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ICANN 83 Prague Meeting Resume: Key Takeaways & Strategic Outcomes

Executive Summary of ICANN83 Prague (June912,2025)

The ICANN 83 (Internet Corporation for Assigned Names and Numbers) hybrid meeting took place at the Prague Congress Centre and brought together global stakeholders to advance internet naming policy, data governance, and cross-community collaboration.  The entire meeting reports can be found on the official publications. The article summarises the GAC communiqué (Governmental Advisory Committee), GNSO Council minutes (Generic Names Supporting Organisation), and ICANN Policy Reports—to synthesize authoritative insights for professionals.

Main Policy Developments & Regulatory Advances

2.1 WHOIS / Registration Data Framework & RDS Evolution

  • Disclosure mechanisms: The GAC spotlighted the SSAD (System for Standardized Access/Disclosure) / RDRS (Registration Data Request Service) pilot and urgent disclosure mechanisms, aligning with GDPR. Emphasis was placed on balancing registrant privacy with regulatory access, and on enhancing data accuracy controls for future phases.
  • Next steps: GAC urged ICANN to refine policy language in collaboration with  the GNSO. Legal experts should track forthcoming accuracy assessment metrics.

2.2 New gTLD Program Progress & Next Round

  • Applicant Guidebook update: GAC reviewed the latest draft, particularly GAC Early Warnings, PICs/RVCs (Registry Voluntary Commitments), and geoTLD safeguards and contention sets.
  • What that means: Domain registries should prepare for stricter geographic protection tools, more robust applicant vetting, and evolving GAC objection procedures.

2.3 WSIS+20 and Internet Governance Initiatives

  • Framework alignment: As part of WSIS +20 (World Summit on the Information Society) review, ICANN reaffirmed its contribution to global Internet Governance commitments, enhancing openness, inclusivity, and stakeholder engagement.
  • Outreach strategy: Plans previewed for strengthening ICANN’s role in multi-stakeholder governance, with opportunities for IP practitioners to contribute across regional IGFs and policy dialogues.

 

GAC Communiqué & GNSO/GAC Collaboration

  • GAC Communiqué draft: Intensive drafting sessions focused on articulating shared expectations—recommendations on WHOIS accuracy, RDS pilot progress, gTLD bottlenecks.
  • Inter-committee coordination: In joint GAC/GNSO meetings, parties agreed on timelines for WHOIS next phase policy development, with cross council liaison coaching the process.

 

Practical Impacts for IP Professionals & Businesses

  1. For trademark owners, domain registries, registrars, and counsel:
  • Domain monitoring: anticipate more stringent WHOIS accuracy obligations and improved access systems.
  • gTLD strategy: heightened compliance with GAC early warnings and geographical restrictions for new domain expansions.
  • Regulatory readiness: adapt operations to evolving SSAD/RDRS standards—important for dispute resolution.

Conclusion 

ICANN 83 reinforced the importance of collaborative policymaking in a rapidly evolving digital ecosystem. With significant progress on WHOIS data frameworks, the new gTLD round, and multi-stakeholder governance, IP professionals and domain stakeholders must stay attuned to regulatory shifts that directly impact rights enforcement and digital brand strategies. As ICANN refines its tools for data disclosure, applicant oversight, and geographical safeguards, proactive engagement and legal foresight will be essential for maintaining compliance and influence within global internet governance structures.

ICANN 83 Prague Meeting Resume Key Takeaways & Strategic Outcomes

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

At the intersection of internet governance and IP protection, we stand ready to assist you in navigating WHOIS reforms, domain strategy, new gTLD compliance, UDRPs and RDS implementation.

Want more cutting-edge updates on domain law, naming policies, or ICANN developments? Subscribe to our newsletter and follow Dreyfus Law Firm on LinkedIn and Twitter for real-time analysis.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

 

FAQ

1. What is SSAD and RDRS?

SSAD is the future model for standardized WHOIS access; RDRS is its current pilot phase under EPDP Phase 2.

2. When will the next gTLD round begin?

ICANN is finalizing the Applicant Guidebook; launch expected post-clearance of ICANN Board approvals in late 2025.

3. How does GDPR influence WHOIS?

It restricts public access to personal data; ICANN’s frameworks (SSAD/RDRS) implement controlled registration-data disclosure.

4. What is the significance of WSIS+20?

It marks the 20year review of the internet governance’s founding summit, reaffirming ICANN’s accountability and multi-stakeholder mission.

5. How can I stay informed of ICANN policy changes?

Subscribe to ICANN newsletters, follow GAC/GNSO minutes online, or contact our firm for timely legal insights.

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.brand Extensions: a new territory for brands, challenges and perspectives of contents

Introduction

A domain name is the web address that allows a user to access a website. It represents the first element of a company’s digital identity on the internet, typically consisting of two parts: the name itself (e.g., “yourcompany”) and the extension (such as “.com”, “.fr”, or “.org”). This extension, also called a Top-Level Domain (TLD), categorizes the site into a specific group or country.

Types of Domain Names
Domain names are categorized by different extensions:

 

 

For eligibility, a domain name must be tied to an official and well-known trademark, meaning it must be recognized by a relevant audience.

 

The .Brand domain extension, also known as “dot brand,” represents a major evolution in the management of digital identities for businesses. Introduced by ICANN in 2012 , these extensions allow brands to create their own top-level domain (TLD), providing complete control over their online presence. This strategic move raises key questions regarding its objectives, scope of use, and the management of associated legal risks. Additionally, ICANN has announced the opening of a series of new TLDs for 2026, allowing trademark holders to create their personalized internet extension and optimize their digital presence in a unique and secure way.

 

What is a .Brand TLD?

Definition and Characteristics

A .Brand TLD is a customized domain extension exclusively assigned to a registered brand. For example, Apple, wishing to strengthen its digital identity, could obtain the “.apple” extension to create addresses like “iphone.apple” or “support.apple.” This opportunity is offered by ICANN as part of its new generic top-level domain (gTLD) program.

Process of obtaining a .Brand TLD

Acquiring a .brand TLD requires a complex and costly process. Companies must submit a detailed application to ICANN, demonstrating their ability to manage such a domain and comply with associated obligations, such as adherence to GDPR, managing the DNS system, domain registrations, and ensuring data security. Additionally, the brand must demonstrate its official registration and reputation, meaning its recognition among a relevant audience, in order to be eligible.

Sans titre

 

Strategic objectives of adopting a .Brand TLD

Strengthening digital identity

One of the primary objectives of a .Brand TLD is to enhance the company’s digital identity. By fully controlling their extension, brands can create coherent and representative addresses, making it easier for users to recognize and engage with them.

Securing online presence

Another major advantage is the securing of online presence. By owning their own TLD, companies reduce the risks of cybersquatting (the registration of domain names identical or similar to well-known brands to resell them at high prices) and phishing (fraud techniques aiming to obtain sensitive information by pretending to be a trusted entity), as they have exclusive control over domain registrations associated with their brand. This also allows them to better protect users from fraudulent sites impersonating the brand.

Innovation and differentiation

.Brand TLDs also offer innovation opportunities that allow for differentiation. Companies can create original marketing campaigns, personalized user experiences, and unique online services, thereby strengthening their competitive position.

Scope of Use for .Brand Domains

Geographical and linguistic limits

It’s important to note that the use of a .Brand TLD might be subject to geographical or linguistic restrictions. For example, a company primarily operating in France may choose to use “.fr” or “.paris” in addition to its .Brand TLD to better target its local audience.

Managing Legal Risks

Compliance with regulations

Companies must ensure that their use of the .Brand TLD complies with current regulations, particularly regarding personal data protection (GDPR) and intellectual property. It is essential to define clear policies concerning domain registration and usage.

Surveillance and enforcement

Continuous monitoring is necessary to detect any unauthorized or abusive use of the .brand TLD. Enforcement mechanisms, such as implementing dispute resolution procedures (for example, the Syreli procedure in France), can be considered to protect the brand’s rights. Dreyfus Law firm offers domain name monitoring services to secure and protect your digital identity.Collaboration with specialized service providers.

 

Collaboration with specialized service providers.

For effective management, businesses can collaborate with service providers specializing in managing .Brand TLDs. These experts can assist in the acquisition process, technical implementation, and day-to-day management of the extension. For optimal management, Dreyfus Law firm offers its expertise in intellectual property and domain name management. Contact us to discover how we can help you fully leverage this strategic opportunity.

 

Conclusion

.Brand domain extensions offer companies a unique opportunity to strengthen their digital identity, secure their online presence, and innovate in their communication. However, this approach requires careful preparation, proactive management of legal risks, and collaboration with specialized professionals. By adopting a well-defined strategy, brands can fully benefit from the advantages offered by .Brand TLDs.

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

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

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is a .Brand TLD?

A .Brand TLD is a customized domain extension reserved exclusively for the organization that owns it, allowing for a secure digital presence associated with the brand.

2. How does a .Brand TLD enhance brand security?

A .brand TLD allows companies to control their domain names, thereby reducing the risks of phishing and cybersquatting. This control also facilitates proactive domain monitoring, enabling quick detection of any unauthorized or fraudulent use.

3. What are the legal requirements for obtaining a .Brand TLD?

Organizations must possess registered trademarks in relevant jurisdictions and comply with ICANN's application process for new gTLDs.

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Zombie trademarks: Legal revival or risky resurrection?

Reviving an old trademark can be a brilliant marketing move—or a costly legal misstep. Known as “zombie trademarks,” these defunct yet familiar brands occupy a grey zone between nostalgia and unfair competition. Are they fair game, or should residual goodwill shield them from third-party appropriation? Let’s examine how legal systems across jurisdictions treat these revived marks and what this means for brand owners, investors, and IP practitioners.

I – What is a zombie trademark?

A zombie trademark is a mark that has been legally abandoned—due to expiration or non-use—but still retains consumer recognition. Revived by unrelated third parties, these marks aim to capitalize on nostalgia, consumer loyalty, or the historical identity of a brand.

To qualify as a zombie trademark:

  • The original registration has lapsed or been revoked;
  • The mark is no longer used by the initial owner;
  • The public continues to associate the sign with its former source.

Examples include legacy car brands, vintage cosmetics, or forgotten retail chains, now resurfacing in digital or retail campaigns.

II – Legal approaches to abandonment and revival

United States (Lanham Act, §45)
A trademark is considered abandoned if not used for three consecutive years—with no intent to resume. However, even minimal commercial activity (e.g., token sales or licensing) can rebut the presumption of abandonment.

European Union (EUTMR, Art. 58(1)(a) & 7(1)(g))
An European trademark is vulnerable to revocation after five years of non-use. Further, registration may be refused if it is deceptive or exploits goodwill in a way likely to mislead consumers.

France (French Intellectual Property Code, Art. L.714-5 & L.711-3(c))
A French trademark is deemed abandoned after five years without use or intent to resume. A revived mark may be refused or cancelled if it creates confusion or constitutes unfair competition (e.g., parasitism per Article 1240 of the French Civil Code).

III – Landmark cases: From Macy’s to Nehera

In the US, Macy’s Inc. v. Strategic Marks LLC, No. 3:2011cv06198 (2011 – 2016) confirmed that even limited use (T-shirts bearing legacy logos) was sufficient to maintain rights. Similarly, USFL v. Fox Sports No 2:2022cv01350 (2022) ruled in favor of trademark owners who had sporadically licensed their brand.

In Europe, the Nehera case (T-250/21) clarified that mere historical knowledge is not enough. The court required current consumer recognition to establish bad faith. Conversely, in Simca (T-327/12), Peugeot succeeded in proving bad faith due to the applicant’s intent to monetize the brand without any genuine use.

IV – Residual goodwill: A legal dilemma

Residual goodwill refers to the lingering brand recognition after a mark’s use has ceased. Courts vary in their treatment:

  • In Ferrari v. Roberts, 6th Cir. 1991, continued public association justified legal protection.
  • In Peter Luger v. Silver Star, Civil Action No. 97-273, 1999 WL 151873 (W.D. Pa. Jan. 21, 1999), sales impact and confusion were key evidence of ongoing goodwill.

Yet in Europe, as seen in Nehera, residual goodwill is not presumed. The claimant must show contemporary recognition, not just historic fame.

This divergence reflects broader policy tensions: should we protect consumer memory or allow market entrants to rejuvenate dormant marks?

V – Strategic takeaways for IP professionals

For original owners:

  • Preserve rights through token use, licensing, or rebranding.
  • Monitor applications to detect third-party revivals.
  • Link historic goodwill to new IP assets.

For zombie trademark filers:

  • Avoid consumer deception: use disclaimers and quality consistency.
  • Rebuild goodwill transparently through legitimate use.
  • Be aware of possible litigation under unfair competition or false advertising.

Conclusion

Zombie trademarks sit at the crossroads of legal ambiguity and market opportunity. Whether they represent opportunism or innovation depends on the context of revival, the presence of residual goodwill, and how consumers interpret the brand.

For businesses considering a revival strategy—or defending legacy IP—legal advice is crucial. Our firm helps navigate the risks and optimize brand strategies while ensuring compliance with national and cross-border trademark regulations.

zombie anglais

Dreyfus Law Firm is a proud partner of a global network of Intellectual Property attorneys.

Nathalie Dreyfus with the support of the Dreyfus Law Firm

FAQ

Can you legally revive an abandoned trademark?

Yes, but only if the original owner no longer has enforceable rights and there is no consumer deception.

Does residual goodwill protect a trademark?

In the US, sometimes. In the EU, only if the goodwill remains active in consumers’ minds.

What are the risks of reviving a zombie trademark?

Potential lawsuits for deception, unfair competition, or false advertising.

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Fake online reviews: France strengthens legal oversight

Digital trust has become a strategic imperative for businesses. Yet fake reviews continue to proliferate on online platforms, distorting consumer perceptions and undermining fair competition. Whether commercially driven or discreetly commissioned, these deceptive practices are no longer tolerated. The European authorities, following the example of France, and outside the European Union like the United Kingdom, are strengthening their arsenal to put an end to these practices, and a new standard of vigilance is being imposed on companies.

Reputation manipulation: practices and risks associated with fake reviews

The expression “fake reviews” refers to a range of unfair commercial practices involving various forms of fraud, including:

  • The posting of seemingly genuine reviews based on fictitious experiences.
  • Covert incentivised reviews, where users receive discounts or gifts in exchange for positive feedback without proper disclosure.
  • Misleading review presentation, such as deleting or hiding negative comments, promoting only positive ones, using biased aggregate scores (e.g., stars, likes), or “review hijacking” – repurposing reviews from one product for another.
  • Facilitation services offering tools to bypass detection systems or automatically generate fake reviews.

In France, the DGCCRF (Directorate General for Competition Policy, Consumer Affairs and Fraud Control) estimates that 55% of websites audited present irregularities in the collection, moderation, or publication of online reviews. Such practices mislead consumers and compromise fair market functioning.

Legal framework in France and the European Union

France has implemented the EU Directive 2019/2161 (the “Omnibus Directive”) through Ordinance No. 2021-1734, establishing enhanced transparency obligations for professionals. Article L.121-4 of the French Consumer Code explicitly prohibits the dissemination of fake reviews, categorising them as misleading commercial practices. Article L.132-2 provides for penalties of up to two years’ imprisonment and a €300,000 fine, or up to 10% of average annual turnover in proportion to the profits gained from the offence.

To support enforcement, the DGCCRF has developed an algorithmic detection tool called “Polygraphe,” capable of analysing linguistic patterns, posting frequency, and geographic data to identify coordinated campaigns of review manipulation.

At the EU level, the Omnibus Directive imposes transparency obligations concerning the verification of online reviews, aligned with ISO 20488 standards. These standards require robust procedures for reliability, traceability, and moderation. In addition, the Digital Services Act (Regulation 2022/2065), which entered into force in 2024, reinforces these requirements by mandating illegal content removal and active cooperation from major platforms, particularly GAFAM companies.

French case law confirms the judiciary’s strict stance on digital denigration. In a March 14, 2025 ruling (Court of Appeal of Paris, No. 22/16356), involving competing coding academies “La Loco and Le Wagon v. La Capsule,” the Court sanctioned the posting of anonymous fake negative reviews intended to disparage La Capsule’s training services. The reviews were authored by individuals who had never used the services and lacked author identification, disseminated false information, and concealed their commercial intent.

The Court relied on several legal grounds, including Articles L.121-1 to L.121-3 of the Consumer Code (on misleading commercial practices), specifically Article L.121-2(3°), which deems deceptive any practice carried out on behalf of an unidentified person, and on the Law for Confidence in the Digital Economy (LCEN), which mandates clear identification of online content editors. The victim company was awarded compensation for economic and moral damages, including a 40% customer loss and reputational harm.

This judgment reflects the increasingly rigorous approach of French courts to online denigration, particularly when anonymity is used as a cover for malicious competitive strategies. This position is not new: in a decision dated March 19, 2008 (No. 07/2506), the Paris Court of Appeal had already heavily sanctioned the company DDI for publishing negative reviews against its competitor L&S, followed by a public note indicating they were removed at L&S’s request – both deemed acts of unfair denigration.

The United Kingdom and the new DMCCA: a more constraining regime

On April 6, 2025, the United Kingdom enacted the Digital Markets, Competition and Consumers Act (DMCCA) – a landmark regulation that not only prohibits fake reviews but also bans undisclosed incentivised reviews and the import of reviews from unrelated product pages.

Under the DMCCA, the Competition and Markets Authority (CMA) may impose direct fines of up to £300,000 or 10% of annual turnover, in line with the French regime. The Act further requires large platforms to implement robust verification systems, conduct regular internal audits, and publish their moderation policies. This legislation enshrines a proactive compliance model, placing accountability at the core of digital strategy.

Mitigating legal risks and managing online reputation

Businesses now face a dual imperative: First, to avoid involvement in fake review dissemination, which may trigger criminal or administrative liability;
Second, to actively defend against malicious or defamatory content likely to harm their online reputation.

To this end, companies must develop structured internal governance focused on two pillars.
From a compliance perspective, it is essential to adopt a formal, transparent customer review policy aligned with ISO 20488. This includes clear procedures for collection, verification, moderation, and archiving. Sponsored or incentivised reviews must be explicitly disclosed. Any corporate involvement – direct or indirect – in the creation or publication of reviews must be fully documented.

Reputation management also requires vigilant monitoring. Companies must detect and address fake negative reviews, coordinated smear campaigns, or digital impersonation attempts. Legal remedies include issuing takedown notices to platforms, initiating delisting procedures, sending cease-and-desist letters, or bringing legal action for reputational harm.

This holistic approach cannot be effective without tailored training for all relevant teams – marketing, customer relations, content managers, and legal departments. These teams must be educated on the regulatory obligations under the Omnibus Directive, the DSA, national French law, and for international operations, the UK’s DMCCA.

It is no longer simply a matter of formal compliance, but of fostering an internal culture of transparency, traceability, and digital risk control. In today’s heightened regulatory environment, where consumers, authorities, and competitors closely scrutinise digital communications, such a preventive stance is critical to brand credibility.

Conclusion

The regulation of fake online reviews has reached a level of legal maturity. France and the European Union now offer a robust legislative and technological framework. Meanwhile, the UK has taken a decisive step forward with the DMCCA, introducing a comprehensive and stringent approach to combating fraudulent content.

For companies, compliance is no longer a strategic option but an operational necessity – given the significant reputational, competitive, and legal risks involved.

 

FAQ

How does the “Polygraphe” algorithm work?

Developed by the DGCCRF, it detects statistical or semantic anomalies that are typical of review campaigns.

Does the UK’s DMCCA apply to French businesses?

Yes, whenever they target UK consumers. This includes operating an English-language site aimed at UK users, shipping products to the UK, or offering services to UK-based clients.

How can a company ensure compliance?

By implementing a transparent review policy, training staff, using review analysis tools, keeping records of user engagement, and clearly disclosing commercial partnerships.

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AI and copyright: how to anticipate the risks?

AI-Generated creations: the question of human originality

The primary condition for copyright protection is originality, defined as the expression of the author’s personality. This condition automatically excludes any creation entirely generated by artificial intelligence, which cannot qualify as a natural person.

In France and throughout the European Union, the legal position is clear: only a human being can be considered the author of a work. Directive 2001/29/EC and the French Intellectual Property Code (articles L111-1 et seq.) confirm this approach.

The first European court decision on this issue was issued on October 11, 2023, by the municipal court of Prague. The court denied copyright protection for images generated using DALL·E, on the grounds that no human creative contribution was demonstrated.

It is therefore essential to distinguish between the exclusive use of AI to produce content and the use of AI as a tool assisting a human creative process. In the latter case, copyright protection may be available, provided a sufficiently substantial personal contribution can be demonstrated, such as through the drafting of the prompt and the selection of the final output. This principle is reaffirmed by the U.S. Copyright Office in its report to Congress and the general public, “Copyright and Artificial Intelligence,” with Part I, “Digital Replicas,” published in July 2024, and Part II, “Copyrightability,” in January 2025.

Training AI: the use of existing copyrighted works

A major legal issue today concerns the training of generative AI systems. These systems are fueled by billions of data points (texts, images, music, etc.), many of which are protected by copyright. The central question is whether such use can occur without prior authorization.

Directive (EU) 2019/790, transposed into French law in 2021, introduced a specific exception to copyright infringement for “text and data mining” (TDM). Under certain conditions, this exception allows for the automated extraction and analysis of large volumes of copyrighted texts or images to identify patterns, correlations, or trends. Its goal is to facilitate research and innovation, particularly in the field of AI, without requiring prior authorization from rightsholders unless they have expressly objected to commercial uses.

Two regimes therefore coexist:

  • TDM is mandatory for public scientific research. In practical terms, this means that copyright owners cannot oppose the exploitation of their protected works when this is carried out as part of a scientific research activity conducted by public or non-profit bodies (such as universities or research institutes).
  • TDM may be excluded for commercial uses if rightsholders have expressly opted out or if a contractual clause so provides.

Text and Data Mining regimes

In the case LAION v. Robert Kneschke, No. 310 O 227/23, ruled on September 27, 2024, by the Regional Court of Hamburg, the TDM exception was upheld in favor of LAION. The organization was accused of using one of the photographer’s images, originally uploaded to the Bigstockphoto platform, as part of a dataset to train image-generating AI.

Although Bigstockphoto’s terms of use explicitly prohibited automated use, the court recognized that LAION met the criteria for the scientific research exception under Section 60d of the German Copyright Act (transposing Directive 2019/790), finding that the organization acted on a non-commercial and public-interest basis.

Legal framework and transparency in ai systems

To address the growing challenges of AI, regulations have multiplied to better protect intellectual property rights. Regulation (EU) 2024/1689 of June 13, 2024, establishes harmonized rules on artificial intelligence. It imposes enhanced transparency obligations for general-purpose generative AI systems. As of August 1, 2025, providers must:

  • Publish a summary of the training data used (to the extent possible without disclosing trade secrets);
  • Maintain technical documentation and training logs;
  • Respect copyright, notably through opt-out mechanisms.

This regulation is a significant step forward for rightsholders, as it enables the identification of unauthorized data uses and may support licensing claims.

In parallel, French authorities, including the CNIL and the CSPLA, have engaged actively with the AI Act, detailing implementation methods and evaluating AI systems under the GDPR, particularly in terms of processing fairness and algorithmic transparency.

Towards fair remuneration for rightsholders

The widespread use of copyrighted works to train AI systems generates undeniable economic value and raises a central question about the remuneration of creators.

In response, French press publishers (Le Monde, AFP, Le Figaro, among others) have initiated actions against companies such as X (formerly Twitter) and Microsoft, asserting their neighboring rights and seeking fair compensation.

The ADAGP (Society of Authors in the Graphic and Plastic Arts) advocates for collective sector-specific licensing systems with equitable redistribution mechanisms.

Some companies had already anticipated this shift. Adobe, for example, offers a library of licensed AI-generated images, and OpenAI has signed licensing agreements with several international publishers.

These practices suggest a promising balance between technological innovation and respect for authors’ rights.

Conclusion

Copyright law remains a fundamental tool for regulating the rise of generative AI. By combining human creative input, data traceability, appropriate licensing, and respect for legal exceptions, businesses can secure their use of AI while promoting innovation. Upholding these principles protects both rightsholders and AI users.

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

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

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

  1. Can an AI-generated work be protected by copyright?
    No, unless a sufficiently creative human contribution can be demonstrated.
  2. Can generative AI models be trained on copyrighted works?
    Yes, provided the TDM exception applies or a valid license has been obtained.
  3. Can rightsholders object to their works being used by AI?
    Yes, through an opt-out or by contractually prohibiting such use.
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What are the limits of Artificial Intelligence in detecting online counterfeiting?

Online counterfeiting is a persistent threat to brands and businesses worldwide. In response to this issue, technologies based on artificial intelligence (AI) have emerged as an innovative and effective solution, allowing for faster and more accurate detection of counterfeit products. However, while the capabilities of AI are undeniable, these technologies are not without limitations. It is crucial to understand these constraints in order to better harness their potential while anticipating their shortcomings.

Artificial intelligence: an innovative solution for online counterfeit detection

More efficient tools for identifying counterfeits

AI has radically transformed the way businesses can monitor their intellectual property rights. Through machine learning algorithms, AI enables the analysis of vast amounts of data from various online platforms, searching for counterfeit products. These tools can be programmed to search for similarities in logos, trademarks, product names, or even descriptions, in a more efficient manner than manual methods.

Improving responsiveness and accuracy in identifying violations

AI, thanks to its ability to analyze data in real-time, offers increased responsiveness for quickly identifying violations. Thousands of web pages, social networks, marketplaces, and even mobile applications are scanned in record time. These systems can identify counterfeit products almost instantly, allowing businesses to act quickly to have them removed.

AI has also demonstrated its ability to detect subtle counterfeits, often invisible to the human eye. It can identify slight variations in visual presentation or typographical errors with great precision, thus enhancing the effectiveness of protection systems.

Automating legal actions

It is also possible to envisage, to a certain extent, the automation of legal processes. Once a counterfeit has been detected, AI can generate cease and desist letters, removal requests, and even initiate procedures with the concerned platforms. This significantly cuts the time and costs involved in these procedures, enabling businesses to protect their rights more effectively.

The challenges and limitations of artificial intelligence in the fight against counterfeiting

A lack of contextual understanding

Although powerful, AI remains limited when it comes to understanding the context of a situation. AI can detect visual similarity in a product but cannot determine whether it is truly counterfeit or an authentic product sold outside official distribution channels, such as in the parallel market, where products are sold without the manufacturer’s approval. The lack of a real understanding of the market and business practices complicates the accurate analysis of data.

The complexity of counterfeit products

Counterfeit products are becoming increasingly difficult to identify, as counterfeiters employ advanced techniques to replicate genuine items. In the fashion sector, certain counterfeits are manufactured with materials that closely resemble those used in original pieces, further complicating detection efforts. Moreover, fraudulent websites and online marketplaces continually adjust their content to evade search-engine scrutiny, thereby making the task more complex for AI systems that rely chiefly on visual comparisons.

Ethical and legal challenges

Using AI to detect counterfeiting raises ethical and legal questions, particularly regarding data privacy. Indeed, these systems require the collection of massive amounts of information, which can conflict with regulations such as GDPR. Moreover, algorithmic biases can distort results, favoring certain brands.

challenges of AI in counterfeit detection

These challenges require human oversight and increased transparency to ensure fairness and respect for users’ rights. It is also important to note that legal responsibility for AI actions is difficult to establish, particularly in the case of false detection.

The future of artificial intelligence: continuous improvement of detection systems

Technological evolution

AI technologies continue to evolve rapidly, particularly with deep learning, a technique that enables AI to simulate human cognitive processes to recognize complex patterns and improve counterfeit detection. This method, combined with image recognition, reduces errors even for slightly modified products. The integration of semantic analysis, which involves analyzing the meaning of words and phrases, and natural language processing, allows AI to better analyze textual content related to products. This enables it to detect inconsistencies in online descriptions, thus refining counterfeit detection.

The importance of collaboration between AI and humans

Despite the progress of AI, human expertise remains indispensable. These systems are particularly effective at processing large volumes of data and identifying visual patterns, but they often struggle to grasp the context, which is crucial for distinguishing a counterfeit from a legitimate reproduction or a product sold in the parallel market. Human experts, with their understanding of legal and commercial context, provide essential value in evaluating AI-generated results and ensuring more precise and ethical decisions.

Conclusion

We now believe that artificial intelligence offers very promising solutions for detecting online counterfeiting, and we use it on a daily basis. However, while it allows for the rapid and accurate detection of a large number of counterfeit products, it is subject to certain technological and ethical limitations. To overcome these obstacles, it is crucial to continuously improve AI technologies while integrating human expertise into their use.

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

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

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

  1. What are the limitations of AI in detecting counterfeiting?
    AI lacks contextual understanding, which can lead to confusion between authentic products and legal or parallel copies. It can also generate false positives or false negatives.
  1. What are the ethical challenges associated with using AI for counterfeit detection?
    Challenges include data privacy (GDPR), legal responsibility for AI actions, and the risk of algorithmic biases in decision-making.
  1. Can AI systems replace human experts in detecting counterfeits?
    No, AI is effective for analysis, but human experts are necessary to interpret results and make contextual decisions.
  1. Can AI improve responsiveness to online counterfeiting?
    Yes, AI can quickly detect counterfeits and react in real-time, speeding up the process of brand protection.
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Are there copyrights on the online resale of video games?

The resale of digital video games raises significant legal issues, primarily related to licensing agreements and copyright. Unlike physical games, digital games are subject to strict rules prohibiting their resale, a practice consumers might naturally expect given the intangible nature of these products. This article analyses the legal reasons behind this prohibition and the consequences for consumers and market players.

Legal issues surrounding the resale of digital video games

The nature of digital video games

Digital video games are purchased and downloaded through online platforms. One of the main distinctions from physical games is that consumers do not actually purchase the game, but instead obtain a usage license that grants them the right to use the game for a set period, without becoming the owner of the game or its content.

These licenses are personal and non-transferable. The terms are specifically outlined in the agreements that users accept upon purchase. It is due to this lack of ownership that it is legally impossible to resell an online video game.

Licensing agreements and copyright protection

Video games are protected by copyright, which grants the publisher exclusive rights to distribution and use, as outlined in the Intellectual Property Code. This explains the strict restrictions associated with them.

Licensing agreements serve to protect these rights and limit the use of the games within the framework set by the publisher. For publishers, this is an effective means of controlling the distribution of their works and preserving their economic model.

The absence of a second-hand market for online video games: a consequence of copyright law

Exhaustion of rights and its limits in the digital video game sector

The exhaustion of rights principle is an important concept that allows a physical item to be resold freely after its first sale, provided that the sale occurred within the European Union. However, this principle does not apply to intangible goods, such as digital video games.

Indeed, according to Article 4 of Directive 2001/29/EC on copyright, the exhaustion of rights applies only to tangible items, not to services or digital products like video games. This rule is intended to protect the interests of publishers and prevent the uncontrolled circulation of digital products.

tangible assets digital assets

Jurisprudence and the absence of a resale right

The Court of Cassation recently clarified the issue of the exhaustion of the distribution right for an online video game in its judgment of October 23, 2024 (n° 23-13.738), rejecting the appeal by the UFC-Que Choisir association against Valve Corporation regarding the resale of digital video games on the Steam platform, where the general terms prohibited resale and the transfer of accounts or subscriptions purchased on the platform.

The court confirmed that video games are complex works that include graphic, sound, and narrative elements, protected by Directive 2001/29/EC on copyright, rather than Directive 2009/24/EC relating to computer programs. This distinction aligns with earlier CJEU rulings, which clarified that the exhaustion of rights applies only to tangible objects, not digital products.

Several decisions confirm this trend, notably including:

  • Nintendo (January 23, 2014): in this case, Nintendo sued PC Box for selling downloadable video games online. Nintendo challenged the resale of copies of its digital video games without its authorization, after consumers had downloaded the games via a download code.
  • Tom Kabinet (December 19, 2019): Tom Kabinet, a Dutch website, set up a marketplace for reselling digital copies of e-books. The case concerned the legality of reselling these copies after their initial purchase.

The future of video game resale online

Possible legislative changes

In the context of potential European legislative reforms, some argue for relaxing the rules regarding the resale of digital video games. In 2021, the European Commission launched a public consultation to explore legislative reform options for the digital market. However, the economic model of publishers and the protection of copyright remain key issues that delay in-depth reform.

Certain consumer-friendly initiatives, such as the creation of more flexible, potentially transferable licenses, could reconcile the interests of publishers and users, creating a controlled resale system on authorized platforms.

The role of distribution platforms

Online video game distribution platforms, such as Steam or PlayStation Store, play a central role in regulating the market for digital video games. While these platforms sometimes offer sharing or exchange systems, they still limit the free resale of games. Their policies are driven by the licensing agreements negotiated with publishers and developers.

Conclusion

The prohibition of the resale of online video games is mainly due to the structure of licensing agreements and copyright law. Video game publishers maintain strict control over the distribution of their digital products, preventing the creation of a second-hand market. While some legislative changes could relax these restrictions, the current framework continues to favor the economic interests of publishers over consumer rights.

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

Dreyfus Law firm works in partnership with a worldwide network of lawyers specialising in Intellectual Property.

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Nathalie Dreyfus with the assistance of the entire Dreyfus team.

 

FAQ

  1. Why can’t digital video games be resold?
    Digital video games are governed by licensing agreements that prohibit their resale, due to their copyright protection.
  2. What is a video game license?
    A video game license is a contract between the consumer and the publisher, allowing the consumer to play the game under specific conditions, without owning it.
  3. Are there any exceptions to the resale ban for digital video games?
    In some cases, a perpetual license may allow for the transfer of usage rights, but these situations are rare, and permissions must be explicitly stated.
  4. What are the legal risks of reselling digital video games online?
    Unauthorized resale may lead to legal action for infringement of copyright and licensing agreements.
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The importance of actively defending your trademark: understanding foreclosure through tolerance

In the ever-changing world of intellectual property, trademarks are strategic assets that distinguish products and services in the marketplace. However, their value lies not only in their registration, but also in the vigilance shown by their owners to prevent unauthorized use. One of the major legal pitfalls in this regard is foreclosure by tolerance, a mechanism that can deprive the owner of their rights if they fail to act within the prescribed time limits.

Forfeiture by tolerance cannot be equated with prescription. Forfeiture is based on the voluntary inaction of the trademark owner, whereas prescription is a rule of common law linked to time. Forfeiture prevents any action for invalidity or infringement, even if the facts are recent.

I – Understanding forfeiture by tolerance in trademark law

Definition and legal framework

Laches refers to a situation in which the owner of an earlier trademark knowingly tolerates, for a continuous period of five years, the use of a later registered trademark without taking any action. In European law, Article 61 of the EU Trademark Regulation (EUTMR) codifies this mechanism:

1. The owner of a trademark of theEuropean Union who has, for five consecutive years, tolerated the use of a later European Union trademark in the European Union while being aware of that use may no longer apply for a declaration of invalidity of the later trademark on the basis of the earlier trademark for the goods or services for which the later trademark has been used, unless the registration of the later European Union trademark was made in bad faith.

  1. The proprietor of an earlier national trademark referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) who has, for five consecutive years, tolerated the use of a later EU trademark in the Member State where that earlier trademark or other earlier sign is protected, while being aware of that use, may no longer apply for a declaration of invalidity of the later trade mark on the basis of the earlier trade mark or the other earlier sign in respect of the goods or services for which the later trade mark has been used, unless the registration of the later EU trade mark was made in bad faith.
  2. In the cases referred to in paragraphs 1 or 2, the proprietor of the later European Union trademark may not oppose the use of the earlier right, even if that right can no longer be invoked against the later European Union trademark.

Where the conditions are met, the person who has tolerated the use may no longer contest the validity of the later trademark or prohibit its use.

Essential conditions for forfeiture

For forfeiture by tolerance to occur, four cumulative conditions must be met:

  1. Knowledge: the proprietor of the earlier trademark must have been aware of the use of the later trademark.
  2. Continuous use: the later trademark must have been used continuously for five years.
  3. Good faith: the later trademark must have been registered and used in good faith.
  4. Absence of legal action: no legal action must have been taken during this period.

Clarification of the concept of “knowledge”

The condition of actual knowledge by the owner of the earlier trademark is a central criterion for forfeiture by acquiescence, but also one of the most debated.

According to the settled case law of the General Court of the European Union (Case T-150/17) and the Court of Justice of the European Union (Case C-381/12 P), knowledge must be actual, not merely presumed. In other words, implicit knowledge or knowledge inferred from the behavior of the proprietor is not sufficient. Proof of actual knowledge of the use of the later trademark is required.

In particular, the Court of Justice recalled in judgment C-381/12 P that:

The proprietor of an earlier trademark cannot be regarded as having had knowledge of the use of a later trademark unless he actually had knowledge of that use, and not merely implicit knowledge or knowledge inferred from the behavior of the proprietor of the trademark.

Similarly, the European Union Court of Justice in case T-150/17 clarified:

Consequently, the proprietor of a trade mark challenged by a declaration of invalidity cannot merely prove potential knowledge of the use of his trade mark by the proprietor of an earlier trade mark, nor can he adduce consistent evidence capable of giving rise to a presumption of such knowledge.

It is therefore not sufficient that the later trademark is visible on the market or that there are infringement proceedings in other jurisdictions. For example, the mere presence of the disputed trademark in the results of an automated monitoring system does not constitute sufficient evidence in the absence of other concrete evidence.

However, evidence of actual knowledge may result from:

  • correspondence between the parties referring to the use of the trademark;
  • joint presence at trade fairs where the trademarks are used;
  • or the signing of a prior coexistence agreement (case 3971 C).

In case R 1299/2007-2, the EUIPO clarified an important point concerning the condition of knowledge in the context of estoppel by acquiescence. It ruled that the proprietor of the earlier trademark does not need to be aware of the registration of the later trademark, i.e., it is not necessary for them to have formal knowledge that the later trademark has been filed or registered with the competent office. However, it is essential that the proprietor of the earlier trademark has actual knowledge of the use of the later trademark during the relevant period, i.e., that they know that the trademark is being used on the market, despite its registration.

Thus, the period of tolerance begins to run only from the moment when the proprietor of the earlier trademark has actual and objective knowledge of the use of the later trademark, and not simply of its existence as a filing or administrative registration, for five consecutive years. The Board of Appeal ruled, in particular:

What is important in this context is the objective circumstance that the sign (the use of which was knowingly tolerated by the applicant for annulment) must have existed for at least five years as a Community trademark (CTM).”

II – Risks associated with failure to defend trademark rights

Legal consequences

Failure to take timely action against the unauthorized use of an identical or similar trademark may result in a permanent loss of rights. Once the right has been forfeited through tolerance, the prior owner can no longer bring an action for invalidity or infringement against the later trademark for the products or services concerned. This legal barrier requires absolute responsiveness in order to maintain the enforceability of one’s rights.

Economic consequences

The economic effects of a failure to defend one’s rights are equally damaging:

  • Weakening of the trademark: The coexistence of similar trademarks weakens the uniqueness and symbolic value of the earlier trademark. The strength of a trademark lies largely in its ability to distinguish itself clearly from other signs used by competitors. When a similar trademark is tolerated or left unopposed, this differentiation gradually becomes diluted. The earlier trademark then loses some of its exclusivity, which can alter its symbolic value among consumers and business partners. This deterioration affects not only the qualitative perception of the trademark, but also its commercial strength and its ability to embody the identity and values of the company.
  • Consumer confusion: Similar trademarks can confuse the public, undermine trust, and divert sales. Consumers faced with a fragmented range of similar signs may find it difficult to clearly identify the origin of products or services. This uncertainty undermines consumer confidence, which can result in hesitation to purchase or even rejection of the market. Furthermore, confusion may encourage the misuse of the reputation and renown of the earlier trademark by the owners of later trademarks, to the detriment of consumer loyalty to the original trademark.
  • Loss of market share: Competitors taking advantage of the similarity may capture a share of the customer base by unfairly benefiting from the reputation of the original trademark. This capture of customers is often based on an illegitimate appropriation of the reputation and marketing efforts of the original owner. The impact is reflected in a decrease in sales and, ultimately, an erosion of the original brand’s competitive position. In a competitive market environment, this loss can permanently undermine the economic and strategic viability of the company.

III – Strategies for active trademark protection

Proactive monitoring and detection

Rigorous market monitoring is essential. The implementation of monitoring systems enables the rapid detection of infringing registrations or uses. Regular audits and analysis of national and international databases are also crucial tools for anticipating litigation.

Legal action and timely responses

As soon as unauthorized use is identified, it is advisable to act without delay. This may take the form of:

  • formal notices (see limitations below),
  • oppositions to the registration of conflicting trademarks,
  • or legal action if necessary.

These measures not only serve to avoid foreclosure, but also strengthen the legitimacy and exclusivity of the trademark.

Interruption of the foreclosure period

The starting point and suspension of the grace period are also the subject of extensive case law.

The CJEU ruling C-482/09 established that simply sending a formal notice is not sufficient to interrupt the foreclosure period, unless this letter leads to a concrete result (e.g., voluntary withdrawal, a coexistence agreement, or the initiation of legal proceedings).

Only administrative or judicial action—such as an action for invalidity before the INPI or the European Union Intellectual Property Office (EUIPO) or an action before the national courts, such as an action for infringement—can effectively interrupt the five-year period.

A recent ruling (Case C-466/20) confirmed that sending an unsuccessful warning, even if it proves clear opposition, is not sufficient to prevent foreclosure if no formal action follows. The Court specifies that:

Any interpretation of Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 as meaning that the sending of a warning letter is sufficient, in itself, to interrupt the limitation period would allow the proprietor of the earlier trademark orother earlier right to circumvent the limitation period by tolerance by repeatedly sending, at intervals of nearly five years, a letter of formal notice. Such a situation would undermine the objectives of the limitation period by tolerance, as recalled in paragraphs 46 to 48 of this judgment, and would deprive that system of its effectiveness.”

This decision highlights the importance of active vigilance and legal responsiveness in the face of unauthorized use of an earlier trademark.

Similarly, the signing of a coexistence agreement interrupts the period of foreclosure by tolerance, thereby suspending the period during which the owner of the earlier trademark could lose its rights due to its tolerance. However, if that agreement is subsequently breached or ceases to have effect, a new period of five years begins to run, provided that the proprietor of the earlier trademark again becomes effectively aware of the use of the later trademark. This rule was clarified by decision R 267/2014-2.

In that case, the Board of Appeal held, inter alia:

Consequently, since the application for a declaration of invalidity was filed on July 11, 2012, the contested decision correctly concluded that less than five consecutive years had elapsed between the end of the verbal agreement, i.e., from the moment when the applicant for invalidity had the opportunity not to tolerate the use of the contested Community trademark, and the application for a declaration of invalidity. On the other hand, even if it were considered that the verbal agreement between the parties had not been breached and had ended when the proprietor of the Community trademark filed opposition against the Community trademark application ‘BONASYSTEMS’ on February 16, 2010, that verbal agreement should, in the absence of evidence to the contrary, be considered still valid. Consequently, the proprietor of the earlier trade mark is still not in a position to refuse to tolerate the use of the latter Community trade mark in the United Kingdom. It follows that the application for a declaration of acquiescence must be dismissed.

Thus, the period of forfeiture can only be resumed if two conditions are met simultaneously: the effective termination of the coexistence agreement and the prior proprietor’s awareness of the continued use of the later trademark.

Conclusion

Actively defending your trademark is not just a legal obligation: it is a strategic imperative. Knowing and anticipating the effects of foreclosure by tolerance is essential to preserving the value, exclusivity, and integrity of a trademark portfolio. A policy of systematic vigilance, combined with targeted and rapid responses, is the best guarantee for ensuring the longevity of an asset as sensitive as a trademark.

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

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

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

This article was published on the Village Justice website.

FAQ

1. What is foreclosure through tolerance in trademark law?

Foreclosure by tolerance occurs when the owner of an earlier trademark knowingly tolerates the use of a later registered trademark for five consecutive years without taking action. After this period, the owner of the earlier trademark can no longer seek to invalidate the later trademark, unless it was registered in bad faith.

2. What are the essential conditions for foreclosure by tolerance?

To trigger foreclosure by tolerance, four conditions must be met: the trademark owner must have knowledge of the use of the later trademark, the later trademark must have been used continuously for five years, the later trademark must have been used in good faith, and no legal action must have been taken during this period.

3. What are the legal consequences of not defending your trademark in time?

Failing to act against unauthorized use of a trademark within the prescribed period can result in a permanent loss of rights. Once foreclosure by tolerance is established, the owner can no longer challenge the validity or prevent the use of the later trademark for the relevant products or services.

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Non-Use revocation: EU General Court clarifies procedural abuse and admissibility of late evidence

In the current competitive environment, businesses must continuously safeguard the longevity of their trademark rights. As a result, non-use revocation proceedings have become increasingly prevalent before the European Union courts.

Two judgments delivered on 7 May 2025 by the General Court of the European Union (T-1088/23 and T-1089/23) provide critical clarification on two pivotal issues: the absence of a standing requirement for filing revocation actions, and the procedural rules surrounding the admissibility of late evidence. These rulings highlight the increased standards imposed on trademark owners and the procedural diligence expected from the European Union Intellectual Property Office (EUIPO). We analyse here the key principles these decisions establish regarding evidentiary standards, procedural fairness, and the balance of rights before the EUIPO.

Legal and procedural framework for revocation actions

Pursuant to Article 58 of Regulation (EU) 2017/1001, any third party may seek the revocation of an EU trademark if it has not been used in a genuine manner for a continuous period of five years. These proceedings aim to ensure the accuracy of the trademark register and maintain the economic effectiveness of trademark rights. However, where such actions are initiated for strategic or retaliatory reasons particularly in the absence of a legitimate interest, they may raise concerns of procedural abuse.

In the judgments of 7 May 2025 (T-1088/23 and T-1089/23), the General Court was called upon to adjudicate on appeals filed by RTL Group Markenverwaltungs GmbH, challenging EUIPO decisions that had partially revoked its trademarks following applications by a third party. Two central legal questions arose: whether the applications were inadmissible due to abuse of rights, and whether the Board of Appeal had erred in refusing to consider late-filed evidence.

Two parallel cases leading to a key clarification

The cases T-1088/23 and T-1089/23 oppose RTL Group Markenverwaltungs GmbH to the EUIPO and concern the partial revocation of two figurative “RTL” European Union trademarks registered for more than twenty classes of goods and services.

In 2016, RTL Group Markenverwaltungs GmbH obtained registration of two European Union figurative trademarks incorporating the verbal element “RTL”, covering a broad range of goods and services across 22 classes. In 2021, a third party filed two applications for revocation on the grounds of non-use, pursuant to Article 58(1)(a) of Regulation (EU) 2017/1001 on the European Union trademark.

To contest these applications, RTL submitted various items of evidence intended to demonstrate genuine use of the contested marks, including website screenshots, advertising materials, extracts from broadcast programmes, and audience data. However, the EUIPO found that this evidence was sufficient only in respect of certain goods and services, and ordered the partial revocation of the marks for the remainder.

RTL appealed to the EUIPO Board of Appeal, seeking annulment of the partial revocation decision and requesting that additional evidence be taken into account for the first time on appeal. This additional evidence included financial documents, certificates of digital broadcasting, and further material substantiating commercial communication efforts. The Board of Appeal rejected the newly submitted documents on the grounds that they were filed belatedly and without sufficient justification, and upheld the partial revocation decision.

RTL’s appeals relied on two main grounds: that the revocation actions were inadmissible due to abuse of rights, and that the Board had wrongfully refused to examine late-filed evidence. The General Court ruled on both issues. It rejected the argument of abuse of rights and found fault with the way in which the EUIPO handled the late evidence.

Rejection of an abuse of rights claim: a matter of principle

RTL argued that the revocation request was part of a broader strategy of procedural intimidation. They cited the ‘Sandra Pabst’ decision, which was made by the Grand Board of Appeal of the EUIPO on 1 February 2020 (R 2445/2017-G). In a 2020 decision, the Grand Board of Appeal acknowledged a manifest abuse of process, based on a body of consistent and converging evidence. The applicant a company specifically established for the purpose of filing revocation actions had initiated over 800 such proceedings in less than two years, including 37 targeting the same trademark owner. Several of these actions were clearly unfounded and used strategically as leverage, particularly with the aim of pressuring trademark holders into transferring their rights. This systemic conduct, coupled with the absence of any genuine economic activity and the repetitive nature of the filings, revealed a deliberate and improper use of the revocation procedure for purposes unrelated to those envisaged by the Regulation. RTL relied on this precedent as a benchmark to demonstrate the abusive nature of the revocation actions brought against its marks.However, the General Court confirmed that under Article 63(1)(a) of Regulation 2017/1001, any natural or legal person may initiate a revocation action without having to demonstrate standing or a legitimate interest. The underlying rationale is the protection of public interest in maintaining a truthful and functional trademark register. The objective is, in particular, to unclog the trademark registers by removing signs that are no longer in use, in a context where the availability of distinctive signs is increasingly limited, thereby ensuring better access to the registers for active market participants. The ground for revocation non-use is objective and unrelated to the applicant’s motivations.

The Court further noted that none of the exceptional circumstances present in the Sandra Pabst case were applicable here: there was no shell company, only a limited number of proceedings, and no indication of an unlawful strategic purpose. Accordingly, the abuse of rights claim was dismissed.

Late evidence of use: a reminder of EUIPO’s procedural obligations

The second issue focused on the Board of Appeal’s refusal to consider evidence submitted by RTL on 15 September 2023 after the expiry of the procedural deadlines. Relying on Articles 95(2) of Regulation 2017/1001 and 27(4) of Delegated Regulation 2018/625, the EUIPO excluded this evidence without applying any substantive analysis.

The General Court strongly censured this approach. It reiterated that EUIPO enjoys broad discretion to admit late evidence, provided it is prima facie relevant and accompanied by valid justifications for the delay. A general refusal grounded solely on the late submission of evidence, without assessing these two conditions, constitutes a procedural error.

In this case, the EUIPO had failed to properly exercise its discretion in a reasoned manner, thereby breaching its procedural obligations. The Court therefore partially annulled the EUIPO’s decision.

Conclusion

Ultimately, the judgments delivered on 7 May 2025 clarify two fundamental principles of EU trademark law. First, they confirm that revocation actions may be initiated without the need to demonstrate any legitimate interest, even in the absence of a competitive relationship or personal use of the mark by the applicant. They further establish that the EUIPO must provide a detailed and reasoned justification when refusing to consider evidence submitted after the prescribed deadlines.

The Court underscores that revocation proceedings serve a broader public interest: maintaining the integrity and functionality of the trademark register by eliminating marks that are no longer in genuine use. This ensures that space remains available in an increasingly saturated register, where the availability of distinctive signs is a growing concern for economic operators.

These rulings also highlight the imperative for trademark owners to adopt a proactive and disciplined approach to portfolio management. Preserving enforceable rights requires the continuous collection and maintenance of clear, credible, and contemporaneous evidence of use, capable of withstanding scrutiny in the event of a revocation challenge.

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

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

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is a non-use revocation request?

It is a legal procedure allowing any party to request the cancellation of an EU trademark that has not been put to genuine use for a period of five consecutive years.

2. Is it necessary to demonstrate a legitimate interest to request revocation?

No. Under Article 63(1)(a) of Regulation 2017/1001, there is no requirement to justify standing.

3. Can EUIPO automatically dismiss late-filed evidence?

No. The Office must assess whether the evidence is relevant and whether there are valid reasons for its late submission.

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Purchase report : The French Court of Cassation ends the strict requirement for independence of the third-party buyer

The purchase report, a key piece of evidence in intellectual property disputes, has long been undermined by the strict requirement for absolute independence of the third-party buyer. In its ruling on May 12, 2025 (n° 22-20.739), the French Court of Cassation made a significant shift, introducing a more pragmatic approach focused on transparency and procedural fairness. From now on, the mere lack of independence will no longer be enough to invalidate a purchase report.

Legal framework for the purchase report

1.1 A crucial evidence tool

The purchase report is an essential tool in intellectual property litigation. It allows rights holders to demonstrate the illicit sale of a product, typically online, by hiring a bailiff to make a purchase and draft an official report of the transaction.

1.2 A rigorous past jurisprudence

Since a decision on January 25, 2017 (Civ. 1st, n° 15-25.210), the Court of Cassation held that the mere involvement of a third party linked to the plaintiff’s law firm (such as an intern or associate) was enough to invalidate the report, citing the right to a fair trial under Article 6 of the European Convention on Human Rights. This position generated significant criticism among specialists, as it unnecessarily complicated the process of proving intellectual property violations.

 

Facts of the case and procedural history

2.1 A disputed purchase report

In 2016, Rimowa GmbH, the holder of the “Limbo” trademark, identified counterfeit products being sold online under the “Bill Tornade” brand. To gather evidence, Rimowa commissioned a bailiff to carry out a purchase report. The operation took place on May 4, 2016, under the supervision of the bailiff, with the purchase made by an intern from Rimowa’s law firm, whose role was explicitly mentioned in the report.

The Paris Commercial Court ruled the report invalid, arguing that the involvement of the third-party buyer undermined the neutrality of the evidence. However, the Paris Court of Appeal overturned this decision, holding that the third-party buyer’s imperfect independence was not sufficient to invalidate the report, given that it was performed transparently and under the bailiff’s control. Consequently, the report was deemed valid, and the companies HP Design and Intersod were found guilty of counterfeiting.

2.2 A Cassation appeal by the defendants

The condemned companies appealed to the Court of Cassation, arguing a violation of the principle of fairness of evidence, the right to a fair trial, and the requirement for the third-party buyer’s independence.

 

The contribution of the Court of cassation’s ruling of May 12, 2025

3.1 Lack of independence is no longer sufficient

In a landmark ruling, the mixed chamber of the Court of Cassation reversed the previous approach. The Court ruled that the mere fact that the third-party buyer was an intern from the plaintiff’s law firm was not enough to invalidate the report. The Court rejected a blanket invalidation based solely on the relationship between the buyer and the plaintiff. Instead, the Court now emphasizes an in concreto examination of the circumstances surrounding the report.

3.2 Three criteria for validating the purchase report

The Court established a framework for assessing the validity of the purchase report based on three key criteria:

  • Transparency: The relationship between the buyer and the party is clearly disclosed in the report.
  • Effective control by the bailiff: The operation is conducted under proper supervision, ensuring no manipulation.
  • Absence of any deception or bad faith: There are no elements of concealment or dishonesty.

3.3 A clear distinction from seizure of counterfeit goods

The purchase report is neither intrusive nor coercive. It does not face the same stringent requirements as the seizure of counterfeit goods, which involves direct intervention at the defendant’s premises. The Court reiterated that Directive 2004/48/EC requires proportional, effective, and adversarially respectful methods of evidence collection, without excessive rigidity.

Benefits for rights holders

This ruling brings several advantages for rights holders:

  • It restores flexibility in procedural matters.
  • It reduces the risk of automatic invalidation, which was often raised in defense arguments.
  • It strengthens the probative value of online purchase reports, particularly in cases involving counterfeiting and unfair competition.

Conclusion: towards a more practical and fair evaluation

The Court of Cassation’s ruling represents a paradigm shift. The lack of independence of the third-party buyer is no longer an automatic cause for invalidating a purchase report. This decision strikes a balance between fairness in evidence and the effectiveness of proof, in line with Directive 2004/48/EC.
In summary, this jurisprudential change restores a more pragmatic interpretation of evidence law in intellectual property cases.

 

Dreyfus & Associés is ready to assist its clients in managing these complexities by providing tailored advice and comprehensive operational support for the full protection of intellectual property.

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

Nathalie Dreyfus and the entire team at Dreyfus & Associés.

 

FAQ

1. Can an intern act as the third-party buyer in a purchase report?

Yes, an intern can act as the third-party buyer, provided that their role is clearly stated in the report and they operate under the supervision of a bailiff.

2. Must the link with the law firm be disclosed?

Yes, the connection to the law firm must be disclosed. If not, the report may be seen as lacking transparency and could be rejected.

3. How can the probative value of a purchase report be maximized?

To maximize its probative value, it is essential to ensure full transparency, proper supervision by the bailiff, and the absence of any deception or bad faith.

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