News

Introduction

Before launching a brand, a clearance search is indispensable. It verifies the existence of prior rights (trademarks, trade names, domain names, unregistered uses) that could block registration or prohibit the use of the mark. In France, in the European Union, and more generally worldwide, this verification is the responsibility of the applicant.

Overlooking this step may have serious consequences: opposition proceedings, infringement litigation, or even the obligation to rebrand after considerable marketing investments. Conversely, a well-conducted search not only secures the filing but also anticipates disputes and enables smooth negotiations with prior right holders.

Why is a clearance search indispensable?

Definition and legal imperative (France and the European Union)

A clearance search aims to identify existing signs likely to prevent registration. In France and for EU trademarks, the trademark offices (INPI and EUIPO) do not examine potential conflicts, since this analysis lies with the applicant. In international trademark procedures, WIPO merely transmits the application to the designated offices.

Practical stakes and concrete risks

Without a clearance search, you risk:

• Opposition before the trademark offices once the application is published;
• Cancellation actions after registration;
• Infringement actions with damages once the mark is on the market;
• Prohibition of use and costly rebranding;
• Delayed launches and loss of competitive advantage.

By contrast, a sound search assesses the likelihood of confusion, anticipates objections, and optimises the scope of goods and services.

Comparative frameworks: United States, France and the European Union

An instructive U.S. example: the Huella case (TTAB, May 7, 2025)

In the United States, the USPTO refuses registration where there is a “likelihood of confusion” between signs and the goods and services are related. This is one of the most common grounds for refusal. Indeed, the USPTO carries out its own clearance search during examination.

In the Huella case of 7 May 2025, the registration of a mark for leather bags (Class 18) was refused because of an earlier registration for cosmetics (Class 3). The Board found:

• extensive evidence of cross-use by third-party brands (cosmetics and bags marketed under the same mark);
• an inherent connection, since leather bags includes cosmetic cases;
• no limitations on distribution channels in the identification, which implied overlapping trade channels and consumer bases.

The refusal was therefore upheld. Even if classes differ, goods may still be deemed related. A clearance search must therefore cover not only the intended classes but also related ones, taking into account distribution channels.

French and European references (INPI, EUIPO, WIPO)

In France, searches rely on INPI’s database; at the EU level, on EUIPO; for global strategy, WIPO is essential. These tools help identify prior signs, but interpretation always requires legal expertise, considering confusion risks, market practice, and possible notoriety of existing marks. Engaging a specialist is strongly advised, as practitioners have access to enhanced databases and can deliver an optimal risk assessment.

Best practices for comprehensive and strategic searches

Key steps not to be overlooked

1. Define precisely the sign to be protected (word mark, logo, variations).
2. Identify relevant classes and related classes under the Nice Classification.
3. Conduct searches among registered trademarks in France, the EU, and, if expansion is envisaged, in the U.S. and other countries of manufacture, marketing, or projection.
4. Review the results with legal analysis (visual, phonetic, conceptual)while considering recent case law.
5. Assess the likelihood of confusion in light of goods and services and the relevant public.
6. Determine the appropriate strategy: filing, adapting the mark, coexistence agreement, or abandoning the project.

Complementary searches to be conducted simultaneously

Beyond registered trademarks, it is vital to check:

• Corporate names and trade names (Infogreffe, SIRENE).
• Domain names and use on social networks.
• Copyrights and/or designs.

These elements may present legal obstacles just as serious as a registered trademark.

Conclusion and call to action

A clearance search is the first safeguard against legal uncertainty. It enables confident investment, avoids costly disputes, and strengthens brand strategy. This indispensable step requires the expertise of a professional able to “read between the lines” and measure the commercial impact of existing signs.

Dreyfus & Associés works in partnership with a global network of intellectual property attorneys.
Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

How does a clearance search differ from a simple Google search?

An online search does not cover official registers and cannot assess legal risk. INPI, EUIPO, and WIPO databases are indispensable. Legal expertise is required to interpret results and to propose a clearance strategy if conflicts arise.

Is a search mandatory before filing?

No, but it is strongly recommended: failing to conduct one transfers the entire legal risk to the applicant and creates a permanent threat. At any time—even years after launch—you may face infringement claims and substantial damages. Moreover, rebranding costs after years of investment may be enormous.

Do searches limited to the exact class of goods/services suffice to avoid conflicts?

Not always. Case law shows that market connections (e.g. fashion and cosmetics) can establish a likelihood of confusion. This is why the involvement of an IP specialist is essential to determine the appropriate scope of the search.

Can a mark be filed despite a similar prior right?

Yes, provided that consent is obtained, a coexistence agreement is signed, or the goods/services are restricted.

Can an unregistered mark block an application?

Yes. If it is well-known or significantly used, it can be opposed to a filing in France. In addition, “common law” rights may arise through use, notably in the United Kingdom, the United States, and Canada.

Introduction

An international trademark is a mark registered with the World Intellectual Property Organization (WIPO) under the Madrid Protocol. This system allows a trademark owner to seek protection in multiple countries through a single procedure, thereby simplifying administrative formalities and optimizing the costs of international protection. An international trademark is recognized by all member states of the Madrid Protocol, provided that the basic mark has already been registered in a member country.

In this article, we present Article 4bis of the Madrid Protocol as a strategic lever enabling the substitution of national or regional trademark registrations with an international registration, thus consolidating rights, rationalizing the portfolio, and providing optimal legal security.

What is article 4bis?

Article 4bis of the Madrid Protocol provides that when a trademark already registered at the national or regional level (e.g., the EU) also becomes the subject of an international registration in the name of the same owner, and the designation takes effect after the date of the earlier mark, the international registration is deemed to replace the earlier registration, without prejudice to rights acquired under the latter. This provision does not cancel the initial registration but recognizes its legal equivalence with the international registration for protection in the relevant jurisdiction.

What does it provide for?

Automatic replacement applies as soon as the conditions are met (identical holder, identical mark, same scope of goods/services, later date). No formalities are strictly required, but they are highly recommended.Upon request, the national office must record a mention of the replacement in its register and notify WIPO’s International Bureau, which will enter the information into the International Register. This mention provides greater visibility for third parties and facilitates the administrative management of the portfolio.

Strategic issues in the use of article 4bis

Benefits and advantages

• Streamline the trademark portfolio by progressively eliminating redundant registrations.
• Preserve rights such as earlier priority or prior use of the mark.

The priority attached to the national trademark is automatically preserved when replacement occurs. Thus, if the national mark benefited from a priority claim under Article 4 of the Paris Convention, that priority is transferred by operation of law to the international registration that replaces it. The holder therefore retains the advantage of the earlier priority date, even if the national registration is not subsequently renewed. No particular formalities are required, as this protection flows directly from Article 4bis of the Madrid Protocol.

Similarly, the use made of the national trademark is deemed valid use of the international registration. In other words, continued exploitation of the national mark serves to demonstrate use of the international registration and prevents any action for cancellation based on non-use. This assimilation of use operates automatically, without the need for specific administrative steps. In practice, however, it remains essential to keep records of exploitation under the national mark, as such evidence may be relied upon in support of the international registration in the event of a dispute.

• Enhance legal security for third parties through an official mention in the registers.

It refers to an official entry in the registers that notifies that the national trademark has been replaced by an international registration in certain countries. This means that third parties (such as competitors or potential trademark holders) are informed of a change in the trademark’s status, ensuring that they are aware that the national registration has been replaced by an international registration and that international protection now applies.

• Optimize costs by consolidating renewals into a single international procedure.

What to expect / points of caution

• Both registrations (national and international) coexist as long as one or the other is renewed.
• The five-year dependency period of the international registration may pose a risk if the national mark is challenged during this time.
• The loss or cancellation of the basic national mark within this period results in the cancellation of the international registration in all designated jurisdictions.

Limitations

• Not all states recognize the automatic replacement of the national trademark by the international registration, or the option of partial replacement. It is therefore important to contact the trademark offices.
• Partial replacement is possible in certain jurisdictions (e.g., the United States since 2021 under the amended Rule 21) but requires detailed local analysis.

Since November 21, 2024, the United Kingdom has implemented a rule allowing the partial replacement of national registrations with international registrations. This rule enables trademark holders to request the partial replacement of their national registration with an international registration covering only a portion of the goods or services. There must be an overlap between the goods or services covered by the national registration and those of the international registration.

• This is not a transfer of rights but an administrative mention in the register accessible to third parties.

Article 4bis of the Madrid Protocol does not result in the transfer of ownership rights from the national or regional trademark to the international registration. In other words, the trademark holder retains all acquired rights on the national trademark, even after the international registration has come into effect.
The administrative mention in the register simply means that an entry is made in the official registers to indicate that the international registration legally replaces the national or regional registration in the relevant jurisdictions. This ensures better visibility for third parties.

Strategy to adopt

• Carry out a portfolio audit to identify national/regional marks that could be replaced.
• Verify that the international registration covers the full scope of goods/services, including in their exact or equivalent wording.
• File a request with the national office to record the substitution and secure the information.
• Monitor the five-year dependency period and keep the national registration active if necessary.
• Take advantage of partial replacement mechanisms in countries where admitted, to align protection with real business needs.

In certain countries, such as the United Kingdom, this replacement may be partial: only some goods or services are transferred to the international registration, while the others remain covered by the national mark. This helps avoid duplication and allows the protection to be adjusted to actual needs.

Conclusion

Ultimately, Article 4bis is a precise tool for consolidating trademark rights at the international level while preserving initial rights. When properly used, it allows for a streamlined management of a portfolio, stronger legal certainty, and cost optimization.

Dreyfus Law firm is well-versed in the subject and the technicalities of international trademarks. The firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

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

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

What are the conditions for replacement to apply?

Replacement applies when the trademark owner is identical, the trademark itself is identical, the goods/services are equivalent, and the international designation takes effect after the national or regional registration.

Does the national registration disappear after replacement?

No, the national registration continues to exist, but it is legally replaced by the international registration for the designated jurisdictions.

Is it mandatory to record the replacement mention with the national office?

No, recording the mention is not mandatory, but it is highly recommended to secure the substitution and guarantee legal visibility. We recommend contacting an intellectual property expert to ensure that your protection strategy is adequate and properly secured.

Can the basic mark be replaced?

Yes, the basic mark can be replaced by an international registration, provided that the conditions for replacement are met. In fact, this will be possible after the five-year dependency period provided for under the Madrid system.

Does the five-year dependency period have an impact on strategy?

Yes, the five-year dependency period means that the international registration depends on the maintenance of the basic mark, which may introduce risks if the national mark is challenged.

Cloud Computing has become an indispensable technology for businesses of all sizes, widely integrated into daily operations. While initially perceived as a technological revolution, it has now become an integral part of the modern IT landscape. Cloud allows organizations to access IT services such as data storage, applications, or computing power via remote servers, without the need to invest in complex physical infrastructure.

The adoption of Cloud Computing has profoundly changed how businesses manage their IT resources. Thanks to its flexibility, scalability, and optimized costs, the cloud has become an essential strategic lever. From startups to multinational corporations, including the public sector, this technology offers a simple and effective solution to meet the growing demands for performance, security, and data accessibility.

Introduction to Cloud Computing

Cloud computing emerged in the 2000s as a response to the growing needs of businesses for flexibility, scalability, and cost reduction. Previously, companies had to make significant investments in physical servers and complex IT infrastructures to store their data and run applications. While these systems were effective, they represented a heavy investment in terms of purchasing, maintenance, and upgrading costs.

The rise of cloud computing changed this situation by offering an online solution where IT resources such as storage, computing, and applications are provided by remote servers accessible via the internet. This model not only eliminated the need for costly local infrastructure but also allowed for more flexible and scalable data management.

Cloud computing relies on virtualization technology, which allows physical resources to be shared across multiple remote servers. Instead of purchasing and maintaining individual servers, a company can access a shared virtual infrastructure, in a flexible, on-demand manner. This “on-demand” model allows businesses to rent only the resources they need, based on their current needs, and quickly adjust these resources as demand evolves.

Different types of Cloud Computing

Cloud computing takes several forms tailored to business needs. Each of these forms offers distinct advantages in terms of control, security, and flexibility.

Public Cloud

The public cloud is the most common form of cloud computing. In this model, IT services are hosted on public servers and are accessible via the internet. Providers like Amazon Web Services (AWS), Microsoft Azure, and Google Cloud Platform offer computing and storage resources in a flexible, on-demand manner.

Private Cloud

The private cloud is a model where a business retains full control over its resources and data, often using dedicated servers. This model is commonly adopted by large enterprises that require a high level of customization, security, and control.

Virtual Private Cloud (VPC)

The Virtual Private Cloud offers a hybrid solution, combining the security of a private cloud with the flexibility of a public cloud. It allows for the creation of an isolated environment within the public cloud, ensuring a high level of security and control while benefiting from the flexibility of the cloud.

Hybrid Cloud

The hybrid cloud combines multiple types of clouds, allowing businesses to benefit from both the public and private cloud advantages. This enables the transfer of workloads between clouds based on specific needs, creating a more flexible and scalable IT environment.

Benefits of Cloud Computing

Cloud computing offers many benefits for businesses of all sizes. These benefits, covering both financial and technical aspects, help companies optimize their processes while reducing costs.

Cost optimization

One of the major advantages of cloud computing is the reduction of IT infrastructure costs. Unlike a traditional model where a company must invest heavily in servers and infrastructure, the cloud allows businesses to pay only for what they use. This pay-as-you-go model offers great flexibility and allows for better resource management.

Scalability and flexibility

Cloud enables businesses to quickly adjust their resources based on their needs. Storage and processing capacities can be increased or decreased in just a few minutes, offering unparalleled flexibility, especially during peak periods.

Reliability and accessibility

Thanks to virtualization, cloud computing services are highly reliable. In case of a server failure, the service can automatically switch to another server without interruption for the user. Additionally, these services are accessible from anywhere, at any time, on any device connected to the internet, facilitating remote work and distributed teams.

Risks and challenges of Cloud Computing

Despite its many advantages, cloud computing also presents challenges that businesses must be mindful of. These risks mainly concern security and dependency on the provider.

Data security

Data security in the cloud remains a major concern for many businesses. While cloud providers invest heavily in security technologies, there are still risks related to unauthorized access, data loss, and privacy breaches. It is essential for businesses to review the terms of service and ensure that the provider offers adequate security guarantees.

Internet dependency

Cloud computing relies on a stable internet connection, and an outage or disconnection could render services inaccessible. Additionally, dependency on a single provider poses a risk in case of provider failure, or if the company decides to switch providers.

Conclusion

Cloud computing represents a major technological shift for businesses. It not only helps reduce costs and increase flexibility but also offers access to powerful IT resources without the need to invest in costly infrastructures. However, to fully benefit from it, companies must carefully choose their cloud providers and implement robust security measures to protect sensitive data.

Dreyfus & Associés is partnered with a global network of intellectual property attorneys. Our expertise allows us to effectively assist you in managing the legal challenges associated with adopting cloud computing.

Nathalie Dreyfus with the help of the entire Dreyfus team.

FAQ

What is cloud computing and how does it work?

Cloud computing allows businesses to access IT services (such as storage, computing, or applications) via the internet, using remote servers. Instead of investing in costly physical infrastructures, businesses can rent these services on-demand based on their needs.What are the main types of cloud computing?

There are several types of cloud computing:

• Public Cloud: Services hosted on public servers, accessible via the internet.
• Private Cloud: Infrastructure dedicated to a single business, offering full control.
• Virtual Private Cloud (VPC): Combines the advantages of both private and public clouds, with a secure environment.
• Hybrid Cloud: Combines multiple types of clouds, offering flexibility and security.

What are the main benefits of cloud computing for businesses?

Benefits include cost reduction, scalability (the ability to add or reduce resources as needed), and increased accessibility, allowing employees to work from anywhere, at any time, on any device.

What are the risks associated with using cloud computing?

Risks include data security, particularly the potential for unauthorized access or privacy violations, and dependency on the internet and the service provider. A failing internet connection or a provider facing issues can cause service interruptions.

How can data security be ensured in the cloud?

To ensure data security, it’s crucial to choose a reputable cloud provider, use encryption technologies, and verify the security guarantees provided in the service terms. Businesses should also implement strict access and data management policies.

Introduction

Decree No. 2025-660 of 18 July 2025 marks a decisive step in the evolution of civil litigation in France. It places amicable settlement between the parties at the very heart of the procedure, relegating the role of the judge to one of support and guarantee.

The objective is clear: to reduce the burden and slowness of proceedings, to grant litigants greater freedom, and to encourage cooperation rather than confrontation. The parties may now, with the assistance of their lawyers, determine the organisation and pace of their dispute themselves.

In practice, two avenues are now available: a flexible conventional case management for simpler matters, and a more structured participatory procedure for complex disputes. In all instances, the judge intervenes as a secondary arbiter, ensuring fairness and the security of the process.

Another major innovation is that the judge may now require the parties to meet with a mediator. Refusal without legitimate grounds exposes the party to a financial penalty of up to €10,000. This measure reflects a strong political will to embed a genuine “amicable culture” within the French judicial landscape.

For businesses, the reform translates into disputes being resolved more quickly, at lower cost, and with greater predictability. For lawyers, it offers the opportunity not only to defend, but also to build tailor-made solutions.

Conventional case management: a new guiding principle

A reversed logic: settlement before the judge

Until now, the management of a civil case was dictated by a timetable imposed by the judge. The decree reverses this logic: it is now for the parties, assisted by their lawyers, to determine the modalities of case management. The judge intervenes only in the event of a deadlock or failure.

This shift is far from trivial. It reflects a political desire to reduce court congestion while making justice more efficient. It also enhances the responsibility of the parties, who become active participants in their dispute rather than passive spectators of an imposed procedure.

Take the example of a trademark infringement dispute. Instead of waiting for hearings scheduled months apart, the parties may agree on a timetable tailored to their economic constraints, subject to simplified validation by the judge. This reduces delays and prevents purely dilatory strategies.

Two procedures adapted to the complexity of the dispute

The decree distinguishes between:

• Conventional case management of general application, more flexible and suitable for simple or technical disputes;
• The participatory procedure for case management, more formalised and designed for complex matters where a clear framework is indispensable.

This dual approach provides genuine flexibility and allows litigants’ diverse needs to be met, whether the dispute concerns a straightforward contractual claim or a major economic conflict.

Strengthened ADR mechanisms: the “multi-door” justice system

The guiding role entrusted to the judge

The decree redefines the judge’s mission: no longer merely an arbiter who renders a decision, the judge now assumes the role of procedural guide, steering the parties towards the dispute resolution method best suited to their case. This approach is inspired by “multi-door justice” models already developed in other countries, where the judge offers several settlement options: judicial proceedings, mediation, conciliation, or participatory procedure.

This logic personalises the judicial response. A dispute between shareholders, a consumer conflict, or an intellectual property infringement do not necessarily call for the same solution. The judge thus becomes a pivotal actor, ensuring the most appropriate orientation.

The mediation order and its sanctions

One striking innovation is that the judge may now order the parties to meet with a mediator. This does not mean forcing them to reach an agreement, but requiring them at least to explore the possibility.

• If the parties participate: they remain free to accept or reject an agreement, but they will have had the opportunity to engage in dialogue within a secure framework.
• If they refuse without legitimate grounds: they risk a civil fine of up to €10,000.

This sanction, unprecedented in French procedure, clearly demonstrates the determination to entrench amicable settlement in legal practice.

In this context, Dreyfus & Associés positions itself as a trusted partner, capable of intervening in the amicable procedures encouraged by the decree.

As judicial experts, we are regularly appointed by courts and parties to assist and secure amicable procedures, making us a preferred partner for efficiently resolving disputes.

Recodification for greater clarity and legal certainty

A unified and accessible body of rules

Prior to this reform, provisions on ADR were scattered across various chapters of the French Code of Civil Procedure, sometimes difficult for practitioners to locate. The decree now consolidates these rules into a single title, creating a coherent and accessible framework.

This codification effort improves access to the law and strengthens legal certainty. Lawyers, judges, and businesses now enjoy better visibility to anticipate their procedural strategies.

Practical implications for businesses and lawyers

For businesses, the reform offers tangible benefits:

• greater control over timelines,
• reduced procedural costs,
• enhanced opportunities to preserve commercial relationships through balanced agreements.

In the field of intellectual property, for instance, a company may resolve a dispute over the use of a domain name through supervised mediation rather than lengthy court proceedings.

For lawyers and experts, the role is profoundly reshaped: it now involves not only defending rights, but also designing and securing amicable solutions.

Conclusion: towards a lasting culture of amicable settlement

The Decree of 18 July 2025 heralds a profound cultural shift in French law. Amicable settlement is becoming the primary pathway, with litigation the last resort. This evolution promotes faster, more flexible, and often more suitable resolutions for the parties’ interests.

Dreyfus & Associés stands by businesses and stakeholders to implement these new rules, bringing our expertise in amicable and judicial dispute resolution to ensure the best outcome for your disputes.

Dreyfus & Associés operates in partnership with a global network of lawyers specialising in intellectual property.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

Does mediation become mandatory?
No, but the judge may order the parties to meet with a mediator, and may sanction unjustified refusal with a fine.

What are the advantages for businesses?
Shorter timelines, better-controlled costs, and solutions more in line with economic realities.

What are the sanctions for refusing amicable settlement?
A civil fine of up to €10,000, imposed by the judge.

How does this decree affect intellectual property?
Disputes concerning trademarks, patents, or domain names may now be resolved more efficiently through mediation or conciliation.

Why speak of a “multi-door justice system”?
Because the judge directs the parties towards several possible resolution mechanisms, depending on the nature of the dispute: conventional litigation, mediation, conciliation, or participatory procedure.

Introduction

We are witnessing the emergence of an unprecedented phenomenon in luxury goods counterfeiting: Pingti. These high-end replicas reproduce the materials, design, and finishes of iconic models with precision, yet bear no logo or visible brand name. They attract consumers seeking discretion and affordable prestige, while undermining traditional brand protection strategies and posing new legal challenges.

What is a Pingti?

Definition and characteristics

The term “Pingti” originates from Mandarin and can be translated as “decoy” or “sophisticated fake.” It refers to ultra-realistic reproductions of luxury goods that:

• Faithfully replicate the design, proportions, and finishes of the original items;
• Often use the same materials, or materials of equivalent quality;
• Are sometimes manufactured in the same factories as the originals, outside official production lines;
• Bear no logo, brand name, or protected distinctive sign, making legal identification more complex;
• Align with the “quiet luxury” trend, favouring discreet elegance and recognition through design rather than a displayed brand.

Consumer appeal

Sold at prices up to ten times lower than the originals, Pingti appeal to consumers seeking the quality and prestige of luxury goods without paying full price. Their spread is amplified by social media platforms such as TikTok, comparative videos, and specialised forums.

Legal grey area

In the absence of a brand affixed to them, Pingti often escape the scope of traditional counterfeiting laws. However, when they reproduce a design protected by a registered design right or copyright, they may be subject to sanctions. Their legal classification therefore largely depends on the type of protection held over the copied product.

Risks associated with Pingti

Erosion of exclusivity

By multiplying visually similar imitations, Pingti undermine the unique and exclusive character of luxury goods.

Economic impact

• Diverting part of sales towards non-official products;
• Putting downward pressure on prices and margins for luxury houses;
• Increasing monitoring and litigation costs.

Brand image risks

The association of an iconic design with a lower-priced product, even of good quality, diminishes the prestige and perceived value of the brand.

Strategies to combat Pingti

Strengthening intellectual property rights

Registering designs protects the aesthetic appearance of products. This is an effective and swift tool within the European Union.

Complementary legal tools

In certain cases, copyright can protect original creations. Patents may secure technical innovations incorporated into products.

Strict supplier contracts

Exclusivity and confidentiality clauses must be included in manufacturing contracts to limit the risk of design diversion.

Legal actions not based on trademarks

Even without a brand affixed, actions may be brought on the grounds of unfair competition, parasitism, or harm to reputation.

Market monitoring and customs intervention

Implementing monitoring systems on marketplaces and working with customs authorities helps detect and intercept these products before they reach the market.

Conclusion

Fighting Pingti requires an approach that combines legal protection, contractual vigilance, and active market surveillance. Luxury brands must act in a coordinated manner to preserve their exclusivity, protect their image, and anticipate new forms of counterfeiting.

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

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

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What exactly is a Pingti?
A luxury product reproduced identically in its materials and design, but without any logo or visible brand.

2. What is the difference between a “dupe” and a classic counterfeit?
A Pingti aims for a quality almost identical to the original, whereas a “dupe” is an openly lower-quality imitation, and a classic counterfeit also reproduces the brand.

3. Can action be taken without a logo or visible brand?
Yes, through design registrations, copyright protection, or actions for unfair competition and parasitism.

4. What legal tools are most effective against Pingti?
Design registrations, copyright, unfair competition laws, and customs enforcement.

5. How can Pingti be monitored and quickly addressed?
By combining active monitoring of marketplaces, automated alerts, and immediate takedown procedures.

Introduction

Recent advances in generative artificial intelligence, exemplified by tools such as ChatGPT, Bard, and Claude, have profoundly transformed how we design and produce content. From text to images, and from video to audio, AI-assisted creations are now ubiquitous in communication, marketing, and production strategies. Yet behind this technological revolution lies a critical legal question : who actually owns this content ? Copyright law, designed for human-made works, faces a new paradigm. Understanding the applicable rules, the risks, and the measures to be implemented is now a strategic priority for companies, creators, and institutions seeking to combine innovation with legal compliance.

Legal framework for ai-generated content

Only human creation is protected

Under French law, Article L.111-1 of the Intellectual Property Code specifies that only the author, defined as a natural person, can claim protection for a work of the mind. This requirement of a “personal imprint” automatically excludes works generated exclusively by an algorithm. An image, text, or musical composition produced without significant human intervention does not meet the required originality criterion. Case law and doctrinal positions confirm this interpretation, aligned with EU Directive 2001/29/EC and WIPO guidelines. AI, as a mere tool, cannot be granted authorship status.

Transparency obligations and legislative developments

While current law does not recognize AI as having creative autonomy, regulations are evolving to govern its use. Directive (EU) 2019/790 already provides exceptions for text and data mining, while safeguarding protected works. The forthcoming AI Act, now in its final stages, will require AI providers to document and publish summaries of protected data used to train their models. This obligation aims to enhance traceability and reduce the risk of unlawful reuse of pre-existing works, giving rights holders a new means of control.

Authorship and ownership of copyright

User or developer : who is the author ?

Determining authorship in the context of conversational AI depends on the nature and scope of human intervention. If the user formulates precise prompts, refines the outputs, and incorporates substantial creative choices, they may claim ownership of the original parts of the work. Conversely, the AI developer retains rights to the software, architecture, and code, but not to the specific outputs. This distinction, enshrined in doctrine and contractual clauses, is essential to avoid confusion over the intellectual property of generated content.

The decisive role of terms of use

The terms of use of AI platforms are crucial in allocating rights. For example, OpenAI’s terms state that the user owns the rights to the outputs, provided they comply with applicable laws, including copyright. However, such clauses do not exempt the user from liability in the event of third-party rights infringement. Extra caution is therefore needed in commercial exploitation to ensure that generated content does not reproduce, even partially, a protected work.

Legal risks of using a chatbot

Risks of direct or indirect infringement

Using a chatbot does not shield one from liability for infringement. Generated content may, intentionally or not, reproduce all or part of an existing protected work. Copying a literary text, a musical passage, or a protected visual even in modified form can constitute a violation of rights. This risk is heightened by AI’s ability to memorize and output fragments learned during training. Businesses should implement systematic verification procedures before public release.

Training data and pre-existing works

AI models are trained on massive datasets, sometimes including protected works collected without explicit authorization. This practice raises major legal issues, particularly concerning reproduction and public communication rights. The lawsuit brought by The New York Times against OpenAI and Microsoft perfectly illustrates this problem: the newspaper claims its editorial content was used without a license to train their models. Such actions are likely to increase as rights holders become aware of the use of their works.

Strategies to secure the use of ai content

Creative and Documented Human Intervention

To qualify for copyright protection, the user must demonstrate a genuine creative contribution. This requirement entails :

• Retaining the prompts and instructions used to generate the content, in order to trace the creative process.
• Documenting the artistic and editorial choices (selection, modifications, additions) made to the AI-generated output.
• Archiving each stage of production to establish a chronological record of the work undertaken.
• Highlighting the human-added value compared to mere automated AI production.
• Enhancing the credibility and legal standing of the work through a complete file that can be produced in the event of a dispute.

Contractual clauses and compliance audits

Contracts with service providers or partners should include precise clauses governing AI use. Recommended provisions include warranties of non-infringement, transparency obligations regarding the origin of content, and a clear allocation of responsibilities. Regular audits, particularly using similarity detection tools, help secure distribution and avoid costly disputes. This is especially relevant in sectors with high creative intensity.

International perspectives and legislative developments

Divergent approaches across jurisdictions

In France and the European Union, the requirement for human originality is non-negotiable. In the United States, the US Copyright Office refuses to register works generated without significant human contribution. However, some countries, such as the United Kingdom and India, are exploring hybrid regimes where the programmer may be recognized as the author. These divergences complicate the international management of rights, forcing businesses to adapt their strategies by jurisdiction.

Upcoming reforms and impact on users

The forthcoming EU AI Act will mark a turning point by imposing transparency obligations regarding training data and regulating high-risk AI systems. Meanwhile, WIPO is conducting consultations to propose a harmonized international framework, potentially introducing new forms of protection adapted to AI. These reforms, although adopted but not yet fully applicable, could profoundly alter the way AI-generated content is exploited and protected, prompting stakeholders to anticipate their future obligations now.

Conclusion

Protection for AI-generated content remains contingent on substantial and identifiable human creative input. Businesses and creators must integrate this requirement into their processes, combining documentation, verification, and contractual safeguards. The issue is not only legal but also central to the economic value of works and the management of associated risks.

Dreyfus & Associés is in partnership with a global network of intellectual property lawyers
Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Is content generated by ChatGPT automatically protected by copyright ?
No, only a work with original human contribution can qualify for protection.

2. Who owns the rights: the user or the AI developer ?
Generally the user, unless otherwise stipulated in the terms of use or a specific contract.

3. What are the main copyright risks associated with chatbots ?
Unauthorized reproduction of protected works or use of training data covered by rights.

4. Are the rules the same in Europe and the United States ?
No, both require human involvement, but with differing criteria and practices.

5. What clauses should be included in a contract to regulate AI use ?
Clauses on ownership, non-infringement warranties, transparency, and allocation of responsibilities.

Introduction

The Nice Classification (NCL) is the international system used to classify goods and services for trademark registration, managed by WIPO. NCL (13 2026), effective from January 1, 2026, introduces several structural changes that impact filing strategies, portfolio management, and trademark protection. Below is our comprehensive legal and operational guide.

Understanding the Nice Classification

Established under the Nice Agreement (1957), the Nice Classification (NCL) serves as the international reference framework to categorize goods and services into 45 classes: 34 for goods and 11 for services.

It ensures global harmonization and facilitates prior rights searches, oppositions, and registration procedures. Accurate classification is essential for securing legal protection and avoiding office refusals. Each edition is updated annually to reflect market and technological developments.

Trademark applications are assessed based on the version in force at the time of filing. However, discrepancies in wording can lead to observations during examination.

What’s New in NCL (13 2026)

Published in advance by WIPO, the NCL (13 2026) introduces major changes. Optical products (glasses, lenses, accessories) are transferred from class 9 to class 10, better reflecting their medical and therapeutic use. Class 9 now retains electronic and technological products, such as virtual and augmented reality glasses. As for class 10, it now includes corrective glasses, sunglasses, contact lenses, and associated accessories (cases, cleaning cloths, etc.).

Emergency and rescue vehicles (fire trucks, lifeboats) are transferred from class 9 to class 12, confirming their nature as vehicles.

Impact on Related Classes

• Class 35: Retail of glasses and optical accessories, including online sales.
• Class 44: Medical services related to optics, such as optometric consultations and glasses fitting.

This new edition also includes refinements and deletions to clarify terminology and reduce class overlaps, particularly in areas such as connected health and digital equipment.

Applications filed at the end of 2025 may be subject to close scrutiny if the wording does not align with NCL (13 2026). Portfolios covering optics, medical devices, or vehicles should therefore be reassessed to prevent protection gaps.

Impact on Existing Trademarks

The introduction of NCL (13 2026) will have a significant impact on trademarks that are already registered. While applications filed before 2026 will still be examined according to NCL (12 2025), companies must reassess their portfolios to identify trademarks affected by the class changes, particularly those related to optical products and emergency vehicles.
Outdated or incorrectly classified terms may lead to protection gaps. Therefore, it is essential to update existing registrations to ensure continued protection and avoid any ambiguity in the interpretation of rights.

Points of Attention for Applicants

Managing the transition to NCL (13 2026) is crucial. Applications filed before 2026 will continue to be examined under NCL (12 2025), while those filed from January 1, 2026 must strictly comply with NCL (13 2026).
To avoid delays, observations, or additional costs, it is recommended to conduct a portfolio audit to identify risks of double protection or outdated terms, as well as to update license or coexistence agreements in line with the new classes.

terminology, or vulnerabilities, and to adjust license or coexistence agreements according to the new class allocations.

Strategic Considerations for Trademark Portfolios

Anticipating and adapting to this new edition is crucial. Updating your filing strategy now, particularly in the affected sectors, will help secure your rights. Filing before the end of 2025 might be advantageous if the current classification offers broader protection.

In certain cases, complementary or defensive filings will be necessary if class transfers result in coverage gaps. To maintain enforceability, internal models and management tools should be updated, and third-party filings in newly impacted classes should be closely monitored.

Directive 2004/48/EC and relevant national laws remain key legal tools for enforcing reclassified rights.

Conclusion

The transition to NCL (13 2026) marks a pivotal moment for trademark portfolio strategy. Companies must anticipate class transfers, verify their current filings, and adjust their practices to maintain robust protection.

Dreyfus Law Firm assists its clients in managing complex intellectual property matters, offering tailored legal advice and end-to-end operational support to ensure comprehensive protection of intellectual assets.

The Dreyfus Law Firm partners with a global network of IP-specialized lawyers.
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Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

1. What is the Nice Classification?

It is the international system that organizes goods and services into 45 classes for trademark registration.

2. When will NCL (13 2026) take effect?

It will apply as of January 1, 2026.

3. What happens to pending applications?

They will be examined under NCL 12, but any discrepancies in wording may result in office actions.

4. What are the main changes?

The transfer of optical goods to Class 10 and emergency vehicles to Class 12.

5. Should you audit your trademark portfolio?

Yes, to ensure compliance and avoid protection gaps.

6. Can trademarks still be filed under NCL 12?

Yes, until December 31, 2025.

7. Are license agreements impacted?

Yes, agreements that reference specific classes should be updated.

8. Where can I find NCL (13)?

On WIPO’s NCLPub website, available in English and French.

Introduction

On April 10, 2025, the Paris Judicial Court (RG No. 22/10720) delivered a landmark ruling that marks a turning point for the fashion and luxury industries. The case opposed Hermès, a global icon of craftsmanship and haute couture, to an upcycling atelier that had transformed second-hand Hermès scarves into decorated denim jackets.

This case highlights the growing tension between sustainable fashion, which promotes reuse and transformation of existing products, and the strict protection of intellectual property rights. While upcycling is appealing for its ecological and creative dimensions, it cannot serve as an excuse to violate the exclusive rights attached to trademarks and original works. The ruling reaffirms that the ethical and aesthetic enhancement of a product must be carried out within a legal framework that respects intellectual property rights.

The Hermès case: facts and decision

1.1 Background of the case

An independent fashion house offered for sale jackets made from second-hand Hermès scarves through an online store and Instagram. Each item was promoted as unique, featuring the name “Hermès” in product descriptions and hashtags. The company held no authorization from the brand or its rights holders. Hermès filed a civil action for trademark infringement and copyright violation, claiming that its designs were being misappropriated for commercial purposes.

1.2 Sanctions imposed by the court

The Paris Judicial Court found both trademark and copyright infringement and ordered the immediate cessation of all sales. The company was ordered to pay substantial damages for both material and moral prejudice. The infringing jackets were seized and scheduled for destruction. The judges emphasized that the visibility of the brand and the unauthorized transformation of the scarves made the infringement manifest. This ruling now stands as a key precedent on upcycling in France.

Trademark and copyright: what protections apply

2.1 Protection of luxury brands

The Hermès trademark, first registered in 1936, benefits from enhanced protection under Articles L.711-1 and following of the French Intellectual Property Code. Any use of a name, logo or distinctive sign without authorization constitutes infringement, even if the sign is transformed in a creative way. The exhaustion of trademark rights does not apply to substantially modified goods. A scarf incorporated as a component into a jacket is considered a new product and does not fall under the exhaustion exception. Designers must therefore be highly cautious when using the Hermès name in upcycling projects.

2.2 Hermès scarves as original works

Each Hermès scarf is considered an original graphic work, protected by copyright from the moment of its creation. The choices of color, pattern, and composition demonstrate sufficient creative input to justify copyright protection. Altering a scarf to integrate it into a garment offered for sale constitutes an act of reproduction or public communication that requires the author’s or right holder’s prior authorization. In this case, the court rejected any claim of copyright exhaustion, considering that the transformation amounted to a new commercial exploitation.

The environmental argument is not enough

3.1 Upcycling as justification

The defendants argued that their creations aligned with sustainable fashion values and aimed to combat textile overconsumption. Their defense was based on the idea of giving second life to existing scarves and thereby reducing environmental impact. While this narrative may be persuasive to the public, it has no exculpatory effect under IP law. Courts primarily assess economic exploitation and damage to trademark and copyright owners. Good intentions are not sufficient to excuse infringement.

3.2 The court’s rejection of environmental claims

The Paris Judicial Court confirmed that environmental aims do not justify illegal commercial exploitation. The jackets were intended for sale, and their promotion relied on the Hermès name and reputation, without permission. French case law consistently holds that environmental objectives do not override intellectual property rights. For creators, this means that any upcycling initiative must be preceded by legal due diligence; otherwise, the risk of liability remains significant.

What case law says about the use of brand elements

4.1 Exhaustion of rights and its limitations

The exhaustion doctrine allows for the resale of genuine products once placed on the market by the trademark owner or with their consent. However, this principle does not apply when the product has been substantially altered. In this case, transforming scarves into jackets was deemed sufficient to disqualify the exhaustion exception. This interpretation protects brand owners from dilution and unauthorized repurposing of their image. Creators must understand and apply this principle to avoid infringement.

4.2 Permitted use under the French intellectual property code

Article L.713-6 paragraph 3 of the French Intellectual Property Code authorizes limited use of a trademark only when strictly necessary to describe the product. In this case, the company used “Hermès” in product titles, descriptions, and hashtags for marketing purposes. This use was found to be excessive and aimed at capitalizing on the brand’s reputation. Creators engaging in upcycling must ensure that any reference to a brand is neutral, descriptive, and proportionate, to avoid infringing trademark rights.

How to create legally with luxury textiles

5.1 Best practices for lawful upcycling

• Use neutral fabrics: without logos or recognizable elements.
• Obtain proper authorization: when using any protected element.
• Avoid visible references: remove the brand name from all creations.
• Limit communication: do not promote products using the brand’s reputation.

5.2 Consulting experts before commercialization

• Consult an IP attorney: to legally secure the project.
• Audit the creations: to identify risks in advance.
• Prevent legal disputes: by anticipating issues early.
• Pursue official partnerships: to combine creativity with legal compliance.

Conclusion

The Hermès case makes it clear that upcycling does not exempt creators from complying with intellectual property rights. Luxury trademarks and original works benefit from robust protection under French law, which prevails over ecological or creative justifications. Designers who wish to transform branded goods must seek prior authorization or adapt their practices accordingly. Legal foresight, supported by expert advice, is essential to combining innovation with legality.

Dreyfus & associés relies on a global network of lawyers specializing in intellectual property, enabling the firm to support its clients in cross-border creative ventures while ensuring compliance with IP rights worldwide.

Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

1. Can I transform a Hermès scarf for personal use?
Yes, provided the use remains strictly private and non-commercial.

2. Is commercial upcycling a legal exception under IP law?
No, there is no exception for upcycling under the French Intellectual Property Code.

3. Can I mention Hermès on my website if I use its scarve?
Only in a neutral, purely descriptive way, without promotional intent.

4. How can I avoid infringement when upcycling?
By removing logos, using unprotected fabrics, or securing a proper license.

5. Is a partnership with the brand required for resale?
Yes, if your creations include identifiable elements of the brand, authorization is necessary.