The Palestinian territory is the subject of much controversy, however, trademark rights are not as insignificant as they might seem.
There are several reasons why the Palestinian market should be considered in a Middle East brand protection strategy. In fact, despite the separation of the Israeli and Palestinian legal systems, it is almost impossible to separate the two markets into two jurisdictions.
How to protect your trademark rights in Palestine?
There are a number of elements that illustrate the obvious geographical and commercial links that confirm that, in order to ensure full protection of trademark rights in the Middle East, it is essential to register trademarks not only in Israel, but also in Palestine. For Palestine, it is necessary to register trademarks in both the West Bank and Gaza, which have separate trademark jurisdictions. Naturally, Israeli and Palestinian jurisdictions require separate registration in each territory in order to fully protect and enforce trademark rights. However, obtaining protection in Israel is far from providing full protection if the mark has not been registered in Palestine. The opposite is also true.
So, what are the reasons for registering trademarks in both Israel and Palestine?
This is due to the geographical situation between Israel and Palestine. The economic reality is clear: 80% of Palestine’s foreign trade is with Israel.
This necessarily has an impact on the circulation of goods and services in the region. It is therefore advisable to register trademarks in both Israel and Palestine if you want to protect your trademark in the Middl East.
Thus, given the obvious geographical and commercial links between the two states, it seems crucial to have valid registrations in three different jurisdictions, namely Israel, the West Bank and the Gaza Strip, in order to obtain trademark rights in the region and ensure full protection.
Following the UDRP ‘s new gTLD program, new Rights Protection Review Mechanisms (RPM) have been implemented to protect trademark holders, such as the Uniform Rapid Suspension System (URS) procedure.
ICANN has now decided to address changes suggested by trademark holders and intellectual property experts regarding the UDRP. For instance, one of these suggestions is that a domain name should be considered abusive if it is registered OR if it is used in bad faith, instead of requiring that both these conditions are met. The idea is to lighten the burden of proof on the rights owner to take into account a more up-to-date reality. Another suggestion is to provide for an accelerated procedure in case of abusive conduct and to get a decision more rapidly if the defendant fails to respond to the complaint.
It has also been proposed to provide for a presumption of bad faith if the registrant has lost three UDRP complaints and to require any repeat offender to pay a response fee to defend the case. The central issue at this stage of the study is to understand the extent to which the UDRP principles should be changed in favour of trademark owners, while knowingt hat it may weaken the UDRP principles.
A right or legitimate interest in a domain name may be demonstrated by its use in the context of a bona fide offer of goods or services. This assessment requires to take into account how the domain name has been used, but also the space-time framework: When was the domain name registered? By whom? In which country?
Founded in 2003, Ba & sh is a French company operating in the field of design, manufacturing and distribution of women’s ready-to-wear clothing and fashion accessories.
Having detected the registration of the domain names <bashshitever.com> registered in 2014 and <bashclothing.co> in 2020, Ba & sh filed a complaint with the WIPO Arbitration and Mediation Center in order to obtain the transfer of these domain names.
While the construction of the <bashshitever.com> domain name is somewhat intriguing, the fact that the <bashclothing.co> name contains the term “clothing” may have led Ba & sh to consider that its rights were being infringed.
In any event, since the domain names include the sign “BASH” except for the ampersand, the panellist acknowledges a likelihood of confusion.
Nevertheless, the panellist deems that Respondent has chosen these domain names independently of Complainant’s trademark and has used them in the context of a bona fide offer of its goods on the corresponding websites.
Indeed, Respondent is from Malaysia, where the company was founded in 2015, while Ba & sh has provided no evidence of actual use of its BA & SH mark in that territory. Khor Xin Yu, Respondent, explains that he co-founded “BASH CLOTHING” in 2013 when he was 18 years old and that the mark was also used in Singapore in 2017. Initially, the sign used was “Bash Shit Ever”, later changed in 2020 to “Bash Clothing” as part of a branding update.
Similarly, Respondent provided an explanation and documentation justifying the selection of the sign BASH because of the meaning of the dictionary term “bash”. Finally, Respondent used a logo that differs from that of Complainant.
Complainant has not shown that Respondent registered and used the disputed domain names in bad faith.
Indeed, when the first disputed domain name <bashshitever.com> was acquired by Respondent, Complainant had been operating in France and worldwide for about 11 years and had owned an international trademark for about 7 years, designating Malaysia. However, Complainant has not presented any evidence of actual use of its BA & SH trademark in Malaysia at the time of registration of the first disputed domain name.
In addition, a Google search for “bash” shows several results unrelated to Complainant or its trademark. Respondent has also provided a plausible explanation as to why he chose the term “bash”, an English dictionary term related to the idea of a party insofar as its initial target was female students.
Finally, although the parties operate in the same market segment (i.e. ready-to-wear and accessories), Respondent’s use of the disputed domain names does not show an intention to compete with Complainant and its trademark, given the different logos/layouts, the significantly lower prices at which the Respondent’s clothing is offered for sale, and the absence of any information on Respondent’s website that would lead users to believe that the website is operated by Complainant or any of its affiliated entities.
The complaint is, therefore, dismissed.
Ba & sh should have investigated Respondent’s motives before initiating a UDRP proceeding, including whether its trademark was known in Respondent’s country when the first domain name was registered. It should also have determined for how long Respondent had been using the “Bash” sign for fashion activities. An investigation could have revealed these elements. Respondent explains that he first marketed the Bash clothing on social networks. And, depending on the answers to these two questions, write a proper letter to the defendant
La notoriété d’une marque ne suffit pas à garantir le transfert d’un nom de domaine similaire
Rémy Martin & C fait partie du groupe Rémy Cointreau, une grande entreprise de cognac. Fondée en 1724, cette maison est l’un des principaux acteurs de la production et de la fabrication du cognac en France.
Le groupe détient un large portefeuille de la notoriété d’une marque comprenant les éléments verbaux « louis » et « louis xiii » en lien avec son cognac Louis XIII le plus célèbre et le plus cher.
Suite à la détection du nom de domaine < louisthirteen.com >, E. Remy Martin & C a déposé une plainte auprès du Centre d’Arbitrage et de Médiation de l’OMPI, afin d’obtenir le transfert de ce nom de domaine.
Le nom de domaine est composé de « louis » qui est identique à la première partie de la marque et est suivi de « treize ». Un nom de domaine qui consiste en une traduction d’une marque est généralement considéré comme identique ou similaire à cette marque . « Treize » est la traduction littérale en anglais du chiffre romain « xiii », comme l’a reconnu l’expert.
Or, en examinant les différentes pages du site Internet de l’intimé, le panéliste constate que le nom est utilisé pour une véritable offre de produits en marque blanche, notamment des masques de protection contre les bactéries et les virus dans le cadre de la lutte contre le Covid-19. Bien que le Défendeur n’ait pas répondu à la plainte, des mentions légales sont présentes sur le site et une recherche rapide sur Internet des sociétés britanniques montre un enregistrement de la société Louis Thirteen Group Limited en juin 2019, soit 18 mois avant le dépôt de la plainte.
Même si la marque antérieure bénéficie d’une large protection, l’expert précise qu’il n’est pas évident que le Plaignant puisse s’opposer à l’utilisation d’un nom commercial « louis thirtheen » pour des activités aussi différentes des siennes.
La lourde charge de la preuve incombant au Plaignant pour s’opposer à l’usage de la notoriété d’une marque.
Dans l’Union européenne et au Royaume-Uni, le titulaire d’une marque notoirement connue ne peut s’opposer à l’utilisation d’une marque similaire/identique que si l’utilisation par le tiers tire indûment profit de ladite marque ou porte atteinte au caractère distinctif ou à la renommée. de cette marque.
L’expert constate que le Plaignant a manqué à sa charge de la preuve dans la mesure où il existe une possibilité réelle que le nom correspondant au nom de domaine ait été utilisé dans le cadre d’une offre de bonne foi de biens et de services antérieure à la notification du litige.
Dès lors, l’expert considère qu’il n’est pas prouvé que l’intimé n’ait aucun droit ou intérêt légitime sur le nom de domaine. Ainsi, il n’a pas à établir que le nom de domaine a été enregistré et utilisé de mauvaise foi.
La possibilité de saisir la justice reste ouverte
Pour les motifs qui précèdent, la plainte est rejetée. Cependant, l’expert déclare que cette décision n’affecte pas le droit du Plaignant d’intenter une action en contrefaçon de marque contre le Défendeur devant les tribunaux.
Une recherche rapide sur Internet aurait dû permettre au Plaignant d’identifier l’existence de Louis Thirteen Group Limited et de conclure que l’UDRP n’était pas un for approprié pour ce litige, qui devait être abordé de manière globale et non limité au seul nom de domaine. .
Par ailleurs, Louis XIII est le nom d’un roi de France et la marque antérieure n’est donc pas fantaisiste , élément que le panéliste a pu prendre en compte dans son analyse, même s’il ne l’a pas mentionné explicitement.
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.
Since the entry into force of the General Data Protection Regulation (GDPR) in 2018, access to domain name registration data via WHOIS has been profoundly disrupted. Faced with increasing opacity adversely affecting trademark owners, cybersecurity professionals, and judicial authorities, ICANN has undertaken a structural overhaul of its data access architecture. From the SSAD project to the RDRS, alongside the adoption of the RDAP protocol and the new Registration Data Policy, the normative framework is being reshaped, with concrete and immediate implications for all intellectual property stakeholders.
WHOIS in the face of the GDPR: a structural reassessment
For more than thirty years, the WHOIS database constituted the reference tool for identifying domain name registrants. Following the entry into force of the GDPR in 2018, ICANN required registrars to remove or mask personal data of registrants in the public WHOIS database, giving rise to what practice has termed the “WHOIS blackout.”
For intellectual property practitioners, the impact is both immediate and lasting: the new opacity surrounding registrant identity directly complicates the enforcement of infringement rights. Henceforth, the only option consists in submitting a request to the relevant registrar, without any assurance as to the outcome, processing timelines, or the existence of a harmonized procedure.
This development places ICANN in a particularly sensitive position: it must reconcile its mission to preserve the stability and security of the global DNS with compliance with legal obligations relating to data protection, the extraterritorial scope of which is now well established. The institutional response to this challenge has been constructed through successive stages, each seeking to refine and further structure the framework.
The SSAD: A normative ambition hampered by its own complexity
Operationally, this mechanism envisages, inter alia, the implementation of a unified process for creating and verifying requester accounts, a standardized request submission mechanism, and partial automation of disclosures in certain limited circumstances, in order to reduce the identification burden on contracted parties.
Obstacles leading to suspension
Despite its conceptual merit, the SSAD encountered prohibitive economic and technical realities. According to ICANN’s Operational Design Assessment, the implementation of the SSAD could require between USD 20 and 27 million in development costs, and more than USD 100 million annually in operating costs depending on adoption rates. The development of the system, entrusted to an external provider, was estimated at between 31.5 and 42 months, following two years of preliminary work by ICANN’s internal review team.
In February 2023, nearly five years after the GDPR entered into force, the SSAD project was officially placed on hold. ICANN then shifted to a more incremental and progressive approach, less ambitious but deployable in the short term: the RDRS.
The RDRS: the operational bridge until 2027
Architecture and functioning of the service
The RDRS (Registration Data Request Service) is a free, centralized system, available on a global scale for managing requests for access to non-public registration data of gTLDs (generic Top-Level Domains). It operates as a platform connecting, on the one hand, requesters demonstrating a legitimate interest and, on the other hand, ICANN-accredited registrars that have chosen to participate.
In practice, the service provides a unified framework for submitting requests, allows supporting legal documentation to be attached, enables the storage of reusable request templates, tracks case progress, and routes requests directly to participating registrars.
Access to the RDRS, is restricted to certain categories of users, including public authorities , intellectual property practitioners, consumer protection actors, cybersecurity specialists, and representatives of public bodies.
Practical Example: A law firm specializing in intellectual property, mandated to identify the registrant of a domain name reproducing a well-known trademark, may submit via the RDRS a request for access to registration data accompanied by relevant supporting evidence (industrial property title, evidence of infringement). The registrar must then respond within a certain timeframe, although disclosure of the requested data is neither automatic nor guaranteed.
Structural Limitations of the System
The RDRS aims to standardize the request submission procedure without harmonizing decisions relating to data disclosure. Each registrar retains decision-making autonomy and conducts its own legal assessment on a case-by-case basis in accordance with applicable law and ICANN policies.
Moreover, as participation is not mandatory, the system covers only a portion of domain names. In this respect, the Governmental Advisory Committee (GAC) indicated during ICANN84 in Dublin that the RDRS provides access, at best, to approximately 60% of gTLDs.
Finally, by decision dated 30 October 2025, ICANN’s Board of Directors extended the system until December 2027, pending the work of the ICANN community aimed at defining a permanent standardized access and disclosure mechanism, such as the SSAD or any successor system.
This extension establishes a hybrid environment for the next two years: rights holders and investigative services retain an operational channel to submit requests; ICANN’s Board encourages the broadest possible use by requesters and registrars without imposing a general obligation; in parallel, ICANN has launched a public consultation on a roadmap addressing structural shortcomings, including access to data via proxy services, timelines applicable to urgent requests, and authentication mechanisms.
The registration data policy and the RDAP protocol: the new normative foundation
The Registration Data Policy effective as of 21 August 2025
The Registration Data Policy (RDP), adopted by ICANN and effective as of 21 August 2025, establishes a harmonized and structured normative framework governing the collection, processing, publication, and disclosure of domain name registration data by registrars and registry operators. It replaces the interim measures implemented in 2018 following the entry into force of the GDPR and aims to standardize data management practices across all gTLDs.
The main obligations introduced by the RDP include in particular:
• Limited publication: only non-personal data may be made publicly available via WHOIS/RDAP;
• Controlled disclosure: any access request must be justified, documented, and processed through a standardized procedure;
• Accuracy and reliability: regular verification of registrant information;
• Retention and security: protection and retention of data for the minimum period defined by ICANN (two years);
• Accountability and compliance: adequate documentation, technical measures, and cooperation with ICANN audits.
The RDAP protocol
Since 28 January 2025, the RDAP (Registration Data Access Protocol) has become the reference mechanism for accessing registration data for generic top-level domains, intended to replace the WHOIS system, whose services are being progressively phased out.
Unlike WHOIS, which is based on plain text responses, RDAP relies on standardized and structured web formats enabling automated data processing by information systems. It also incorporates advanced functionalities, particularly in terms of internationalization, secure access to data, service discovery, and differentiated access to registration data.
Strategic implications for IP rights holders
The GDPR logic at the core of disclosure decisions
For European stakeholders, any disclosure request via the RDRS falls within the scope of Article 6(1)(f) of the GDPR, relating to legitimate interest.
In accordance with ICANN’s Temporary Specification for registration data, registrars may grant access to personal data to third parties demonstrating a legitimate interest.
However, such access is not automatic: it requires a balancing test between the requester’s interest and the fundamental rights and freedoms of the domain name registrant. Disclosure may only occur where the legitimate interest invoked does not disproportionately infringe those rights.
The temporary policy provides that registrars must grant reasonable access to personal data to third parties demonstrating a legitimate interest, unless the interests or fundamental rights of the domain name registrant prevail over those of the requester, in accordance with Article 6(1)(f) GDPR.
Towards a future SSAD reinforced by the NIS2 directive
The NIS2 Directive, with its reference to “legitimate requesters,” strengthens the likelihood that a finalized version of the SSAD will become an official ICANN policy. The envisaged prospects include prior accreditation of requesters, mandatory participation of registrars—unlike the voluntary nature of the RDRS and differentiated access rights depending on the requester’s profile (judicial authorities, law enforcement, IP rights holders).
Key Takeaways:
• The RDRS is operational until December 2027, but its coverage remains partial (~60% of gTLDs);
• The Registration Data Policy of 21 August 2025 now constitutes the new contractual framework for all registrars;
• The RDAP is intended to progressively replace WHOIS for access to domain name registration data, with a key milestone set on 28 January 2025;
• A permanent system (SSAD or successor) remains to be developed; its final architecture will be determined during the RDRS extension period.
Conclusion
The WHOIS data access system is undergoing a profound transformation, the final contours of which will likely only be determined by 2027–2028. Between the normative ambition of the SSAD, the operational pragmatism of the RDRS, and the regulatory consolidation driven by the Registration Data Policy and the RDAP protocol, ICANN is progressively building a GDPR-compliant registration data access ecosystem while seeking to preserve the legitimate interests of rights holders.
For intellectual property professionals, this transitional period requires a dual vigilance: mastering the RDRS procedures currently available while anticipating the normative developments that will reshape data access in the coming years.
Cybersecurity, the fight against cybersquatting, and online trademark enforcement depend directly on this.
Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
What risks do companies face if they cannot identify a domain name registrant?
The lack of direct access to the identity of a domain name registrant exposes companies to several operational and legal risks. It significantly delays infringement or cybersquatting actions by complicating the identification of the opposing party and the collection of evidence. This opacity may also delay interim measures (blocking, domain transfer) and increase costs associated with technical or judicial investigations. Ultimately, it weakens companies’ ability to effectively protect their intangible assets and to respond swiftly to online infringements.
Are WHOIS data access rules identical across domain name extensions (.com, .fr, .eu)?
No, access rules vary depending on registries and the legal frameworks applicable to each extension. While gTLDs (.com, .net, etc.) are governed by ICANN policies, ccTLDs (.fr, .eu, etc.) are subject to specific national or regional regulations. For example, certain European extensions apply stricter personal data protection rules, while others provide regulated access mechanisms for rights holders. This heterogeneity requires a case-by-case analysis in any international protection strategy.
Do judicial authorities have specific means to access non-public data?
Yes, judicial authorities and certain administrative authorities have specific mechanisms enabling them to obtain access to non-public data. Such access may occur in the context of judicial proceedings, requisitions, or official requests addressed to registrars. In some cases, international cooperation or sector-specific regulatory frameworks facilitate such access. However, these mechanisms remain regulated and subject to strict requirements in terms of proportionality and data protection.
How can companies adapt their trademark protection strategy in light of limited access to WHOIS data?
Companies must adopt a more proactive and structured approach. This includes strengthening domain name monitoring systems, systematically documenting infringements (screenshots, history, content), and using available channels such as the RDRS or alternative dispute resolution procedures (UDRP, URS). Furthermore, resorting to complementary intellectual property strategies (extended trademark filings, defensive domain name registrations) helps anticipate risks. Finally, support from experts becomes essential to navigate a more fragmented legal environment.
Will ICANN developments impact the fight against cybercrime and online fraud?
Yes, these developments have a direct impact on the effectiveness of actions against cybercrime. Limited access to data complicates the rapid identification of perpetrators of unlawful activities, potentially delaying investigations and remediation measures. However, the mechanisms under development aim to restore regulated access for legitimate actors, particularly for security and user protection purposes. The balance sought between data protection and security requirements will ultimately determine the effectiveness of mechanisms to combat online fraud.
This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific situations or to constitute legal advice.
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.
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Written by Dreyfus22/08/2022 
The Palestinian territory is the subject of much controversy, however, trademark rights are not as insignificant as they might seem.
On April 23rd 2019, the 
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.