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Introduction

The launch of professional accounts on Instagram marked a decisive step in the evolution of corporate communication. Social media platforms are no longer merely channels for institutional expression; they are now fully integrated into business development strategies, customer relations, and the enhancement of intangible assets.

However, this evolution entails a specific and often underestimated legal risk : “username squatting”, namely the appropriation by a third party of a username corresponding to a trademark or distinctive sign. In a digital environment where control over identity determines credibility and visibility, securing identifiers has become a major strategic issue.

Instagram and professional accounts : a strategic asset at risk

The shift to professional accounts has significantly transformed the nature of Instagram profiles. Access to audience analytics, promotional tools and commercial features has turned the account into a genuine business asset.

In this context, the username is no longer a secondary choice. It concentrates trademark visibility on the platform and determines how easily consumers can identify and find the company. It also contributes to consistency across digital channels, including domain names and other social media platforms.

When a third party registers or exploits this identifier, the consequences go beyond mere technical inconvenience: public confusion, loss of traffic, trademark dilution and a weakening of the overall digital strategy may result.

Username squatting : definition, mechanisms and legal risks

Username squatting refers to the registration of a username identical or similar to a trademark, generally with speculative or harmful intent. This practice follows the logic of cybersquatting observed in domain names, now transposed to social networks.

Motivations may vary : resale at a high price, traffic diversion, exploitation of a trademark’s reputation, and more generally, of a company, or even identity impersonation intended to mislead consumers.

From a legal perspective, the risks are significant. Where a trademark is registered, the use of a username incorporating the protected sign may constitute trademark infringement if it amounts to use in the course of trade likely to create a likelihood of confusion. Case law acknowledges that a digital identifier may qualify as trademark use where it seeks to attract public attention in a commercial context.

In the absence of a sign being filed, action may be brought on the grounds of unfair competition or parasitism. In such cases, fault, damage and a causal link must be demonstrated, requiring a detailed analysis and solid evidentiary support.

Beyond litigation, damage to online reputation may occur rapidly and have lasting consequences, particularly where the disputed account disseminates misleading or harmful content.

Legal grounds for taking action against the misappropriation of a username

Trademark law constitutes the primary legal tool. Registration with the INPI, EUIPO, or through an international filing provides an exclusive right that may be enforced against unauthorized third-party use.

In parallel, Instagram, and more generally the Meta group, provides internal reporting procedures in cases of intellectual property infringement. These mechanisms require evidence of ownership and proof of the alleged infringement. The strength of the file and the rights holder’s responsiveness are decisive factors.

Where necessary, a formal cease-and-desist letter based on trademark infringement or unfair competition may have a strong deterrent effect. In certain cases, the intervention of specialized counsel is sufficient to secure voluntary transfer of the username.

Prevention : protecting your trademark before opening a professional account

Prevention remains the most effective strategy. Reserving usernames should be integrated into any trademark launch or development strategy, alongside trademark filing and domain name registration.

Implementing digital monitoring enables early detection of abusive registrations and allows prompt action. Such monitoring forms part of a broader policy for managing intangible assets and governing digital identity.

To learn more about the importance of monitoring your trademark on social media, we invite you to read our previously published article.

A global strategic approach : digital consistency and trademark protection

Username squatting should not be viewed in isolation. It forms part of a broader reflection on the consistency and security of a company’s digital presence.

Alignment between the registered trademark, domain names and social media identifiers strengthens commercial credibility and limits the risk of impersonation. Rigorous digital identity governance helps prevent fraud, reputational damage and traffic loss.

Today, digital identity constitutes a fully-fledged intangible asset. Its protection should be approached with the same level of rigor as other intellectual property rights.

Conclusion

The launch of professional accounts on Instagram offers considerable commercial opportunities and plays a key role in corporate visibility strategies.

However, the risk of username squatting requires increased vigilance. Effective protection relies on a combination of prior trademark registration, strategic reservation of identifiers and swift action in the event of infringement.

In a competitive digital environment, securing a username is not a minor operational detail; it is a major legal and strategic issue.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. Can a company reserve a username without immediately using the account ?
Yes. Preventive reservation of a username is recommended even if the account is not immediately active. It prevents third-party appropriation and secures future digital strategy.

2. Does the inactivity of a squatted account make transfer easier ?
Not automatically. Inactivity alone is insufficient; infringement of prior rights or violation of platform rules must be demonstrated.

3. Can a slightly different username still create legal issues ?
Yes, if the similarity creates a likelihood of confusion in the public’s mind. Assessment is case-specific and depends on the trademark’s reputation and the context of use.

4. Is a username considered a company asset ?
Indirectly yes. As part of digital identity, it contributes to trademark recognition and coherence, potentially impacting the overall valuation of intangible assets.

5. Is social media monitoring truly necessary for SMEs ?
Yes. The risk of impersonation does not only affect large corporations. Appropriate monitoring enables early detection of infringements and limits their impact.

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

Introduction

In its Deity Shoes case of December 18, 2025, the Court of Justice of the European Union (CJEU) clarified with remarkable precision the conditions for protection of community designs.

Through this decision, the Court reaffirmed two fundamental principles: first, that protection under Regulation (EC) No 6/2002 is subject solely to novelty and individual character. Second, that the existence of fashion trends cannot lower the threshold required to establish individual character.

In recent years, fast fashion has profoundly transformed the fashion industry. Within weeks sometimes days a trend spotted on a runway or social media platform is reproduced on a large scale. The phenomenon of “dupes” products openly marketed as near-identical alternatives at lower prices further intensifies this pressure. We invite you to read our article previously published on this issue.

This judgment arises in a context marked by increasing litigation related to fashion, product customization and rapid reproduction practices. It now stands as a key reference for design right holders throughout the European Union.

The background of the case: A revealing illustration of contemporary creative practices

Deity Shoes marketed footwear protected by community design registrations. Its creative process relied on selecting and combining components sourced from catalogues of Asian suppliers. Colors, materials, decorative elements and accessories were chosen from pre-defined options and assembled into a final product intended for the European market.

When sued for counterfeiting, the defendant companies challenged the validity of the asserted rights. In their view, the designs merely resulted from the juxtaposition of pre-existing elements, without genuine creative contribution, and therefore could not meet the statutory requirements.

The CJEU was asked to clarify two sensitive issues:

• Whether a minimum threshold of creativity exists under EU design law;
• Whether fashion trends affect the assessment of individual character.

Fundamental reminder: no “minimum degree of creativity” required for design protection

One of the central questions referred to the Court concerned the possible existence of a minimum creativity threshold. The defendants argued that the contested designs reflected nothing more than combinations of existing elements and did not demonstrate any particular intellectual effort.

The Court rejected this reasoning unequivocally. Protection under Regulation No 6/2002 cannot be made conditional upon a “minimum degree of creativity” or a “particular intellectual effort.”

The Court clearly distinguished design law from copyright law. While copyright protects original “works” reflecting the author’s personality, design law protects new and individualized objects, often of an utilitarian nature and intended for mass production.

Accordingly, the assessment does not focus on the intensity of the creative process but on the final product. Novelty and individual character must be evaluated through an objective comparison with prior designs. The concept of “designer,” referred to in Article 14 of the Regulation, is relevant only for determining ownership and does not introduce any additional substantive condition for protection.

Design law: is the customization of a pre-existing design sufficient to establish individual character?The Court further clarified that “the fact that a design results from the personalization of a basic model […] is not, in itself, an obstacle to recognizing its individual character.”

The decisive factor remains the overall impression produced on the informed user. Even when composed of known elements, a design may be protectable if the specific combination creates an overall impression that differs from that produced by any individual prior design.

This clarification is crucial for the fashion industry, where creativity often operates through selection, adaptation and recombination rather than radical invention.

The informed user and the requirement of a global comparison

The Court adopted a rigorous approach to the assessment of individual character. The analysis must be conducted from the perspective of the informed user, defined as a person possessing a high degree of attention and extensive knowledge of the sector concerned.

This informed user is familiar with prevailing fashion trends. However, such knowledge does not reduce the level of scrutiny. On the contrary, it makes the user more attentive to differences in detail.

The Court emphasized that the assessment must be based on a global comparison, independent of aesthetic considerations, commercial positioning or the popularity of certain elements. The reasoning cannot rely on the notoriety of a trend or market saturation.

Practical implications of the case for fashion stakeholders

The judgment comes at a time of modernization of EU design law. The ongoing reform seeks to adapt the system to digital environments, clarify key concepts and enhance legal certainty.

In this context, the Deity Shoes ruling consolidates the theoretical foundations of the regime. It reassures right holders by confirming that protection is not dependent on fluctuating subjective criteria. At the same time, it prevents an excessive dilution of the individual character requirement in a sector heavily influenced by trends.

For businesses, this case law calls for a structured filing strategy. It is essential to:

• Clearly define the scope of claimed protection;
• Identify the visually dominant features of the design;
• Anticipate potential comparisons with prior art.

A proactive and strategic approach significantly enhances enforceability against fast fashion operators.

Conclusion

Design rights constitute an effective legal weapon against fast fashion, provided they are deployed within a coherent strategy. The Deity Shoes ruling clarifies that protection does not depend on subjective creative effort or the existence of fashion trends, but rather on the overall perception of the product by the informed user.

This strengthens business models based on adaptation and combination while maintaining a high and objective threshold for individual character. For fashion creators who invest in structured intellectual property protection, the legal framework offers robust and predictable safeguards.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of their intellectual assets.

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Can fast fashion reduce the effectiveness of design protection?

Fast fashion does not alter the legal validity criteria. However, rapid production cycles and widespread copying may complicate enforcement. Effectiveness therefore largely depends on the filing, monitoring and enforcement strategy implemented by the right holder.

2. Can a design inspired by a supplier’s catalogue be protected?

Yes. The CJEU confirmed that a design resulting from the personalization or combination of pre-existing elements may be protected, provided that the chosen combination produces a distinct overall impression. The originality of each component taken individually is irrelevant.

3. Does commercial success influence the assessment of individual character?

No. The analysis is strictly legal and objective. Market popularity, aesthetic appeal or branding strategy do not affect validity. Only the overall impression on the informed user is decisive.

4. How long does protection of a community design last?

A registered community design is protected for an initial period of five years, renewable in five-year increments up to a maximum of 25 years. An unregistered community design benefits from three years of protection from the date of disclosure within the European Union.

5. Is it necessary to demonstrate significant creative effort to obtain protection?

No. Unlike copyright law, EU design law does not require a minimum degree of creativity or particular intellectual effort. Novelty and individual character are the only substantive requirements.

Introduction

Trademark invalidity in France and in the European Union has become a major strategic tool for securing a portfolio of rights, defending a competitive position, or neutralizing an opportunistic filing. Since the reform introduced by the Ordinance of  November 13, 2019 and the transfer of jurisdiction to the French National Institute of Industrial Property (INPI) for a large portion of intellectual property administrative disputes, invalidity actions have become more structured, professionalized, and significantly faster.

When can an invalidity action be brought ? On what legal grounds ? What procedure should be followed before the INPI or the EUIPO ? And above all, how can the chances of obtaining cancellation of a registered trademark be maximized ?

We provide here a structured, practical analysis grounded in experience.

What is trademark invalidity under French and EU law ?

Trademark invalidity consists of establishing that a sign registered as a trademark should never have benefited from the protection granted under trademark law. It is not a matter of sanctioning conduct occurring after registration, but rather of identifying a legal defect that existed at the filing date. In other words, invalidity is based on the principle that the trademark was irregular ab initio.

Since the reform that entered into force in 2020, the INPI has jurisdiction over  administrative invalidity actions. This development has profoundly transformed practice by making proceedings more accessible and considerably faster.

At EU level, Regulation (EU) 2017/1001 governs invalidity proceedings before the EUIPO. Although principles are harmonized, the analysis remains demanding, particularly with regard to evidence and the assessment of likelihood of confusion.

The effect of an invalidity decision is particularly powerful : the trademark is deemed never to have existed. This retroactive effect may weaken license agreements, coexistence agreements, or infringement actions based on the cancelled title. In strategic litigation, invalidity can therefore neutralize a competitor’s legal weapon.

Absolute and relative grounds for trademark invalidity

The distinction between absolute and relative grounds structures the entire invalidity framework. The former protect the public interest; the latter safeguard earlier private rights.

• Absolute grounds for invalidity :

A trademark is liable to invalidity if, at the time of filing, it did not meet the essential validity requirements. This is the case where it lacks distinctive character, merely describes the goods or services concerned, has become customary in everyday language, or is misleading as to the nature, quality, or origin of the goods.

Contrary to public policy or morality may also constitute an independent ground, although its application remains rare and strictly interpreted.

Bad faith of the applicant has become central in contemporary case law. French and European courts carefully scrutinize massive, defensive, or speculative filing strategies. A filing made solely to prevent a competitor from accessing the market, without any genuine intention to use the sign, may constitute abusive conduct justifying cancellation.

In technological sectors, we frequently observe filings anticipating emerging trends, such as artificial intelligence, blockchain, or the metaverse, made by entities with no actual development project. In such situations, the chronology of events, the relationship between the parties, and the competitive context become decisive.

• Relative grounds for invalidity :

Invalidity may also be based on the existence of an earlier right. This may include a French trademark, an EU trademark, or an international trademark designating the relevant territory. Other rights may also be invoked, such as a prior company name, trade name, domain name effectively used in the course of trade, copyright, or personality rights.

The analysis is based on the concept of likelihood of confusion, assessed globally. Authorities examine the visual, phonetic, and conceptual similarity of the signs, the proximity of the goods or services, and the distinctiveness of the earlier right. This assessment is contextualized: the relevant public, the level of consumer attention, and the possible reputation of the earlier right all play a determining role.

Practice shows that mere chronological priority is insufficient. It is also necessary to demonstrate effective use and real economic impact. Evidentiary strategy therefore lies at the heart of a successful action.

Invalidity proceedings before the INPI and the EUIPO

Since the reform, proceedings before the INPI have become a particularly effective tool. The procedure is fully digital and based on a strictly regulated timetable. Exchanges are written and adversarial. Each party must present all arguments and evidence within the prescribed deadlines, failing which submissions may be declared inadmissible.

A decision is generally issued within six to ten months, which represents a significant gain in time compared to traditional judicial proceedings. This speed allows invalidity actions to be integrated into broader commercial strategies, including fundraising operations or portfolio restructuring.

Certain complex situations, particularly where invalidity is based on copyright or contractual issues, remain within the jurisdiction of judicial courts.

For further information on the invalidity procedure before the INPI, we invite you to refer to our  article, previously published on this subject.

Before the EUIPO, proceedings follow a similar logic within a harmonized European framework. The application must be precisely reasoned and accompanied by all relevant evidence. The trademark holder has the right to respond, and the decision may be appealed before the Boards of Appeal.

The evidentiary requirement is particularly high. Applications that are insufficiently substantiated are systematically rejected. Drafting rigor and strategic coherence are therefore essential.

What evidence is required to obtain trademark invalidity ?

The success of an invalidity action largely depends on the quality of the evidence produced. For absolute grounds, it may be necessary to demonstrate the descriptive nature of a term through linguistic analyses, specialized dictionary extracts, sector publications, or examples of common market usage.

In cases involving bad faith, email exchanges, the chronology of business relationships, competing initiatives, or a manifest absence of intent to use may constitute decisive indicators.

Where invalidity is based on an earlier right, registration certificates alone are not always sufficient. If the earlier trademark is more than five years old, its holder must demonstrate genuine use. Invoices, catalogs, advertising campaigns, dated screenshots, and sector-specific turnover figures then become essential.

Recent case law strictly regulates the late submission of evidence. Methodical anticipation is therefore indispensable from the outset of the action.

Invalidity, opposition or revocation : which strategy should be chosen ?

The choice between opposition, invalidity and revocation is not merely a procedural preference ; it forms part of a broader strategic approach that takes into account timing, legal risk exposure and underlying business objectives.

Opposition is the preventive tool by excellence. It allows action to be taken upstream, before the contested trademark is registered. In France, opposition must be filed within two months from the publication of the application in the official bulletin (BOPI). At European Union level, the time limit is three months from the publication of the European Union trademark application by the EUIPO. The decisive advantage of opposition lies in its ability to block registration and prevent the trademark from producing legal effects. However, it requires active monitoring of trademark filings and immediate responsiveness.

Invalidity, by contrast, operates after registration. It enables a party to challenge retroactively a right that has already been entered on the register. Invalidity becomes a central strategic instrument when the opposition deadline has expired or when the dispute arises within broader litigation, particularly as a defense in infringement proceedings. In such cases, invalidity can neutralize the very foundation of the opposing party’s claim by eliminating the invoked trademark altogether.

Revocation follows a different logic. It sanctions the absence of genuine use of a trademark over an uninterrupted five-year period, or circumstances where the mark has become misleading or generic. Revocation is rooted in post-registration conduct and relies on a factual assessment of the effective commercial exploitation of the sign. In complex matters, revocation may be strategically combined with an invalidity action, allowing the claimant to articulate multiple lines of attack, one based on the initial irregularity of the filing, the other on the lack of subsequent use.

Ultimately, opposition protects proactively, invalidity corrects retroactively, and revocation penalizes inactivity. The appropriate choice depends less on the nature of the right itself than on procedural positioning and the competitive strategy pursued.

Conclusion

Trademark invalidity in France and in the European Union is a powerful strategic instrument for the protection of intangible assets. Early analysis and rigorous structuring of the case significantly increase the likelihood of success.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. Can a trademark be invalidated for lack of genuine intention to use at the time of filing ?

Yes. If the filing was made without a serious intention to use the mark, in a blocking or speculative strategy, this may constitute bad faith and justify cancellation, provided consistent and objective evidence is produced.

2. Can a prior domain name be relied upon to obtain trademark invalidity ?

Yes, provided that effective prior use of the domain name in the course of trade and a likelihood of confusion are demonstrated. Mere registration is insufficient; commercial exploitation is decisive.

3. Can a weakly distinctive trademark be invalidated several years after registration ?

Yes, if the lack of distinctiveness existed from the outset and has not been remedied by intensive use conferring acquired distinctiveness. The burden of proving such acquired distinctiveness lies with the trademark holder.

4. Can an invalidity action be brought defensively in infringement proceedings ?

Absolutely. Invalidity is frequently used as a strategic defense. If the invoked trademark is cancelled, the infringement action becomes legally unfounded.

5. Does peaceful coexistence between two trademarks prevent an invalidity action ?

Not necessarily. However, conscious and prolonged tolerance of more than five years may, in certain circumstances, deprive the earlier right holder of the ability to act, except in cases of bad faith.

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.

Introduction

With the rapid development of generative AI systems capable of simulating voices and faces with striking realism, the legal protection of digital identity remains fragile. In this context, American actor Matthew McConaughey recently filed several trademark applications with the United States Patent and Trademark Office (USPTO), including movement trademarks depicting him.

Such an initiative has surprised many legal practitioners, as it challenges the traditional boundaries of trademark law and raises novel questions regarding the legal protection of digital identity.

The limits of personality rights in the face of generative AI

Under French law, a person’s image and voice are protected as personality rights, primarily pursuant to Article 9 of the French Civil Code related to the right to privacy. This provision protects any unauthorized use of elements enabling the identification of a person, irrespective of whether a pre-existing material medium exists. An infringement may therefore be established whenever the public is capable of recognizing the individual concerned.

Although protective, this regime relies on demanding evidentiary requirements. The claimant must demonstrate the existence of an infringement, fault, identification of the responsible party, and, where applicable, the extent of the damage suffered.

The emergence of generative AI complicates each of these elements. AI systems may produce “resembling” voices or faces without directly reproducing an identifiable recording or photograph. The legal issue lies less in the distinction between reproduction and simulation than in the assessment of identifiability: at what level of resemblance can a person be deemed legally recognizable?

Further uncertainty arises from issues of attribution. The generation of AI content may involve multiple actors, developers, infrastructure providers, end users, and distribution platforms, thereby rendering the allocation of liability more complex. Existing mechanisms remain primarily corrective and intervene only after the dissemination of the contested content.

The evolution of filing requirements for distinctive signs

Since the entry into force of French Ordinance No. 2019-1169 of November 13, 2019 implementing the EU Trademark Package (Directive (EU) 2015/2436), French trademark law has undergone significant modernization.

The abolition of the requirement of graphic representation replaced by the obligation to represent the sign in a manner that is clear, precise, self-contained, easily accessible, intelligible, durable and objective in the register, has considerably broadened the range of registrable signs. This reform follows the criteria established by the Court of Justice of the European Union in the Sieckmann judgment (CJEU, December 12, 2002, Case C-273/00), which are now fully integrated into the practice of trademark offices.

Within this updated framework, French and EU law expressly permit the registration of sound trademarks, movement trademarks and multimedia trademarks, provided that they are represented in an appropriate technological format, such as an audio file (MP3) or video file (MP4). A sound trademark may therefore consist of a precisely fixed sequence, such as a jingle, a distinctive intonation or a recurring expression used in a commercial context, provided that the relevant public perceives it as an indication of commercial origin.

The protection of voice and image through trademark law under French and EU Law

Pursuant to Article L.711-2 of the French Intellectual Property Code, a sign may be registered only if it is linked to designated goods or services and used as a trademark to distinguish the goods or services of one undertaking from those of others. When applied to a sound or audiovisual sequence, this principle requires that the relevant public perceive the sequence as an indication of commercial origin.

It is essential to emphasize the precise scope of the monopoly conferred. Protection extends exclusively to the sign as filed and exploited, namely, the specific sound or audiovisual sequence recorded in the register. Trademark law does not grant a general appropriation of a person’s identity; rather, it secures a defined expression integrated into commercial activity.

The primary advantage of relying on trademark law lies in its litigation framework. The proprietor of a registered trademark holds a constitutive right benefiting from a presumption of validity and may initiate counterfeiting proceedings where a third party reproduces or imitates the sign in the course of trade for identical or similar goods or services.

Such action is based on the infringement of the registered sign itself, independently of the need to demonstrate personal moral damage, and allows for effective injunctive relief, including through internal procedures implemented by digital platforms.

Nonetheless, a measured approach remains necessary. Registering a sound or audiovisual excerpt as a trademark is legally demanding. Trademark law is not intended to protect an individual’s personality but to identify the commercial origin of goods or services.

Attempting to secure a voice or image through trademark law may therefore conflict with its economic rationale. It must be demonstrated that the sign genuinely fulfills the essential function of a trademark and is not merely perceived as a representation of the individual. Failing genuine use within the meaning of trademark law, the registration risks being challenged or revoked for non-use.

Conclusion

Trademark law protects only a specific sign exploited as an indication of origin in the course of trade. Its effectiveness will therefore depend, in practice, on the proprietor’s ability to demonstrate genuine, distinctive use as a trademark.

In the context of generative AI, trademark law does not constitute a universal solution. Nevertheless, it offers a more structured legal framework than personality rights alone, allowing certain uses to be anticipated and supported by an enforceable registered title. Such a strategy must, however, be embedded in a coherent and sustained commercial exploitation.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1.Does trademark law protect against non-commercial deepfakes?
No. Trademark law requires use in the course of trade. Deepfakes disseminated for parody or private purposes are more likely to fall under image rights or other legal mechanisms.

2.Does celebrity status provide an advantage when registering a voice excerpt?
Not automatically. While notoriety may facilitate the acquisition of distinctiveness through use, it does not exempt the applicant from satisfying the statutory conditions.

3.Does parody limit trademark protection?
In certain circumstances, freedom of expression may be invoked, particularly where the use does not undermine the essential function of the trademark.

4.Does a multimedia trademark offer broader protection?
It may provide more precise protection where the combination of sound and image constitutes the core element of commercial identification.

5.Why does registering a trademark simplify judicial proceedings in cases involving voice or image misuse?
Because infringement proceedings are based on the existence of a registered and presumed valid right, shifting the debate from the subjective assessment of personal harm to the more objective issue of infringement of a protected sign. This may render the evidentiary analysis clearer and more structured before court.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

Commercial identity encompasses all signs through which the public identifies a company, such as its corporate name, trade name, business sign, visual identity, or digital presence. The protection of these elements is governed by distinct legal regimes that are often less structured and less predictable than trademark law.

In a context where a company’s name and image circulate across borders instantaneously, securing distinctive signs has become a non-negotiable requirement. Trademark registration does not encompass the entirety of a company’s commercial identity; however, it constitutes its most solid legal foundation. It grants an exclusive right over a specific sign (name, logo, slogan) in relation to precisely designated goods and services. In the absence of registration, a third party may file and appropriate an identical sign. Conversely, a registered trademark enables its owner to initiate opposition proceedings, bring counterfeiting actions, and consolidate a legally controlled intangible asset.

Why is trademark filing essential to preserve its legal identity?

Under French law, a trademark constitutes an industrial property title governed by Articles L.711-1 et seq. of the French Intellectual Property Code. Registration confers upon its holder an exclusive right of use for the designated goods and services, subject to the principles of specialty and territoriality.

This exclusive right produces immediate and structured legal effects. In particular, it allows the holder to:

• Prohibit the use of an identical or similar sign for identical or similar goods or services;
• Take action against the use of a similar sign creating a likelihood of confusion;
• File opposition against a subsequent trademark application within statutory deadlines;
• Initiate infringement proceedings before specialized courts;
• Challenge domain name registrations reproducing or imitating the trademark;
• Exploit the sign through licensing, franchising, or assignment.

A registered trademark therefore constitutes a right enforceable erga omnes. By contrast, in the absence of registration, protection relies on unfair competition or parasitism claims under Article 1240 of the French Civil Code. Such actions require proof of fault, damage, and causation, an evidentiary burden considerably more uncertain than in trademark infringement proceedings. Registration thus transforms commercial use into a legally consolidated property right.

This protection nevertheless requires consistency between the registered sign and the actual business activity. The selection of classes under the Nice Classification and the drafting of specifications must correspond to a genuine, documented, and coherent business project. Recent case law confirms that trademark filing may not be diverted from its economic purpose. The decision of the French Intellectual Property Office (INPI) dated September 13, 2024 (NL 23-0183) concerning bad faith filing confirms that a speculative filing intended solely to block a third party, without genuine intent to use, is liable to cancellation.

A detailed analysis of this decision is available here:

https://www.dreyfus.fr/en/2025/02/10/french-trademark-office-inpi-decision-of-september-13-2024-bad-faith-trademark-filing-and-its-implications/

How to integrate trademark filing into a comprehensive protection strategy?

Trademark registration is not an end in itself. To achieve full effectiveness, it must form part of a coordinated strategy encompassing all means of identification and exploitation of the sign.

Consistency between trademarks and domain names is essential. Filing a trademark without securing the corresponding strategic domain names (.fr, .com, or relevant country-code extensions) exposes the company to opportunistic registrations capable of generating confusion, traffic diversion, or fraud. An effective protection strategy therefore requires proactive domain name registration and ongoing monitoring of competing filings.

This protection must also be aligned with digital compliance. The exploitation of a trademark on a website or digital platform requires compliance with legal obligations relating to mandatory disclosures, personal data protection, and commercial communication rules. Deficiencies in this area may weaken the reputation attached to the sign and compromise its economic value.

A trademark is a territorial right whose scope depends on the chosen title. A filing with the INPI provides protection limited to France. A filing with the European Union Intellectual Property Office (EUIPO) produces unitary effect throughout the European Union. The Madrid International Registration System enables protection to be extended to specifically designated States.

The choice of territorial scope must not be dictated solely by the company’s present situation; it should reflect its foreseeable business development. A trademark protected only in France will not prevent identical use in Germany or Spain. Conversely, a European Union trademark may be vulnerable if an earlier right exists in a single Member State. Legal security therefore requires a forward-looking assessment of target markets, competitive risk areas, and planned expansion.

We invite you to read a previously published article outlining best practices in trademark filing and portfolio management strategy:

https://www.dreyfus.fr/en/2026/02/11/how-to-build-in-2026-a-trademark-filing-and-management-strategy-to-secure-structure-and-anticipate-risks/

Finally, a registered trademark must be viewed as a structured intangible asset. It may be licensed, assigned, contributed in kind, or valued in the context of financing or restructuring operations. Integrating trademark filing into a comprehensive strategy therefore means securing not only a distinctive sign but also a central component of the company’s intangible assets, controlled geographically and economically exploitable.

Conclusion

Ultimately, trademark filing constitutes the foundational act in securing your commercial identity from a legal standpoint. When properly prepared, it transforms a mere distinctive sign into an exclusive right that is enforceable, exploitable, and economically valuable. Poorly anticipated, it exposes the business to opposition proceedings, invalidity actions, or loss of rights. Effective trademark protection therefore requires a methodical, forward-looking, and economically coherent approach. Securing your trademark today means strengthening the long-term legal and financial value of your business.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can a trademark be filed before the company is incorporated?
Yes. An individual may file a trademark prior to company incorporation. The trademark must subsequently be assigned or contributed to the company to avoid any uncertainty regarding ownership.

2. Should the name or the logo be filed first?
A word trademark generally provides broader protection, independently of graphic stylization. A figurative trademark protects a specific visual representation. Both filings may be complementary depending on the protection strategy.

3. Does a trademark automatically protect the corresponding domain name?
No. A trademark grants a right to prohibit use, but it does not automatically reserve the corresponding domain name, which must be registered separately.

4. Can a trademark be modified after registration?
No. A registered trademark cannot be substantially modified. Any material alteration requires a new filing.

5. Can a trademark be cancelled several years after registration?
Yes. An invalidity action may be brought at any time if an absolute or relative ground for refusal existed at the time of filing.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

When an applicant receives a notice of opposition against a recently filed trademark, the stakes go far beyond a mere procedural formality. The issue concerns the protection of the company’s commercial identity, strategic positioning, and the economic value of its intangible assets. In trademark law, opposition is a specific administrative procedure allowing a third party to request the refusal of a trademark application on the grounds that it allegedly infringes earlier rights.

In this article, we will examine how an applicant can build a structured, persuasive response that complies with procedural requirements, both before the French National Institute of Industrial Property (INPI) and the European Union Intellectual Property Office (EUIPO).

The legal framework of opposition in France and the European Union

Under French law, opposition is governed by Articles L.712-4 et seq. of the French Intellectual Property Code (IPC). It allows the holder of an earlier right to oppose the registration of a new trademark. The time limit for filing an opposition is two months from the publication of the trademark in the Official Bulletin of Industrial Property (BOPI).

At the European level, opposition is regulated by Articles 46 and seq. of Regulation (EU) 2017/1001 on the European Union trade mark. The deadline to file opposition is three months from publication of the EU trademark application.

These time limits are non-extendable and determine the admissibility of the opposition. Any action filed out of time is automatically declared inadmissible.

Opposition is primarily based on the existence of a likelihood of confusion, a key concept defined in Article L.713-3 of the French IPC and Article 8(1)(b) of Regulation (EU) 2017/1001. This mechanism does not seek to sanction infringement but to prevent the registration of a sign that could mislead the public or dilute earlier rights.

Notification of the opposition: the starting point of the defense strategy

From the date of publication in the BOPI, any person who believes that the trademark infringes on their prior rights (already registered trademark, trade name, company name, etc.) has two months to file an opposition. This period cannot be extended. If no opposition is filed within this time frame, the trademark will continue through the registration process as normal.

Within that period, it is possible to file a so-called notice of opposition and to pay the official fee, without immediately setting out the full substantive arguments: the statement of grounds (written submissions) and certain supporting documents may therefore be filed within an additional one-month period running from the expiry of the opposition time limit.

This additional period serves a practical purpose: it allows the opponent to draft and substantiate the statement of grounds (likelihood of confusion / infringement of earlier rights, etc.) after having secured the opposition deadline. That said, this subsequent filing is strictly framed: the opponent may not broaden the scope of the opposition, nor rely on new earlier rights, nor target additional goods/services beyond those identified within the initial time limit.

The notice of opposition must in any event include (Article R.712-14 of the French Intellectual Property Code):

1. The opponent’s identity, together with information establishing the existence, nature, origin and scope of the earlier rights relied upon;
2. Identification of the contested application, together with specification of the goods/services targeted by the opposition; and
3. Evidence that the official fee has been paid.

For more information on this French opposition procedure, please see our specific article published on the subject .

Once the opposition has been declared admissible, the competent office proceeds notifies the applicant.Before the EUIPO, the procedure includes a specific feature: a “cooling-off” period, initially set at two months and extendable by mutual agreement between the parties. If no settlement is reached, the formal adversarial phase begins. For more information, please see our dedicated article on our blog page.

At this stage, the key issue is to determine the most appropriate strategy among several legally available options.

Strategic analysis of the notice of opposition

The first step for the applicant is to carefully analyze the opposition, which is based on three essential criteria:

• The comparison of the signs requires assessing the overall impression produced by the trademarks at issue. The analysis is conducted from visual, phonetic, and conceptual perspectives.
• The comparison of the goods and services focuses on their nature, purpose, function, potential complementarity, and distribution channels. Mere inclusion in the same Nice Classification class is insufficient, in itself, to establish similarity..
• The global assessment of the risk of confusion must take into account the interdependence of these factors. A low degree of similarity between the signs may be offset by a high degree of similarity between the goods and services, and vice versa.

An effective argument does not isolate a single criterion but methodically dismantles the opponent’s reasoning as a whole.

Drafting the response brief and supporting evidence

Following the analysis phase, drafting the response brief becomes a decisive strategic moment. It is not a simple formal reply but a structured legal argument aimed at clearly and convincingly demonstrating the absence of infringement of the earlier rights invoked.

The brief must first accurately recall the procedural elements: the office involved, the opposition number, the contested application reference, and the earlier rights relied upon. This contextual framework ensures that the argument is grounded in the precise legal setting.

The applicant must then set out the opponent’s arguments in order to analyze and challenge them point by point. This demonstrates a thorough understanding of the claims raised and helps identify weaknesses in the opposing reasoning. The argumentation must place the signs and goods or services within their actual economic context in order to establish the absence of confusion for the relevant public.

Finally, the brief must be supported by relevant and properly explained evidence. Proof of use, commercial documents, or market-related materials should be incorporated in a structured and reasoned manner. Overall coherence is essential: each development must serve a single objective, namely to convince the examiner that the contested mark may be registered without infringing the rights invoked.

Proof of use and alternative negotiation strategies

• Requesting proof of use: a decisive procedural lever

Where the earlier trademark relied upon has been registered for more than five years, the applicant may request that the opponent provide proof of genuine use for the goods or services invoked. This option exists before both the INPI and the EUIPO.

The burden of proof lies with the opponent, who must demonstrate real, public, and commercially justified use during the previous five years in the relevant territory.

Accepted evidence includes invoices, catalogues, advertisements, promotional materials, sales data, and contractual documents.

Use must be genuine and not merely token. In the absence of sufficient evidence, the opposition may be rejected in respect of the goods or services not properly substantiated.

This stage often represents a strategic turning point in the proceedings.

• Limiting the specification

The applicant may choose to voluntarily restrict the list of goods or services covered by the trademark application. This limitation can eliminate areas of conflict with the earlier right invoked and may lead to partial withdrawal or rejection of the opposition.

However, such limitation is definitive. It reduces the scope of protection of the trademark and must be assessed in light of future commercial exploitation plans.

In practice, this option frequently serves as a negotiation tool, particularly during the cooling-off phase before the EUIPO.

Conclusion

Responding to a trademark opposition requires technical mastery of trademark law, thorough factual analysis, and a drafting strategy aligned with the expectations of the competent offices. A response built on a solid demonstration of the absence of likelihood of confusion, supported by carefully substantiated evidence, not only neutralizes the opposition but also strengthens the legal security of your trademark.

Mastering this procedural stage is a major strategic issue for protecting your commercial identity and enhancing the value of your intangible assets.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. What happens if the applicant does not respond to the opposition?

Failure to respond leads to the closure of the adversarial phase and generally results in a total or partial refusal of the application for the goods or services targeted by the opposition. Silence is treated as a waiver of the right to present arguments.

2. Can additional time be requested to prepare the response?

As a matter of principle, an extension of the time limit for filing a response is not available. Before both the INPI and the EUIPO, the time limits set for submitting observations are strictly regulated and cannot be extended upon simple request. Only specific grounds for suspension of the proceedings may be contemplated, in particular where the parties are engaged in settlement negotiations, and subject to strict compliance with the applicable procedural requirements.

3. Can an opposition be withdrawn during the proceedings?

Yes. The opponent may withdraw the opposition at any time, either as part of a settlement agreement or unilaterally. Withdrawal terminates the proceedings for the goods or services concerned. However, the opponent’s incurred costs are not automatically reimbursed. Any agreement should therefore be properly documented in writing.

4. Can new evidence be submitted after filing the response brief?

In principle, the offices set strict deadlines for the submission of evidence. Additional materials may sometimes be accepted, but their admissibility depends on the procedural stage and proper justification. Anticipating evidentiary strategy is therefore essential.

5. Can the applicant rely on good faith to overcome the opposition?

Good faith is not a decisive factor in assessing likelihood of confusion. The examination primarily focuses on an objective comparison of the signs and the goods or services. Nevertheless, evidence of prior peaceful coexistence or independent use may serve as contextual support in certain defense strategies.

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

Introduction

In the field of artificial intelligence (AI), trained models represent a major technological advancement derived from extensive training datasets. Unlike the raw data forming the original datasets, an AI model captures the relationships and patterns learned during the training process. Once trained, it becomes an autonomous intangible asset, embodying technical knowledge extracted from the underlying data.

The legal protection of such models has therefore become an increasingly significant issue. While the question of protection of AI-generated works, authorship, and liability for infringement have already been extensively analyzed, the legal qualification and protection regime applicable to the trained model itself raise distinct and specific challenges requiring separate examination.

The sui generis database right: an ill-suited regime for AI models

The training of an AI system relies on a database serving as an informational reservoir. However, the resulting model is not equivalent to the original database. Unlike a mere aggregation of structured data, an AI model incorporates relationships, weightings, and patterns learned during the training process. It constitutes an abstract representation enabling prediction, classification, or analysis of new data.

This specificity raises a qualification issue. The sui generis database right, established by Directive 96/9/EC and transposed into Article L.341-1 of the French Intellectual Property Code, protects substantial investment in the acquisition, verification, or presentation of systematically organized data. By contrast, an AI model does not consist of individually accessible structured data, but rather a dynamic configuration resulting from algorithmic learning. It does not reproduce the original database, nor does it allow extraction of the initial data as such.

Accordingly, although it relies on a potentially protected training dataset, the AI model itself generally falls outside the scope of the sui generis database right. Its algorithmic and relational nature fundamentally differs from the static and organizational logic inherent in databases.

Copyright: partial protection focused on code expression

In theory, copyright protection may apply to certain elements of an AI model if they reflect free and creative choices constituting the author’s own intellectual creation, as established in the Pachot decision (French Court of Cassation, Plenary Assembly, March 7, 1986, No. 83-10.477).

In practice, such protection primarily concerns the source code or software architecture implementing the model, insofar as these fall within the legal regime applicable to software (Article L.112-2, 13° of the French Intellectual Property Code). To date, however, no judicial decision has recognized autonomous copyright protection for a trained AI model as such.

In case SAS Institute (CJEU, May 2, 2012, C-406/10), the Court held that while a software is protected by copyright, its functionalities and the ideas and principles underlying it are not. Transposed to AI models, this reasoning requires distinguishing between the code implementing the model, which may be protected, and its functionalities (text generation, classification, prediction) as well as its underlying statistical or architectural principles, which remain unprotectable ideas.

The most complex issue concerns the weights and parameters of a trained neural network: can they be regarded as “expression” for copyright purposes? The restrictive approach adopted in the SAS Institute case excludes ideas, principles, and underlying mathematical methods from protection. The qualification of weights and parameters, materializing the outcome of algorithmic learning, remains uncertain in the absence of specific case law.

Patent law: the requirement of a further technical effect

Patent law does not permit protection of an AI model as an abstract mathematical construct. Algorithms, mathematical methods, and computer programs are excluded from patentability “as such” pursuant to Article L.611-10 of the French Intellectual Property Code.

However, an invention implementing an AI model may be patentable if it provides a technical solution to a technical problem and produces a further technical effect, as clarified by the EPO Technical Board of Appeal (T 1173/97 – Computer program product, July 1, 1998).

In other words, it is not the model itself that may be protected, but its integration into a concrete technical application, such as improving computer performance, optimizing an industrial process, processing technical signals or images, or managing a physical device.

Patentability therefore requires that the model effectively contributes to the technical character of the invention beyond the mere execution of calculations or statistical learning. In practice, direct protection of an isolated AI model appears unlikely; only its incorporation into a system or process producing an identifiable technical effect may justify patent protection.

Trade secrets: a pragmatic protection for trained parameters

In practice, trade secret protection constitutes the most appropriate mechanism for safeguarding trained AI models. Under Articles L.151-1 et seq. of the French Commercial Code, information is protected where it is not generally known or readily accessible, has commercial value because of its secrecy, and is subject to reasonable protective measures.

The weights, parameters, and internal configurations of an AI model frequently satisfy these criteria: they are non-public, result from substantial investments in data and computation, and confer a decisive competitive advantage. Protection requires an effective security policy, including technical access controls, contractual confidentiality limitations, and appropriate organizational measures.

From this perspective, trade secret law appears to be the most coherent legal tool for preserving the economic value of proprietary AI models.

Conclusion

A trained AI model does not fully fit within any traditional intellectual property regime. It is neither a database within the meaning of the sui generis right, nor a work protected as such under copyright, nor an independently patentable invention absent a further technical effect.

Its protection therefore relies on a combined approach: copyright for the code, patent protection for certain technical applications, and, above all, trade secret protection to safeguard trained weights and parameters. Rather than a single exclusive right, it is a coherent and anticipatory legal strategy that ensures effective protection of this strategic intangible asset.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Are models derived from an open-source model legally independent?
It depends on the applicable license terms. Certain licenses impose obligations to share modifications or derivative works.

2. Are non-compete clauses relevant for protecting a model?
They may complement contractual protection strategies, particularly to prevent the reuse of equivalent know-how by employees or partners.

3. Can training a model on protected data legally contaminate the model?
In principle, no, since the model does not reproduce the data. However, if protected data remain identifiable or retrievable, infringement risks may arise.

4. Does the protection of AI models require legislative reform?
The doctrinal debate is ongoing. Some advocate for a sui generis protection regime for AI systems, but no specific reform has yet been planned.

5. Can an AI model constitute a strategic asset for valuation or investment purposes?
Yes. It may be subject to specific due diligence in M&A transactions or fundraising operations.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

Adopted in 2004, the French “Loi pour la confiance dans l’économie numérique” (LCEN) laid the foundations for the regulation of the Internet in France. Nearly seven years later, the implementing decree of Article 6 II, published in 2011 (Decree No. 2011-219 of February 25, 2011), clarified the obligations relating to the retention of identification data imposed on technical intermediaries.

More than fifteen years after the entry into force of this decree, and in a profoundly transformed digital environment, the practical effects of this framework now call for renewed assessment.

The issue is no longer the long-awaited adoption of an implementing text, but rather its current relevance. In an era characterized by the massification of data, the consolidation of major digital platforms, and the expansion of European regulation, does the LCEN framework still provide an effective response to contemporary digital challenges, or does it expose the limits of a system conceived for an Internet that no longer exists?

The evolution of article 6 II of the LCEN in a transformed digital environment

The legal framework of Article 6 II of the LCEN establishes one of the pillars of French Internet law. Asserted as early as 2004, in a technological context predating the development of large platforms, this obligation was designed for an Internet with largely linear and centralized uses. However, it has been implemented in a constantly evolving digital environment, characterized by the diversification of services, the emergence of global intermediaries, and the exponential growth of data volumes processed.

By requiring access providers and hosting service providers to retain data enabling the identification of content authors, the legislator established a key counterpart to the limited liability regime applicable to technical intermediaries. This regime is based on a conditional exemption from liability, grounded in the absence of prior knowledge of the content and the obligation to act promptly upon notification, excluding any general obligation to monitor. The retention of data thus serves as the procedural counterpart to this neutrality, allowing for the subsequent identification of those responsible for infringements without transforming intermediaries into oversight actors.

This obligation is a prerequisite for the ex post identification of authors of unlawful content, without imposing any form of generalized monitoring.

However, from the outset, this framework was structurally incomplete. The legislator expressly deferred to an implementing decree the task of defining the categories of data to be retained and the applicable modalities, in order to ensure proportionality and legal certainty. The prolonged absence of this decree generated lasting legal uncertainty.

In practice, operators relied on fragmented case law and heterogeneous recommendations, resulting in uneven retention practices, sometimes excessive, sometimes insufficient. The decree was therefore expected to serve as an instrument of normative clarification and alignment with European requirements, particularly in the field of personal data protection.

An assessment of the implementing decree in light of changes in the digital ecosystem

The implementing decree of Article 6 II of the LCEN was adopted in a context radically different from that prevailing in 2004. At the time, the legislator primarily sought to regulate the first generation of hosting and access providers, within a relatively stable technical environment dominated by identifiable operators.

Twenty years later, the digital ecosystem has undergone profound transformation. Platforms have proliferated, uses have become more complex, and data volumes have reached unprecedented levels.

Against this backdrop, the detailed list of identification data categories imposed by the decree appears, with hindsight, both necessary and structurally outdated. While it initially provided much-needed formal clarification, it soon encountered the limits of a retention model designed for the early 2000s Internet.

Transposed to a 2026 environment marked by service fragmentation, automated exchanges, and the widespread use of distributed architectures, this approach has proven only partially suitable. Retention periods and modalities have been repeatedly challenged, particularly in light of contemporary principles of proportionality and data minimization.

Far from settling the debate, the decree has thus contributed over time to the emergence of structural litigation concerning the compatibility between identification requirements, personal data protection, and technical realities.

Operational impacts on digital stakeholders

Following its entry into force, the decree resulted in significant operational requirements for hosting providers, publishers  and platforms including a legal obligation to retain and secure identification data. This obligation, which conditions the limited liability regime provided by the LCEN, has required operators to implement substantial technical and organizational measures. These measures particularly focus on the traceability of connections, the integrity of retained data, and its security, in accordance with Article 32 of the GDPR.

With hindsight, these obligations have formed part of a broader movement toward the standardization of compliance functions within digital actors. They have progressively been integrated into comprehensive frameworks combining requirements arising from the LCEN, the GDPR, and, more recently, European regulations governing digital services.

By 2026, this accumulation of regulatory obligations represents one of the sector’s principal operational challenges, in terms of both costs and internal legal governance particularly regarding the allocation of responsibilities, management of litigation risk, and traceability of compliance decisions.

From the perspective of intellectual property rights holders, the decree has strengthened the procedural tools allowing, under judicial oversight, the identification of perpetrators of online infringements.. The clarification regarding the categories of data retained, such as IP addresses, connection timestamps, and subscription data held by the host or registrar has improved, in several disputes, the effectiveness of actions for infringement and unfair competition.

Nevertheless, litigation experience since 2011 demonstrates that this mechanism remains largely dependent on the effective cooperation of intermediaries and judicial interpretation of their obligations. The decree has therefore not created an automatic right to identification, but rather a procedural framework whose scope varies according to circumstances.

Anticipated legal and litigation risks

The main legal risks associated with the decree implementing the LCEN relate to the delicate balance between the legitimate objective of identifying the authors of illegal content and the protection of fundamental freedoms, foremost among which are the right to privacy and the protection of personal data. In practice, these tensions have crystallized around the requirements of proportionality, which stipulate that data retention and disclosure obligations must be strictly necessary, limited in scope, and subject to effective procedural safeguards. Over time, they have given rise to extensive litigation before national and European courts, concerning both retention periods and conditions of access to data.

This is the case, for example, in this ruling dated March 25, 2021 (Cass. civ. 2e, March 25, 2021, No. 18-18.824), in which the French Cour de Cassation clarified the conditions for accessing identification data. In this case, the High Court was asked to rule on a request for disclosure of data made by a private party in a civil dispute, based on the obligations arising from Article 6 II of the LCEN. The Court ruled that the retention obligation established by the LCEN does not confer on individuals an automatic right of access to data, but is subject to a strict procedural framework, subject to judicial review. It thus reiterates that the disclosure of identification data must comply with the principles of proportionality, purpose and necessity, in accordance with the requirements of both domestic and European law. This decision illustrates the Cour de Cassation’s desire to maintain a balance between the effectiveness of the fight against illegal content and the protection of personal data. In practice, it limits the possibilities for direct identification by rights holders and strengthens the role of the judge as the guarantor of this balance.

Conclusion

Long awaited, the implementing decree of Article 6 II of the LCEN has undeniably contributed to structuring obligations relating to the retention of identification data in France. With more than fifteen years of application, however, it appears that it has constituted neither a definitive solution nor an instrument fully adapted to digital transformations.

While it has strengthened the traceability of online activities, it has also intensified tensions with data protection law and multiplied areas of litigation, particularly in relation to proportionality, liability, and data governance.

In an environment increasingly shaped by European regulation and global platform dynamics, this framework reveals the limits of an essentially national approach. It calls upon digital stakeholders to adopt an integrated legal strategy combining compliance, risk management, and anticipation of regulatory developments.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Are all platforms subject to the obligations of Article 6 II of the LCEN?

No. The applicable regime depends on the qualification of the actor: hosting provider, publisher, access provider, or hybrid operator. In practice, many services combine multiple functions, making classification more complex. Each service must be assessed individually, taking into account its actual role in content publication and control.

2. Are LCEN retention obligations compatible with the GDPR?

In principle, yes, subject to strict conditions. Retention must be based on a legal ground, be necessary and proportionate, and comply with the principles of minimization and storage limitation. The main risk lies in excessive precautionary retention, which may expose operators to GDPR litigation and proportionality challenges.

3. Under what conditions may a judge order the disclosure of identification data?

In practice, courts require targeted requests justified by a legitimate purpose (e.g., identifying the author of unlawful conduct) and subject them to strict necessity and proportionality review.

4. Do LCEN obligations apply to actors established outside France?

Potentially, depending on connecting factors such as targeting of the French public, activities directed toward France, or the presence of infrastructure or establishments. Enforcement may be more complex, reinforcing the relevance of European mechanisms such as the DSA and cross-border cooperation tools.

5. Do artificial intelligence and automation affect identification obligations?

They primarily affect scale and speed, through automated moderation, abnormal behavior detection, and event correlation. However, they do not reduce legal obligations. On the contrary, they require enhanced governance, including minimum explainability, human oversight, and decision traceability.

This publication is intended to provide general guidance and highlight certain issues. It is not intended to address specific situations and does not constitute legal advice.

Introduction

In 2026, filing a trademark is no longer merely about “reserving a name.” The filing has become a fully-fledged legal and strategic act, directly engaging the applicant’s responsibility and determining the future strength of the portfolio. This evolution results from a now-structuring triptych : the continuous increase in trademark filings, the tightening of office practices (INPI, EUIPO, and foreign offices), and the rise of opportunistic behaviour.

A poorly anticipated strategy exposes applicants to refusals at the examination stage, multiple opposition proceedings, and subsequent invalidity or revocation actions. Above all, registration only confers a presumption of ownership. A trademark may be registered without opposition due to the absence of monitoring, and later challenged once the project is already established, thereby jeopardising substantial marketing investments.

In 2026, the objective is therefore clear : to file more effectively and manage rights proactively. This requires securing registration, structuring the portfolio, anticipating evidence, and organising enforcement within a sustainable framework.

Distinctiveness, descriptiveness, and bad faith : securing the validity of the filing

The tightening of practices relating to distinctiveness and descriptiveness has become a fundamental parameter. Offices and courts now require more strictly that a sign fulfil its essential function of indicating commercial origin. This severity is directly linked to the progressive saturation of registers, with filings having tripled over the past twenty years.

Signs closely related to professional jargon, evoking product characteristics, or bearing strong sector-specific connotations are now subject to heightened scrutiny. Assessment is carried out exclusively as of the filing date, based on the perception of the relevant public, without any binding precedent drawn from earlier registrations.

This requirement fully extends to descriptive signs. In this respect, the cancellation by the EUIPO of OpenAI’s “GPT,” “GPT-3,” “GPT-4,” and “GPT-5” trademarks provides a particularly significant illustration. The Office held that the term “GPT,” meaning “Generative Pre-Trained Transformer,” refers to a language model architecture based on machine learning commonly used in artificial intelligence. Due to its widespread use to describe a technology rather than a commercial origin, the term was deemed generic and devoid of distinctive character.

At the same time, bad faith has become a central ground in trademark litigation. Authorities examine, in particular, knowledge of prior rights, lack of intent to use, refiling strategies, and the appropriation of abandoned trademarks. Attempts to revive “zombie” trademarks are assessed in light of the economic context and the effective reputation at the filing date.

Securing the validity of a filing therefore requires thorough preliminary analysis, addressing both the inherent distinctiveness of the sign and the risk of challenges based on bad faith.

Use and proof of use : anticipating enforcement from the outset

Consistency between the specification and actual or foreseeable use has become a major vulnerability in 2026. From the filing stage, the owner must anticipate the creation of a structured evidentiary file.

This file should include tangible materials : commercial documents, packaging, labels, invoices, catalogues, marketing content, affidavits, studies, and quantitative data. Their probative value is enhanced when they clearly indicate the trademark, date, relevant products, and territory.

Such anticipation is strategic. In certain jurisdictions, use directly conditions the validity or maintenance of rights. Moreover, once a trademark is more than five years old, adversaries may request proof of use in various procedural contexts.

The concept of sub-categories reinforces this requirement. Where a specification covers a broad category, use may need to be demonstrated for each relevant autonomous sub-segment. Exploitation of a single product does not necessarily preserve rights for the entire scope.

Evidentiary anticipation thus becomes a core pillar of portfolio governance.

Specifications and foreign office practices : focus on the United States and Canada

In the United States and Canada, drafting the specification represents a major procedural issue. Compliance with administrative standards directly affects costs, timelines, and objection risks.

Since 2025, the USPTO has imposed a structural choice : reliance on pre-approved terms from the Trademark ID Manual or use of customised wording. The former facilitates processing and reduces fees, while the latter entails stricter examination and increased risk of provisional refusals.

Canada applies a comparable approach, with heightened scrutiny of goods and services within an increasingly automated examination framework.

In this context, a specification drafted solely in accordance with European standards may prove inadequate. Integrating North American constraints from the outset often avoids fragmented and costly internationalisation.

Clearance searches and territorial strategy

Clearance searches have become an indispensable preventive investment. Filing without a serious search, or based on informal checks, exposes applicants to disproportionate risks.

In a saturated environment, thorough searches help identify potential obstacles, adapt the sign, strengthen distinctiveness, or adjust the specification before significant financial commitments are made.

Territorial strategy must be developed concurrently. Limiting protection to the country of headquarters is no longer sufficient. Production countries, distribution markets, and structurally high-risk regions must be considered.

Cumulative protection and portfolio structuring

Protection based solely on a word trademark is not always optimal. Depending on the sector, cumulative rights significantly enhance overall defensibility.

Trademarks protect distinctive signs. Designs protect appearance. Figurative or semi-figurative trademarks secure visual elements. Each title has its own criteria and provides complementary enforcement tools.

In creative industries, particularly fashion and cosmetics, this combination enables more effective responses to duplication and parasitic practices.

The European design law reform, gradually applicable from 2026, further reinforces the value of an integrated and anticipatory approach.

Rationalisation and optimisation : audit and article 4bis of the Madrid Protocol

In 2026, portfolio management requires strategic oversight. Audits enable assessment of alignment between actual activities and registered rights, identification of vulnerabilities, and elimination of unnecessary costs.

Duplication situations, particularly resulting from Brexit, illustrate the importance of this approach. Without audits, redundant rights continue generating expenses without added value.

Article 4bis of the Madrid Protocol offers an additional rationalisation tool. Under strict conditions, it allows an international registration to replace national rights while preserving priority.

Use assimilation strengthens continuity. However, dependency periods and varying office practices require cautious and well-documented implementation.

Conclusion

In 2026, trademark strategy rests on a demanding balance between legal security, risk anticipation, and cost control. Filing represents a structuring investment requiring rigour, territorial coherence, drafting precision, and evidentiary organisation.

Protection does not end with registration. It requires active management, regular audits, and continuous monitoring policies to preserve the long-term distinctiveness and economic value of signs.

Dreyfus & Associés supports its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

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

Nathalie Dreyfus, with the support of the entire Dreyfus team.

Q&A

1. What checks should be carried out before investing in a “short” sign to limit cascading oppositions ?

Beyond identity searches, phonetic and visual proximity, registry density in relevant classes, and the descriptive load of the sign must be analysed to assess real multi-front risk.

2. How can a specification be calibrated when offerings evolve rapidly ?

It is preferable to reason in terms of foreseeable commercial uses and sub-categories, covering core activities and realistic extensions while avoiding generic formulations likely to trigger objections or bad faith claims.

3. What warning signs indicate a risk of invalidity for bad faith before filing ?

Disproportionate specifications, lack of a credible exploitation project, a history of defensive filings without use, or conflict contexts (former partners, employees, distributors) are major red flags.

4. When should trademark monitoring be implemented, and with what minimum scope ?

From filing, ideally at launch, as lack of monitoring may allow oppositions to lapse. A baseline covering trademarks, company names, and domain names in key territories limits unexpected challenges.

5. When is a figurative or position trademark more wise than a word trademark alone ?

When the verbal element is weak or overcrowded, protection of a distinctive visual configuration or position may provide a stronger enforcement angle.

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

Introduction

An intellectual property due diligence is conducted prior to major corporate transactions, such as acquisitions, mergers, fundraising operations, or asset disposals. Its purpose is to assess the legal and financial status of a company’s intellectual property assets before any strategic decision is made, thereby serving a fundamentally transactional function.

Too often perceived as a mere documentary audit, intellectual property due diligence in fact directly determines the valuation of intangible assets, the stability of transferred rights, and the control of future legal and financial risks.

Why is intellectual property due diligence a strategic asset?

Intellectual property represents a key component in the valuation of innovative companies, particularly in technology-driven and creative industries. An intellectual property due diligence goes far beyond the mere verification of registered rights. It secures investments by assessing the impact of legal risks on the contemplated transaction.

This process includes the review of claimed rights (trademarks, patents, licenses, and related assets), verification of their  enforceability, and the identification of vulnerabilities that may affect asset valuation or transaction terms.

From a litigation risk perspective, IP due diligence also evaluates the potential impact of ongoing or foreseeable disputes, including counterfeiting actions, opposition proceedings, and collective actions, on the purchase price, the stability of transferred rights, and the management of warranties and indemnities. For instance, unresolved disputes may justify price reductions or the implementation of compensation mechanisms.

By anticipating financial exposure, due diligence enables the parties to adjust their negotiation strategy, minimize risks, and secure the transaction. It further facilitates the implementation of appropriate safeguards, such as indemnification clauses, limitation of liability provisions, and price adjustment mechanisms.

How to structure an effective intellectual property due diligence process?

An effective intellectual property due diligence relies on a clearly defined scope to ensure strategic relevance. Prior to starting the review, it is essential to determine the transactional context, taking into account the parties’ objectives, the relevant jurisdictions, and the strategic technologies or trademarks involved.

Competitive dynamics and regulatory constraints must also be assessed, as they may affect the management and enforceability of IP rights. This preliminary framework allows the analysis to focus on the most critical assets for the transaction.

The success of the process further depends on the quality and reliability of the collected information. A structured data repository is essential to centralize key documentation, including registration certificates, assignment and license agreements, confidentiality provisions, and invention disclosure records.

Access to such documentation enables a comprehensive understanding of ownership, exploitation modalities, and associated legal risks.

Which assets and risks should be prioritized?

The review of trademarks and domain names generally forms the cornerstone of the analysis. It involves verifying actual ownership, registration validity, territorial scope, exposure to opposition proceedings, and ongoing disputes. A strategically important trademark that has not been renewed may expose the acquirer to an immediate loss of rights.

Patent and innovation audits require both technical and legal expertise. They involve reviewing chains of title, employee inventions, joint ownership arrangements, cross-licensing agreements, and freedom-to-operate assessments. A patent that is formally valid but easily circumvented may suffer a significant loss of value.

With regard to copyrights, software, and databases, it is essential to review development agreements, assignments, open-source licenses, and compliance with data protection regulations, including GDPR requirements. Regulatory non-compliance may constitute a major transactional obstacle.

A comprehensive due diligence must also include an analysis of past, ongoing, and potential disputes, including court proceedings, cease-and-desist letters, administrative oppositions, arbitration proceedings, and settlement agreements. All latent risks must be carefully identified, quantified, and documented in order to assess their potential impact on the transaction.

How to leverage the results from a legal and financial perspective?

To ensure effective legal and financial use of due diligence findings, a structured and operational report must be prepared. This report should not be limited to an inventory of rights and risks, but must include risk prioritization, criticality assessments, practical recommendations, and impact scenarios.

Each issue should be presented in a manner that enables decision-makers to take informed and timely action.

The conclusions of the due diligence must then be incorporated into the negotiation process. They serve as the basis for drafting representations and warranties, indemnification clauses, conditions precedent, price adjustment mechanisms, and post-closing commitments.

Finally, due diligence should lead to the implementation of a remediation plan, including title regularization, contractual restructuring, supplementary filings, targeted enforcement actions, and strengthened internal compliance policies. In this way, intellectual property due diligence becomes a strategic tool for correcting, securing, and optimizing intangible assets within a transactional framework.

Conclusion

Mastering intellectual property due diligence has become an essential strategic competence for any company involved in a major corporate transaction.

A rigorous, cross-disciplinary, and well-documented approach not only reduces legal risks, but also enhances asset valuation, strengthens negotiation positions, and secures investments.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Is intellectual property due diligence legally mandatory?
No. Intellectual property due diligence is not legally mandatory. However, it constitutes a fundamental duty of care for any acquirer or investor seeking to limit liability and secure their investment.

2. Can an incomplete due diligence engage directors’ liability?
Yes. Where demonstrable harm is established, insufficient due diligence may be characterized as a breach of directors’ duties or a failure in corporate governance.

3. Can unregistered intellectual property rights be transferred?
Yes, subject to precise and duly formalized contractual arrangements. Nevertheless, the absence of registration significantly weakens enforceability against third parties.

4. Should a due diligence include social media assets?
Yes. Official accounts, usernames, content, and online communities now constitute strategic assets in their own right and must be duly assessed.

5. Should trademark coexistence agreements be reviewed?
Absolutely. Such agreements may restrict future exploitation and materially affect post-acquisition commercial strategy.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.