The evolution of trademark law in Europe has enabled the emergence of new forms of distinctive signs, adapted to companies’ visual strategies. Among these, the position mark stands out as a still relatively uncommon category, though one whose use and recognition are steadily increasing before European offices and courts.
This type of trademark, which lies at the intersection of design and traditional trademarks, protects the specific way in which a sign is affixed to a product. The European Union has regulated this concept through the European Union Trademark Regulation (EUTMR) and the EUIPO guidelines, in order to define its limits and guarantee legal certainty for economic operators.
Definition and characteristics of position marks
According to the EUIPO, a position mark is defined as a sign “consisting of the specific manner in which the mark is placed or affixed to the product.”
The graphic representation must clearly identify the position, size, and proportion of the sign in relation to the product concerned.
To be admissible, the graphic representation of the trademark application must:
Be precise, intelligible, and objective.
Include, where applicable, dotted lines to distinguish unprotected elements.
Avoid any vague descriptions suggesting that the position of the sign could vary depending on the products.
Thus, protection covers not only the sign itself, but also the combination of that sign and its particular positioning on the product.
Have distinctive character, enable consumers to identify the commercial origin of the goods.
The EUIPO ensures that the representation filed allows any economic operator to understand the scope of protection without ambiguity. A sign that is purely decorative, generic, or inseparable from the usual appearance of the product may be refused. Case law thus reminds us that a position mark must not be confused with a simple design or aesthetic element.
The Airwair International Limited case
In a decision handed down on August 12, 2025, the EUIPO Cancellation Division ruled in the case Mtng Europe Experience, S.L.U. v. Airwair International Limited, regarding the famous yellow heel loop on Dr. Martens shoes.
Mtng Europe Experience, challenged the validity of the position mark registered by Airwair, described as a black and yellow buckle affixed to the back of the shoe, accompanied by contrasting yellow stitching.
The EUIPO reiterated that the representation of a trademark must be clear, precise, and durable, allowing for unambiguous identification of the protection conferred.
In this case, the Cancellation Division ruled that the trademark met these criteria and rejected the request for cancellation, considering that the visual element and its position gave the product a strong distinctive character.
This decision confirms the possibility of protecting an iconic visual positioning when it serves as an indication of commercial origin.
Practical issues for rights holders
For businesses, position marks offer valuable protection against the imitation of distinctive visual elements. They extend the protection afforded by the design or shape of the product by specifically targeting the location of a distinctive sign.
However, their success depends on a rigorous filing strategy:
Describe the position of the sign precisely;
Avoid any confusion between aesthetic function and function of origin;
Ideally, secure the trademark application with proof of use and public recognition.
Trademark owners must therefore work hand in hand with specialized IP counsels to secure the scope of their applications and avoid any cancellation based on lack of clarity or distinctiveness.
Conclusion
Position marks represent a major evolution in trademark law, adapted to contemporary visual and marketing realities.
The Airwair case illustrates the importance of rigorous and consistent representation to ensure the validity of such a registration.
By combining visual innovation and legal rigor, position marks enable companies to protect not only their identity, but also the way they present it to the public.
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.
A position mark protects the specific way in which a sign is affixed to a product, rather than the sign itself. It is therefore distinct from figurative or three-dimensional marks.
2. What are the criteria for the validity of a position mark ?
It must be clear, precise, and sufficiently distinctive to enable consumers to identify the origin of the product.
3. What is the difference between a position mark and a design ?
A design protects the aesthetic appearance of a product, while a position mark protects the commercial origin associated with a particular visual positioning.
4. Can position mark protection and design protection be combined ?
Yes, both types of protection can coexist if they serve different purposes: one aesthetic, the other distinctive.
5. Why register a position mark ?
To prevent imitations and strengthen the protection of iconic visual elements that contribute to a brand’s identity, such as a seam, a stripe, or a distinctive location.
The administrative cancellation procedure has been available before the INPI since April 1, 2020, thanks to the PACTE Law of May 22, 2019. After five years, this procedure has proven highly successful. Bad faith in the filing of a trademark is one of the most frequently invoked absolute grounds for cancellation before the INPI. The rise of parasitic strategies, increased competitive tensions, and the consolidated case law from the CJEU have prompted companies to examine what this concept actually entails.
In this article, we provide a comprehensive guide to understanding and identifying bad faith in a trademark application, in order to determine under which conditions a nullity action can be brought before the INPI.
Understanding the concept of bad faith in trademark law
Under Article 2274 of the French Civil Code, good faith is always presumed. The burden of proof lies with the claimant seeking nullity, who must provide relevant and consistent evidence. This evidence must be dated, contextualized, and allow assessment of the applicant’s intention at the time of filing.
Identifying bad faith in a trademark application
Fraudulent behaviors targeting a specific third party
This category covers situations in which the applicant knew of prior use and filed with the intention of harming the third party’s interests, for example:
Filing a sign used by a former business partner, employee, or distributor
In the Secretum decision of April 15, 2025 (NL24-0093), a commercial partnership existed between the claimant and the owner of the contested trademark. The claimant had created a wine trademark specifically for the owner, with a contract explicitly stating that the trademark remained the claimant’s property. Despite this clause, the owner filed an identical trademark, reproducing both the term and the calligraphy.
Intent to improperly benefit from the reputation of the sign
For example, in a July 3, 2023 decision (NL23-000) regarding the trademark “” (or “BANDE DE FILS DE SNAP”) the INPI considered that the trademark exploited the notoriety of the signs “SNAPCHAT” and “”. The contested trademark was filed with the intent to create an association in the public’s mind and profit from the reputation and success of the existing application.
Coincidence of the end of a contractual relationship and a targeted filing
In the HYGROTOP decision of February 23, 2022 (NL21-0167), the claimant had ended commercial relations with the company distributing and installing its products. On the same day, the managing director of the distributing company filed the claimant’s name as a trademark.
Filings diverting the essential function of a trademark
Some fraudulent filings do not target a specific third party but aim to obtain an unjustified monopoly, for example:
Filing to prevent a revocation action
In the Pomone decision of March 27, 2025 (NL23-0276), the claimant requested that the owner of preexisting POMONE marks (filed in 2017 and registered for more than five years) provide proofs of use, according to the rules controlling use of older marks. Less than three weeks after this request, the owner filed the contested trademark to strengthen its position in negotiations regarding the purchase of the marks.
Filing a work in the public domain
In the Pompon decision of September 13, 2024 (NL23-0183), the trademark «POMPON», filed by a museum shop operator, was challenged by Dixit Arte SAS. The claimant argued that the registration aimed to monopolize the name «Pompon», associated with sculptor François Pompon, whose works are in the public domain.
The assessment is global and depends on multiple factors, such as:
Chronology of events (often decisive), e.g., in Drag Race France, April 26, 2023 (NL22-0205), the contested trademark was filed simultaneously with the announcement of the show’s arrival in France by the claimant.
Attempts to monetize the filing, e.g., in Google, August 30, 2021 (NL21-0055), the owner of the contested marks offered to modify the project in exchange for compensation, indicating a “wait for a monetary proposal.”
Other factors include:
Prior relations between the parties;
Notoriety of the prior sign;
A clearly parasitic strategy of multiple filings.
Conversely, the INPI rejects bad faith when a filing aims to strengthen preexisting rights or involves a real and legitimate exploitation project.
Bad faith as a procedural tool before the INPI: the example of forfeiture through acquiescence
However, the article makes an exception: nullity is still possible if the registration was filed in bad faith. This serves as a powerful lever when the prior right holder discovers an abusive filing late.
In the recent LOCPLUS decision of December 14, 2023 (NL21-0255), the issue was examined, showing the strictness required to overturn forfeiture. In that case, although bad faith was invoked to bypass forfeiture, the argument was rejected due to insufficient evidence.
Conclusion
Cancellation of a trademark for bad faith in INPI proceedings is a decisive legal mechanism to combat parasitic strategies. Rigorous assessment of bad faith strengthens the legal certainty for economic actors.
In an environment of increasing trademark conflicts, understanding this absolute ground for cancellation is essential to protect intangible assets and anticipate 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 the INPI raise bad faith ex officio during examination of a trademark application No. The INPI cannot raise bad faith on its own; it can only be invoked by a third party in a nullity action.
2. Is likelihood of confusion required to prove bad faith? No. Bad faith sanctions a fraudulent intention, independent of confusion analysis.
3. Can a company file a name it plans to commercialize later? Yes, provided there is a genuine and fair intention to use it, not as part of a fraudulent strategy to block a competitor.
4. Can multiple filings indicate bad faith? Yes, if they reveal a systematic strategy to capture signs used by third parties.
5. Can bad faith exist without targeting a third party? Yes, for example, when the filing diverts the essential function of a trademark.
This publication provides general guidance and highlights key issues. It is not intended for specific cases nor to constitute legal advice.
The publication by the INPI of its analysis of the first five years of cancellation and revocation procedures trademarks an important step in the evolution of trademark litigation in France. For the first time, the Office provides a comprehensive and documented overview of how these procedures, introduced by the Ordinance of November 13, 2019, and accessible since April 2020, actually work.
This report, published in the INPI’s Journal du droit, highlights how these administrative mechanisms have become a key tool in trade mark protection and litigation strategies. It outlines the profile of users, the legal grounds most frequently invoked, and the way the INPI applies the provisions of the Intellectual Property Code.
An administrative procedure that has become essential
Since their entry into force on April 1, 2020, applications for cancellation and revocation, provided for in Articles L. 714-3 and L. 714-5 of the Intellectual Property Code, have significantly transformed trademark litigation.
They offer several advantages:
direct access, without going through a court;
controlled costs, limiting the financial uncertainties of legal proceedings;
a clear procedural framework, allowing for better anticipation.
The first decision issued in November 2020 confirmed the INPI’s ability to handle disputes previously reserved for specialized courts. Since then, companies, particularly SMEs, have actively used these procedures to protect their trademarks or challenge those of competitors.
A volume of decisions that is reshaping the landscape
In five years, the INPI has received approximately 2,200 applications and issued more than 1,800 decisions, a stable volume demonstrating widespread adoption by businesses and practitioners.
Breakdown of applications:
60% cancellation actions;
40% revocation actions.
These figures show two main uses:
challenging the validity of a trademark upon filing
sanctioning the absence of genuine use.
The analysis also highlights the strong involvement of SMEs and micro-enterprises, which represent more than one-third of applicants and defendants. The mechanism therefore achieves the accessibility objective set by the legislator.
The presence of a lawyer or patent attorney in over 90% of cases confirms that, despite its accessibility, the procedure remains legally demanding.
The legal grounds most commonly invoked the INPI
Relative grounds dominate cancellation actions :
Nearly 70% of cancellation requests are based on prior rights (Articles L. 711-3 et seq. of the CPI).
The INPI regularly recognizes the similarity or likelihood of confusion between signs, which explains the high success rate of this type of action.
Absolute grounds remain decisive :
Approximately 20% of actions invoke absolute grounds such as:
lack of distinctiveness,
descriptive character,
violation of public policy,
bad faith at the time of filing.
Bad faith, which was previously mainly examined by the courts, now plays an essential role before the INPI. It is invoked in more than 20% of cases and upheld in a significant proportion of them.
Revocation : lack of use as the main argument :
Lack of genuine use remains the main basis for revocation proceedings. The INPI notes that lack of commercial exploitation continues to be the easiest objective ground to document. Around 30 decisions also dealt with the degeneration or misleading nature of trademarks, which are rarer but important situations for certain sectors.
Duration, effectiveness, and observed trends
The average duration of proceedings is 8.5 months, which can extend to 17 months in the event of a hearing.
Nearly 30% of proceedings are closed without a decision on the merits (withdrawal, regularization, amicable agreement), which demonstrates the strategic use of proceedings as a bargaining chip.
Success rates are high:
85% of actions based on prior rights are successful in whole or in part;
74% of revocation actions are fully justified;
More than 1,000 trademarks have been canceled or revoked since 2020.
Decisions often include an order to pay costs, with an average amount of €680, reinforcing the need for a solid strategy before initiating proceedings.
Practical issues for trademark owners
The publication of the analysis highlights several essential reflexes:
regularly check the strength of registered trademarks;
systematically keep evidence of use, which is essential in the event of a dispute;
monitor competing filings to quickly detect conflicts using the tools provided by the INPI;
factor the risk of cancellation into naming and branding decisions;
prepare precise, documented, and structured arguments to maximize the chances of success.
To support these efforts, companies can rely on several useful resources:
The CNIL when evidence is based on online or time-stamped data.
Conclusion
The analysis published by the INPI confirms the key role played by cancellation and revocation proceedings in protecting trademarks in France. Their effectiveness, the diversity of the parties that use them, and their high success rate now make them an essential tool. For companies, the challenge is to adopt an active, proactive, and documented approach to managing their intellectual property in order to secure their intangible assets in the long term.
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.
The long-awaited Next Round of ICANN’s new gTLD Program is finally on the horizon.
Set to open in April 2026, this new application window will reshape how trademark owners, communities, and innovators engage with the Internet’s Domain Name System (DNS).
The next round of ICANN’s new GTLD program follows the landmark 2012 round, which introduced over 1,200 new top-level domains (.app, .shop, .paris, .集团, etc.). Since then, the Internet ecosystem has evolved dramatically, reflecting broader technological, linguistic, and regulatory shifts.
ICANN’s community, through the GNSO Subsequent Procedures Working Group, has redefined the policy framework to increase diversity, inclusivity, and competition within the DNS. The Next Round aims to create a more accessible and multilingual Internet, encouraging participation from under-served regions and new industry sectors.
For trademark owners, the upcoming round is not merely a technical event, it is a strategic turning point!
The 2026 timeline: milestones and implementation path
ICANN has confirmed a tentative 12–15-weeks application window beginning in April 2026, with preparatory programs already in motion:
Applicant Support Program (ASP): open since November 2024, closing November 19, 2025 (extended to December 19, 2025 to submit a completed application).
Applicant Guidebook (AGB): to be finalized by December 2025, establishing the definitive rules and criteria for applicants.
These steps are part of ICANN’s phased approach covering policy implementation, program design, infrastructure development, and operationalization, the four pillars identified in its official status report.
Key outcomes from ICAAN 84 in Dublin
The ICANN 84 meeting in Dublin served as a decisive moment for consultation.
Multiple sessions focused on governments’ readiness, trademark engagement, and the technical ecosystem’s preparedness.
Governmental Advisory Committee (GAC) engagement
During its plenary and capacity-building sessions, the GAC emphasized its oversight role, especially the Early Warnings mechanism, allowing governments to flag potentially problematic strings or applicants on public-interest grounds. A new “GAC Readiness Pathway” was launched, including webinars, e-learning modules, and outreach to national governments scheduled for late 2025.
Governments also raised recurring concerns regarding geographic TLDs (geoTLDs), IDN variants, and fair access to applicant support program, issues that will shape the policy environment for 2026.
Geographic and trademark registries
The GeoTLD Group highlighted the importance of genuine local community engagement and governmental non-objection letters, stressing transparency in governance for place-based TLDs.
In parallel, the Brand Registry Group (BRG) discussed strategies relating to .brand TLDs, emphasizing the need for preparation as early as the second quarter of 2026, including provider selection, contractual compliance, and post-delegation planning. For companies, this requires close coordination between domain-name strategy, marketing, cybersecurity, and legal teams ahead of the opening of the application window.
Core challenges for applicants
Governmental involvement and Early Warnings
Applicants must anticipate governmental scrutiny early in the process. GAC Early Warnings can significantly affect evaluations or even trigger objections.
Recommendation: Monitor applied-for strings, maintain dialogue with relevant authorities, and integrate public policy considerations into your application strategy.
Applicant Support Program (ASP)
The ASP aims to reduce fees by up to 75–85% for qualified applicants from under-served regions. However, governments and civil-society groups stress that outreach remains insufficient.
Applicants should assess eligibility criteria, potential benefits, and strategic trade-offs between ASP participation and standard applications.
Contention sets and auctions
When multiple applicants seek the same string, contention resolution becomes critical. ICANN has not yet confirmed whether auctions, controversial in 2012, will remain the default.
Trademark owners should prepare for potential competition, alliances, or pre-emptive applications to mitigate disputes.
Technical and operational readiness
The RSP Evaluation Program transfers part of the technical due diligence outside the applicant phase. While this simplifies evaluation, it also requires early engagement with RSP partners to ensure compliance, stability, and security.
Selecting a technically competent RSP is now a precondition for application success.
Fees and cost management
The application evaluation fee is estimated around USD 227,000 per TLD, excluding legal, technical, and operational costs.
Applicants should prepare comprehensive budgets, anticipate cost recovery mechanisms, and align internal governance with registry obligations.
IDNs, variants, and multilingual opportunities
The Next Round will support 26 scripts under the Root Zone Label Generation Rules (RZ-LGR).
This represents a major opportunity for global trademarks seeking to localize their digital presence. However, applicants must address string similarity risks, translation accuracy, and local regulatory nuances.
Public Interest Commitments (PICs) and Registry Voluntary Commitments (RVCs)
All new registries must agree to PICs/RVCs, defining commitments related to consumer protection, transparency, and responsible operation. These are legally binding under the Registry Agreement.
Trademark owners must prepare governance and compliance frameworks to support these obligations.
Strategic implications for trademark owners
For trademark owners
Applying for a .brand TLD (also called a dotBrand) represents one of the most strategic evolutions in corporate digital identity since the first gTLD round in 2012. A dotBrand allows a company to operate its own exclusive, secure domain space under its direct control.
This model goes far beyond traditional defensive registrations or marketing convenience. It provides unprecedented autonomy in managing domain names, strengthens consumer trust, and supports digital transformation objectives across business units.
Brand control and consumer trust
Owning a .brand enables the creation of a trusted digital ecosystem, where every domain ending in the company’s TLD is verified and controlled by the rights holder.
This eliminates risks of phishing, counterfeiting, and typosquatting within the namespace, ensuring users can safely navigate to authentic websites such as shop.brand, careers.brand, or support.brand.
From a reputational standpoint, the .brand domain reinforces brand integrity and customer’s trust, particularly for regulated sectors like financeand health
Strategic marketing and innovation potential
A .brand opens new opportunities for innovation in communication and marketing.
Companies can structure personalized campaigns (e.g. summer.brand), or segment offerings (pro.brand, luxury.brand) with full consistency. This fosters omnichannel continuity, as the brand controls the entire domain architecture.
Moreover, using a .brand TLD signals technological leadership and enhances SEO performance by centralizing traffic under one authoritative namespace, improving both discoverability and data security.
Operational autonomy and long-term efficiency
Operating a private TLD brings technical independence from third-party registrars and external platforms. It allows companies to define their own registration policies, DNS management, and security standards (DNSSEC, SPF, DMARC, etc.).
While initial costs are higher than traditional domain portfolios, maintaining a .brand over time can be more economical and efficient, particularly for organizations managing hundreds of domain names. The consolidation of assets into one controlled namespace reduces administrative complexity and renewal expenses.
Challenges and responsibilities
However, a .brand also comes with governance and compliance obligations.
Brands must appoint a Registry Service Provider (RSP) meeting ICANN’s technical criteria and assume ongoing reporting duties under the Registry Agreement. Internal teams (legal, IT, marketing) must collaborate closely to ensure compliance with Public Interest Commitments (PICs) and Registry Voluntary Commitments (RVCs).
It is crucial to prepare internal procedures for policy management, data protection, and incident response within the .brand environment.
For more information on this subject, please refer to our focus article on .brands.
Conclusion
The Next gTLD Round is both an opportunity and a challenge. ICANN’s roadmap is becoming clearer, but success will depend on early strategic preparation, stakeholder engagement, and a sound understanding of both policy and technical frameworks.
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.
A gTLD (generic Top-Level Domain) is a generic domain name extension appearing at the end of an Internet address, such as .com, .org, .shop, or .paris. gTLDs serve to structure the Domain Name System (DNS) and provide new opportunities for communication, visibility, and digital positioning for businesses, institutions, and communities.
2. What is the Applicant Guidebook (AGB)?
The Applicant Guidebook (AGB) is the official ICANN document setting out the rules, procedures, and requirements applicable to applicants seeking to operate a new gTLD. It defines the evaluation criteria, objection and dispute resolution mechanisms, and the technical, financial, and contractual obligations applicable to prospective registry operators.
3. What are the Public Interest Commitments (PICs)?
The Public Interest Commitments (PICs) are contractual obligations ensuring that registry operations serve the public interest, protect consumers, and prevent abuse.
4. How are domain names in non-Latin scripts handled?
Domain names aren’t limited to the Latin alphabet. In the next application round, it will be possible to register domain names in 26 different writing systems, including Arabic, Chinese, Japanese, Hindi, and Cyrillic.
To ensure these domain names work properly worldwide, ICANN uses a set of technical rules called the “Root Zone Label Generation Rules” (RZ-LGR). In short, this system makes it possible for people to use the Internet in their own language and writing system, while ensuring that domain names remain safe, clear, and universally functional.
5. Do trademark owners need government approval to apply for new gTLDs?
Only geographic extensions (geoTLDs), such as .paris or .london, require the support, authorisation or formal non-objection of a government or competent public authority.
6. How should trademark owners prepare for the 2026 ICANN application window?
To make the most of the upcoming round, trademark owners should begin preparing now by taking a structured, strategic approach. Preparation involves:
Conducting feasibility and ROI assessments to determine whether adopting a .brand TLD aligns with the company’s long-term digital and marketing goals.
Mapping potential use cases and establishing naming conventions to ensure consistent deployment across business units.
Engaging early with qualified Registry Service Providers (RSPs) to confirm technical readiness and compliance capacity.
Budgeting for application, setup, and annual registry operations, anticipating both one-time and recurring costs.
Reviewing internal compliance frameworks to ensure alignment with ICANN’s upcoming 2025 policy updates and Public Interest Commitments (PICs).
This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.
Genuine use is a fundamental condition for maintaining the validity of a trademark. A trademark may indeed be revoked if it has not been put to genuine use for the goods or services for which it is registered over an uninterrupted period of five years. This requirement prevents the registration of trademarks without real commercial intention and preserves the availability of distinctive signs for other economic operators.
The date of December 31, 2025 stands as a key milestone for EU trademark owners holding a “cloned” UK trademark. As from January 1st, 2026, use of the trademark within the European Union will no longer be accepted to demonstrate genuine use of a cloned UK trademark (often identifiable by a number beginning with 008 or 009). In other words, only actual and effective use of the trademark in the United Kingdom will make it possible to avoid revocation for non-use or to satisfy a proof-of-use request before the UK Intellectual Property Office (UKIPO).
The context of the UK’s withdrawal and the creation of “cloned” UK trademarks
The establishment of “cloned” trademarks in the United Kingdom
When the United Kingdom left the European Union on December 30, 2020, EU trademarks (EUTMs) ceased to automatically cover UK territory. In response, the UKIPO created comparable or “cloned” UK trademarks for every EUTM registered on that date, as well as for international registrations filed through WIPO designating the European Union.
These cloned trademarks retained the filing date, priority and seniority of the original EUTM but became fully independent national UK rights, subject to UK rules on renewal, genuine use, revocation, and invalidity.
The transitional regime for use between the EU and the UK
A transitional mechanism allowed use within the European Union to be taken into account for cloned UK trademarks, provided such use occurred before January 1st, 2021 or if the five-year reference period included use prior to that date.
This transitional bridge remained applicable until the beginning of the new five-year period starting January 1st, 2021. Consequently, from January 1st, 2026, only use in the United Kingdom will be relevant for cloned UK trademarks.
Why is December 31, 2025 a pivotal date for trademark owners?
The end of EU-use recognition for cloned UK trademarks
The turning point is clear: after December 31, 2025, the five-year reference period for assessing genuine use will apply exclusively to use occurring after January 1st, 2021. As a result, use in an EU Member State will no longer be acceptable to justify the use of a cloned UK trademark, only genuine, effective use in the United Kingdom will be considered.
Trademark owners who relied solely on EU-based use must therefore demonstrate real and effective use in the UK. Failing this, their rights will be at risk of revocation for non-use and may no longer serve as a valid basis in opposition or invalidity proceedings.
Consequences for vulnerable trademarks: revocation, loss of enforceability, weakened rights
The consequences are significant:
A cloned UK trademark that has not been used in the United Kingdom since 2021 will become vulnerable to revocation for non-use as of January 1st, 2026.
The loss of a cloned trademark may allow a third party to register an identical or similar sign and obtain an earlier right, thereby weakening the former owner’s legal position.
This calls for heightened vigilance among French and EU trademark owners whose trademarks are active in the EU market but unused in the UK.
What strategies should rights holders adopt as the deadline approaches?
Portfolio audit and proof of use in the United Kingdom
We recommend a multi-step action plan:
Compile a complete inventory of cloned UK trademarks (prefixes 008 / 009) including specifications of goods and services, filing dates, and renewal deadlines.
Gather and organise admissible evidence of use: invoices in GBP, delivery notes to UK clients, UK-targeted advertising, “.uk” webpages, listings with UK distributors, etc.
Assess whether the use qualifies as genuine, meaning real, commercial, and non-symbolic according to UK case law.
Consider implementing prompt commercial use in the UK before December 31, 2025 if no use exists, while noting that late use may be scrutinised more strictly.
Strategic alternatives: specification limitation, new filing, controlled withdrawal
If genuine use in the UK is not feasible, alternative strategies may be considered:
Where certain goods or services have never been exploited in the UK, consider limiting the specification or voluntarily surrendering unused parts to reduce exposure to non-use attacks.
File a new UK trademark application for the same sign with an appropriate specification, restarting the five-year usage period, though with a later filing date and potential opposition risks.
If the trademark has no commercial relevance in the UK, a strategic non-renewal or controlled withdrawal may be more rational.
For more detailed guidance on defending cloned UK trademarks, we invite you to read our dedicated article.
Conclusion
As December 31, 2025 approaches, concrete steps are required to secure trademark protection in the United Kingdom. Whether through portfolio audits, initiating genuine use in the UK, or implementing alternative filing strategies, time is of the essence.
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 meant by “genuine use” in the United Kingdom?
It is real and tangible commercial use of the trademark in the UK marketplace, directed to the public and not merely symbolic or preparatory. This may include invoices in GBP, shipments to the UK, targeted advertising, or operation of a “.uk” website.
2. What happens if no action is taken before the deadline?
The cloned UK right will become vulnerable to revocation for non-use (five years of non-use) as of January 1st, 2026, and the owner may lose the ability to enforce the trademark or rely on its earlier filing date.
3. Does this deadline apply to trademarks filed after Brexit?
No. The December 31, 2025 deadline concerns only “cloned” trademarks, meaning those that were automatically created by the UK IPO from EU Trade Trademarks registered no later than 31 December 2020, as well as international registrations designating the EU on that same date. Trademarks filed directly in the United Kingdom after Brexit follow the standard national UK regime, with no connection to former EU rights and no transitional grace period: they are subject to the ordinary UK rules on filing, use, and revocation.
4. What is the territorial scope of cloned trademarks?
Cloned UK trademarks provide protection throughout the entire territory of the United Kingdom, namely England, Scotland, Wales and Northern Ireland.
In certain circumstances, this protection may also extend to Gibraltar, in accordance with applicable UK law.
However, cloned UK trademarks remain entirely distinct from EU Trade Trademarks, which cover only the 27 EU Member States. Since Brexit, no overlap exists between an EU Trade Trademark and a cloned UK trademark: each right must be managed, renewed, and used independently.
5. What if the company has no current market or activity in the UK?
It may be appropriate not to renew the cloned trademark or to limit its specification, so as to avoid unnecessary costs for an unused right. A controlled disengagement strategy may be preferable.
In a context where biodiversity and traditional knowledge play a central role in scientific and technological innovation, the question of patent law applied to genetic resources and indigenous knowledge has become a major legal and ethical debate.
The use of genetic resources and traditional knowledge is governed by several international agreements. The Nagoya Protocol of 2010, which implements the Convention on Biological Diversity (CBD) of 1992, is one of the key instruments. This protocol requires parties to ensure that access to genetic resources is done in compliance with prior informed consent from local and indigenous communities, and that the benefits derived from their exploitation are shared fairly. The European Union and France have fully ratified these international instruments.
This article aims to clarify for professionals, businesses, and institutions the interactions between patent law, genetic resources, and traditional knowledge, analyzing the legal and strategic implications of this emerging framework.
Conceptual framework and key terminology
Genetic resources and traditional knowledge
It is crucial to clearly define the concepts of genetic resources and traditional knowledge. According to the Article 2 of the Convention on Biological Diversity (CBD) of 1992, genetic resources are “genetic material of actual or potential value,” which refers to “materials of plant, animal, microbial or other origin containing functional units of heredity.” Traditional knowledge, in this context, refers to the knowledge, innovations, and practices passed down through indigenous or local communities, related to the characteristics or use of genetic resources. A well-known example is that of turmeric (Curcuma longa), a plant that has been used for centuries in traditional Indian medicine for its anti-inflammatory and healing properties. The turmeric root constitutes a genetic resource, while the medicinal knowledge transmitted within local communities falls under associated traditional knowledge.
The coexistence of these two concepts presents a legal challenge: it involves economic interests (research, innovation, patents) as well as ethical, cultural, and social issues (community rights, access to resources, and benefit-sharing from the use of those resources and knowledge). This dual dimension requires both patent holders and the communities possessing the knowledge or resources to approach the issue with rigor.
The role of patent law in this context
Patent law aims to encourage innovation by granting a temporary monopoly to the inventor. However, when an invention is directly or significantly based on a genetic resource or associated traditional knowledge, the patent system faces several challenges:
The issue of prior art: Traditional knowledge may de facto represent undocumented or even oral prior art, complicating the assessment of novelty or inventive activity.
Transparency of origin: If the source of the genetic resource or knowledge is not disclosed, a patent application may be contested for lack of adequate disclosure.
The issue of equitable benefit-sharing: This is notably regulated by the Nagoya Protocol (2010) between the inventor and, inter alia, indigenous or local communities.
Thus, for a patent applicant, it is essential to address these issues from the outset of the invention process. Proper management often requires turning to a specialized firm to ensure its legal compliance.
Legal and strategic issues for patent holders
Risks of “biopiracy” and defense mechanisms for indigenous communities
The term biopiracy refers to the unauthorized appropriation of genetic resources or traditional knowledge for commercial gain without recognition or compensation. Some biopirates even go as far as filing patents.
For example, certain indigenous peoples have seen patents granted for products derived from medicinal plants or other biological resources, which they have had knowledge of for generations. Such situations typically arise from:
Lack of prior consent from the concerned community.
For the patent holder, ignoring these aspects can lead not only to litigation risks but also to reputational risks. Despite multiple regulations, biopiracy persists.
The WIPO has thus taken action to regulate this issue by adopting a treaty that strengthens the protection of indigenous communities and encourages fair access to genetic resources.
Obligation to disclose the origin: the new WIPO treaty
After more than twenty years of discussions, WIPO adopted, on May 24, 2024, the first international treaty explicitly regulating the relationship between intellectual property, genetic resources, and traditional knowledge. Among its key provisions:
The requirement to disclose, in the patent filling, the origin or source of the genetic resource used in the invention.
The obligation to specify, in the patent filling, which indigenous or local communities are the source of the traditional knowledge exploited.
The establishment of an information system (database) accessible to intellectual property offices to verify the compliance of patent applications.
For an applicant, this means that their patent strategy must integrate the verification of the origin from the very start, obtain clear consent from the relevant communities, and document the access to the resources. Failure to comply with this obligation could result in rejection of a patent application, as well as financial compensation.
The WIPO Treaty adopted in May 2024 is however not yet in force; it will only enter into effect once it has been ratified by at least fifteen States. To date, only Malawi and Uganda have ratified it.
How to adapt your patent strategy to the challenges of genetic resources and traditional knowledge?
To secure the validity of a patent and avoid future disputes, several crucial steps must be considered when dealing with genetic resources and traditional knowledge. First and foremost, it is essential to document the exact origin of the genetic resource, specifying the country of origin, the indigenous or local community, and the sample used. This approach provides clear and transparent traceability, meeting legal requirements. It is also crucial to ensure that access to the resource and traditional knowledge is in compliance with both national and international obligations (e.g., access permits or harvesting permits).
In this context, obtaining prior informed consent (PIC) from the community holding the knowledge is an indispensable step, whenever applicable. This consent should be formalized to ensure the protection of the community’s rights. Furthermore, it is critical to include in the contract a provision for equitable benefit-sharing, whether financial or non-financial, in favour of the concerned communities, ensuring compliance with principles of fairness.
To meet the new obligations imposed by the WIPO Treaty, it is also recommended to include a disclosure statement in the patent application about the provenance of the genetic resources and/or traditional knowledge, ensuring full transparency. Finally, conducting a specific prior art search, focusing on traditional knowledge, local databases, and non-scientific publications, is crucial to minimize the risks of contested novelty.
By integrating these steps into their patent filling strategy, companies not only strengthen the legal robustness of their patent but also ensure compliance with the emerging ethical and legal obligations in this complex field.
Conclusion
Ultimately, the integration of genetic resources and traditional knowledge within the framework of patent law is becoming an increasingly structured area legally: the WIPO Treaty of May 24, 2024 is a testament to this. For any business or inventor, it is important to integrate enhanced verification, origin transparency, and equitable benefit-sharing from the early stages of the invention process. For holders of traditional knowledge, it is essential to structure their protection and engage in balanced partnerships.
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. Does the 2024 WIPO Treaty also apply to other intellectual property rights? No. The WIPO Treaty adopted in 2024 applies exclusively to patent law and does not introduce any specific obligations in the fields of copyright, trademarks, or designs. Members of the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore continue to explore how to protect traditional cultural expressions and works derived from indigenous knowledge within the framework of copyright law. These ongoing discussions could eventually lead to the adoption of complementary international instruments aimed at better regulating the use and preservation of such traditional creations.
2. What does “disclosure of origin” mean in the context of a patent application? In the context of the WIPO Treaty, this means the applicant must disclose the country or source of the genetic resource used, as well as the identity of the indigenous or local community from which the associated traditional knowledge originates.
3. Does the existence of traditional knowledge prevent the granting of a patent? No, but this knowledge can constitute prior art, which can destroy the novelty or inventive step of the invention. Therefore, it is crucial to conduct thorough research into traditional knowledge and anticipate its impact on the patent strategy.
4. How does the Nagoya Protocol relate to patent law? The Nagoya Protocol imposes obligations regarding access to genetic resources and the fair sharing of benefits. Although it doesn’t explicitly target patents, patent offices and applicants must ensure that access has been authorized and that benefits are shared in accordance with the protocol.
5. What impact does non-compliance with these obligations have on a company? The company exposes itself to potential challenges to its patent, facing litigation with the communities concerned, being subject to financial compensation obligations, and suffering reputational damage. It is therefore essential to incorporate these aspects into its IP strategy.
As digital trust becomes a strategic asset, companies are looking to regain full control of their online identity. The forthcoming opening of the Internet Corporation for Assigned Names and Numbers (ICANN) second round for personalized internet extensions, known as “.brand” TLDs or “brand TLDs”, represents a rare opportunity to build a sovereign digital territory under your own brand.
The .brand 2025 Circle, organized by the Afnic, brought together pioneers and experts in the field in October to shed light on the challenges and conditions for success in this new wave.
Nathalie Dreyfus, founder of Dreyfus law firm, shared her expertise on the central role of intellectual property in preparing applications for a .brand.
Firmly anchored in this context, the journey to apply for a .brand extension requires strategic foresight. This guide provides companies with a practical roadmap to understand why it matters, how to prepare, and what success factors to keep in mind ahead of the 2026 wave.
Why consider a .brand extension?
Digital sovereignty and enhanced security
With a .brand extension, a company gains exclusive control over its top-level domain. It defines who can register sub-domains, how they’re managed, and under what security standards. Solidnames emphasises that one of the major benefits of a “brand TLD” is security: preventing phishing, cybersquatting and misuse of the domain namespace.
“A .brand is much more than an extension: it is a sovereign digital zone that promotes trust,” emphasizes Nathalie Dreyfus.
Brand coherence, differentiation and innovation
A .brand extension allows all your digital services , website, extranet, apps, partner portals , to operate under a consistent naming architecture (e.g., service.company.brand). This unified digital footprint strengthens brand identity and helps you stand out. Solidnames points out that brands which have registered large numbers of domains under their .brand extension (for example top German and French firms) show how the model can work when used actively.
Strategic asset and portfolio optimisation
According to Solidnames, brand TLDs represent long-term digital assets. They provide flexibility , you can register names for marketing campaigns or future services without negotiation and fend off third-party registrations.
In essence, a .brand is akin to owning your own digital real estate.
The investment: costs, returns and considerations
Applying for a .brand extension involves significant investment: registry setup, technical infrastructure, governance, ongoing maintenance. Solidnames notes the next round is expected in 2026, and preparation begins much earlier.
Companies must therefore view this as a strategic investment, not just a marketing or IT project. Key ROI levers: strengthened trust, brand protection, ownership of your digital domain, potential cost savings in defensive registrations.
Preparations ahead of the 2026 wave
Timeline and milestones
Solidnames explains that while the official application window opens around April 2026, the preceding Applicant Guidebook (AGB) of the ICANN will be published earlier, and the overall selection/process may conclude late 2026/early 2027.
Internal preparation steps
Assemble a multidisciplinary team: legal, brand management, IT/infrastructure, cybersecurity, marketing.
Conduct a feasibility study: technical, governance, cost-benefit.
Define concrete use-cases for the .brand extension (client facing, partner access, internal services, campaigns).
Integrate your intellectual property strategy: protect your grand, secure trademarks across jurisdictions, align domain + trademark strategy (Solidnames emphasises this alignment).
Domain naming policy and governance
Solidnames stresses the importance of a full naming charter: spelling rules, sub-domain conventions, renewal strategy, registration/abandonment policy. This should be part of the governance framework of your .brand registry.
Risks and pitfalls to avoid
Under-use: many brand TLDs register few domains. Solidnames notes that only a small percentage exceed several hundred domain names.
Governance and cost burden: the registry must be operated with robust rules, otherwise risk to brand credibility.
Lack of strategic vision: without clear use-cases and measurement, the .brand might remain a symbolic asset rather than a performance lever.
Regulatory/process uncertainty: the timeline, rules and costs may evolve. Early preparation must factor in flexibility.
For Nathalie Dreyfus, “the success of a brand depends on consistency between legal, technical, and marketing perspectives.”
Keys to success
Clear strategic objective: define what the .brand is for and who will benefit from it.
Active use-case roadmap: show how domain names under the extension will be used (not just registered).
Governance clarity: process, roles, naming policy, renewal and abandonment rules.
Measurement plan: metrics on traffic, trust, domain utilization, cost versus benefit.
Strong alignment with brand & IP strategy: ensure the extension supports your brand identity and legal protection.
Start early: even though the application window is later, the groundwork must begin well in advance.
Dreyfus law firm role
Dreyfus law firm has been helping companies protect and enhance their intangible assets for over 20 years.
Our team helps trademark owners to:
Assess the relevance of a .brand for their digital strategy
Compile a complete ICANN application
Define governance and registration policy
Secure the trademark and subdomains
Conclusion
The next wave of brand TLDs offers companies a rare window to convert their domain strategy into a true strategic asset. By securing a .brand extension, you can reinforce brand identity, enhance trust, control your digital territory and innovate in naming. But the window for action is limited: preparation must begin now. Solidnames’ analysis underscores the fact that those who treat a .brand as a long-term governance, brand and digital strategy will derive the greatest value.
“The .brand is the new frontier of branding: it transforms the domain name into a strategic asset,” concludes Nathalie Dreyfus.
Q&A
What is a .brand (brand TLD)? A .brand is a top-level domain reserved exclusively for a company’s trademark. It allows that company to manage the namespace, register sub-domains, and build a unique digital identity.
What does it cost to apply for a .brand? The costs are of about USD 200 000 and they include the application (registry/ICANN fees), setup of infrastructure, governance, ongoing operations.
When can I apply for a .brand? The anticipated timeframe is around April 2026 for opening the application window, with substantial preparation required in 2025.
Artificial intelligence (AI) has become an indispensable tool in communication and advertising. Capable of drafting texts, generating visuals, imitating voices, or even creating virtual characters, AI is transforming the way companies design their campaigns and interact with their audiences. In the field of influencer marketing, these technologies expand creative possibilities: automated recommendations, personalized messaging, virtual influencer avatars, and content tailored to each user profile.
However, this technological revolution comes with significant legal risks. Who owns the copyright for AI-generated creations? How can the transparency and authenticity of an advertisement produced without direct human involvement be ensured? And what obligations now apply to trademarks and influencers under the emerging regulatory framework governing digital communications?
The legal challenges of AI-generated or AI-assisted advertising creation
The issue of copyright ownership
Under French law, copyright protection depends on the originality of the work and the personal imprint of its author. This principle, reflected in the Directive 2001/29/EC and the French Intellectual Property Code (Articles L111-1 et seq.), implies that a purely machine-generated creation cannot be protected, as AI has no legal personality and cannot claim authorship.
The situation becomes more complex when a human partially intervenes, for example, by settling the prompt, selecting a model, or editing the result. The prevailing legal view amongst law specialists is that if human input is sufficiently significant, it may justify copyright protection. In such cases, the extent of human creativity determines whether the work qualifies as an original intellectual creation.
Risks of infringement and violation of image rights
Generative AIs are trained on vast datasets often containing copyrighted works. Their use can lead to partial reproductions of existing elements without authorization. An advertisement using such outputs could therefore constitute an act of counterfeiting.
Similarly, if an AI generates a face, voice, or body resembling a real person without consent, it may infringe image rights or their right to privacy. In influencer marketing, where authenticity and personality are central, such misuse can damage both the trademark’s reputation and consumer trust.
The role of the European AI Act: a structural framework for digital advertising
A pioneering text regulating AI within the European Union
Adopted in 2024 and to be fully implemented by 2026, the AI Act is the world’s first comprehensive legislation regulating artificial intelligence based on a risk-based approach. It establishes four levels of risks : unacceptable, high, limited, and minimal, and sets out specific obligations depending on the purpose and impact of each AI system.
Direct impact on advertising and influencers
Generative AI systems used to create advertising content fall under the “limited-risk” category but are subject to enhanced transparency requirements. Under Article 50 of the AI Act, both providers and users must:
Clearly indicate when content is generated by artificial intelligence ;
Disclose any significant alteration or manipulation of reality (voice, image, video);
Implement safeguards against misinformation and opinion manipulation;
Maintain documentation on the datasets and sources used to train the artificial intelligence model used.
Consequently, companies and influencers will need to adapt their practices to this new regulatory framework by integrating these obligations into their production workflows and compliance policies.
Towards shared responsibility among stakeholders
Article 25 of the AI Act introduces a shared responsibility regime amongst developers, providers, and deployers of AI systems. In the advertising sector, this entails greater traceability and accountability, identifying which artificial intelligence tools were used, under what conditions, with which type of data, and under which degree of human oversight.
This approach complements the logic of the GDPR and reinforces the need for robust legal governance of AI in commercial communication.
The legal obligations of companies and influencers in the age of AI
Transparency and identification of advertising content
Transparency obligations remain central under both French and EU law. Following the introduction of French article 5 of Law No. 2023-451 of 9 June 2023 (law aimed at regulating commercial influence and combating abuses by influencers on social media), any commercial communication must be clearly identifiable as such. Consequently, advertisements must explicitly indicate when they result from AI-generated content.
Campaigns that fail to make such disclosure may be deemed misleading commercial practices, thereby engaging the liability of both influencers and advertisers., exposing both the company and the influencer to civil and criminal liability. Companies should therefore adopt a transparency policy ensuring that all AI-assisted content carries clear, visible mentions distinguishing human from artificial communication.
Data protection and advertising profiling
AI-based advertising tools often rely on extensive processing of personal data, including browsing history, location, interests, and purchasing behaviour. Such processing must comply with the General Data Protection Regulation (GDPR).
Accordingly, companies must:
Obtain explicit user consent to use their personal data;
Limit private data collection to what is strictly necessary;
Provide clear information on the purposes of processing personal data;
Regulate the use of automated decision-making and profiling systems.
Every AI-driven advertising campaign must therefore incorporate GDPR compliance from the design stage onward.
Conclusion
Artificial intelligence is redefining advertising creation and influencer marketing, but it also introduces a complex web of legal responsibilities. Key challenges include intellectual property protection, advertising transparency, data protection, and compliance with the AI Act.
Companies must take a preventive and strategic approach, auditing their AI tools, documenting their use, and implementing internal governance mechanisms to ensure compliance. Only under these conditions can AI become a regulated innovation rather than a legal risk.
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. Must AI-generated advertisements undergo legal review before publication?
Yes. It is strongly advised to perform a comprehensive legal audit before publication, including verification of third-party rights, GDPR compliance, mandatory transparency notices, and the absence of any unauthorized reproductions (logos, trademarks, or artistic works).
2. Can an AI-generated image of a person violate image rights?
Yes. If the AI-generated image resembles or imitates a real person without authorization, it may infringe image rights or privacy, and in commercial contexts, could amount to unfair competition or parasitism.
3. What are the legal risks of undisclosed AI use in advertising?
Failure to disclose the use of AI may constitute a misleading commercial practice, exposing the advertiser and influencer to civil, criminal, and administrative sanctions.
4. How can companies regulate AI use by their partners?
By including dedicated clauses in contracts that specify rights ownership, responsibilities, GDPR compliance, mandatory transparency mentions, and pre-publication validation procedures.
5. How can companies prepare for the AI Act’s entry into force?
They should:
Identify all AI tools used in advertising;
Document their purpose, providers, and operational parameters;
Include clear AI-related disclosures in all content;
Establish internal governance and regulatory monitoring systems.
This publication is intended to provide general guidance to the public and to highlight certain issues. It is not designed to apply to specific situations, nor does it constitute legal advice.
Advertising jingles are everywhere, whether it’s a melody associated with a TV commercial or a short sound signature on a mobile app, they play an essential role in the marketing strategy of many companies. But beyond their marketing function, can they be legally protected? The question arises in the context of trademark law, which has gradually evolved to include sound elements as objects of protection.
The question arises in the context of trademark law, which has gradually evolved to include sound elements as objects of protection. Recently, the Court of Justice of the European Union provided a clear answer to this question. In a decision dated September 10, 2025 (case T-288/24, Berliner Verkehrsbetriebe – BVG), the Court held that a short two-second jingle could be protected as a sound trademark at the European level.
What is a sound trademark ?
A trademark is no longer just a name or logo : it can now take the form of a sound. A sound trademark is a jingle, melody, or musical pattern used to identify a company’s goods or services and distinguish them from those of its competitors.
To qualify as a trademark, the melody must above all fulfill a distinctive function: it must allow consumers to immediately associate the sound with the trademark / company, without any possibility of confusion with other companies.
Conditions for protecting a jingle
Not all jingles can be protected as a trademark. For a melody to be protected as a sound trademark, it must meet certain essential criteria:
Distinctiveness: The key requirement. The sound or musical phrase must be capable of distinguishing the company’s goods or services from those of others.
Availability: The jingle must not already be registered or used by a competitor for identical or similar goods or services.
Legality : The jingle must not be contrary to public order or morality.
The BVG case (T-288/24): the decision of the General Court of the European Union
In this case (T-288/24), Berliner Verkehrsbetriebe (BVG), a public transport company in Berlin, had filed a two-second jingle as a sound trademark. The EUIPO refused to register this trademark, considering that the melody was too short and banal to be perceived as a sign of commercial origin.
The General Court of the European Union annulled this decision, ruling that the brevity and simplicity of the jingle were not sufficient to exclude its distinctive character.
According to the Court, in a sector such as transport, sounds can play a key role in creating a sound identity, and a short melody can be easily memorized by the public and associated with a given company.
This decision confirms that a jingle is eligible for protection as a sound trademark if it is deemed distinctive, memorable to the public, and not purely functional.
Difference between copyright and trademark law
It is important to distinguish between the two types of protection that may apply to a jingle :
Copyright : It protects the melody as an original work of authorship, regardless of its commercial use. Protection arises automatically upon creation..
Trademark law: It protects the use of the jingle as a distinctive sign in commercial use. This protection requires registration with the INPI and is valid for a limited period (10 years, renewable).
Thus, a jingle can benefit from dual protection : copyright guarantees the protection of the musical creation itself, while registration as a sound trademark secures its commercial use.
Some practical examples
Some companies have taken full advantage of this opportunity:
Intel : its jingle has been registered as a sound trademark.
Netflix : The short melody that accompanies the launch of its series content has been registered as a trademark.
These examples illustrate how protecting a jingle can become a real strategic and commercial asset.
Conclusion
Jingles can be protected as trademarks, provided they are original, distinctive, and used commercially. Legal protection for a jingle strengthens the company’s sound identity, secures its use in the marketplace, and constitutes a valuable intangible asset. To maximize the chances of success, it is recommended to carefully prepare the application and ensure that the melody is clearly distinct from those already used by others.
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.
A sound trademark is an audible sign used to identify a company’s goods or services. It can be a melody, a jingle, or a distinctive sound pattern associated with the company.
2.How can a jingle be registered as a sound trademark ?
Since December 15, 2019, it has been possible to register a sound trademark with the INPI in the form of an audio file (MP3, MP4). Registration is done online via the INPI website.
3.What are the criteria for protecting a jingle?
The jingle must be original, distinctive, reproducible accurately, and used in a commercial context to identify a company’s goods or services.
4.What is the difference between a sound trademark and a copyrighted musical work ?
Copyright protects musical creations as a work of authorship, while trademark law protects the commercial use of jingles as distinctive signs. A jingle can benefit from both types of protection simultaneously.
5.Are there any examples of famous sound trademarks ?
Yes, companies such as Intel,and Netflix have registered their jingles as sound trademarks, thereby strengthening their sound identity and public recognition.
As digital trust becomes a strategic asset, companies are looking to regain full control of their online identity. The forthcoming opening of the Internet Corporation for Assigned Names and Numbers (ICANN) second round for personalized internet extensions, known as .brand TLDs or brand TLDs, represents a rare opportunity to build a sovereign digital territory under your own brand.
The .brand 2025 Circle, organized by the Afnic, brought together pioneers and experts in the field in October to shed light on the challenges and conditions for success in this new wave. Nathalie Dreyfus, founder of Dreyfus law firm, shared her expertise on the central role of intellectual property in preparing applications for a .brand. Firmly anchored in this context, the journey to apply for a .brand extension requires strategic foresight. This guide provides companies with a practical roadmap to understand why it matters, how to prepare, and what success factors to keep in mind ahead of the 2026 wave.
Consider a .brand extension?
Digital sovereignty and enhanced security
With a .brand extension, a company gains exclusive control over its top-level domain. It defines who can register sub-domains, how they’re managed, and under what security standards. Solidnames emphasises that one of the major benefits of a brand TLD is security – preventing phishing, cybersquatting and misuse of the domain namespace. A .brand is much more than an extension – it is a sovereign digital zone that promotes trust, emphasizes Nathalie Dreyfus.
Brand coherence, differentiation and innovation
A .brand extension allows all your digital services – website, extranet, apps, partner portals – to operate under a consistent naming architecture (e.g., service.company.brand). This unified digital footprint strengthens brand identity and helps you stand out. Solidnames points out that brands which have registered large numbers of domains under their .brand extension – for example top German and French firms – show how the model can work when used actively.
Strategic asset and portfolio optimisation
According to Solidnames, brand TLDs represent long-term digital assets. They provide flexibility: you can register names for marketing campaigns or future services without negotiation and fend off third-party registrations. In essence, a .brand is akin to owning your own digital real estate.
The investment: costs, returns and considerations
Applying for a .brand extension involves significant investment: registry setup, technical infrastructure, governance, ongoing maintenance. Solidnames notes the next round is expected in 2026, and preparation begins much earlier. Companies must therefore view this as a strategic investment, not just a marketing or IT project.
Key ROI levers:
– Strengthened trust
– Brand protection
– Ownership of your digital domain
– Potential cost savings in defensive registrations
Preparations ahead of the 2026 wave
Timeline and milestones
Solidnames explains that while the official application window opens around April 2026, the preceding Applicant Guidebook (AGB) of the ICANN will be published earlier, and the overall selection process may conclude late 2026-early 2027.
Internal preparation steps
– Assemble a multidisciplinary team: legal, brand management, IT infrastructure, cybersecurity, marketing
– Conduct a feasibility study: technical, governance, cost-benefit
– Define concrete use-cases for the .brand extension: client-facing, partner access, internal services, campaigns
– Integrate your intellectual property strategy: protect your brand, secure trademarks across jurisdictions, align domain trademark strategy
Solidnames emphasises this alignment.
Domain naming policy and governance
Solidnames stresses the importance of a full naming charter: spelling rules, sub-domain conventions, renewal strategy, registration-abandonment policy. This should be part of the governance framework of your .brand registry.
Risks and pitfalls to avoid
– Under-use: many brand TLDs register few domains. Solidnames notes that only a small percentage exceed several hundred domain names.
– Governance and cost burden: the registry must be operated with robust rules, otherwise risk to brand credibility.
– Lack of strategic vision: without clear use-cases and measurement, the .brand might remain a symbolic asset rather than a performance lever.
– Regulatory process uncertainty: the timeline, rules and costs may evolve. Early preparation must factor in flexibility.
For Nathalie Dreyfus, the success of a brand depends on consistency between legal, technical, and marketing perspectives.
Keys to success
Clear strategic objective: define what the .brand is for and who will benefit from it
Active use-case roadmap: show how domain names under the extension will be used – not just registered
Governance clarity: process, roles, naming policy, renewal and abandonment rules
Measurement plan: metrics on traffic, trust, domain utilization, cost versus benefit
Strong alignment with brand IP strategy: ensure the extension supports your brand identity and legal protection
Start early: even though the application window is later, the groundwork must begin well in advance
Dreyfus law firm role
Dreyfus law firm has been helping companies protect and enhance their intangible assets for over 20 years. Our team helps trademark owners to:
– Assess the relevance of a .brand for their digital strategy
– Compile a complete ICANN application
– Define governance and registration policy
– Secure the trademark and subdomains
Conclusion
The next wave of brand TLDs offers companies a rare window to convert their domain strategy into a true strategic asset. By securing a .brand extension, you can reinforce brand identity, enhance trust, control your digital territory and innovate in naming. But the window for action is limited: preparation must begin now.
Solidnames analysis underscores the fact that those who treat a .brand as a long-term governance, brand and digital strategy will derive the greatest value. The .brand is the new frontier of branding – it transforms the domain name into a strategic asset, concludes Nathalie Dreyfus.
FAQ
What is a .brand (brand TLD)?
A .brand is a top-level domain reserved exclusively for a company’s trademark. It allows that company to manage the namespace, register sub-domains, and build a unique digital identity.
What does it cost to apply for a .brand?
The costs are approximately USD 200,000, and they include the application, registry ICANN fees, setup of infrastructure, governance, ongoing operations. This is a long-term investment.
When can I apply for a .brand?
The anticipated timeframe is around April 2026 for opening the application window, with substantial preparation required in 2025.
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Written by Nathalie Dreyfus25/11/2025 
