As of May 24, 2021, the Madrid Systemwill officially welcome its 108th member: the Islamic Republic of Pakistan.
On February 24, 2021, Pakistan deposited its instrument of accession to the Madrid System with the Director General of the World Intellectual Property Office (WIPO). The arrival of this new member brings the number of countries covered by the Madrid System to 124, and highlights the importance of this international system for the filing and registration of Trademarks.
The Madrid System provides a practical and cost-effective solution for the registration and management of trademarks worldwide. More than 1.5 million international trademarks have been registered since its creation in 1891. While the system has been in place for more than 125 years, three quarters of its member countries have joined it in the last three decades. After the recent accessions of Canada, Samoa, Thailand, and the Sultanate of Brunei, it is now up to Pakistan to join the protocol.
Pakistan’s adhesion to the Madrid Protocol enables the harmonization of Pakistani trademark law at the international level. With the filing of a single international Trademark application, Pakistani applicants now have the possibility to apply for protection in 124 countries. Likewise, Pakistan can be designated by applications from any state party to the Madrid system and international Trademark owners can easily extend their protection in the Pakistani market.
The international trademark system is a major asset for the registration of your trademarks abroad at a lower cost.
Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.
Consumers are now demanding more privacy and security in t he processing of their personal data.
What are the challenges for the data controller?
There are several challenges for the data controll
er – i.e. the legal or natural person who determines the purposes and means of a processing operation – to overcome at different scales:
– information management: reducing the data collected by establishing a precise commercial context, and reducing the risks by taking care of the contracts;
– communication with suppliers: being able to find solutions and evaluate each other;
– monitoring of data processing: setting up mechanisms for reporting data breaches or threats concerning suppliers (for example, if Easyjet has had a data breach, the data controller, operating in the same business sector as the airline, if notified, can redirect its decisions.
What are the risk management methods?
A more effective risk management includes precise identification of suppliers, prior audits when integrating new suppliers, automation of evaluation and control processes, and risk prevention to protect data.
What about cookies?
They are used to collect data. Their presence is materialized by the banners you find on websites that ask for your consent to collect certain data.
In summary, there are 3 types of cookies:
– cookies strictly necessary for the operation of the site;
– cookies intended to improve the performance and functionality of the site;
– advertising cookies (which will soon disappear, Firefox has already put an end to them, and Google has announced that Chrome will no longer use them in 2021).
How do I collect online consent?
Remember that in France, consent must be free, specific, informed and unambiguous (GDPR).
Nevertheless, in order to collect consent, the user must understand what he is consenting to. He must receive clear information (purpose and duration of the use of cookies, list of third parties with whom the information is shared etc…) and the data controller must be particularly attentive to the layout of his banner.
What should be the role of the DPO (Data Protection Officer) in a modern company?
If the company promotes ethics, innovation, data, then the DPO has a key role: they shed light on data collection, and bring their vision on risks from an individual’s point of view.
In the past, their role was purely administrative, but today it is different, the DPO accompanies the company on a permanent basis, but they cannot guarantee compliance on their own: they have to expand a web within the organization (with the digital or marketing departments in particular) in order to promote the essential principles.
What changes are taking place within companies, in terms of GDPR awareness?
When GDPR came into force, programs were launc
hed to raise awareness of it, , and it was necessary to mobilize the entities and ensure they had good skills (setting up e-learning internally, for example).
Despite the existing similarities in legislation, what differences persist and what are the challenges that companies have to face in this respect?
There are technical differences (in terms of data retention time, each country has its obligations) and very important cultural differences, the way in which people in different countries deal with these subjects depends on their history. Consequently, it is difficult to find “golden rules” (= harmonized rules).
How can organizations benefit from their compliance efforts?
One way to recognize that companies have done their job properly is through certifications, such as HDS certification.
The United Kingdom’s exit from the European Union (Brexit) has dramatically altered the legal landscape, particularly in terms of intellectual property. Before December 31, 2020, intellectual property rights such as trademarks and designs were uniformly protected across the European Union, including the United Kingdom. However, since the end of the transition period, the separation of legal systems has required separate management of intellectual property rights for the UK and the EU.
This article explores the consequences of Brexit on intellectual property rights, particularly for trademarks and designs, and offers solutions to ensure their protection in this new legal environment.
Trademarks after Brexit : what has changed ?
2.1 Automatic conversion of EU trademarks into UK rights
Before Brexit, a trademark registered with the EUIPO (European Union Intellectual Property Office) protected rights across all EU member states, including the UK. Since January 1, 2021, EU trademarks (EUTMs) no longer cover the UK. To prevent trademark holders from losing protection in the UK, the UK Intellectual Property Office (UKIPO) automatically converted EU trademarks into comparable UK rights. These “cloned” marks retain the same filing and priority dates as their EU counterparts but are now governed by UK law.
2.2 European legislative reforms after Brexit
Following Brexit, the European Union continued to strengthen its legal framework for trademark protection. Regulation (EU) 2017/1001 on the European Union trademark was revised to address new challenges, particularly in the areas of cybersecurity and counterfeiting. The EUIPO implemented new tools to facilitate the monitoring of online violations and simplify dispute resolution procedures. These reforms are specific to the EU and do not directly affect trademarks in the UK, but they help reinforce the protection of EU trademarks post-Brexit.
2.3 Post-Brexit UK legislative reforms
The UK has introduced its own distinct legislation for managing trademarks after Brexit. The UKIPO has strengthened its rules to ensure that trademarks in the UK continue to receive the same protection as before, while also aligning with international standards. The UK has also adapted its mechanisms for tackling counterfeiting and IP rights violations, now independent of the EU. This legislation aims to reinforce the protection of rights in the UK and address global challenges related to counterfeiting.
2.4 EU Trademarks still under registration on December 31, 2020
EU trademark applications that were still under registration as of December 31, 2020, benefit from a priority right to file the same application with the UKIPO within nine months after the end of the transition period. This procedure allows holders to maintain their protection in the UK with the same filing date and the same goods and services as their corresponding EUTM.
Designs after Brexit: The new rules in the United Kingdom
3.1 Automatic conversion of registered Community designs
Community designs registered before Brexit were automatically converted into equivalent UK rights.
This conversion was carried out at no additional cost to the holders.
The priority, filing, and renewal dates of the cloned UK rights are identical to those of the original Community designs, ensuring uninterrupted protection in the United Kingdom.
Steps to ensure protection of rights in the UK after Brexit
4.1 Verification of existing registrations and separate registration
After Brexit, it is essential to ensure that intellectual property rights have been properly converted into UK rights. Holders must verify that their trademarks and designs have been cloned in the UK. For new creations, it is imperative to proceed with separate registration with the UKIPO to guarantee continued protection in the UK.
4.2 Monitoring the use of rights : Proof of genuine use
Once rights are registered in both the UK and the EU, it is crucial to monitor the use of these rights in each jurisdiction. Use of the trademark or design in the EU no longer justifies use in the UK, and vice versa. To avoid the cancellation of your rights for non-use, you must be able to demonstrate genuine use in each territory. This step is essential for maintaining the validity of your trademarks and designs in both jurisdictions.
4.3 Defending intellectual property rights
The UK has an effective judicial system for handling intellectual property disputes. In the event of infringement, holders can send a cease and desist letter to demand the cessation of the infringement. If the situation persists, they can bring the matter to specialized intellectual property courts, such as the Intellectual Property Enterprise Court (IPEC), or the Patents Court for more complex cases.
Conclusion : protecting your rights after Brexit
Brexit has separated the systems for protecting intellectual property rights between the UK and the EU. Rights holders now need to manage their trademarks and designs separately in both territories. The key to maintaining continuous protection lies in distinct registration, monitoring the use of rights, and proactively managing disputes. The legislative framework has evolved to allow efficient management of rights in both the UK and Europe.
Dreyfus & Associates supports businesses in protecting their trademarks and designs against the legal challenges arising from Brexit and the separate management of rights between the European Union and the United Kingdom.
Nathalie Dreyfus, with the support of the entire Dreyfus & Associates team
FAQ
1. Does my EU trademark still protect me in the UK after Brexit ?
No, since January 1, 2021, EU trademarks no longer cover the UK. However, the UKIPO has generated comparable UK trademarks to maintain equivalent protection.
2. What should I do if I have a European trademark registered before Brexit ?
European trademarks were automatically converted into comparable UK trademarks without additional fees. You now need to manage your trademarks separately in the UK and the EU.
3. How can I ensure the protection of my designs in the UK after Brexit ?
Community designs were automatically converted into UK rights. However, for new designs, you must now file a separate application with the UKIPO to ensure protection in the UK.
4. What should I do if I haven’t yet filed my trademark or design in the UK ?
You need to file an application with the UKIPO to ensure the protection of your trademark or design in the UK. EU trademarks are no longer valid in the UK since January 1, 2021.
5. What steps should I take to maintain the protection of my rights after Brexit ?
It is essential to file separate applications with the UKIPO for the UK and the EUIPO for the EU. You must also prove the use of your rights in each territory to ensure their validity.
On April 23rd 2019, the Russian Supreme Court adopted Resolution No. 10/2019, which clarified the provisions of Part 4 of the Russian Civil Code relating to intellectual property rights, and therefore to domain names, which are the subject of this article.
Among the clarifications provided, the Russian Supreme Court decided in particular that the commercial courts had jurisdiction to rule on disputes relating to distinctive signs (with the exception of appellations of origin, however), whether the party concerned is an individual person, a private entrepreneur or a company. Previously, the commercial courts and the general courts had jurisdiction based on the identity of the holders of intellectual property rights.
Furthermore, it is increasingly difficult to obtain information on the identity of Russian domain name registrants.
Indeed, although it is possible to make a request to registrars to disclose the identity of domain name registrants, obtaining this information has become increasingly complicated without legal action since many registrars refuse to disclose this information by taking refuge behind applicable legislation or requesting additional documents.
Resolution No. 10/2019 specifies that this information may be obtained through a court by filing a request for disclosure of personal data in legal proceedings. However, this is complicated when the identity of the domain name registrants is unknown. One solution would be to take legal action against registrars and then file a request for disclosure of personal data. It would be then possible to substitute the defendant.
In addition, with regard to infringement of a trademark by registration and use of a domain name, the Russian Supreme Court ruled that trademark infringement is characterized by the use of a domain name for goods and services similar to those designated by the trademark in question, and in some cases still, by registering the domain name only. Consideration should be given to the purpose behind registering the domain name to judge whether there is trademark infringement.
Finally, the Russian Supreme Court provides various additional clarifications. For example, a monetary claim may be filed against the current user of a domain name. In addition, it is possible to request provisional measures in respect of domain names. Finally, in cases concerning domain names, evidence consisting of printed screenshots of websites clearly showing i) the address of the websites in question, ii) the time at which the screenshots were taken and iii) whether they have been verified by the parties to the proceedings is admissible.
These clarifications are welcome. We will keep you informed of any further developments in this regard. Dreyfus is a specialist in domain name protection and defense strategy and can find solutions adapted to your needs. Do not hesitate to contact us.
The WHOIS protocol now appears to be outdated due to the evolution of technical requirements in the digital era. Indeed, this tool, provided by registrars, is inter alia not capable of working with either encoding or with non-latin characters. Consequently, since 2015, ICANN in collaboration with the Internet Engineering Task Force (IEFT) has been working on the replacement of WHOIS through the RDAP (Registration Data Access Protocol), in compliance with the Temporary Specifications and the GDPR.
Like WHOIS, the RDAP provides registration data, although its implementation is different since it allows standardization, security data access and enquire response formats. As a result, it will be possible to search all the registration data available from various registrars, unlike WHOIS that is limited to the database being searched. It also takes into account the internationalisation of domain names.
The possibility of granting different accesses to the registration data is being considered. For instance, access for anonymous users could be limited whereas authenticated users could have full access to all data.
While some elements still have to be worked out, registrars are required to implement the RDAP service prior to August 26, 2019.
Cyber-attacks are on the rise, and they are becoming more sophisticated. Our current business model is globally interconnected; commercial transactions and even social life transcend national borders. Consequently, our vulnerability to cyber-attacks has been increased, however, the competences of the cyber security and police authorities, as well as political responses, are predominantly national.
This situation has made European authorities aware of the need to deal with these threats in an effective and coordinated way, relying their actions on policies dealing specifically with cybersecurity within the European Union. By means, the aim is thus to improve cooperation, exchange of information and coordination between the Member States and the institutions, bodies, offices and agencies of the Union.
The European Commission, as part of the Digital Single Market Strategy, has approved Regulation No. (EU) 2019/881, on ENISA (the European Union Agency for Cybersecurity) and on certification of information and communications technology cybersecurity, which came into force on June 27, 2019.
This new regulation has two main objectives. On the one hand, to give ENISA (the European Agency for Cybersecurity, now named the European Union Agency for Cybersecurity) a greater role in the field of cybersecurity, establishing a series of objectives and tasks. On the other hand, the creation of a common certification framework at European level, with the aim of guaranteeing an adequate level of cybersecurity of ICT products, services and processes in the EU, avoiding the fragmentation of the internal market.
Concerning the first objective, the first substantive point of the Regulation is to give more powers to the European Union Agency for Cybersecurity (ENISA). It will now have a permanent mandate facilitating the exercise of the new functions assumed, one of which is to increase cooperation on cybersecurity within the Union, for example in cases of large-scale cyberattacks or cross-border crises. This strengthening is also reflected in the economic resources for ENISA, increasing from 11 to 23 million euros over a period of five years.
It is noteworthy that European regulation focuses on users by addressing concepts such as users’ awareness, and the application of good practices online. Both public bodies and private stakeholders will receive recommendations on safe configurations and maintenance of their devices, and the availability and duration of updates, as well as the perceived risks.
With regard to the second objective, the regulation creates a framework for European Cybersecurity Certificates for products, processes and services that will be valid throughout the EU. It is the first EU legislation on the internal market to take up the challenge of enhancing the security of connected products, Internet of Things devices and critical infrastructure through such certificates.
The creation of the cybersecurity certification framework incorporates security features in the early stages of their technical design and development (security by design). It also enables their users to ascertain the level of security assurance, and ensures that these security features are independently verified.
As to the second objective of the regulation, the certification framework will provide EU-wide certification schemes as a comprehensive set of rules, technical requirements, standards and procedures. This will be based on agreement at EU level for the evaluation of the security properties of a specific ICT-based product or service, for instance, smart cards. This will certify that ICT products and services which have been certified in accordance with such a scheme comply with specified requirements. In particular, each European scheme should specify: a) the categories of products and services covered, b) the cybersecurity requirements, for example by reference to standards or technical specifications, c) the type of evaluation such as self-assessment or third party evaluation, and d) the intended level of assurance for instance, basic, substantial and/or high.
ENISA’s mandate is immediate from the entry into force of the Regulation, whereas the cybersecurity certification framework will have to be developed. In this respect, the Commission’s agenda has already included the submission of proposals to ENISA for the preparation of certification projects, as well as the creation of expert groups on cybersecurity.
Finally, this European regulation not only seeks to increase users’ confidence in the use of connected devices, but also to strengthen the European cybersecurity industry and the European Single Market, positioning it as a global benchmark, in line with other markets such as the United States or China.
With significant expertise in protecting innovative products and designs, and in defending intellectual property rights on the Internet, Dreyfus is well positioned to assist you in enhancing your assets on the web.
In this respect, a great deal has been written by the Directive 2019/790 (EU), adopted on 26 March 2019 by the European Parliament. Among its 30 articles, we count in particular the establishment of a related right for press publishers (Article 15) and an obligation for platforms to control hosted content (Article 17). These provisions have been fiercely debated, and have led to multiple lobbying campaigns by authors and performers, newspaper publishers, and web giants (Google, Facebook and YouTube). In the present article, we will examine the changes made by the Directive.
New exceptions to copyright
There are currently many exceptions to copyright. In that respect, the Directive introduces three new exceptions to author rights and related rights in the digital environment. These exceptions and limitations are:
– Text and data mining for the purpose of scientific research when carried out by research organisations and cultural heritage institutions. However, rightholders are allowed to put in place technical measures aimed at ensuring the security and integrity of the networks and databases where their works are hosted. They may also expressly reserve their rights “in an appropriate manner”, for instance by machine-readable means, such as a digital watermark (Articles 3 and 4);
– The use of works in digital learning activitiesincluding distance learning. States may, however, provide a fair compensation for rightholders (Article 5);
– The copying by cultural institutions, for conservation purposes, of works which are part of their permanent collections (Article 6).
Under both French law and the Directive, these exceptions must be strictly interpreted and require that the work has been lawfullypublished.. All the conditions required by law must be met in order to benefit from these exceptions without having to obtain the author’s prior consent..
Furthermore, these new dispositions do not modify existing limitations and exceptions, such as parody or short quotation, which areretained (Article 17 (7) of the Directive). However, Member States will now have to specify that reproductions of visual works of art in the public domain cannot be protected by copyright unless the reproduction itself is original enough to be protected (Article 14). In France, this clarification is a mere application of copyright: a work in the public domain is no longer protected by author rights. Consequently, it can be freely reproduced without authorization. By contrast, if the production is original, it becomes a work on its own right and, as such, can be protected.
Licenses: out-of-commerce works, audiovisual video-on-demand works and collective management
The article 8 of the Directive authorizes collective management organisations to conclude non-exclusive licenses for non-commercial purposes with cultural heritage institutions for exploiting (reproducing, distributing, etc.) out-of-commerce work which are in their permanent collections.
According to Article 8 (5) of the Directive, a work is out-of-commerce: “(…) when it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public.”
Such licenses do not require prior mandate from the rightholder, but the collective management organization must be sufficiently representative of rightholders. The owner may, however, exclude at any time his works from this licensing mechanism, whether this exclusion is general or specific. In addition, the moral right to authorship of the work must be respected by indicating the author’s name, “unless this turns out to be impossible” (Article 8(2)).
Therefore, there is a switch from a prior authorization regime to an implied consent regime, and this will require greater vigilance on the part of authors and rightholders.
Article 12 of the Directive provides that States may authorize collective management organizations to extend collective licenses to rightholders who have not authorized the organization to represent them.
Here again, the organization must be sufficiently representative of rightholders, and they in turn may exclude their works at any time from this licensing mechanism.
Furthermore, article 13 of the Directive provides for a negotiation mechanism in which “an impartial body or of mediators” will be in charge, in order to assist in the conclusion of licensing agreements “making available audiovisual works on video-on-demand services”.
The related right of press publishers
Article 15 of the Directive creates a related right for newspaper publishers established in a Member State. They can now be remunerated for use of their content by information service providers, in particular news aggregators. This right is subject to strict conditions of application and does not apply to :
– Private and non-commercial uses;
– Hyperlinks;
– Use of isolated words or very short extracts of a press publication;
– Works published for the first time before the Directive’s entry into force.
Moreover, this right is onlygranted for two years from January 1st of the year following the date on which that press publication is published.
This related right is a right of its own, and thus publishers no longer have to demonstrate they indeed own the economic rights transferred to them by the author of the work.
Part of the remuneration paid by service providers to newspaper publishers must be paid to the authors. However, the Directive does not specify how this payment must be carried out. In addition, authors can exploit their works independently of press publication.
Online content-sharing service are fully responsible (Article 17)
liable if they “promptly” remove the content at stake.
Platforms will now be liable if they communicate to the public without authorization works protected by copyright. However, they will be exemptfrom liability if they have:
– “Made best efforts to obtain an authorization” from rightholders;
– “Made best efforts” to ensure the unavailability of the work and
– Acted “expeditiously” to disable access to the work or remove it from their websites after receiving a « sufficiently substantiated notice” of the rightholders.
Compliance with these requirements will be examined with regard to the type, audience, and size of the service, as well as the type of works downloaded. Article 17 (8) specifies that platforms are not subject to any general monitoring obligation, but its paragraph 4 (b) requires that they provide their “best efforts”, “in accordance with high industry standards of professional diligence”, to ensure the unavailability of protected works, which seems to be a sneaky way to require automatic content filtering.
Platforms that have been in service for less than three years, and which have an annual turnover of less than €10 million, will benefit from a less restrictive liability regime, as they will only have to make their best efforts to obtain an authorization and will have to act promptly upon receipt of a “sufficiently substantiated notice” from a right holder.
Furthermore, all platforms will be required to put in place an “effective and expeditious complaint and redress mechanism” so that users can challenge blocking or removal of a work posted online. States must also provide for alternative dispute resolution procedures.
Finally, it should be noted that authors and performers will now have to be remunerated in an “appropriate and proportionate” manner (Article 18). They must receive, at least once a year, information on the exploitation of their works (transparency obligation provided for in article 19). Contracts which are already concluded should be adapted to provide for an “additional, appropriate and fair remuneration” (article 20). Article 22 of the Directive also gives authors a right to revoke a license or a transfer of rights. These measures already exist in French law, but the Directive will harmonize European law.
Introduction : impartiality tested by social media
The rise of social media has profoundly transformed human interactions, blurring the lines between private life and professional obligations. In the judicial context, this evolution raises delicate questions about the neutrality and independence of judges. The decision of 5 January 2017 (No. 16-12.394) of the French Court of Cassation illustrates this issue by ruling on the legal qualification of the “friend” link on Facebook. The highest court emphasised that such a virtual link, often created without any significant interaction, cannot automatically be equated with a genuine friendship. This clarification marks an important step in adapting case law to the realities of the digital age.
The distinction between virtual and real friendship
Facebook “friend”: a symbolic link, not presumed to be close
The Court of Cassation held that the term “friend” as used on Facebook reflects the platform’s own terminology rather than a traditional social recognition. In many cases, such a connection results from algorithms, professional contacts, or weak ties, without genuine personal involvement. A virtual connection therefore does not, in itself, indicate emotional closeness or influence. This position ends the automatic conflation of digital and personal relationships. It also reminds us that the law must take into account the specific practices of each digital environment.
No automatic presumption of bias
The decision confirms that a “friend” link on a social network is not, on its own, sufficient grounds to recuse a judge. Without factual evidence of a personal relationship or partiality, bias cannot be established. This stance protects the freedom to use social media while maintaining a high evidentiary standard. It thus strikes a balance between safeguarding the image of justice and acknowledging common digital practices. The Court reaffirmed that only concrete evidence can justify challenging a judge’s impartiality.
Concrete elements that may demonstrate bias
Evidence required by case law
For a recusal request to succeed, it is essential to provide tangible evidence. Such evidence may include:
Frequent and personalized exchanges between the judge and the party.
Public expressions of support or positions taken in favor of one party.
Joint participation in events directly related to the case.
Precise, verifiable evidence directly linked to the dispute.
Elements ensuring that recusal is not used as a dilatory or strategic tool without any objective basis.
Probative value and legal requirements
The elements presented must demonstrate an objective appearance of bias, as it would be perceived by a reasonable observer. The criteria include:
Rejection of isolated or anecdotal evidence (for example, a single screenshot or a one-off connection).
The need to establish an overall context and a significant frequency of interactions.
Consideration of consistent indicators demonstrating an objective risk of bias.
A rigorous factual approach, excluding purely subjective interpretations.
Ensuring legal certainty and the stability of rendered decisions.
Scope of the decision on judges’ use of social media
Recognition of digital realities
In ruling this way, the Court acknowledges the widespread use of social media and the connections they generate. Digital relationships can exist without implying a real personal bond, and their mere existence does not inherently threaten impartiality. This recognition marks progress in adapting the law to the digital era.
Freedom of use framed by ethical prudence
However, the decision does not exempt judges from their ethical obligations. Their online presence must remain compatible with the requirements of neutrality and restraint. Any interaction likely to create an appearance of bias should be avoided to maintain public confidence in the judiciary.
Implications for public perception of justice
A reassuring decision for judicial neutrality
By requiring concrete proof of bias, the Court reinforces confidence in the independence of judges. This stance reassures that objective criteria, rather than mere appearances, guide the assessment of impartiality.
Risks of negative public perception
Nevertheless, part of the public, unfamiliar with legal nuances, may view these virtual links as a potential source of conflict of interest. This calls on judges and judicial institutions to educate the public about the real significance of such digital connections.
Conclusion
The decision of 5 January 2017 is a cornerstone in defining judicial impartiality in the digital age. It makes clear that the mere existence of a virtual link cannot undermine a judge’s neutrality, absent tangible proof of closeness or influence. This ruling helps to stabilise case law on recusal while providing a clear framework for legal practitioners.
Dreyfus Law firm is part of a global network of lawyers specialising in Intellectual Property.
Nathalie Dreyfus with the assistance of the entire Dreyfus team.
FAQ
Can a judge be Facebook friends with a party to a case ?
Yes, but this link alone does not justify recusal.
What evidence can prove bias ?
Frequent exchanges, public support, or direct involvement in the case.
Does the private nature of exchanges affect the analysis ?
No, only proof of a concrete relationship matters.
Does this rule apply to LinkedIn or Instagram ?
Yes, it applies to all social networks.
Can a judge be sanctioned for online activities ?
Yes, in cases of breach of neutrality or restraint obligations.
The UDRP (Uniform Domain Name Dispute Resolution Policy) and the URS (Uniform Rapid Suspension System) are two essential extrajudicial mechanisms for effectively combating cybersquatting and abusive domain name registrations. Administered under the auspices of ICANN, these procedures provide trademark owners with a fast and targeted means of enforcing their rights globally, without resorting to lengthy and costly court actions.
However, the success of any action largely depends on the strategic choice of the arbitration and mediation center. Each institution has its own specific features in terms of procedural rules, timelines, costs, and the quality of its decisions. Given this diversity, it is essential to adopt a methodical approach, based on objective criteria and a careful analysis of your needs.
In this article, we share 10 key tips to help you make this crucial decision and optimise the protection of your digital assets.
Legal framework of UDRP and URS proceedings
Tip 1 : Determine whether your dispute requires a UDRP or a URS
Before initiating any action, it is essential to assess the nature of the infringement. UDRP is appropriate where the objective is the transfer or permanent deletion of the domain name, for instance, in cases of clear cybersquatting.URS, which is faster and less expensive, is limited to temporary suspension and applies only to new gTLDs. A strategic review of the facts, the commercial risk, and long-term objectives will ensure that you choose the most appropriate procedure and avoid wasting time on an unsuitable path.
Tip 2 : Review the Supplemental Rules of the selected center
Each accredited center applies the baseline rules defined by ICANN but adds “Supplemental Rules” that can influence the process. These set deadlines for filing, evidence formats, accepted languages, and proof requirements. A thorough review before filing allows you to anticipate constraints and prepare a compliant case file, reducing the risk of dismissal for procedural defects.
Choosing based on the disputed domain name
Tip 3 : Check the policy applicable to the domain extension
Not all extensions fall under UDRP or URS. Certain ccTLDs voluntarily adopt UDRP (e.g., .tv, .me), while URS applies only to new gTLDs such as .shop, .app, or .paris. Before starting a procedure, confirm the applicability of the rules with the registry of the extension. This is critical to avoid initiating an inapplicable action, which could waste costs and delay enforcement.
Tip 4 : Select a center adapted to the language and time zone
The language of the proceedings directly impacts speed and cost. Choosing a center that operates in your language, or in the registration agreement’s language, avoids high translation costs and reduces the risk of errors. Time zone alignment is also important, as it facilitates communication with panelists and administrative staff particularly for urgent exchanges or submission of additional evidence under tight deadlines.
Assessing costs, timelines, and procedural rules
Tip 5 : Balance budget, urgency, and expected outcome
Costs and timelines vary significantly. URS generally costs between USD 300 and 500 and can conclude in under 20 days, but only provides suspension. UDRP, which is more expensive (often several thousand euros), takes an average of 60–75 days and results in a transfer or permanent deletion. Your choice should be guided by whether you prioritise speed or the permanence of the remedy.
Tip 6 : Anticipate technical and administrative constraints
Some centers require specific electronic formats, online filing tools, or strict file size and format rules. Others still require physical submission of signed documents. Failing to anticipate these requirements can lead to delays or even dismissal of the complaint. Preparing for these in advance ensures smooth procedural progress.
Service quality and legal expertise
Tip 7 : Choose a center with a rich and consistent body of case law
Centers such as WIPO have extensive decision databases and research tools that consolidate international case law. This consistency is invaluable for predicting the likely outcome of a case and crafting a strong argument. A center with few precedents offers less predictability in decision-making trends.
Tip 8 : Opt for a center offering flexibility and adaptability
Some disputes require procedural flexibility, such as extensions of deadlines, acceptance of late-filed evidence, or hearings in an additional language. A center capable of tailoring its process to the complexity of your case can greatly improve your chances of success, especially in multi-respondent or cross-border matters.
Other decisive factors
Tip 9 : Consider the reputation and experience of the center
A center’s reputation is often tied to the quality of its panelists and the consistency of its rulings. An experienced center inspires trust among the parties and can also facilitate enforcement of decisions by registrars and registries. This institutional credibility is a key factor in legal security.
Tip 10 : Assess additional services and avenues for appeal
Some centers provide added value through technical assistance, practical guides, or an appeal mechanism in case of an adverse decision. Such features can be decisive, particularly under URS where an appeal process exists. Evaluating these advantages ensures you select a center offering more than just case management.
Conclusion
Selecting the right arbitration and mediation center for UDRP/URS proceedings is a strategic decision that must account for the nature of the dispute, the domain extension, timelines, costs, language, and the institution’s experience and reputation. Applying these ten tips will maximise your chances of success and secure the protection of your digital assets.
Dreyfus & associés assists clients at every stage of these proceedings, backed by its recognised expertise in Internet and domain name litigation.
Recently alerted by the cruel practices endured by crocodiles during their slaughter for the production of the famous Birkin bags from the Hermès fashion house, the singer Jane Birkin informed Hermès about her intention to rename the crocodile-skin handbag bearing her name. The singer no longer wishes her name to be associated with such practices.
The Birkin bag, created in the early 1980s following a meeting between the singer and Jean-Louis Dumas, the chief executive of Hermès at that time is, however, one of the leading bags from the Hermès fashion house since its inception date.
Alongside arousing the curiosity of fans of the luxury brand Hermès, this news has also piqued the interest of lawyers. Indeed, in the face of such news, the question that arises is whether Jane Birkin can legally rename the crocodile-skin bag.
The fact of renaming a designer bag bearing the name of a star is not an isolated practice since there is a myriad of bags bearing the name of their muse. To cite only the most famous, it is noteworthy to mention the following designer handbags namely: So Kelly from Hermès as a tribute to Grace Kelly, Jackie from Gucci, Lady Dior, or B. Bardot from Lancel.
Since these names are associated with handbags, i.e. with goods, they were obviously registered as trademarks. This is the case, for example, for the name Birkin, filed and registered both as a French and international trademark by HERMES INTERNATIONAL since 1997 and the “So Kelly”, filed in 2009. The same holds true for the “Jackie” handbag, which refers to Jackie Kennedy and was filed by the Italian company GUCCIO GUCCI in 2008.
The practice of registering a surname as a trademark has been upheld by legislation and the French courts for a long time.
The surname is a personality right which is inalienable and indefeasible. Yet Article L.711-1, paragraph 2 a) of the French Intellectual Property Code provides that surnames can be registered as a trademark. Moreover, since the 1985 case of Bordas (Cass. Com. March 12, 1985, No. 84-17163), it is settled law that there can be an agreement to the effect of the commercial use of a surname.
Subsequently, the cour de cassation specified the conditions under which a surname could be registered as a trademark. In a judgment datedMay 6, 2003 (Cass. Com. No. 00-18192) the cour de cassation held that a founding partner who has agreed to the inclusion of his name in the company name must also expressly waive his ownership rights and allow the company to register the said surname as a trademark. In other words, the use of the surname of a third party is limited to what has been expressly authorized by the name holder.
Thereafter, the cour de cassation intervened in the Inès de la Fressange case regarding the use of her surname as a trademark by the fashion company bearing her name. After being dismissed from the company, the fashion designer had sought to recover the rights affiliated with her name by invoking the potentially misleading nature of the trademark on the basis of Article L. 714-6 b) of the Intellectual Property Code. She claimed that consumers would be misled into believing that they were buying clothes designed by her. But this was not the stance taken by the cour de cassation which, on the basis of Article 1628 of the Civil Code and the implied warranty against eviction principle, dismissed the designer’s claim (Cass. Com. January 31, 2006, N ° 05-10116).
A few months later, the Court of Justice of the European Union also faced a similar question in the Elizabeth Emanuel case (ECJ March 30, 2006. Aff . C-259 /04. Elizabeth Florence Emanuel v Continental Shelf). The issue in that case concerned the sale by the designer Elizabeth Emanuelof her fashion company bearing her name and the assets attached thereto, including the ELIZABETH EMANUEL trademark. However, following the sale, the fashion designer filed a claim for the revocation of rights against the trademark which was transferred accordingly, deeming that, just as was the case with Madame de la Fressange, the public was confused since she was no longer the designer of the clothes marketed under the trademark.
The Court held that the ELIZABETH EMANUEL trademark was not, in itself, likely to mislead the public as to the origin of the clothes. But the Court opined that it is for the national court to verify whether there is, on behalf of the company holding the trademark, an intention to make the consumer believe that the designer is still involved in the design of clothes. This would thus be tantamount to fraudulent tactics likely to make the company liable.
In the present case, since Jane Birkin is not associated with the design of the handbag, she cannot rely on this approach for the crocodile-skin handbag to be renamed.
It therefore remains to be seen whether the intention to rename the Birkin crocodile-skin handbag can materialize to the extent that the surname of the singer, registered as a trademark, could be considered as part of the assets of the Hermès company. The outcome of this case shall enlighten us.
Furthermore, on 11 September last, the saddler welcomed in a press release that Jane Birkin seemed to be satisfied by the measures adopted by the Hermès house following the controversy appeared this summer.
Can Jane Birkin legally prohibit Hermès from using her name?
Yes. Jane Birkin can oppose the use of her name if it harms her image or was used without her express consent. Under French law, a family name is protected by privacy rights and potentially by trademark law, if registered.
What are the criteria to protect your name as a trademark?
To defend your name, you must demonstrate its notoriety, commercial use, and the risk of confusion or harm to your reputation. This is especially relevant for public figures and celebrities.
Does Hermès have to rename the Birkin bag?
Not necessarily. If Hermès originally obtained consent or the name has become a standalone brand, the use may be legally justified. However, legal opposition from Jane Birkin could force the company to reconsider its use.
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