies at the heart of intellectual property strategies in the plant sector. It raises questions regarding the scope of protection, commercial exploitation and potential litigation risks, all of which must be carefully managed by innovative companies.
Conditions of protection and protected subject matter: patent and plant variety right (PVR)
The consistency of a simultaneous filing strategy relies on a fundamental distinction: a patent protects a technical invention, whereas a plant variety right protects a specific plant variety. The legal criteria and underlying logic of these two regimes differ significantly.
The patent: protection of a technical solution
A patent protects a technical solution to a technical problem. However, no patent is granted for plant varieties as such. Plant varieties are defined subgroups of a plant species that are distinguished from other varieties by specific hereditary characteristics.
In the plant field, a patent may therefore cover only:
An isolated gene with an identified technical function;
A genetic transformation process;
A technical breeding method.
To be patentable, the invention must satisfy the classical criteria of novelty, inventive step and industrial applicability (Article 52 EPC).
In order to prevent patents relating to plants obtained by technical processes from inadvertently covering plants obtained through essentially biological processes, the European Patent Office often requires the introduction of a disclaimer.
In practice, the claims, which define the scope of protection sought, must therefore explicitly specify that the invention does not cover plants obtained by essentially biological processes.
The patent thus protects a technology or functional mechanism, independently of any specific plant variety.
The plant variety right (PVR): protection of a plant variety
Plant varieties are protected under a separate intellectual property regime: plant variety protection.
A Plant Variety Right protects a distinct plant variety that satisfies the following criteria:
Commercial novelty,
Distinctness,
Uniformity,
Stability.
The PVR grants its holder an exclusive right over the production, commercialization and exploitation of the reproductive material of the protected variety.
However, the regime includes specific features, such as:
Unlike patents, the PVR does not protect a technical process, but rather the plant variety itself, defined by its genetic and phenotypic characteristics.
Possible compatibility or legal barriers?
What European and French law allow
According to case law and the practice of the offices (notably the European Patent Office), it is possible to obtain both a patent and a PVR for different aspects of the same innovation:
The PVR protects the variety as such (its genetic and phenotypic definition).
The patent protects a technical invention that may be used across several varieties such as a gene conferring resistance or an innovative cultivation method.
Protection may therefore be cumulative where the protected subject matter is legally distinct, for example, a patented genetic mechanism applicable to multiple varieties and a specific variety protected by a PVR.
Potential areas of conflict and exclusion
Nevertheless, conflicts may arise in certain situations, particularly where patent claims are drafted too narrowly or too specifically, leading in practice to coverage of an identifiable plant variety. This could create an overlap with the scope of the PVR and raise issues of exclusion from patentability under European and French law, since plant varieties cannot be patented.
These grey areas require very careful claim drafting and, in some cases, dialogue with patent offices, to ensure that the two forms of protection remain clearly distinct.
In some configurations, the exploitation of one right may depend on the use of the other. To prevent technological deadlock, the law allows, under certain conditions, the granting of compulsory licences in cases of dependency between a patent and a plant variety right, particularly under Directive 98/44/EC on the legal protection of biotechnological inventions.
This mechanism ensures a balance between exclusive rights and the dissemination of innovation, while guaranteeing equitable remuneration for the holder of the earlier right.
Strategic trade-offs for plant innovators
Impact on commercial exploitation
A simultaneous filing strategy must be aligned with commercial and profitability objectives:
Market coverage: a patent may deter competitors from using a patented technology in other varieties, while the PVR guarantees exclusive control over the protected variety’s name and propagating material.
Cross-licensing: it may be strategic to structure separate licence agreements: one PVR licence for varietal exploitation and one patent licence for the underlying technology, to maximise revenues without unduly restricting innovation.
Management of exceptions: certain European legal systems allow exceptions such as the farmer’s privilege or farm-saved seed under specific conditions, which directly affect commercial strategy.
A coordinated approach enables protection of the varietal creation while ensuring maximum commercial impact, particularly in highly competitive sectors such as commercial agriculture or specialised horticulture.
Management of litigation risks
The simultaneous filing of a patent and a PVR may give rise to specific disputes, in particular concerning:
Definition of the scope of protection: divergent interpretations of patent claims or of the scope of the protected variety may lead to infringement or invalidity actions.
Scientific developments: where varietal traits are progressively optimised, it must be assessed whether such improvements remain within the scope of the existing PVR or justify a new patent filing, in order to avoid overlap and portfolio fragility.
In this context, it is essential to draft clear and differentiated claims and to conduct a structured analysis of the respective fields of protection of the patent and the COV in order to avoid any overlap that could weaken the rights.
Conclusion
The simultaneous filing of a plant variety right and a patent can constitute a powerful strategy when structured around legally distinct and complementary subject matter. It requires disciplined drafting, a precise understanding of European legal regimes, and careful anticipation of commercial and litigation risks.
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.
1. Can a PVR be filed first and a patent later?
Yes, both sequences are possible. Filing a PVR first does not in itself destroy the novelty of a patent, provided that the technical invention has not been publicly disclosed. However, commercialisation or detailed technical disclosure of the variety may jeopardise patentability.
2. Does simultaneous filing affect a company’s financial valuation?
A combined patent and PVR portfolio may enhance valuation during fundraising, M&A transactions or due diligence. Investors assess the robustness, remaining term and strategic coherence of the rights.
3. Are the rules identical outside the European Union?
No. Legal regimes vary by jurisdiction. Some countries strictly apply the UPOV Convention, while others adopt broader interpretations of patentability in the life sciences. An international strategy requires a country-by-country analysis.
4. Can trade secrets complement a patent and a PVR?
Yes. Technical information such as protocols, parental lines or agronomic data may be protected as trade secrets. This does not replace patent or PVR protection but may strengthen the overall strategy.
5. Can a patent block exploitation of a variety protected by a third party?
Yes. If a variety incorporates a trait covered by a third party’s patent, exploitation may require a licence, even if the variety itself is protected by a PVR. Ownership of a PVR does not guarantee freedom to operate.
This publication is intended to provide general guidance and highlight certain issues. It is not intended to apply to specific situations nor to constitute legal advice.
This transformation forms part of the European Consumer Agenda 2030 and reinforces a well-established objective: ensuring a fair, transparent digital environment free from misleading practices or dark patterns.
A new digital right of withdrawal: the “three-click” mechanism
The novelty does not lie in the duration of the withdrawal period itself, but in the way this right must now be exercised online.
Professionals must implement a clear, accessible and permanent electronic mechanism enabling consumers to withdraw from the contract through:
A clearly identifiable button labelled “Withdraw from the contract here” or similarly unambiguous wording;
An explicit confirmation via a second button labelled “Confirm withdrawal”;
A confirmation sent to the consumer on a durable medium.
This feature must remain available throughout the entire withdrawal period.
A response to manipulative interfaces
This reform is part of the broader fight against manipulative interfaces. European authorities have identified that certain websites made cancellation complex, concealed or discouraging.
Making withdrawal difficult may now be classified as:
European authorities cooperate through the CPC (Consumer Protection Cooperation) network, reinforcing cross-border enforcement risks.
Heightened legal risk: extension of the withdrawal period
In the absence of a compliant mechanism:
Consumers may exercise withdrawal by any means;
The 14-day period may be extended;
The company may be accused of obstructing consumer rights.
National authorities are already demonstrating increased vigilance in this regard.
Conclusion
European consumer law continues to pursue transparency and contractual balance in the digital environment. The three-click right of withdrawal represents a major regulatory development, combining enhanced consumer protection with increased accountability for economic operators.
This reform should not be viewed as a purely technical adjustment but as a central component of digital contractual governance and overall compliance (Digital Services Act, unfair commercial practices framework, GDPR).
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.
Yes, except for specific exceptions applicable to certain services.
2. Can a consumer withdraw by other means than the designated button?
Yes. The three-click mechanism does not eliminate other lawful methods of exercising the right (e-mail, letter, model withdrawal form).
3. Does the right of withdrawal apply to immediately accessible digital content (streaming, downloads)?
It remains applicable unless the consumer has expressly waived the right before immediate performance and acknowledged the loss of that right.
4. Must the consumer provide justification?
No. Withdrawal remains without cause.
5. Does this mechanism apply only to financial services?
No. Although the amending directive concerns financial services, it modifies the general directive on consumer rights.
6. How can compliance be demonstrated during an inspection?
The professional must retain comprehensive documentation: time-stamped screenshots, technical logs, proof of confirmation sent on a durable medium, archived withdrawal requests and refund traceability.
This publication is intended to provide general guidance and highlight certain legal issues. It is not intended to apply to specific circumstances nor to constitute legal advice.
Why IP is a business-critical issue for game studios
The global video game market generates over $200 billion in annual revenue.. This value is largely based on intangible assets , characters, code, music, narrative universes, studio names, and franchises. These are exactly what intellectual property (IP) law is designed to protect.
Yet IP mistakes remain remarkably common in the industry, especially among independent studios: no written contracts with freelancers, a game name that’s already in use, designs revealed before they’re protected… These oversights can block a launch, trigger years of litigation, or force an expensive rebrand in the middle of a marketing campaign.
This guide covers the four pillars of IP as they apply to video games copyright, trademarks, design rights, and contracts and illustrates each with verified, real-world legal cases. A FAQ at the end addresses the most frequent questions from the sector.
1. Copyright: Your first line of defence
What copyright covers in a video game
A video game is a complex multimedia work. In the UK, this is reflected in the Copyright, Designs and Patents Act 1988 (CDPA), which does not protect games as a single category, but does protect each of their individual components separately. In the US, a similar multi-layered approach applies under Title 17 of the US Code.
The protectable elements of a game typically include:
Source code and game engine protected as literary works (software)
Visuals, artwork, and illustrations protected as artistic works
Music, sound effects, and voice acting protected as musical works and sound recordings
Story, dialogue, and narrative universe protected as literary or dramatic works
Characters and environments protectable if they display sufficient originality
Databases (game content catalogues, asset libraries) — protected under database rights if they result from substantial investment
The central requirement is originality: the work must be the author’s own intellectual creation, reflecting free and creative choices. Artistic meritis not a criterion,a simple mobile game can be as fully protected as a AAA blockbuster.
One important limitation applies in all major jurisdictions: copyright does not protect ideas, concepts, or game mechanics as such,only their specific expression. The US Copyright Office states this explicitly: copyright does not protect the idea for a game, its name, or the method of playing it. This distinction has generated some of the most important litigation in the industry (see cases below).
Automatic protection — But not automatic ownership
In the UK and across the EU, copyright arises automatically at the moment of creation. No registration is required, and protection lasts for the author’s lifetime plus 70 years for most works (50 years from the date of creation for computer-generated works and sound recordings under UK law).
But automatic protection is not the same as automatic ownership — and this is where the most costly traps lie.
For employees: Works created by an employee in the course of their employment generally belong to the employer, under Section 11(2) of the CDPA (UK) and the “work made for hire” doctrine (US). However, work created outside the scope of employment may belong to the employee, unless the contract states otherwise.
For freelancers and external contractors: The default position in both the UK and US is that contractors retain copyright in their creations, unless there is a written agreement to the contrary. Without an explicit assignment clause, a studio may not own the artwork, music, or code it commissioned and paid for.
Key takeaway: Without clear title to all the game’s assets, a studio cannot commercially exploit, license, or enforce its IP against infringers. A missing contract can jeopardise an entire project. This is one of the most common and most avoidable mistakes in the industry.
Should you register anyway?
Although registration is not required for copyright to exist, formal registration offers meaningful practical advantages in several jurisdictions:
United States: Registration with the US Copyright Office is not mandatory, but it is required before filing an infringement lawsuit, and it enables statutory damages and attorney’s fees significantly strengthening your enforcement position.
China: A registration certificate from the National Copyright Administration facilitates takedown requests on digital platforms and provides presumptive evidence of ownership in disputes.
UK: No formal registration system exists for copyright, but date-stamped archives, version histories, and signed contracts serve as strong evidence of authorship and creation date.
🔍 Case study #1 — Tetris Holding v. Xio Interactive (2012): The “Look and Feel” of a game is protectable
Background: Xio Interactive developed Mino, a mobile game that replicated Tetris gameplay using different visual assets. Xio argued it had only copied uncopyrightable gameplay mechanics, not the protected expression of the game.
Ruling: The US District Court of New Jersey ruled against Xio, finding that while individual game mechanics are not copyrightable, the overall “look and feel” of a game, the combination of shapes, colours, and audiovisual presentation can be protected if it is sufficiently original. The court found that Mino reproduced that overall impression closely enough to constitute infringement, despite the different art assets.
What changed: This decision, alongside the related Spry Fox v. Lolapps case (the Triple Town/Yeti Town dispute), established that cloning a game’s aesthetic presentation carries legal risk even when individual mechanics are unprotectable. It reinforced the application of existing copyright principles.
Practical lesson: If you are designing a game that is closely inspired by an existing title, ensure that the visual presentation, UI design, and audiovisual combination are meaningfully distinct not just that the game mechanics are reworded. The “look and feel” doctrine is a real enforcement tool.
🔍 Case study #2 — Bungie v. AimJunkies (2023): A well-drafted EULA is worth millions
Background: Bungie, the developer of Destiny 2, sued Phoenix Digital Group, the operator of AimJunkies.com for developing and selling cheat software that enabled aimbots and other unfair advantages in the game.
Ruling: The US federal court in Seattle awarded Bungie $4.3 million in damages for copyright infringement and violations of the Digital Millennium Copyright Act (DMCA). One of the key engineers behind the cheat had reverse-engineered the game’s code to build the tool — in direct violation of the End User Licence Agreement (EULA) he had accepted when downloading the game. The court also sanctioned the defendant for deliberately destroying financial evidence.
In 2024, the court rejected a motion for a new trial, making the decision final.
How it worked legally: The EULA was central to the case. By accepting the EULA, the cheat developer had entered into a binding contract that expressly prohibited reverse engineering and the development of unauthorised tools. This gave Bungie a direct contractual claim, on top of the copyright and DMCA claims.
Practical lesson: Your EULA and software licence are active legal instruments. A well-structured EULA creates the legal basis to pursue cheaters, cheat developers, and anyone who circumvents your technical protection measures. The $4.3 million award in this case was made possible by a properly drafted licence agreement.
🔗 Reference: Bungie, Inc. v. Phoenix Digital Group LLC (AimJunkies), US District Court, W.D. Wash., 2023 — confirmed in AFJV
2. Trademarks: Protecting your studio’s identity and your game’s brand
More Than just a name
A trademark can cover a game title, a studio name, a logo, a slogan, a character icon, or any other distinctive sign associated with your identity. Trademarks are the tools that protect what makes players recognise you and what investors use to value your assets.
Registration is done by classes under the International Nice Classification. For a game studio, the most relevant classes typically include:
Class 9: Downloadable game software, apps
Class 41: Entertainment services, esports, tournaments
Class 25: Clothing and textile merchandise
Class 28: Games, toys, collectibles
Class 35: Online retail and commercial services
Registering in only one class leaves the door open for third parties to use your brand in other sectors.
Territoriality: Protection stops at the border
A trademark registered in the UK protects only the UK. A US trademark protects only the US. Studios with international ambitions must plan their filing strategy based on current and future target markets, not just where they are today.
Key considerations by jurisdiction:
European Union: A single EU Trade Mark application at the EUIPO provides protection across all 27 member states.
United States: You can file on the basis of intent to use before you launch commercially, securing your priority date ahead of release. But registration will only be granted once actual use in commerce has been demonstrated.
China: The first-to-file system means that whoever registers first wins. Local actors may register your brand before you do, then block your market entry or demand payment to transfer it. Early filing in China is a strategic necessity, even before you have any Chinese audience.
The Paris Convention priority right gives you 6 months from your first filing to extend protection to other countries while retaining the original priority date, a powerful tool to spread costs and test the market before committing to global coverage.
Practical checklist
Run clearance searches before making your name public
Reserve domain names as early as possible
File your trademark before any major public announcement (trailer, Kickstarter, game show)
Use ™ to signal a trademark claim (even without registration); only use ® in countries where registration has been granted — misuse of ® can be illegal
🔍 Case study #3 — AM General v. Activision Blizzard (2020): Real-World trademarks in games
Background: AM General, the manufacturer of the Humvee military vehicle, sued Activision Blizzard in 2017 for featuring recognisable Humvee vehicles in the Call of Duty franchise without authorisation or royalty payments.
Ruling: The US District Court of New York dismissed AM General’s claims in March 2020. The court applied the Rogers v. Grimaldi test (1989), which provides First Amendment protection for artistic works that use trademarks when there is an “artistic relevance” to the underlying work and the use does not “explicitly mislead” consumers as to the source or endorsement of the content.
Important nuance: This protection is largely specific to US law. In the UK and EU, using a third party’s registered trademark in a commercial product without consent is generally actionable, even in a creative context. A broadly similar dispute involving Ferrari and Grand Theft Auto IV was litigated in France (Paris Court of Appeal, September 2012), where Ferrari’s claims were ultimately rejected but after detailed analysis of the specific similarities involved, not on broad First Amendment grounds.
Practical lesson: Representing real-world branded products in a game, vehicles, weapons, consumer electronics, sports equipment carries varying legal risk depending on jurisdiction. In the US, the First Amendment provides meaningful but not absolute protection. In Europe, the risk is higher. When in doubt, use fictional designs inspired by real-world aesthetics rather than identifiable reproductions.
🔗 Reference: AM General LLC v. Activision Blizzard, Inc., S.D.N.Y., March 2020 — analysed on NYU JIPEL
3. Design rights: The visual protection studios overlook
Design rights protect the appearance of a product — its shape, lines, colours, textures — independently of its function. In the video game context, this applies to:
Character designs and costumes
User interface elements (HUD, menus, icons)
In-game weapons, vehicles, and items
Decorative skins and cosmetic items
This form of protection is frequently underused, despite offering broad, flexible, and cost-effective coverage.
Registered vs. Unregistered Rights
Registered design rights provide protection for up to 25 years (renewable in 5-year periods). At the EUIPO, registering a single design costs less than €350 in official fees. In the UK (post-Brexit), the equivalent process runs through the Intellectual Property Office (IPO).
Unregistered design rights arise automatically upon first public disclosure. In the UK, unregistered design right protects the three-dimensional aspects of an original design for up to 15 years (or 10 years after first marketing). The UK Supplementary Unregistered Design (SUD) available to UK applicants protects the full appearance including decorative elements for 3 years from first disclosure.
The critical timing point: For registered rights, you generally must file within 12 months of first public disclosure. A trailer, a social media post, or a convention demo can start that clock. Once the novelty window closes, registration becomes impossible.
4. Patents: Protecting technical innovation in gameplay
Patents protect technical inventions, in the gaming industry, this may include certain technical implementations of gameplay systems or rendering technologies, provided they meet patentability requirements.”. Their use is less common in games than in hardware, partly because game mechanics in the abstract are not patentable. However, the technical implementation underlying those mechanics may be.
Notable examples of patented game technology include: Namco’s minigame loading screen patent, the dialogue choice wheel used in BioWare’s Mass Effect, the Nemesis system from Middle-earth: Shadow of Mordor, and Valve’s various Steam platform patents.
🔍 Case study #4 — Nintendo v. Pocketpair (Palworld) (2024): Patents on gameplay systems
Background: On September 19, 2024, Nintendo and The Pokémon Company announced a patent infringement lawsuit against Pocketpair, the Japanese developer behind Palworld, alleging that the game infringed patents related to monster-capturing mechanics.
Key development: Japan’s Patent Office rejected one of the Nintendo patent families cited in the suit, finding it lacked novelty with prior art cited from Monster Hunter 4, ARK: Survival Evolved, and Pokémon GO itself.
The in-game impact: Despite the patent validity dispute, on November 30, 2024, Pocketpair released a patch removing the ability to throw spheres to summon creatures, replacing it with a stationary summoning mechanic. Significant design concessions made under legal pressure before the case was fully decided.
Why this matters for studios: A patent doesn’t need to be valid to be expensive. Defending a patent infringement suit, even successfully, costs millions and forces game design changes mid-development or post-launch. For studios, this raises two concrete questions: (1) if you develop a genuinely inventiontechnical mechanic, assess its patentability early; (2) if you are inspired by mechanics from established franchises, check the patent portfolios of the market leaders in that space.
🔗 Reference: Nintendo Co., Ltd. v. Pocketpair Inc., Tokyo District Court, filed Sept. 2024 — followed on Livv.eu
5. Contracts: The invisible infrastructure of your IP
IP rights only have value if you actually own them. Contract management is the foundation of that ownership and it’s where independent studios most often leave themselves exposed.
The essential contracts
With freelancers and external contractors: Every contract must include a clear assignment of rights clause, specifying which works are covered, the scope of the assignment (reproduction, distribution, adaptation), the territory, and the duration. Without this clause, the contractor retains copyright in their work.
With co-development partners: A written agreement between studios should define how IP is split in the event of commercial success, acquisition, or dispute before a single line of code is written.
Non-Disclosure Agreements (NDAs): Protect sensitive information shared with external parties contractors, investors, potential partners before a formal agreement is in place. An NDA doesn’t need to be complex to be effective but still has to define the sensitive information.
End User Licence Agreements (EULAs): Define what players can and cannot do with your game. For user-generated content mods, custom levels, skins , your EULA can legitimately include automatic licence provisions that grant the studio rights to publish and monetise player-created content, provided the clause is clearly drafted.
🔍 Case study #5 — Capcom v. Data East (1994): Character design and the limits of copyright
Background: Capcom sued Data East over alleged similarities between characters in Street Fighter II and Fighter’s History, claiming the latter game copied character designs and fighting styles.
Ruling: The US District Court ruled largely in favour of Data East, finding that most of the similarities cited by Capcom were based on stock characters, fighting stances, and common martial arts conventions,elements too generic to be protected by copyright. Only a small number of specific, highly distinctive design elements were found potentially protectable.
Why it still matters: This case remains a landmark for character design strategy. It establishes that generic archetypes (a large wrestler, a nimble female fighter, a fireball-throwing hero) cannot be monopolised through copyright. But the specific visual expression of those archetypes, the original combination of costume design, colour palette, proportions, and distinctive features can be.
Practical lesson: When designing characters, document the specific creative choices that make them original (design briefs, concept art iterations, creative direction documents). This documentation is what establishes copyright in the distinctive elements, and distinguishes your characters from unprotectable generic archetypes in court.
The use of generative AI in game development raises IP questions that are still being resolved by courts and legislators worldwide:
Ownership of AI-generated content: In the UK, the CDPA makes limited provision for “computer-generated works” (where there is no human author), granting copyright to “the person by whom the arrangements necessary for the creation of the work are undertaken” typically the company operating the AI tool. In the US, the Copyright Office has made clear that purely AI-generated content cannot be registered, but human-curated selections and arrangements of AI output may qualify.
Training data: The use of copyrighted works to train AI models is the subject of active litigation in the US (including suits against Stability AI, Midjourney, and others) and ongoing regulatory development in the EU under the AI Act. Studios using AI-generated assets should carefully review the terms of service of the tools they use and assess their exposure.
Practical recommendation: Document all human creative contributions in your AI workflow save prompts, iteration sequences, and manual modifications to generated content. This documentation may be decisive in establishing copyright protection and defending your rights.
7. Integrating IP into the development cycle
Pre-production
Run clearance searches on game names and distinctive signs
Reserve domain names
Sign contracts with all contributors, including assignment of rights clauses, before work begins
Keep visual concepts confidential until a registration decision is made
Production
Maintain rigorous asset documentation: version histories, creation evidence
Verify the licences on all third-party assets (fonts, textures, plug-ins, audio libraries, Unreal/Unity Marketplace assets)
Track first disclosure dates for any design elements you plan to register
Launch
File trademark applications in key markets before marketing campaigns go live
Complete a copyright audit: confirm all assignment contracts are in place
Register strategic designs before public trailers and reveals
Post-Launch
Monitor actively for copies, clones, and fraudulent apps on stores
Update your IP strategy for DLC, updates, merchandise, and sequels
Extend trademark coverage as you enter new markets
FAQ — Intellectual Property and video games
Are game mechanics protectable by copyright? No and this is a fundamental principle across all major jurisdictions. The US Copyright Office states explicitly that copyright does not protect the idea for a game or its method of play. In the UK, the idea–expression distinction embedded in the CDPA leads to the same result. A battle royale structure, a turn-based system, or a resource-gathering loop cannot be owned through copyright. However, the specific, original expression of those mechanics the visual design, the audiovisual combination, the distinctive “look and feel” can be protected, as the Tetris v. Xio case demonstrated. Gameplay mechanics may also be protectable via patents if they involve a sufficient technical invention.
Does a logo created by a freelance designer automatically belong to the studio? No. In both the UK and the US, the default position is that a contractor retains copyright in work they create, unless there is a written agreement transferring those rights. Without an assignment clause, the designer is technically the copyright owner which means the studio cannot legitimately register the logo as a trademark, and cannot fully enforce it against third parties. This situation is common in studios that work with freelancers through platforms without formalised contracts.
Can a video game character be protected? Yes, through multiple overlapping layers. An original character can be protected by copyright (for its graphic and narrative elements), by trademark (if its name or image is registered), and by design rights (for its visual appearance). Protection is strongest when all three layers apply. Note that the general concept of a character type cannot be monopolised a “fire-wielding mage” or “armoured space soldier” as a concept is not protectable. What is protectable is the specific, original visual expression of that character.
Can a studio freely use classical music in a game? In most jurisdictions, musical works enter the public domain 70 years after the death of the composer (although the exact duration may vary depending on the country and the date of publication).However, a specific recording of that music is protected by separate performer’s rights and sound recording copyright even if the underlying composition is public domain. To use Beethoven in a game, you either need to create your own recording or use a recording explicitly released under a free licence. Always verify that the sheet music edition used is also in the public domain, as modern critical editions may carry their own copyright.
Is a fan game based on an existing franchise legal? Not without the rights holder’s autorisation unless a narrow exception (such as fair use or parody) applies. A fan game using protected characters, worlds, names, or visual assets constitutes copyright infringement (and potentially trademark infringement). Some publishers tolerate fan games informally others, notably Nintendo, actively enforce against them. Informal tolerance does not create a legal right, and a single cease-and-desist can end a project. If fan game creation is something your studio wants to support, consider publishing explicit fan content guidelines with a formal licence, as several major studios now do.
How do I protect a game name before announcing it publicly? The recommended sequence: (1) run a clearance search to confirm the name is available; (2) reserve the corresponding domain names; (3) file a trademark application in your priority markets before any public announcement. In the UK, file with the UK Intellectual Property Office (UKIPO); in the United States, file with the USPTO (including on an intent-to-use basis if applicable). You may then rely on the Paris Convention’s six-month priority right to extend protection internationally while retaining your original filing date.
What happens if a freelancer uses my game’s assets after our contract ends? If you have a properly drafted assignment agreement, you are supposed to have a clear infringement claim. Without that agreement, the freelancer may have legitimate rights in the assets they created. Even with a contract, retain all evidence of the collaboration, emails, briefs, version histories, invoices to establish authorship and the validity of the assignment in any dispute.
Can a publisher claim rights over mods created by players? Yes, if the EULA is drafted to include that. Most major publishers use EULAs that grant them a broad licence over user-generated content created using their game or tools. The enforceability of such clauses varies by jurisdiction and depends on how clearly they are written. Under UK and EU consumer protection law, unfair clauses may be struck down. A creator whose mod contains genuinely original elements such as new characters, new scripts, original code may retain copyright in those original contributions, even if the publisher holds a licence to publish the mod through the game’s platform.
Are NFTs linked to game items protected by IP law? An NFT is a cryptographic certificate associated with a digital asset.and donot a transfer of intellectual property rights. Buying an NFT representing a game character does not confer copyright in that character, unless the sale contract explicitly says so. The question of how NFTs interact with existing IP frameworks is still developing legally. Studios using NFTs or blockchain-based in-game economies should ensure their terms of sale clearly define what the buyer does and does not acquire.
What does a basic IP strategy cost for an independent studio? There is no single answer, but here are indicative official fee ranges (2024-2025, before legal fees):
EU Trade Mark (EUIPO): ~€850 for one class, ~€50 per additional class
UK Trade Mark (IPO): ~£170 for one class, ~£50 per additional class
US Trade Mark (USPTO): ~$250–$350 per class
International Trade Mark (WIPO/Madrid): from ~750 CHF + per-country fees
EU Registered Design (EUIPO): ~€350 for one design
UK Registered Design (IPO): from ~£50 for one design, with reduced per-design fees for multiple applications filed together. (fees increasing ~25% from April 2026)
A realistic starting IP strategy for an independent studio can begin under £3,000 / €3,500 covering priority markets, then expand progressively as the studio grows.
Conclusion: IP as a strategic investment from day one
Intellectual property is not administrative housekeeping reserved for large studios. It provides protection to for your creativity, secures your revenue, and strengthens your position with investors, partners, and competitors.
The cases in this guide reflect a consistent reality: IP disputes happen at every level of the industry, from independent creators to the industry’s biggest players. What distinguishes well-prepared studios is anticipation: contracts signed before the first asset is created, trademarks filed before the first trailer, designs registered before the first convention reveal.
Whatever your budget, scalable protection is achievable. The key is to integrate IP into your development process from the start — not as an afterthought once the game is done, but as a core part of building something worth protecting.
Sources and references
Reference
Link
Tetris Holding, LLC v. Xio Interactive, Inc., D.N.J., 2012
This guide is intended for general informational purposes only and does not constitute legal advice. For any specific situation, consult a qualified IP attorney or trade mark attorney in your jurisdiction.
Genuine use of a trademark constitutes a fundamental condition for maintaining balance within trademark law. In response to the proliferation of filings, defensive registration strategies, and overly broad specifications covering entire classes of goods and services, the legislature has enshrined the requirement of actual commercial exploitation of the sign. Protection is legitimate only insofar as the trademark effectively fulfills its essential function of indicating origin on the market.
This requirement of genuine use is not merely theoretical. In contentious proceedings, it operates as a substantive filter of the validity and enforceability of the monopoly right. A registered trademark that is insufficiently exploited becomes vulnerable to revocation.
The legal framework governing genuine use: requirements and assessment
Under this regime, a trademark owner incurs total or partial revocation where, without proper reasons, the trademark has not been genuinely used for a continuous period of five years in respect of the goods or services for which it has been registered. Revocation may be sought by any third party upon proof of absence of genuine use.
The concept of genuine use must not be equated with token or purely formal use intended solely to preserve the rights conferred by the trademark. According to settled case law of the Court of Justice of the European Union, genuine use consists in use that is consistent with the essential function of the trademark namely, to guarantee the identity of origin of the goods or services and that seeks to create or maintain market share for those goods or services (CJEU, Ansul, C-40/01). Such use must be public and external to the undertaking; purely internal or symbolic use is insufficient. However, genuine use may be effected by a third party with the consent of the proprietor.
Furthermore, the assessment of genuine use must be carried out globally, taking into account the nature of the goods or services concerned, the characteristics of the relevant market, the territorial scope, and the frequency and intensity of the use (General Court, Sunrider Corp., T-203/02). In this respect, no minimum quantitative threshold of use may be required in the abstract (CJEU, La Mer Technology, C-259/02).
Moreover, genuine use must occur within the relevant territory covered by the protection conferred by the trademark. In the case of a French trademark, use must take place in France, it being accepted that use confined to a particular geographical area may suffice where it is economically justified. As regards an EU trademark, use must extend to a substantial part of the territory of the European Union; this requirement is assessed qualitatively rather than purely geographically, having regard in particular to the characteristics of the relevant market (CJEU, Leno Merken, C-149/11).
The burden of proof of genuine use
The assessment of genuine use of a trademark is subject to a concrete and contextual review carried out by the INPI or the EUIPO or the competent court, which determines, on the basis of a consistent body of converging evidence, whether the alleged use fulfills the essential function of the trademark, namely to guarantee the identity of origin of the goods or services on the market.
Use must be established for the relevant reference period and within the legally pertinent territory that is, France in the case of a French national trademark and, in the case of a European Union trademark, within the European Union, pursuant to a concrete appraisal taking into account the market concerned, without any automatic requirement of proof in several Member States.
Genuine use must also be demonstrated in respect of the specific goods or services relied upon and in a form of the sign that corresponds to the registration or does not alter its distinctive character. The assessment is both qualitative and quantitative in nature: the economic consistency of the evidence, its expression, and its capacity to demonstrate an actual presence on the market prevail over its mere isolated volume.
The nature of admissible evidence
Proof of genuine use rests primarily on objective, external and economically verifiable evidence demonstrating that the trademark has been effectively exploited on the market in relation to the goods or services concerned. The courts and the INPI as well as the EUIPO expect documentary evidence such as invoices, contracts, purchase orders or accounting records referring to the sign at issue, enabling the identification of the nature of the goods or services marketed, their volume, their frequency and their geographical destination. Catalogues, brochures, price lists, packaging, advertising materials or product photographs likewise carry probative value, provided that they are precisely dated and establish actual commercial circulation rather than merely preparatory acts.
Digital and marketing evidence now plays a decisive role, subject to proper contextualization: dated and archived screenshots of websites, sales data drawn from e-commerce platforms, media coverage or market studies, for example. Such evidence derives its probative force not from its abstract existence, but from its capacity to demonstrate an effective interface between the trademark and the relevant public, thereby evidencing concrete commercial activity on the relevant goods and services.
The scope of proof: preservative effect and delimitation of enforceable rights
In litigation, these principles assume a decisive procedural dimension. In revocation proceedings, the burden of proof lies with the trademark owner, who must demonstrate genuine use during the relevant period; failing such proof, revocation is ordered in respect of those goods or services not substantiated by the evidence produced by the adverse party. In opposition or invalidity proceedings, where the earlier trademark has been registered for more than five years, proof of use is required upon request by the contested applicant/trademark holder and constitutes a condition for both the admissibility and the effectiveness of the pleas relied upon by the adverse party. The adjudicating authority does not confine itself to noting the formal existence of documents, but assesses their economic consistency, their concordance and their precise correspondence to the goods claimed.
The issue of autonomous sub-categories reinforces this requirement: where the specification is broad and divisible, proof must relate to each distinct segment, as sporadic use in respect of a single good or service is insufficient to maintain protection for the entirety of the abstractly claimed category. An overextended portfolio, not aligned with actual exploitation, mechanically increases the risk of partial revocation.
Proof of genuine use constitutes a central issue in trademark litigation. The burden rests on the proprietor and must relate to a relevant period, territory and scope, supported by dated and verifiable documentation.
In a context where courts undertake a nuanced assessment particularly where autonomous sub-categories are at issue evidentiary management becomes a major strategic concern. Assembling a robust and structured evidentiary record is no longer optional, but a condition for the survival of trademark rights when faced with revocation actions or challenges in opposition proceedings.
While genuine use is not a condition for the initial validity of a trademark, it is a condition for the continued maintenance of the monopoly over time.
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.
1. Can late resumption of use prevent revocation? Yes, but only if it occurs prior to the filing of the revocation action and is not artificially organized for the sole purpose of avoiding the proceedings.
2. Is use by a licensee valid? Yes. Use by a licensee, with the consent of the proprietor, is legally deemed equivalent to use by the proprietor.
3. Is internal use (internal documents, prototypes) sufficient? No. Use must be public and market-oriented. Purely internal or preparatory use is insufficient.
4. Can limited commercial activity amount to genuine use? Yes, provided it is consistent with the size and structure of the relevant market. Assessment is always contextual.
5. Is proof of use examined ex officio? No. It is examined only when expressly raised in the context of contentious proceedings.
6. Why must evidentiary management be anticipated? Assembling an evidentiary record retrospectively is often complicated. Regular archiving of evidence of use is an essential measure to secure and preserve a trademark portfolio.
The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.
Filing an opposition against a European Union Trademark (EUTM) application without holding a registered prior right may appear intuitive where a sign has been used for several years. In practice, however, acting without an enforceable title is often a legally fragile and economically risky strategy.
In a context of increasing filings before the EUIPO and intensified competition among European market players, it is essential to assess the strength of one’s rights before taking action. A poorly grounded opposition may not only fail but also weaken a company’s strategic position.
a national trademark registered in a Member State;
an earlier European Union trademark;
an international registration designating the EU;
a well-known trademark within the meaning of the Paris Convention.
In the absence of such a right, an opposition is, in principle, bound to fail.
Contrary to common belief, mere commercial use of a sign in several Member States is not sufficient. The EU system is built upon the legal certainty attached to registration.
Earlier unregistered use: limited and strictly regulated protection
The exception under article 8(4) EUTMR: a narrow path
There is a limited exception. Article 8(4) EUTMR allows an opposition to be based on a non-registered sign used in the course of trade, provided that:
the right is recognised under the national law of a Member State;
that right entitles its holder to prohibit use of the later trademark;
the use predates the contested filing;
the sign is of more than mere local significance.
There is no EU-wide “unregistered European trademark.” The assessment must be conducted country by country.
A demanding evidentiary burden
In practice, the EUIPO requires substantial evidence, such as:
dated invoices and contracts;
detailed turnover figures;
documented advertising campaigns;
media coverage;
proof of geographic market presence.
EU case law confirms that the burden of proof is heavy and the interpretation strict. For example, in a decision of July 9, 2010 (T-430/08), concerning the company name “Grain Millers GmbH & Co. KG,” invoked for flour products in Germany, it was argued that the company could not rely on its trade name.
The General Court of the European Union held, however, that under German law, pursuant to Article 5(2) of the Markengesetz, rights in a trade name arise from its first use in the course of trade, without the need for formal registration.
Procedural and strategic risks of opposing without prior rights
A high risk of rejection
A poorly founded opposition may result in:
loss of official opposition fees;
legal costs;
a possible order to bear the other party’s costs;
loss of strategic credibility.
Furthermore, a rejection decision may be used by the applicant to strengthen its commercial position.
A boomerang effect on trademark strategy
Acting without registered rights often reveals a structural weakness: lack of anticipation in protection strategy.
This may:
encourage third parties to file similar signs;
weaken the company’s position in negotiations;
expose it to counterclaims.
In some cases, an unsuccessful opposition may even prompt the applicant to initiate infringement proceedings once registration is granted.
Alternatives and effective strategies to secure your position
1. Prompt filing of a national or EU trademark
If the contested application is still under examination, a coordinated strategy may be considered. However, a later filing does not allow action against an earlier application.
2. Subsequent invalidity action
Once the trademark is registered, an invalidity action may be appropriate, particularly if based on:
A well-reasoned cease-and-desist letter may assert the rights relied upon, outline the risks incurred, and open the door to an amicable solution: withdrawal of the application, limitation of goods and services, or a coexistence agreement.
This strategy often produces faster, more controlled and less costly results than formal EUIPO proceedings.
Defining a coordinated multi-jurisdictional strategy.
Conclusion
Taking action against a European Union trademark application without a registered prior right is rarely a winning strategy.
Before filing any opposition, a thorough legal assessment is essential. Holding a solid prior right remains the cornerstone of any effective action.
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.
1. What is the difference between an opposition and an invalidity action? An opposition is filed during the examination phase of a trademark application and aims to prevent registration based on prior rights. An invalidity action is brought after registration and seeks retroactive cancellation of the trademark, based on relative grounds (prior rights, bad faith) or absolute grounds (lack of distinctiveness, public policy, etc.).
2. Is prior use of a trade name sufficient? Only if the applicable national law allows the holder to prohibit use of a later trademark and if the sign is of more than mere local significance.
3. Can bad faith be invoked without holding a formal prior right? Yes. Bad faith may be relied upon, particularly in invalidity proceedings, even without a registered trademark. However, evidence must demonstrate an intention to harm or unfairly appropriate the value of an existing sign.
4. Is there an EU-wide “unregistered European trademark”? No. There is no unitary protection for an unregistered trademark across the European Union. Only certain national laws recognise non-registered signs under strict and territorially limited conditions.
5. Can a domain name used for several years constitute an enforceable prior right? Yes, but only if it is recognised as a distinctive sign protected under applicable national law and if it entitles its holder to prohibit use of a later trademark. Mere use is insufficient; it must be substantial, prior and legally enforceable.
This publication is intended to provide general guidance and to highlight certain legal issues. It is not intended to apply to specific situations or to constitute legal advice.
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Written by Nathalie Dreyfus13/03/2026 
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