News

Introduction

The proliferation of dupes imitation products that mimic the aesthetics of branded goods has become a major concern for the fashion, luxury, cosmetics, and electronics industries. These items, widely sold online through marketplaces and social media, not only capture part of the market but also dilute brand value and erode consumer trust.

Fighting dupes today requires more than traditional anti-counterfeiting actions. It calls for a comprehensive strategy combining IP registrations, digital monitoring, swift enforcement measures, and an intelligent use of the new EU design reform, which modernizes protection and enforcement tools.

Understanding dupes: nature, risks, and challenges

A dupe is an imitation product that replicates the appearance or style of an original item without being an exact counterfeit. Unlike traditional counterfeits, dupes often operate in a gray zone:

• Mimicking the visual identity of the original (shape, patterns, packaging), sometimes with slight modifications to avoid direct legal exposure;
• Leveraging brand awareness by presenting themselves as “inspired by” the original, particularly through viral content on TikTok and Instagram;
• Undermining brand value by associating inferior quality with the original product in the eyes of consumers.

Dupes are particularly prevalent in:

• Fashion and accessories (bags, sneakers, jewelry);
• Cosmetics and perfumes (look-alike bottles and packaging);
• Consumer electronics (earbuds, smartwatches, branded-style accessories).

They represent a commercial, reputational, and sometimes safety risk, especially in sectors where consumer trust is critical.

Deploying an effective anti-dupe strategy

A robust anti-dupe plan relies on three pillars: legal protection, market monitoring, and rapid enforcement.

2.1 Securing intellectual property rights

• Register all designs with the EUIPO and/or national offices for significant creations;
• File 3D or semi-figurative trademarks, especially for iconic packaging;
• Document originality through dated prototypes, photos, and digital proof to support enforcement actions.

Without properly secured rights, fighting dupes becomes significantly harder.

2.2 Implementing proactive and multi-channel monitoring

Modern dupes spread across digital ecosystems:

• Marketplaces like Amazon, AliExpress, and Vinted;
• Social media such as TikTok, Instagram, and Pinterest, which accelerate trends;
• Search engines and sponsored ads, where dupes may appear before the original.

An efficient monitoring system combines:

• Automated detection tools (reverse image search, web crawlers);
• Customs alerts to intercept suspicious imports;
• Tracking of influencers promoting look-alike products.

2.3 Using all enforcement tools

Once a dupe is identified, brands can act through:

1. Online takedowns
   • Using DMCA or platform-specific IP complaint tools;
   • Rapid removal is often possible if designs are properly registered.
2. Customs interventions
   • Filing a Customs Action Request (AFA) enables seizure of infringing goods at the border.
3. Targeted legal actions
   • Civil (design or trademark infringement, unfair competition) to obtain injunctions and damages;
   • Criminal, where organized or large-scale dupe networks are involved.
4. Brand communication
   • Educating consumers and distributors reduces tolerance for dupes and mitigates reputational risk.

Leveraging the EU design reform

The 2025 EU design reform modernizes protection mechanisms and directly strengthens anti-dupe strategies.

3.1 Strengthened protection adapted to digital markets

• Clearer definitions of “design” and “complex product”;
• Full protection for digital and 3D designs;
• Faster and cheaper online registration processes.

3.2 Simplified cross-border enforcement

• Single actions can now cover multiple EU Member States;
• Harmonized, accelerated procedures make it easier to block dupes before they saturate the market.

3.3 Synergy between anti-dupe measures and the reform

By combining:

• Systematic design and trademark registrations,
• Active digital surveillance,
• Use of EU-wide enforcement tools,

companies can deploy a cohesive, effective response to the growing dupe phenomenon.

Conclusion

Dupes are a persistent and fast-evolving threat to brand value and creative industries. Through a combination of proactive IP management, market monitoring, rapid enforcement, and the strategic use of the EU design reform, businesses can protect their creations, maintain market integrity, and strengthen their competitive position.

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

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

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is a dupe?
An imitation product that mimics a brand’s style without being an exact copy.

2. Why is it a problem?
Dupes devalue the brand, create confusion, and harm its reputation.

3. How can you protect your creations?
Register your designs, document originality, and monitor the market.

4. How does the EU design reform help?
It simplifies filings, strengthens protection, and enables faster EU-wide actions.

5. What are the key steps to fight dupes?
Register, monitor, and act quickly (takedown, customs, legal actions).

Introduction

In today’s digital landscape, businesses and individuals often face defamatory or unlawful content that is disseminated online, frequently hosted abroad. While the global removal of such content can be complex, geo-blocking, which involves restricting access to content based on the user’s geographical location, has become an increasingly effective and adopted solution. In its ruling of June 13, 2025, the Paris Court of Appeal acknowledged that, under certain conditions, geo-blocking content from France can be considered a removal, thus fulfilling the legal requirements for content withdrawal. This legal development offers a way to balance the protection of individuals’ and businesses’ rights against online infringements, while addressing territorial concerns in a globalized digital environment

Definition of geo-blocking

1.1 What is geo-blocking ?

Geo-blocking is a technical measure used to restrict access to online content based on the user’s geographic location, typically identified through their IP address. It allows a website or specific page to be blocked for users connecting from a particular country. This mechanism is widely used in fields such as intellectual property rights, audiovisual broadcasting, or to comply with territorial regulatory obligations. Legally, it serves as a strategic tool to limit access locally without requiring the global removal of the content. Its use is becoming increasingly common in cases involving online defamation or reputational harm.

1.2 How is it used in digital litigation ?

Geo-blocking plays a critical role in resolving cross-border disputes involving unlawful online content. When content infringing protected interests under French law is hosted abroad, its removal can be legally or technically difficult. Geo-blocking allows access to be limited to users in France, thereby neutralizing the harmful effects within national borders. It offers a pragmatic alternative to full takedown, especially where international procedures are unrealistic. As a targeted risk mitigation measure, it is increasingly recognized by French courts as a legally sufficient response.

Geo-blocking recognized as a legal form of removal

2.1 The legal basis : Article 6-I-8 of the french LCEN

Article 6-I-8 of the French Law on Confidence in the Digital Economy (LCEN) requires hosting providers to promptly remove any manifestly unlawful content once notified. Long interpreted as requiring complete takedown, this obligation is now evolving toward a territorial approach. The central question is : Can content that is only inaccessible from France be considered “removed” under French law ? In a cross-border digital environment, the affirmative response given by the Paris Court of Appeal in June 2025 marks a major shift. It confirms that geo-blocking, if effective, can fulfill the legal requirement of removal.

2.2 The june 13, 2025 ruling : a jurisprudential turning point

In a case between Eoservices and the site Signal-arnaques.com, the Paris Court of Appeal ruled on June 13, 2025, that geo-blocking access to content from France qualifies as removal, provided it renders the content inaccessible to French users. The defamatory comments, initially removed then reposted, had been blocked through IP filtering. The Court found that effective inaccessibility within France was sufficient to stop the infringement, in accordance with the LCEN. This ruling marks a significant evolution, establishing a territorial interpretation of the legal removal obligation.

Legal requirements for effective geo-blocking

3.1 The harm must be localized in France

To be legally valid, geo-blocking must address harm that is specifically suffered within French territory. The infringing content must either be in French, target a French audience, or affect a business operating in France. The damage must be objectively demonstrable, such as reputational harm, customer loss, or misdirected traffic. If the harm is not clearly localized, geo-blocking alone will be insufficient. The claimant must document the territorial impact, which is essential for the measure to be legally acceptable.

3.2 The blocking must be technically reliable and effective

French case law requires that geo-blocking genuinely prevents access from France using ordinary means. If content remains easily accessible via VPNs or standard browsers, the measure may be deemed ineffective. Courts expect proof of technical reliability, such as bailiff reports or expert audits using multiple French IPs. The IP filtering must be strict, active, and verifiable, or the measure will not meet the standard for terminating an infringement under French law.

Practical implications for victims of defamatory content

4.1 An Effective Defensive Strategy in a Cross-border Context

• Strategic solution: Geo-blocking provides a way to limit the impact of defamatory content hosted abroad.
• Proposed from the pre-litigation stage: It offers an alternative to avoid burdensome legal procedures while achieving tangible results on French soil.
• Less intrusive than global takedown: This measure is more flexible and less confrontational, facilitating negotiations with the content publisher.
• Proportionality and adaptation: It fits into a proportionality framework, addressing the realities of the modern digital environment.
• Legal effectiveness: When technically implemented, it meets the requirements of French courts.

4.2 The heightened evidentiary burden for the claimant

To justify geo-blocking, the claimant must present a structured and comprehensive body of evidence. This includes proving the content is unlawful, establishing clear harm within France, and demonstrating that the blocking measure is technically operative. Bailiff reports and technical audits are often necessary. These evidentiary demands underscore the importance of working with an experienced legal counsel in IP and digital law. Proper documentation is critical to preempt challenges and secure legal recognition of the measure.

Conclusion and outlook

The ruling of June 13, 2025, confirms that geo-blocking content from France may be legally treated as removal, provided it effectively prevents access from national territory. This solution reconciles the territorial limits of French law, freedom of expression abroad, and the need to effectively protect corporate reputation.
It offers a powerful strategic tool for brands facing harmful online content hosted outside France, in a context where digital sovereignty is increasingly essential.

The Dreyfus Law Firm supports businesses in protecting their interests in the face of legal challenges arising from an ever-evolving digital landscape.

Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

1. Do courts always recognize geo-blocking as equivalent to removal?
No. Geo-blocking is accepted only if it is effective, targeted, and addresses harm localized in France. It is not a valid substitute in cases of criminal or global infringement.

2. How can I prove that geo-blocking is operational?
You must provide evidence such as bailiff reports or technical audits showing the content is no longer accessible from French IP addresses.

3. Can I still request global removal of content?
Yes. Geo-blocking is an alternative or complementary measure, but full removal remains relevant, especially if the content damages your brand internationally.

4. Does geo-blocking work on social media platforms?
Partially. Some platforms allow geo-filtering, but effectiveness depends on platform policies and the nature of the content. A formal or judicial request may be needed.

5. Is this solution suitable for trademark infringement cases?
Yes. If unauthorized use of a trademark is hosted outside France, geo-blocking can limit commercial harm on the French market while broader enforcement is pursued.

Introduction

Artificial Intelligence (AI) has transformed creative industries by enabling the autonomous generation of content, whether in design, writing, music, or even software development. This ability of AI to produce creative works raises complex intellectual property (IP) questions. To avoid conflicts, it is essential to contractually define the rights and responsibilities of the parties involved in the creative process. This article examines the key clauses to include in contracts to secure the use of AI in these processes.

Why use AI in a creative process?

AI offers numerous advantages for creators. It enables the generation of innovative ideas by analyzing vast amounts of data, thus opening up new creative possibilities. Additionally, AI increases productivity by automating repetitive tasks, such as content generation, design adjustments, or music composition. This efficiency allows creatives to focus on more strategic aspects of their work. AI also offers the ability to personalize works based on individual client needs, which is particularly useful in sectors such as fashion, marketing, and entertainment.

Despite these benefits, the use of AI in creative processes must be accompanied by legal precautions to avoid potential risks.

Risks associated with the use of AI in a creative process

One of the main risks lies in ownership and authorship issues. Determining who holds the rights to an AI-generated work is not always clear. In many jurisdictions, intellectual property law has not been designed for AI-generated works, which can lead to conflicts over copyright ownership.

The risks associated with using AI include:

• Ownership and authorship issues

Determining who owns the rights to an AI-generated work is a grey area. The creator of the AI or the user of the AI may claim ownership, but IP laws in many jurisdictions were not designed with AI in mind.

• Data privacy issues

AI often requires large datasets to function effectively. Using data without proper consent or failing to anonymize personal data could lead to violations of privacy laws, such as GDPR in Europe.

• Bias and ethical considerations

AI systems can perpetuate biases present in training data. AI-generated works may inadvertently reinforce stereotypes or fail to meet ethical standards, potentially leading to public backlash or legal consequences.

• Infringement risks

AI-generated content may unintentionally infringe on existing works, resulting in legal conflicts over copyright or trademark violations.

Who owns the rights to AI-generated content?

In traditional creative processes, the creator of a work holds the associated rights. However, in the case of AI, the situation is more complex. The creator of the AI tool, the user, or even a third party may claim ownership of the generated work.

Generally, ownership rights should be clearly defined in a contract. It should specify whether the AI user, the AI creator, or another party owns the rights to the generated works. It is also important to indicate how these rights can be transferred or licensed to avoid ambiguity or legal conflicts.

The uncertainty surrounding the rights to AI-generated content was recently illustrated by a landmark case: Getty Images v. Stability AI, dated June 9, 2025. In this case, Getty Images one of the world’s leading providers of licensed photography filed lawsuits against Stability AI, the creator of the generative model Stable Diffusion, before both UK and US courts.

Getty accuses Stability AI of having used, without authorization, several million of its copyright-protected images to train its AI model. The large-scale use of these materials some of which were reportedly recognizable in the AI-generated outputs, with certain visuals even displaying the “Getty Images” watermark lies at the heart of a complex legal dispute, based notably on claims of copyright infringement, trademark violation, and breach of the contractual terms governing access to Getty’s databases.

However, at the beginning of the hearing on June 9, 2025, Getty Images partially revised its procedural strategy by dropping its claims of direct copyright infringement before the UK courts. The action now focuses on three grounds: trademark infringement, passing off, and secondary liability arising from the availability of a generative model trained on protected works.This strategic shift reflects the legal difficulty of qualifying AI-generated images as direct infringements when they do not identically reproduce the source images. Nevertheless, the judges established an innovative judicial framework by acknowledging that AI models even if they do not literally store the works used in their training may still fall within the scope of the Copyright, Designs and Patents Act 1988 (CDPA) when they result in outputs that harm the rights holders.

Key clauses to secure the use of AI and avoid intellectual property conflicts

To secure the use of AI in a creative process, several clauses must be included in the contract to avoid legal conflicts concerning intellectual property.

4.1. Ownership and copyright

The contract must clearly specify who owns the copyright to AI-generated works. Additionally, it is important to determine under what conditions these rights are transferred, particularly after payment for the creative work. This clarity helps avoid disputes over ownership of creations.

4.2. Use of data and confidentiality

AI tools often require access to data for learning and functioning. The contract must specify the terms of data use, including consent, confidentiality, and personal data protection. It is crucial to comply with regulations such as GDPR to avoid legal risks related to data management.

4.3. Liability and infringement risks

The contract should also clearly define the responsibilities of the parties in the event of copyright infringement or violations. It should establish the conditions under which one party would be liable for damages or legal disputes related to AI-generated works. It is also important to specify guarantees regarding non-infringement to protect the interests of all parties involved.

4.4. Ethics and mitigating bias

To prevent the risk of bias or discrimination in AI-generated works, the contract may include a clause for regular audits of the AI’s output. It is crucial that the AI systems used adhere to ethical standards and avoid reinforcing stereotypes or prejudices, which could harm the company’s reputation and lead to legal consequences.

4.5. Confidentiality and non-disclosure

Given the sensitive nature of information related to AI and the generated works, it is essential to include confidentiality clauses in the contract. These clauses will protect sensitive information exchanged between the parties and ensure that no confidential data is disclosed without prior authorization.

Conclusion

Using AI in creative processes offers considerable opportunities but requires rigorous legal management to avoid intellectual property conflicts. By including necessary clauses regarding ownership, data use, liability, ethics, and confidentiality, parties can ensure that AI use is secure, transparent, and legally sound.

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. Who owns the rights to AI-generated content?
Ownership typically depends on the terms of the contract, which may assign rights to the AI user, the AI creator, or another party.

2. What are the risks associated with using AI in creative processes?
Risks include ownership conflicts, data privacy violations, ethical concerns regarding AI biases, and potential IP infringements.

3. How can I avoid property conflicts related to AI?
It is important to clearly define ownership of copyright in the contract and ensure that the AI does not generate content that infringes existing rights.

4. What are the legal implications of using AI in creative processes?
Legal implications mainly concern intellectual property, data protection, liability for AI-generated results, and ethical considerations.

5. Can AI create works protected by copyright?
In many jurisdictions, works created by AI are not automatically protected by copyright unless a human author is involved in the creative process.

Introduction

In a rapidly evolving agricultural landscape, the creation of new plant varieties serves as a strategic tool for food sovereignty, agronomic innovation, and environmental sustainability. These varieties, the result of complex and lengthy scientific work, require tailored legal protection to secure breeders’ investments and ensure the traceability of seeds used in markets. The Plant Breeder’s Rights (PBR), is a form of exclusive right akin to a patent but specifically designed for plant innovations. It is governed by a normative framework harmonized at national, European, and international levels in France, by the Intellectual Property Code, in the European Union, by Regulation (EC) No. 2100/94 and internationally, by the UPOV Convention.

Criteria for obtaining a plant breeder’s right

1.1 Evaluating a plant variety: the four technical criteria
To obtain a COV, a variety must meet four key criteria: novelty, distinctness, uniformity, and stability.

• Novelty: The variety must not have been placed on the market or transferred to third parties within a specified time period. In France and the European Union, this period is one year, but it may extend to four years for non-EU countries, and even six years for certain perennial species like trees and vines.
• Distinctness: The variety must be distinct from any known variety at the time of the application. This distinction is based on one or more significant characteristics, such as morphological, phenological, or performance traits.
• Uniformity: The variety must be uniform in its essential characteristics, meaning its properties must be stable and reproduced consistently across generations.
• Stability: The variety must be stable, meaning its characteristics remain constant through multiple breeding cycles.
  All these criteria are validated through DHS tests for Distinctness, Homogeneity, and Stability, carried out by accredited organizations such as GEVES in France.

1.2 A compliant variety name

The deposited variety must bear a name that adheres to the standards set by UPOV. This name must be unique, neutral, and not misleading regarding the origin, nature, or quality of the variety. For instance, it should not contain laudatory terms, trademarks, or unsubstantiated geographical indications. INOV in France or CPVO at the European level may reject a non-compliant name and require the applicant to propose a new one.

1.3 Exceptions and exclusions

Certain varieties are excluded from protection. For example, farmer varieties or those already marketed before the filing are not eligible. Similarly, varieties without genetic traceability or those based on traditional knowledge cannot be protected. Moreover, varieties whose characteristics are already known or those not meeting technical criteria are also excluded from the procedure.

Filing procedure and costs for a plant breeder’s right

2.1 Strategic choice of protection mode: INOV, CPVO, or UPOV

The choice of protection system depends on the applicant’s business strategy. They may opt for national protection via INOV in France, which is ideal for local projects, or for community protection via CPVO, which is valid in all EU member states. Alternatively, an international system via UPOV allows the variety to be protected in several signatory countries, which is suitable for businesses aiming for global expansion.

2.2 Filing steps and technical examinations

The filing begins with submitting a complete dossier that includes a detailed description of the variety, its name, genealogy, and biological samples. Then, DHS tests are conducted to assess the distinctness, homogeneity, and stability of the variety. If the criteria are met, the application is published, and an opposition period is set. After this period ends, and provided no opposition has been raised, the certificate is issued and published in the official Bulletin.

2.3 Fees, timelines, and duration of protection

The filing fees for a COV generally range between 3,000 and 6,000 euros, depending on the species and the required tests. Protection typically lasts for 25 years and can be extended to 30 years for certain perennial species like vines, fruit trees, and potatoes. Processing a request can take between one and four years, depending on the crop and the chosen procedure.

Commercial valorization of a plant variety

3.1 Exploitation methods and seed licensing

The COV grants the holder exclusive exploitation rights over the variety. The holder can choose to produce and sell the seeds directly or license them to third parties. These licenses may be exclusive or non-exclusive, and may include contractual conditions regarding duration, territory, and production volumes.

3.2 Structuring partnerships and royalty mechanisms

Commercial valorization often involves partnerships with producers or agri-food industries, enabling investment pooling and accelerating commercialization. Royalties are typically based on the volume of seeds marketed and serve as a key economic lever to ensure the profitability of breeding efforts.

3.3 Scientific promotion through research projects and niche markets

Protected varieties can also be utilized in agronomic research programs to develop traits such as disease resistance or climate adaptability. This not only enhances their visibility but also promotes their adoption in specialized markets and for export.

Maintaining competitiveness of protected varieties

4.1 Progressive adaptation to climate change and agricultural demands

Varieties must now meet resilience criteria against climate change, while also meeting the demands of sustainable agriculture. Legal protection must be coupled with continuous agronomic evaluation to maintain the competitiveness of varieties in line with evolving agricultural needs.

4.2 Genetic innovation through digital tools and selective breeding regulations

Advances in genetics and the use of digital tools help accelerate the selection process for varieties. The UPOV exemption for selection also allows the use of protected varieties to create new, innovative varieties.

4.3 Developing seed sovereignty for responsible agriculture

The COV also plays a role in seed sovereignty policy by allowing states to reduce their dependency on foreign seeds and promoting locally adapted production that meets specific agricultural and environmental challenges.

Actions and remedies in case of infringement of protected plant breeder’s rights

5.1 Types of infringements

Unauthorized exploitation of a protected variety constitutes infringement. This includes the unlawful reproduction of seeds, unlicensed commercialization, and fraudulent use in a breeding program.

5.2 Civil, criminal, and customs sanctions

Article L623-25 and seq. of the Intellectual Property Code provides for civil sanctions, such as damage compensation, confiscation of infringing batches, and exploitation bans. In case of infringement, the holder can also seek criminal sanctions, with penalties including up to three years in prison and a fine of 300,000 euros, which may be doubled in case of repeat offenses. Customs measures can also be taken to detain illegally imported seeds.
A recent case illustrates these sanctions: in an Italian case, R.G.Dib. 1220/2024 the Tribunale ordinario di Nocera Inferiore sentenced the defendant to six months in prison and a 1,000-euro fine for infringing a protected plant variety, highlighting the severe sanctions against intellectual property violations related to plant breeding rights.

5.3 Enforcement methods for holders

To combat infringement, holders have several enforcement options, such as filing a lawsuit for infringement before the competent court, carrying out a seizure order with judicial authorization, or notifying customs services to activate border control measures.

Conclusion

The Plant Breeder’s Right is a crucial tool for the protection of innovations in the plant sector, ensuring legal security and enhancing the competitiveness of market players. To be fully effective, it is essential to understand the applicable legal framework and implement tailored strategies for valorization and defense against infringement.

Dreyfus & Associés supports plant industry stakeholders in protecting, valorizing, and defending their plant breeding rights in France, Europe, and internationally. Our expertise covers the entire lifecycle of the COV, from filing strategy to infringement actions.

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

FAQ

1. Duration of a plant breeder’s right
The certificate is valid for 25 years, or 30 years for certain species (vines, fruit trees, potatoes), with annual fees to maintain protection.

2. Can a patent and a plant breeder’s right be combined?
No, a single variety cannot be protected by both a patent and a COV, but a process for creating a variety can be patented independently of the COV.

3. Technical criteria for obtaining a COV
The variety must be novel, distinct, uniform, and stable, assessed through DHS tests conducted by accredited bodies like GEVES.

4. Reselling seeds from a protected variety
Reselling is strictly regulated. Only license holders or certain farmers can use farm-saved seeds; otherwise, it constitutes infringement.

5. What to do in case of infringement?
The holder can file an infringement action, request a seizure order, seek an injunction, or activate customs detention. Civil, criminal, and customs sanctions may apply.

Introduction

Domain names have become much more than simple Internet addresses: they are essential tools for visibility, image, and trust for companies. At the same time, this strategic importance has made domain names a prime target for counterfeiters, scammers, and impersonators of all kinds.

Infringements on trademarks through domain names, whether in the form of cybersquatting, phishing, or sophisticated commercial scams, are proliferating as technology makes them easier to implement, faster to execute, and harder to trace. These practices threaten the value of trademark portfolios, consumer safety, and corporate reputations.

In this context, it is crucial to understand the various forms of abuse, the legal remedies available to address them, and the importance of an active domain name monitoring strategy.

Understanding the main types of trademark infringement via domain names

1.1. Cybersquatting: hijacking a brand for speculative purposes

Cybersquatting involves registering a domain name corresponding to a trademark, with the intent to resell it to the rightful owner or benefit from its notoriety. This practice has become industrialised with the publication of public databases such as those of the EUIPO or USPTO, allowing some actors to automate targeted registrations immediately after a new trademark is published.

1.2. Typosquatting: typing errors as a fraud tool

Typosquatting is based on deliberate spelling variants or typing errors, exploiting user mistakes to redirect them to fraudulent sites or advertising pages. This technique is especially used to capture traffic for commercial purposes or to host malware.

For instance, a user typing “microsfot.com” instead of “microsoft.com” might be redirected to a site containing a virus or a fake update to download.

1.3. Phishing and spear phishing: digital identity theft

Phishing involves mimicking an official site to extract personal or banking data. The domain name used usually reproduces the brand or a credible variant. This practice is often paired with fraudulent emails that redirect to the fake site.

Spear phishing is more targeted, aimed at internal employees or business partners for fraudulent purposes (e.g. fake wire transfer requests).

For example, registering a fraudulent domain name mimicking a bank to host a cloned site asking the user to “update” their banking details.

1.4. Employment, order, or fake shop scams: complex schemes

Numerous fraudulent schemes now rely on domain names to give false legitimacy to fake e-commerce sites, recruitment platforms, or customer service portals. The domain name becomes a central tool of deception.

• Counterfeit sales websites or fake shops: sophisticated imitation of an official site to sell counterfeit products or obtain banking data.
• Identity theft and purchase order scams: domain names similar to procurement centres used to extract money or divert goods.

Responding effectively to the hijacking or abusive use of a domain name

2.1. Resorting to specialised out-of-Court procedures

Some administrative procedures allow for the deletion or transfer of a domain name without going through the courts. These are particularly useful when the infringement is clear and the domain name holder is difficult to locate or operates abroad.

• UDRP (Uniform Domain-Name Dispute-Resolution Policy)

Managed notably by the WIPO Arbitration and Mediation Center, this international procedure applies to most generic extensions (.com, .net, .org, etc.). It allows for the transfer or cancellation of a domain name when three conditions are met:

1. • The domain name is identical or confusingly similar to a prior trademark;
   • The registrant has no rights or legitimate interests in the domain name;
   • The domain name was registered and is being used in bad faith.

• Syreli (AFNIC)

This procedure applies to .fr domain names and is administered by AFNIC. It has the advantage of being fully digital, faster than a traditional trial, and results in a decision within two months.

• URS (Uniform Rapid Suspension System)

A simplified alternative to the UDRP, it targets clear-cut cases of cybersquatting. It is especially suitable for quickly suspending a domain name, without obtaining its transfer, when the infringement is blatant and well-documented.

• Cease and Desist Letter: a tool not to be overlooked

Sending a cease and desist letter formalises a request for withdrawal or transfer, demonstrating the prior rights and abusive nature of the use. This approach is often combined with technical notices (to registrars, hosts, or platforms). In simple cases, it can suffice to achieve a swift amicable resolution, particularly when the registrant is not an experienced professional.

2.2. Judicial actions: for serious or unresolved infringements

When out-of-court procedures fail or are not appropriate, legal action can be taken.

• Identifying the registrant: Article L.34-1 of the French Postal and Electronic Communications Code.

This provision allows, via summary proceedings, to obtain information from the registrar or hosting provider, lifting the veil on the identity of a domain name holder or site administrator.

• Trademark infringement or unfair competition actions :

If the domain name use infringes a registered trademark, a trademark infringement action is available. If the mark is not registered, it is still possible to act based on unfair competition or parasitism, by demonstrating abusive appropriation of another’s reputation.

2.3. Engaging the right intermediaries

In the technical domain name ecosystem, third-party actors play a key role in putting an end to infringements.

• The Registrar : They manage domain name reservations. When served with a UDRP decision or court injunction, they can block, suspend, or transfer the domain.
• The Hosting Provider : They host the content displayed under the domain name. In case of unlawful content, they can be served with a formal notice to remove it, under penalty of liability.

2.4. Gathering evidence: a prerequisite for any action

An effective response requires thorough documentation of the facts. The following should be collected and preserved as soon as the infringement is detected:

• Whois Data: to identify the holder or technical contact of the domain name.
• Screenshots of the infringing site, including the full URL, date, time, and infringing visual or textual elements.
• Fraudulent emails or technical logs: in case of phishing or misuse of email servers configured on the infringing domain.
• Correspondence with technical providers: can demonstrate inaction from a host or registrar, useful in liability proceedings.

Implementing proactive monitoring to protect assets over the long term

3.1. Domain name watch services to prevent infringements

Anticipate before damage occurs

Automated domain name monitoring relies on alert systems analysing in real time new creations in WHOIS databases, DNS registration bases, or root server zones. These tools signal domain registrations that closely resemble a protected trademark:

• Addition or removal of a character
• Letter inversion or homographs
• Registration in an unusual extension (.shop, .buzz, .store, etc.)

Detecting a malicious domain name upon registration, before a site is put online or promoted through search engines, enables preventive action that is often quicker and less costly.

3.2. Implementing a global defensive strategy: monitor, register, neutralise

Register strategic names in advance

An effective strategy combines monitoring and registrations. It is not about registering all possible domain names, but targeting the most sensitive extensions and variants:

• High-traffic generic extensions: .com, .net, .shop, .store, .vip
• Local extensions of key markets: .fr, .de, .cn
• Extensions prone to misuse: .xyz, .top, .online, .buzz

Defensive registrations help secure critical names before third parties can exploit them. This approach is especially useful during product launches, major events, or brand expansions.

Document to act more effectively

A solid monitoring strategy is supported by an evidence system: each alert must be documented by a screenshot, a timestamp, or a source code extraction if needed, to serve as a basis for UDRP or judicial action.

Conclusion

An effective brand strategy requires proactive domain name governance
in light of the growing scale of digital infringements, it has become essential to integrate domain names at the heart of your trademark protection strategy. Identify, respond, anticipate: these are the three steps to effective defence, based on appropriate legal tools, collaboration with the right technical actors, and continuous monitoring.

Dreyfus & Associés has been supporting companies of all sizes for over 20 years in the strategic, defensive, and contentious management of their domain name portfolios.

The firm works in partnership with a global network of Intellectual Property lawyers.

Nathalie Dreyfus, with the support of the entire Dreyfus team

FAQ

1. What is cybersquatting?
It is the abusive registration of a domain name identical or similar to a trademark, with the intention of reselling it or deriving undue advantage.

2. What procedures are available to recover a domain name?
The UDRP (international) or Syreli (for .fr) procedures allow for the transfer or deletion of the domain name.

3. How can I find out who registered a domain name?
By consulting the Whois service, although some data may be hidden. Further (judicial) actions may be necessary.

4. What if the registrar or host refuses to act?
Turn to judicial or administrative procedures, depending on the case. Article L.34-1 of the French CPCE can provide for investigatory measures.

5. How can fraudulent domain names be detected?
Through automated monitoring and alert tools that flag registrations similar to your trademarks.

Introduction

Under French law, serious use of a trademark is a key requirement for maintaining its validity. According to Article L. 714-5 of the Intellectual Property Code, a trademark may be revoked if it has not been used seriously for the goods or services for which it was registered for a continuous period of five years. This requirement ensures that trademarks are not merely reserved without any intention for commercial use, freeing up distinctive signs for other market players.

However, the question arises: Does the use of a trademark in a specific subcategory suffice to maintain its protection for the entire category? This issue introduces the concept of autonomous subcategories, a concept that has been clarified in recent jurisprudence.

Appreciating the use of a trademark under French law

1.1. Definition of serious use

Serious use of a trademark involves real and substantial exploitation on the market, aiming to maintain or create market share for the designated products or services. It is not simply symbolic or internal use within the company. Jurisprudence has clarified that the use must be effective, continuous, and genuinely intended for commercial exploitation of the concerned products or services.

1.2. Means of proving use

The trademark holder may provide evidence of serious use by any means, such as:

• Commercial documents: invoices, purchase orders, distribution contracts.
• Advertising materials: brochures, websites, advertisements.
• Testimonies: statements from business partners or clients.
• Market presence: participation in trade shows, presence in retail outlets.

1.3. Consequences of non-use

If serious use is not demonstrated, the holder risks the revocation of their rights over the trademark for the non-exploited products or services. This revocation can be total or partial, depending on whether the use occurred for the entire range or just part of the products or services.

Autonomous subcategories: A jurisprudential concept

2.1. Definition and identification

An autonomous subcategory is a subdivision within a larger category of products or services that has internal coherence and is perceived as distinct by consumers. For example, within the category of “clothing,” “sportswear“ may constitute an autonomous subcategory if it is seen as such by the public.

2.2. Criteria for distinction

To be considered autonomous, several criteria are taken into account:

• Consumer perception: Is the subcategory recognized as distinct by the public?
• Specific characteristics: Does the subcategory have unique features (design, use, distribution)?
• Commercial autonomy: Does the subcategory have its own marketing and distribution strategy?

2.3. Relevant jurisprudence

The Court of Cassation, in a ruling from May 14, 2025 (n° 23-21.296), reiterated that when the trademark holder proves use only for a specific activity, the judge must verify whether that activity constitutes an autonomous subcategory. If so, the use will only count for this subcategory, and not for the entire broader category.

Risks and impacts of the autonomous subcategories concept

3.1. Risk of partial revocation

The main risk associated with recognizing autonomous subcategories is partial revocation of the trademark. If the holder does not provide proof of serious use for an autonomous subcategory, they risk losing their rights over that subcategory, even if the trademark is used for other products or services within the same category.

3.2. Impact on brand strategy

This concept encourages companies to:

• Precisely define subcategories when registering the trademark.
• Ensure active and continuous use for each subcategory.
• Carefully document the use of the trademark for each subcategory.

3.3. Legal consequences

In case of partial revocation, the holder loses the protection of the trademark for the non-exploited products or services, which could allow competitors to use similar signs for those products or services.

How to avoid revocation for lack of serious use in an autonomous subcategory?

4.1. Preventive strategies

To avoid revocation, it is recommended to:

• Register the trademark for specific subcategories rather than overly broad categories.
• Actively exploit the trademark for each subcategory, ensuring its market presence.
• Collect and maintain proof of use for each subcategory (sales, advertisements, contracts).

4.2. In case of dispute

If an action for revocation is initiated, the holder can:

• Provide proof of use for each concerned subcategory.
• Demonstrate the existence of an autonomous subcategory and justify its use.
• Argue against the relevance of subdividing into autonomous subcategories.

4.3. The role of an industrial property counsel

A specialized professional can assist the company in:

• Assessing risks related to trademark use.
• Drafting product and service classes during registration.
• Developing a usage strategy and documenting the use.

Conclusion

The recognition of autonomous subcategories under French law imposes increased vigilance on trademark holders regarding the exploitation of their rights. It is essential to define subcategories precisely during registration, ensure active use for each, and maintain proof of use. In cases of doubt or dispute, it is strongly advised to consult an industrial property expert to safeguard rights and avoid revocation risks.

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

I – The rise of marketplaces in the digital economy

1. From Web 1.0 to Web 3.0: The evolution of platforms

Marketplaces are the outcome of rapid technological developments on the Web. In the 1990s, Web 1.0 was defined by static pages with purely informational purposes. E-commerce was in its infancy, with Amazon and eBay emerging as early pioneers as early as 1995.

With the advent of Web 2.0 in the 2000s, users became active participants. The exchange of information expanded via blogs, social networks, and online reviews. Within this context, marketplaces emerged. Platforms that allow multiple vendors to offer their products or services simultaneously through a single interface, typically operated by a third party.

Marketplaces differ from traditional e-commerce sites. They do not sell directly, but instead facilitate transactions between sellers and buyers. They manage the entire commercial experience, including payments, visibility, logistics, and customer service. This model has experienced exponential growth: first in B2C (Amazon, Cdiscount, Fnac), then B2B (Alibaba), and finally in C2C (Vinted, Leboncoin).

Today, marketplaces are ubiquitous. According to FEVAD, in 2024, 78% of French consumers visited at least one of the top 20 marketplaces each month. Their role in global distribution is central, and their influence extends beyond commerce, they now set consumption standards in terms of speed, accessibility, and trust.

Web 3.0, currently emerging, is based on decentralization, blockchain, and artificial intelligence. It paves the way for new forms of marketplaces, particularly in the NFT, gaming, and digital services sectors, where users themselves become owners or sellers without relying on a central operator.

1. The economic weight of marketplaces

Marketplaces have become key drivers of the digital economy, disrupting traditional distribution models. By centralizing the offerings of multiple vendors on a single platform, they have transformed e-commerce into an interconnected ecosystem.

Their appeal lies in flexibility: merchants can reach a wide audience without the costs of running their own sales infrastructure. Consumers benefit from broader choices and optimized purchasing conditions. For platforms, it is a lever for exponential growth based on shared technology, logistics, and marketing.

In France, this model has become the standard. In 2023, online sales reached €160 billion, with nearly 70% generated via marketplaces. E-commerce now accounts for about 11% of total retail trade. This trend is not limited to global giants : traditional retailers such as La Redoute, Fnac-Darty, Boulanger, and Carrefour have adopted hybrid models combining direct sales with marketplace functionality to boost competitiveness and diversify revenue.

Marketplaces are also expanding into services, whether B2B, B2C, or specialized platforms for logistics, temporary staffing, or technical solutions. This market represents a new frontier in digital commerce.

However, success comes with risk. By opening access to global trade, marketplaces have also multiplied vulnerabilities, particularly in the area of counterfeiting. This evolution calls for an appropriate legal and strategic response from both platforms and rights holders.

II – A breeding ground for Intellectual Property infringements

Despite their commercial legitimacy, marketplaces remain a primary vector for Intellectual Property violations.

1. Counterfeiting, misappropriation, and brand exploitation

Anyone can now sell on a marketplace, sometimes without any reliable identity verification. Some sellers take advantage of this by imitating or copying well-known brands: handbags, cosmetics, watches, or clothing are frequently offered at bargain prices using logos, names, or images borrowed from famous brands.

In 2024, LVMH reported a more than 30% increase in fraudulent ads on social media, often linked to counterfeit products on marketplaces. These ads, sometimes very well produced, offer discounts of up to 80%, capitalizing on events like seasonal sales to entice buyers. After clicking, users are redirected to either a deceptive replica of a brand website or to a product listing on a lenient marketplace.

A major difficulty lies in the ineffectiveness of reporting mechanisms. Even when accounts are shut down, others, often linked to the same individuals, remain active. They typically share WhatsApp numbers or similar usernames, showing the counterfeiters’ ability to adapt and reconfigure swiftly.

This exploitation of brands is not limited to the luxury sector. All industries are affected, from cosmetics to electronics, and this occurs across both global and local marketplaces, including those with lower oversight.

1. Methods used by counterfeiters

Fraudsters use various tactics to sell illegal goods while evading detection:

• Ghost merchants: temporary seller profiles that appear for a single transaction and then disappear. They often pose as local vendors but ship from abroad, especially China, using fake identities and without any KYC (Know Your Customer) verification.
• Dropshipping: sellers hold no stock. Once an order is placed, the product is shipped directly from a third-party supplier, often unverified. This enables rapid, large-scale sales with minimal risk and complicates brand enforcement actions.
• Mirror sites: counterfeiters replicate official brand or distributor websites to appear legitimate.
• Counterfeit shop kits: “ready-to-use” kits are sold online, containing everything needed to launch a fake store : graphic identity, fake reviews, copied product images.

These methods are highly effective thanks to a flexible digital ecosystem leveraging social media, encrypted messaging (e.g., WhatsApp), and global payment platforms. Rights holders must contend with opaque, shifting structures, often based outside Europe, making legal actions long and costly.

III – Marketplace mechanisms to combat counterfeiting

Given the scale of IP infringements on their platforms, marketplaces have been compelled to act. In recent years, they have implemented specific systems to detect, report, and remove illicit content, particularly counterfeit listings.

These Intellectual Property Protection (IPP) programs aim to facilitate collaboration between rights holders and platforms. The most prominent include:

• Amazon Brand Registry
• Alibaba IP Protection Platform
• Shopee IP Management System
• TikTok Shop IP Portal

These systems allow brands to register their IP rights in a secure space and report infringing listings directly. If the file is complete, takedowns can be rapid, on Alibaba or Taobao, for instance, listings may be removed within 48 hours. Management tools also allow brand owners to act through authorized representatives, streamlining procedures and enabling multi-platform enforcement.

French marketplaces have also implemented mechanisms to address the growing demand for anti-counterfeiting enforcement. Platforms such as Cdiscount, Fnac.com, Darty, or Rue du Commerce each provide specific procedures for rights holders to report infringing listings. While these systems are not always explicitly labeled as “IPP” programs, they serve similar functions: submission of a takedown request, proof of ownership, evidence of the alleged infringement, and a request for removal. For instance, Fnac-Darty offers an online reporting form via its legal support center, whereas Cdiscount maintains a contact channel for IP owners through its website or legal department. However, these tools often suffer from limited visibility and a lack of standardization, and their responsiveness can vary significantly. A harmonized approach to such procedures at the national (or ideally European) level would greatly enhance their efficiency and better support rights holders, especially SMEs that may lack the resources to navigate these platforms effectively.

However, these programs alone are not sufficient to curb the spread of illicit content. They largely rely on the proactive vigilance of rights holders, who must dedicate human and technical resources to continuous monitoring.

Moreover, efficiency varies across platforms. Major marketplaces offer user-friendly, professional interfaces and quick response times. In contrast, smaller platforms often provide basic, untranslated forms, slower processing times, and are less reactive in repeat infringement cases. Some regional or Asian platforms lack proper KYC protocols, which further facilitates impunity.

Fraudsters also adapt quickly: accounts are deleted and recreated immediately, and visuals or product names are subtly changed. The chase is relentless. While IPP systems represent real progress, they must be harmonized, extended to emerging platforms, and embedded in broader legal and technical strategies supported by international cooperation.

IV – A strengthened European legal framework: The Digital Services Act (DSA) and the Digital Markets Act (DMA)

The European Union has adopted two landmark regulations to govern digital platforms: the Digital Services Act (DSA) and the Digital Markets Act (DMA), both fully effective since February 2024. Their shared goals are to enhance digital safety, protect user rights, and ensure fair competition.

The DSA obliges platforms to promptly remove manifestly illegal content and introduces:

• Accessible, user-friendly reporting systems
• A right of appeal in case of wrongful content removal
• Privileged status for “trusted flaggers”
• Increased transparency in advertising and recommendation algorithms

Very Large Online Platforms (VLOPs), those with over 45 million monthly users in the EU, such as Amazon, Meta, or TikTok, are subject to stricter obligations: annual systemic risk assessments, independent audits, and reinforced cooperation with national authorities and the European Commission.

The DMA targets gatekeepers, dominant platforms like Google and Apple, and bans unfair practices such as self-preferencing and ecosystem lock-in. It seeks to restore competitive market conditions and foster innovation.

The DSA also provides for out-of-court dispute resolution mechanisms, allowing users to challenge moderation decisions within 90 days. While platforms are not obliged to comply with these rulings, unjustified refusals mean they must bear the costs, thereby encouraging fair play.

Together, these regulations redefine platform responsibility in the digital space. They place marketplaces under obligations regarding counterfeiting, consumer protection, and competitive fairness, anchoring a new logic of transparency, accountability, and due diligence in EU digital governance.

Conclusion

Combating counterfeiting on marketplaces is a strategic priority for any company seeking to protect its brand image, revenue, and consumer trust. The combination of legal tools, internal marketplace protections, and tailored enforcement strategies across all sales channels is key to success.

We support rights holders daily in identifying and removing illicit content from digital marketplaces.

Dreyfus & Associés works in partnership with a global network of IP law specialists.

Nathalie Dreyfus and the Dreyfus team

FAQ

Introduction

The SkyKick UK Ltd v. Sky Ltd (UKSC/2021/0181) ruling, rendered by the UK Supreme Court on November 13, 2024, clarified the concept of “bad faith” in trademark registration. The case raised the issue of whether trademarks registered for overly broad products and services, with no connection to the actual business activities, could be invalidated for bad faith. The ruling resulted in a landmark decision on how bad faith is assessed in trademark registrations, leading the UKIPO to revise its guidelines.

In response to this decision, the UKIPO published an amendment to its practices on June 27, 2025, establishing stricter criteria for reviewing trademark applications, particularly concerning specifications deemed excessively broad. This article examines the UKIPO’s new guidelines and their impact on the trademark registration process.

Examination criteria for specifications by the UKIPO

1.1 Definition of an overly broad specification

The UKIPO considers a specification to be too broad when it includes an excessive list of products or services that are not directly related to the applicant’s actual or projected business activities. For instance, the UKIPO will deem an application too broad if it covers all 45 Nice classes or vague terms such as “software,” “clothing,” or “food products” without specifying subcategories or details of the intended products or services.
This approach aims to prevent trademarks from being registered defensively or abusively for products or services that the applicant will never actually use.

1.2 Consequences of an overly broad specification

When the UKIPO identifies an overly broad specification, several actions may be taken:
• Rejection of the application: When the specification is deemed too broad and the applicant cannot prove a genuine intention to use the trademark.
• Restriction of the specification: If the specification is considered too broad but could be made acceptable by narrowing it down, the UKIPO may ask the applicant to restrict the claimed products or services.
• Verification of the intention to use: The applicant may be required to provide concrete evidence of their genuine intention to use the trademark for the specified products and services.
This approach ensures that trademark applications are based on genuine business intentions, rather than aiming to monopolize broad terms.

Proving a genuine intention to use

2.1 Evidence accepted by the UKIPO

The UKIPO requires applicants to prove their genuine intention to use the trademark for the specified products and services. This can be achieved by providing commercial documents such as :
• Business plans detailing the intended use of the trademark.
• Commercial contracts or agreements with business partners.
• Proof of sales or advertising campaigns showing the intent to use the trademark for the claimed products or services.

2.2 Role of commercial documentation

Commercial documentation plays a crucial role in justifying the intended use of the trademark. If an applicant cannot provide evidence of intended use or a viable commercial project, the UKIPO may consider that the application was filed in bad faith. As a result, insufficient documentation may lead to the rejection of the application.

Partial cancellation of a trademark for bad faith

3.1 Process of partial cancellation

If part of the specification is deemed to have been filed in bad faith, the UKIPO can cancel only that part of the registration while maintaining trademark protection for the other products or services where the intention to use is proven. This partial cancellation ensures that only the portions of the application based on genuine intent remain valid.

3.2 Examples of partial cancellation

For example, if a trademark is registered for “pharmaceutical products” and “clothing,” but the applicant only intends to use the trademark for pharmaceutical products, the UKIPO may cancel the “clothing” portion for bad faith while maintaining protection for the pharmaceutical products.

Application of the guidelines to existing trademarks

4.1 Impact on existing trademarks

The new guidelines also apply to already registered trademarks. Trademark holders must ensure that their registrations comply with the genuine intention to use criteria defined by the UKIPO. If an existing trademark is found to have been filed in bad faith, it may be canceled, in whole or in part.

4.2 Review of existing registrations

Holders of existing trademarks should consider conducting an audit of their registrations to verify compliance with the new guidelines. This involves reassessing the specifications of their trademarks to ensure they reflect a genuine business intent.

Bad faith raised by the UKIPO without third-party intervention

5.1 Proactive examination of bad faith

The UKIPO may raise the issue of bad faith proactively when reviewing an application for registration. This means that it can identify manifestly abusive applications and reject them, even without a third-party opposition (such as from a competitor). The UKIPO can now act more strictly from the outset, thereby preventing abuses.

5.2 Consequences of an ex officio objection

If the UKIPO raises an objection for bad faith, the applicant will need to provide justifications regarding their genuine intention to use the trademark for the specified products or services. If no satisfactory justification is provided, the UKIPO may reject the registration application.

Conclusion

The UKIPO’s new guidelines following the SkyKick ruling introduce stricter requirements for trademark registration. Applicants must prove a genuine intention to use their trademark for the designated products and services, especially when specifications are deemed too broad. Existing trademark holders must also review their registrations to ensure they meet these revised requirements. These revisions aim to strengthen the integrity of the trademark system and prevent abuses.

FAQ

Introduction

When a business ceases operations, the fate of its intellectual property rights becomes a critical issue. Patents, trademarks, software, copyrights, and domain names do not disappear with the dissolution of the legal entity. These intangible assets retain independent value and may be sold voluntarily, transferred through judicial proceedings, or revert to their original holders where allowed by law.

Managing such rights raises substantial legal, economic, and operational issues. The presence of an insolvency practitioner or liquidator adds complexity to the transfer, valuation, or exploitation of these assets. This is further compounded by ongoing contractual commitments such as licenses, exploitation agreements, and secured creditor interests.

Inadequate preparation can result in significant value losses, including abandoned rights, expired titles, improperly designated assets, and post-transfer litigation. Understanding the applicable legal framework is therefore crucial to secure, enhance, and where appropriate, challenge transactions involving the intellectual assets of distressed companies.

Ownership of intellectual property rights upon business closure

1.1 Classification of intellectual property rights as transferable assets

Intellectual property rights are legally recognized as intangible movable assets. As such, they form part of the company’s transferable assets. Whether recorded on the balance sheet or not, they may be assigned to third parties, licensed, contributed as capital, or used as collateral. This classification confers independent patrimonial value that may be leveraged for accounting, tax, or strategic purposes. In a restructuring or acquisition context, IP rights can be vital to preserving competitiveness or continuity of business.

1.2 Methods of transfer or abandonment

Prior to insolvency, companies may organize the transfer of their IP rights through private or notarized agreements, provided these transfers are registered with the competent office (INPI, EUIPO, or EPO). Registration is essential for third-party enforceability and must be promptly completed. During liquidation, only the liquidator, under court supervision, is authorized to transfer IP rights. If fees are unpaid or actions are not taken, rights may lapse or revert to authors under certain statutory conditions.

The role of the insolvency practitioner in the management of rights

2.1 In reorganization: continuation or termination of contracts

In judicial reorganization, the insolvency practitioner may choose to continue or terminate contracts linked to IP rights, including licenses or distribution agreements. This decision is based on preserving asset value, avoiding liabilities, and facilitating a sustainable business recovery. Active, revenue-generating contracts are often maintained, while unprofitable ones may be terminated through judicial authorization.

2.2 In liquidation : identification, valuation, and sale

Following a liquidation order, the liquidator must inventory all intangible assets, appraise them, and organize their sale. The objective is twofold: satisfy creditor claims and avoid a total loss of value. Assets may be sold individually, such as a patent or domain name, or as part of a global business transfer. The success of these transactions depends on accurate identification, realistic valuation, and formal enforceability through registration with the appropriate authority.

Challenging transfers made during insolvency proceedings

3.1 Grounds for nullity or lack of enforceability

An unregistered transfer of IP rights is unenforceable against third parties. This omission may have severe consequences in disputes. Additionally, a vaguely worded contract may be invalidated due to lack of informed consent or undetermined scope. Courts consistently require clear identification of rights for a transfer to be valid.

3.2 Case law on unlisted intellectual property rights

Courts have repeatedly invalidated the transfer of IP rights not explicitly listed in deeds or court orders. For example, a patent or domain name was excluded from a transfer due to the lack of individual mention, despite being linked to the transferred business activity. Therefore, all rights intended for transfer must be listed clearly, including registration numbers and legal status. Failure to do so can result in legal disputes for the acquirer.

Creditors’ rights over intellectual property assets

4.1 Use of pledges and security interests

IP rights can be pledged to secure creditor claims. When such pledges are registered prior to the insolvency, the secured creditor has priority over sale proceeds. These guarantees must be duly recorded in the relevant national registries (patents, trademarks, designs). Unsecured creditors, however, have no specific priority and must rely on general ranking rules for asset distribution.

4.2 Special legal status of authors

Under article L.132-15 of the French Intellectual Property Code, authors may recover their rights if the contracting company fails. This mechanism protects their moral and economic rights, enabling them to re-exploit or relicense their work. In sectors like audiovisual, publishing, or music, specific rights may also grant authors a pre-emption or priority purchase option to avoid transfers without their consent.

Ensuring continuity of intellectual property use during proceedings

5.1 Maintenance of titles and payment of royalties

To maintain rights, renewal fees, office communications, and regulatory formalities must be managed. The insolvency practitioner may choose to keep certain titles if they have market potential, especially those tied to active operations or acquisition plans. Coordination with foreign agents may also be necessary for international portfolios.

5.2 Preservation of Technical Assets and Commercial Value

The value of intellectual property rights also depends on their exploitability. Without the source code, visual identity guidelines, databases, or associated know-how, a right may lose all commercial value. For instance, a branded domain name without an active website or customer database may lose its appeal. The identification, securing, and preservation of such elements are therefore essential, notably through a digital inventory and the temporary outsourcing of hosting or server infrastructure.

Conclusion

Managing intellectual property rights during business cessation requires legal foresight and strategic coordination. Supervision by the insolvency practitioner, accurate drafting of transfer documents, and collaboration with authors and creditors are essential to preserve these valuable intangible assets.

The firm Dreyfus et Associés, intellectual property consultants, provides support to businesses seeking to secure and enhance the value of their IP rights, especially during sensitive restructuring or winding-up phases. Our strategic and preventative approach helps clients anticipate risks to their trademarks, patents, and other creations, ensuring both legal and commercial continuity in complex proceedings.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. What happens to intellectual property rights when a company ceases its activity ?

   Patents, trademarks, software, or copyrights do not expire with the company’s closure. Depending on the legal context, they may be sold, transferred, or abandoned. In the case of voluntary cessation, the company may organize the transfer of its intangible assets before being deregistered. In insolvency proceedings (reorganization or liquidation), these rights become part of the estate and are managed by the court-appointed administrator or liquidator. Proper management preserves both legal security and economic value.

2. Can the insolvency practitioner sell a trademark or a patent ?

   Yes, during a judicial liquidation, the insolvency practitioner acts as a liquidator and may sell intellectual property rights including trademarks, patents, and software. This transaction must be approved by the supervising judge and must be formalized in a clear contract, explicitly identifying the titles being transferred. It must also be registered with the competent IP office (INPI, EUIPO, or EPO) to be enforceable against third parties.

3. Can a transfer of intellectual property rights be challenged ?

   Yes, a transfer may be disputed if it suffers from formal defects, lacks proper registration, or fails to clearly identify the rights being transferred. Courts emphasize the importance of precision and registration. If a right is not explicitly listed and registered, a third party—such as a former holder or a creditor—may challenge the transfer on legal grounds.