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Introduction: a landmark dispute

In its decision of February 16, 2016, delivered by the Commercial Chamber of the Cour de cassation, the dispute opposed Le Fournil, the owner of the French semi-figurative trademark “ ” designating bread and bakery services and used as a trade name and shop sign, to the company Coup de Pâtes, which marketed a pre-baked bread product called “Fusette.” Claiming that this designation infringed its trademark rights, Le Fournil brought an action for trademark infringement.. In response, Coup de Pâtes sought the revocation of the trademark for lack of genuine use.

The Paris Tribunal de grande instance, upheld by the Paris Court of Appeal declared the revocation of the “La Fuette” trademark. However, the Cour de cassation overturned that decision, providing important clarifications regarding the requirement of genuine use of a trademark. The following article examines this ruling and outlines the practical lessons to be drawn for managing and protecting a trademark.

The legal framework: Article L. 714-5 of the French Intellectual Property Code and the notion of genuine use

Article L. 714-5 of the French Intellectual Property Code provides that the owner of a trademark may be subject to revocation if the trademark has not been put to genuine use for an uninterrupted period of five years, unless there are proper reasons.

Genuine use implies that the use is real, public, and in line with the essential function of the trademark: to guarantee the commercial origin of the goods or services. Evidence may be submitted by any means, provided that it reflects authentic and sufficiently significant commercial exploitation, rather than merely token use.

The system also includes a specific rule: use resumed within the three months preceding the filing of a revocation action can only be taken into account if it occurred before the owner became aware of the action or its imminence. This often-overlooked rule plays a decisive role in assessing whether genuine use has been proven.

All these elements show that the assessment of genuine use is highly contextual, depending both on the nature of the goods or services and on the concrete conditions under which the trademark is exploited. These are precisely the aspects on which the decision analysed here offers valuable guidance.

Detailed analysis of the February 16, 2016 ruling of the Cour de cassation

In its judgment of October 11, 2012, the Paris Tribunal de grande instance, followed by the Paris Court of Appeal in its decision of January 17, 2014,revoked the “La Fuette” trademark on the grounds that its use was not genuine: the trademark was neither affixed to the bread nor used with its figurative logo, and the evidence provided (receipts, bags, display panels) merely reflected the bakery’s activity rather than genuine trademark use.

The courts also held that using the verbal element alone altered the distinctiveness of the registered sign. Lastly, certain evidence of use was disregarded because they were dated after the three-month period prior to the revocation action, without verifying whether the trademark holder was aware of that action.

In its judgment of February 16, 2016 (No. 14-15.144), the Commercial Chamber of the Cour de cassation overturned and cancelled the decision of the Paris Court of Appeal.

The need for a complete and coherent body of evidence

The Cour de cassation criticised the lower courts for adopting an excessively restrictive approach to evidence of use.

Since the trademark could not physically be affixed to bread produced in a bakery, it was incumbent upon the Court of Appeal to take into account all relevant supports on which the trademark could also be used: bread bags, labels, advertising materials, the store sign, and invoices linked to the products sold, rather than relying solely on the absence of affixing on the product itself.

The Court reaffirmed that genuine use must be assessed globally, on the basis of a set of converging indicators, rather than a single isolated element.

Use of the verbal element alone: an acceptable modified form of use

Another key aspect of the ruling concerns the use of the term “La Fuette” without its figurative component “ .”

The Cour de cassation held that Court of Appeal should have determined whether the verbal element constituted the dominant and distinctive component of the semi-figurative trademark. If so, the use of the verbal element alone could be sufficient to demonstrate genuine use, provided that such use does not alter the distinctive character of the registered trademark.

This reasoning is consistent with established European case law, including the landmark Sabel judgment of 11 November 1997 (ECJ, C-251/95), which holds that a “global assessment must be based on the overall impression conveyed by the trademarks, taking into account their distinctive and dominant elements. The perception of the average consumer plays a decisive role, and the consumer normally perceives a trademark as a whole rather than analysing its individual details.”

Considering evidence within the critical three-month period

The ruling also recalls that resumed use within the three months prior to the revocation action can preserve the trademark, but only if the proprietor had not yet become aware of the impending action.

The Court of Appeal had rejected some evidence simply because it was dated after this period. The Cour de cassation held that this was legally incorrect: before excluding such evidence, the appellate judges should have verified whether Le Fournil was aware of the revocation action at the relevant time.

Practical implications for trademark owners

This decision highlights several essential points for effective portfolio management:

• Semi-figurative trademarks must be used on all supports adapted to the nature of the product, even where the product itself cannot bear the trademark.
• Evidence of use may consist of a wide variety of documents: receipts, display materials, commercial documentation, packaging, digital and traditional communications.
• Using only the verbal element may be sufficient where it is the dominant component of the trademark.
• Timing is critical: any threat of revocation must be anticipated so that a documented and timely resumption of use can be secured.

For more detailed guidance on assessing the genuine use of a trademark, please refer to our previously published article on the subject.

Strategic recommendations

In light of this case law, trademark owners should adopt a rigorous and proactive approach to documenting use. Systematic and dated retention of all materials demonstrating commercial exploitation (packaging, display items, advertising, digital content, invoices) remains essential.

From the moment the trademark is filed, identifying its dominant distinctive element helps guide how the trademark should be used and ensures consistency between the registered sign and its actual use.

If commercial exploitation becomes limited, a documented and timely resumption of use should be organised to avoid revocation. Evidence should always rely on a consistent and converging set of documents rather than a single isolated document.

Finally, when actual use differs from the registered sign, filing complementary variants may be an effective way to secure long-term protection.

Conclusion

The decision of February 16, 2016 adopts a pragmatic approach: genuine use must be assessed in light of commercial reality and the constraints inherent to the product. It also confirms that using only the verbal element of a semi-figurative trademark can amount to genuine use when that verbal element is the dominant component of the sign.

This decision is therefore a key reference for owners of semi-figurative trademarks, particularly where the nature of the product does not allow the sign to be affixed directly. It encourages trademark owners to document use rigorously, make systematic use of all available supports, and develop a proactive and structured evidentiary strategy.

Q&A

1. What is genuine use of a trademark?

It is the real and effective use of the trademark in the course of trade, enabling it to fulfil its essential function of identifying the commercial origin of goods or services.

2. Can a trademark be preserved if the owner proves that the lack of use is due to “proper reasons” under Article L. 714-5?

Yes. Article L. 714-5 explicitly provides that revocation cannot be ordered if non-use is justified by proper reasons. Case law interprets this narrowly: the obstacles must be beyond the owner’s control, directly linked to the trademark, and must objectively prevent its exploitation. Force majeure, administrative bans, pending litigation, or insurmountable regulatory barriers may be accepted; economic or strategic choices are not.

3. How can evidence of use be effectively secured?

The owner should systematically retain dated materials showing commercial use, regularly document actual exploitation, analyse the trademark’s structure to identify its dominant element, and, where necessary, file variants corresponding to the forms actually used.

4. Is use of a modernised version of a trademark (new design, updated typography) considered genuine use?

Yes, provided that the modernisation does not alter the distinctive character of the registered sign. Updated versions, such as changes in typography, simplified graphics, refined styling, are generally acceptable as long as the dominant element remains recognisable. A thorough redesign may, however, break the continuity of use.

5. Can digital use (website, social media) constitute evidence of use?

Yes. Digital materials showing visible and commercially meaningful use of the trademark can be accepted as part of a broader body of evidence demonstrating genuine use

Introduction

The decision rendered on April 12, 2016 by the Paris Court of Appeal  in the dispute between the “Le Petit Marseillais” and “Le P’tit Zef” trademarks constitutes a landmark ruling in the field of trademark protection in the cosmetics and hygiene sector. By confirming the distinctiveness of the earlier trademark and sanctioning the imitation embodied by the later trademark, the Court reaffirmed a rigorous approach to addressing parasitic appropriation strategies.

Beyond the specific dispute, this decision illustrates how French courts currently assess the economic value of trademarks, the construction of a coherent commercial identity, and the protection of intangible investments. It forms part of an evolving body of case law aimed at ensuring enhanced legal certainty for rights holders.

Assessment of the validity of the trademark “Le Petit Marseillais”

The company CILAG GmbH International, owner of the trademark “Le Petit Marseillais” , registered in Class 3 for soaps and cosmetic products, initiated counterfeit proceedings against Sir Philippe LE HIR, owner of the trademark “Le P’tit Zef” . In response, the latter sought to invalidate the earlier trademark on the ground that it was deceptive in character.

In the present case, the owner of the “Le P’tit Zef” trademark attempted to justify its position by arguing that the “Le Petit Marseillais” trademark was liable to mislead the public, by suggesting that the products were genuine Marseille soap, whereas this was allegedly not the case. Article L.711-3 of the French Intellectual Property Code provides that a sign may not be adopted as a trademark if it is likely to mislead the public, in particular as to the nature, quality, or geographical origin of the goods or services.

The Court of appeal recalled that the term “Marseille soap,” although deeply embedded in the collective imagination, does not constitute a protected geographical indication but rather refers to a traditional manufacturing method. This conclusion was supported in particular by a Wikipedia page submitted as evidence, according to which Marseille soap is defined by its production process rather than by an exclusive geographical origin. This interpretation is consistent with the regulatory framework overseen by the DGCCRF (branch of the French Ministry of the Economy).

The Court therefore inferred that, in the mind of the average reasonably attentive consumer, the name “Le Petit Marseillais” does not necessarily designate a product manufactured in Marseille or Provence. Instead, it refers to an evocative brand embedded in a recognizable marketing universe, reinforced by the figurative element depicting a child in maritime attire on the product packaging.

This analysis led the court to dismiss the argument alleging that the sign was deceptive and, consequently, to reject the counterclaim for invalidity brought in response, thereby confirming the validity of the “Le Petit Marseillais” trademark as a protectable distinctive sign.

Assessment of the infringing nature of the trademark “Le P’tit Zef”

Once the validity of the earlier trademark had been confirmed, the Court proceeded to analyze the likelihood of confusion between “Le Petit Marseillais” and “Le P’tit Zef,” in light of the products designated, all falling within Class 3.

The Court of Appeal first noted that the signs share a strong linguistic similarity in their structure, the initial element of both trademarks being almost identical (“Le Petit” / “Le P’tit”). Although the terms “Marseillais” and “Zef” differ visually and phonetically, this distinction is not sufficient to rule out any likelihood of confusion.

From a conceptual standpoint, the judges considered that both signs refer to comparable images, namely that of a child associated with a major French port city, Marseille for the earlier trademark and Brest for “Le P’tit Zef.” This interpretation led the Court to conclude that the public might perceive “Le P’tit Zef” as a regional variation or thematic extension closely associated with the earlier trademark.

The Court also took into account the figurative elements displayed on the packaging, which showed comparable visual configurations, thereby reinforcing the impression of association between the two trademarks.

This overall assessment led the judges to find the existence of a likelihood of confusion and association and, consequently, to characterize the use of the trademark “Le P’tit Zef” as an infringement of the trademark “Le Petit Marseillais”

Practical and strategic lessons for trademark owners

The decision of April 12, 2016 confirms, first, that a trademark referring to a region or a traditional product, in this case, Marseille soap, is not, per se, liable to mislead the public, provided that an overall assessment of the elements perceived by consumers, including figurative components, clearly identifies the true origin of the goods and rules out any false geographical representation.

Second, the assessment of likelihood of confusion extends beyond purely verbal elements. The ruling illustrates that a judge’s global analysis include conceptual and figurative elements relating to the visual representation of the signs, thereby strengthening the protection afforded to a strong trademark when a competitor adopts a similar graphic or conceptual universe.

Conclusion

The judgment of April 12, 2016 rendered by the Court of Appeal of Paris confirms that the “Le Petit Marseillais” trademark, registered in Class 3, is not misleading within the meaning of Article L.711-3 of the French Intellectual Property Code, even though it evokes a reputed traditional manufacturing method.

This decision validates a contextual reading of consumer behavior and of the perception of signs as a whole. It also demonstrates that the overall comparability of trademarks may suffice to establish infringement when a competitor develops a similar brand, both visually and conceptually.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can a trademark evoke a geographical origin without being considered misleading?
Yes. A trademark may refer to a region or territory provided that this reference does not lead consumers to believe, incorrectly, that the products actually originate from that place. In this case, the Court held that “Le Petit Marseillais” referred to a marketing universe rather than to a geographical guarantee.

2. Is the actual place of manufacture decisive in assessing trademark validity?
Not systematically. The place of manufacture becomes legally relevant only if the trademark explicitly suggests a protected or certified origin. In the absence of an official geographical indication, a mere discrepancy between the evocation of the sign and the actual production site is insufficient to establish deception.

3. Is the mere use of different terms sufficient to exclude a likelihood of confusion?
No. The presence of different terms does not, in itself, exclude the likelihood of confusion. Judges assess the sign as a whole, including its structure, rhythm, positioning, and overall impact. In this case, despite the differences between “Marseille” and “Zef,” the overall similarity was decisive.

4. Do packaging and commercial presentation influence legal analysis of counterfeiting?
Yes. Courts take into account the overall presentation of products, including graphic elements, colors, illustrations, and visual identity. When these elements reinforce the proximity between two brands, they may contribute to a finding of imitation.

5. What risks does a company face when adopting a trademark too close to that of an established competitor?
It may face counterfeit proceedings resulting in a prohibition on use, withdrawal of products from the market, payment of damages, and, in some cases, destruction of infringing materials. It may also suffer lasting commercial harm due to loss of credibility.

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

Introduction

Trademark protection in Sint Maarten represents a strategic issue for companies seeking to secure their intangible assets in the Caribbean. As an autonomous country within the Kingdom of the Netherlands since 2010, Sint Maarten has its own trademark protection system, which is distinct from the Benelux system and does not fall within the territorial scope of the European Union trademark.

Therefore, a rigorous approach is essential for effective trademark protection in Sint Maarten in order to avoid any legal vulnerability or fraudulent exploitation.

What is the legal framework for trademark protection in Sint Maarten?

Since its institutional reform, Sint Maarten has established its own legislation governing trademark rights. Unlike the European Netherlands, trademark protection is not administered by the Benelux Office for Intellectual Property (BOIP). The applicable legal framework is local in nature, although it is strongly influenced by Dutch and European legal standards.

Since January 1, 2015, trademark applications may be filed electronically via the technical infrastructure administered by the BOIP, while legal decisions remain under the authority of the Bureau Intellectuele Eigendom of Sint Maarten (BIE SXM).

This system ensures the existence of a secure electronic register, a modernized filing procedure and efficient administrative management. However, it is important to emphasize that neither a Benelux trademark nor a European Union trademark produces automatic legal effects in Sint Maarten.

How to file a trademark in Sint Maarten?

Before filing a trademark application, conducting a prior art search is essential to identify potential conflicts with existing registered trademarks, locally used trade names, domain names registered under the “.sx” extension, or well-known signs.

Trademark applications are filed online via the platform operated in cooperation with the BOIP.

The application must include the following elements:

• accurate identification of the applicant
• representation of the sign to be protected
• designation of the goods and services according to the Nice Classification
• payment of the official filing fees

The office conducts both a formal and substantive examination, verifying in particular the distinctiveness of the sign and its compliance with legal requirements.

After publication, an opposition period is opened, allowing holders of prior rights to take action. If there is no opposition or refusal to grant the trademark by the office, registration is granted and the trademark is protected.

What rights does a registered trademark confer in Sint Maarten?

Trademark registration grants the owner an exclusive right of use within the territory for the goods and services designated.

This exclusive right enables the trademark owner to prohibit:

• the use of an identical sign for identical goods or services
• the use of an identical or similar sign for identical or similar goods or services where there is a likelihood of confusion in the mind of the relevant public
• the use of a sign that takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trademark

Protection extends to commercial, advertising, and digital uses. It covers shop signs, promotional materials, online platforms, and similar domain names, particularly those using the “.sx” extension.
Trademark owners may also take action against the use of identical or similar signs for related goods or services when a likelihood of confusion is established.

In the event of infringement, the first step generally consists of sending a cease-and-desist letter requesting voluntary cessation of the unlawful use.

If the infringement persists, legal proceedings may be initiated before the competent courts of Sint Maarten in order to obtain:

• cessation of the infringing acts
• compensation for damages
• and, where appropriate, interim or injunctive relief

Active monitoring of new trademark applications is essential to identify potential conflicts at an early stage. Monitoring “.sx” domain names, local marketplaces, and digital advertising uses is also particularly important in a highly digitalized market.

How to manage trademark disputes and enforcement in Sint Maarten?

The legal framework applicable in Sint Maarten provides several mechanisms for challenging the registration or use of a trademark that infringes prior rights.

An opposition may be based on:

• a prior registered trademark
• a protected trade name
• or any other recognized intellectual property right

The assessment of likelihood of confusion relies on a global analysis that considers the similarity of the signs, the proximity of the goods or services involved, and the perception of the relevant public.

In cases of counterfeiting, the courts of Sint Maarten have jurisdiction to hear the dispute. The principles applied in trademark matters are largely inspired by Dutch and European trademark jurisprudence.

Interaction with international trademark protection

Trademark protection in Sint Maarten must be considered within an international protection strategy.

Neither a European Union trademark nor a Benelux trademark produces direct legal effects in this territory.

Companies operating in the Caribbean region or internationally should therefore structure a coherent trademark portfolio that may include, depending on their needs:

• a local trademark filing in Sint Maarten
• a Benelux trademark
• a European Union trademark
• and, where appropriate, an international registration through the Madrid System

Such a strategy ensures consistent territorial coverage and reduces the risk of opportunistic trademark registrations in jurisdictions not covered by the main trademark portfolio.

Conclusion

Trademark protection in Sint Maarten relies on an autonomous legal system that requires a specific local filing, as neither European nor Benelux trademarks apply automatically.

Businesses must therefore adopt a proactive strategy in order to prevent conflicts, preserve the economic value of their trademarks, and secure their commercial investments in the Caribbean region.

A coordinated approach combining trademark filings, monitoring, and enforcement mechanisms remains the key to achieving effective and sustainable protection.

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

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

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

Q&A

How long does it take to register a trademark in Sint Maarten?
The processing of a trademark application by the Director of the Sint Maarten Intellectual Property Office takes approximately four months. During this period, the office examines the application to verify compliance with legal and administrative requirements. Once the procedure is completed and no objections arise, the office issues a certificate of registration confirming the trademark owner’s rights.

What is the duration of trademark protection in Sint Maarten?
A registered trademark in Sint Maarten is protected for a period of ten years from the filing date. This protection may be renewed indefinitely for successive ten-year periods, subject to payment of the applicable renewal fees.

Must a trademark be used in Sint Maarten?
Yes. As in many jurisdictions, a registered trademark may be subject to revocation if it is not genuinely used for an extended period. Effective use of the trademark is therefore essential to maintain the validity of the rights.

Can a trademark be protected in Sint Maarten through the Madrid international system?
Yes. Companies with an international protection strategy may use the Madrid System administered by the World Intellectual Property Organization (WIPO). This mechanism allows applicants to file a single international application and designate multiple territories, including Sint Maarten.

Is it necessary to appoint a local representative when filing a trademark in Sint Maarten?
Depending on the applicant’s situation, representation by an intellectual property attorney or specialized lawyer is strongly recommended, particularly when the trademark owner is not established in Sint Maarten. Appointing a representative helps ensure compliance with local legal requirements, optimizes the drafting of the goods and services specification, and anticipates potential objections or oppositions.

This publication is intended to provide general information and highlight certain legal issues. It is not intended to apply to specific situations and should not be construed as legal advice.

Introduction

The rise of digital marketing and paid search advertising has profoundly transformed the use of trademarks on the Internet. In particular, the purchase of keywords corresponding to third-party trademarks raises significant legal issues at the intersection of trademark law, intermediary liability, and digital law.

This article provides a structured and rigorous analysis of the conditions under which the use of trademarks as keywords is lawful, as well as the limits of the limited liability regime applicable to hosting providers in France.

Use of third-party trademarks as keywords : a regulated principle

The purchase of keywords corresponding to a third-party registered trademark, particularly in the context of paid search campaigns, is not unlawful per se. Both European and French case law have acknowledged the permissibility of such practices, provided that they respect the essential function of a trademark, namely to guarantee the origin of goods or services.

Accordingly, the use of a keyword identical to a trademark is considered lawful where it does not adversely affect that function, does not create a likelihood of confusion in the mind of the average consumer, and does not take unfair advantage of the reputation of the protected sign.

Conversely, such use becomes unlawful where the advertisement displayed creates ambiguity as to the origin of the goods or services or suggests the existence of an economic link with the trademark owner. This is particularly the case where the advertisement reproduces the third party’s trademark or exploits its reputation to divert customers. In such circumstances, courts will find an infringement of the essential function of the trademark, thereby constituting trademark infringement.

Advertiser liability : a principle of general law

An advertiser who selects a keyword corresponding to a trademark incurs direct liability, as it is deemed to be making use of the sign in the course of trade.

Such liability may arise on the basis of trademark infringement within the meaning of Articles L.713-2 et seq. of the French Intellectual Property Code, as well as on grounds of unfair competition or parasitic conduct.

Courts adopt a concrete and contextual analysis, taking into account the content of the advertisement, the perception of the average consumer, and the clarity of the commercial origin of the goods or services. The degree of reputation of the trademark is also a relevant factor, as well-known trademarks benefit from enhanced protection against undue exploitation.

The limited liability regime of hosting providers in France

The legal framework governing hosting providers derives from the French Law of June 21, 2004 on Confidence in the Digital Economy (LCEN), which transposes the EU E-Commerce Directive. This framework establishes a regime of limited liability for technical service providers.

Hosting providers are not subject to a general obligation to monitor the content they store. This principle constitutes a cornerstone of digital law, aimed at preserving innovation and the development of online services.

In practice, a search engine or advertising platform is not required to proactively verify the legality of keywords selected by advertisers. The liability of a hosting provider may only be incurred where it has actual knowledge of manifestly unlawful content and fails to act expeditiously to remove or disable access to such content. Such knowledge presupposes a sufficiently precise and legally substantiated notice, followed by a diligent response from the provider.

Conversely, it is deemed to be a publisher where it plays an active role in the selection, presentation, or promotion of content.

Accordingly, a platform involved in optimizing advertisements or actively suggesting keywords may face increased liability exposure.

French and European case law : guiding principles

The general principle was first established by the Court of Justice of the European Union, in its ruling of March 23, 2010, Google France SARL and Google Inc. v Louis Vuitton Malletier (C-236/08).

The Court held that a referencing service provider such as Google does not make “use” of a trademark within the meaning of trademark law where it merely plays a neutral, technical, and passive role. In such circumstances, it may benefit from the limited liability regime provided for under Directive 2000/31/EC.

Under French law, this analysis has been confirmed and further clarified in a decision of the French Supreme Court dated January 20, 2015 (No. 11-28.567). The Commercial Chamber reiterated, on the one hand, the applicability of the limited liability regime to technical service providers acting as hosts, and, on the other hand, the absence of trademark infringement solely on the basis of the use of a sign as a keyword on the Internet.

In that case, SNCF alleged that several competing companies had used its trademarks, including well-known marks, as keywords in order to redirect internet users to their own websites. It also argued that the technical service provider involved could not benefit from hosting provider status due to its allegedly active role, and further claimed the existence of misleading commercial practices suggesting a commercial link.

However, the Cour rejected all of these arguments, holding that the conditions for engaging the liability of the service provider were not met and that the use of trademarks as keywords did not, in itself, constitute an infringement of trademark rights.

French courts thus follow the line of European case law by adopting a concrete approach, based on the actual role played by the service provider and on the perception of the average internet user regarding the origin of the goods or services.

SEO and legal best practices for businesses

An effective strategy requires constant vigilance in the drafting of advertisements and in the use of third-party distinctive signs. Businesses must avoid any ambiguity, refrain from reproducing competitors’ trademarks in advertising content, and implement monitoring and rapid response mechanisms in the event of infringement. A structured approach enables the reconciliation of marketing performance with legal certainty.

Conclusion

The use of third-party trademarks as keywords constitutes a powerful strategic tool, yet one that is strictly regulated. French and European law strike a balance between freedom of online commerce and the protection of intellectual property rights, clearly distinguishing between advertiser liability and that of technical intermediaries.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. Can a company bring legal action even if its trademark does not appear in the advertisement?
Yes. Courts recognize that infringement may be established even without visible reproduction of the sign, where the keyword triggers advertising that exploits the economic value of the trademark.

2. Is achieving a higher ranking than a competitor in sponsored results on the Internet unlawful?
No. Ranking itself is not unlawful; what matters is how the advertisement is perceived by the internet user.

3. Can a platform refuse to remove a contested advertisement?
Yes, where the notice is insufficiently substantiated or does not establish the manifestly unlawful nature of the content. Hosting providers retain a degree of discretion when processing notices.

4. Is the use of similar (but not identical) keywords risky?
Yes. The use of similar signs may incur liability where it creates a likelihood of confusion or exploits the proximity to a protected trademark.

5. Is an action based on unfair competition more effective than trademark infringement?
In certain cases, yes. It allows courts to address conduct that does not strictly meet the criteria for infringement but nonetheless constitutes unfair appropriation of another’s business or parasitic behavior.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Recently alerted by the cruel practices endured by crocodiles during their slaughter for the production of the famous Birkin bags from the Hermès fashion house, the singer Jane Birkin informed Hermès about her intention to rename the crocodile-skin handbag bearing her name. The singer no longer wishes her name to be associated with such practices.

The Birkin bag, created in the early 1980s following a meeting between the singer and Jean-Louis Dumas, the chief executive of Hermès at that time is, however, one of the leading bags from the Hermès fashion house since its inception date.

Alongside arousing the curiosity of fans of the luxury brand Hermès, this news has also piqued the interest of lawyers. Indeed, in the face of such news, the question that arises is whether Jane Birkin can legally rename the crocodile-skin bag.

The fact of renaming a designer bag bearing the name of a star is not an isolated practice since there is a myriad of bags bearing the name of their muse. To cite only the most famous, it is noteworthy to mention the following designer handbags namely: So Kelly from Hermès as a tribute to Grace Kelly, Jackie from Gucci, Lady Dior, or B. Bardot from Lancel.

Since these names are associated with handbags, i.e. with goods, they were obviously registered as trademarks. This is the case, for example, for the name Birkin, filed and registered both as a French and international trademark by HERMES INTERNATIONAL since 1997 and the “So Kelly”, filed in 2009. The same holds true for the “Jackie” handbag, which refers to Jackie Kennedy and was filed by the Italian company GUCCIO GUCCI in 2008.

The practice of registering a surname as a trademark has been upheld by legislation and the French courts for a long time.

The surname is a personality right which is inalienable and indefeasible. Yet Article L.711-1, paragraph 2 a) of the French Intellectual Property Code provides that surnames can be registered as a trademark. Moreover, since the 1985 case of Bordas (Cass. Com. March 12, 1985, No. 84-17163), it is settled law that there can be an agreement to the effect of the commercial use of a surname.

Subsequently, the cour de cassation specified the conditions under which a surname could be registered as a trademark. In a judgment datedMay 6, 2003 (Cass. Com. No. 00-18192) the cour de cassation held that a founding partner who has agreed to the inclusion of his name in the company name must also expressly waive his ownership rights and allow the company to register the said surname as a trademark. In other words, the use of the surname of a third party is limited to what has been expressly authorized by the name holder.

Thereafter, the cour de cassation intervened in the Inès de la Fressange case regarding the use of her surname as a trademark by the fashion company bearing her name. After being dismissed from the company, the fashion designer had sought to recover the rights affiliated with her name by invoking the potentially misleading nature of the trademark on the basis of Article L. 714-6 b) of the Intellectual Property Code. She claimed that consumers would be misled into believing that they were buying clothes designed by her. But this was not the stance taken by the cour de cassation which, on the basis of Article 1628 of the Civil Code and the implied warranty against eviction principle, dismissed the designer’s claim (Cass. Com. January 31, 2006, N ° 05-10116).

A few months later, the Court of Justice of the European Union also faced a similar question in the Elizabeth Emanuel case (ECJ March 30, 2006. Aff . C-259 /04. Elizabeth Florence Emanuel v Continental Shelf). The issue in that case concerned the sale by the designer Elizabeth Emanuelof her fashion company bearing her name and the assets attached thereto, including the ELIZABETH EMANUEL trademark. However, following the sale, the fashion designer filed a claim for the revocation of rights against the trademark which was transferred accordingly, deeming that, just as was the case with Madame de la Fressange, the public was confused since she was no longer the designer of the clothes marketed under the trademark.

The Court held that the ELIZABETH EMANUEL trademark was not, in itself, likely to mislead the public as to the origin of the clothes. But the Court opined that it is for the national court to verify whether there is, on behalf of the company holding the trademark, an intention to make the consumer believe that the designer is still involved in the design of clothes. This would thus be tantamount to fraudulent tactics likely to make the company liable.

In the present case, since Jane Birkin is not associated with the design of the handbag, she cannot rely on this approach for the crocodile-skin handbag to be renamed.

It therefore remains to be seen whether the intention to rename the Birkin crocodile-skin handbag can materialize to the extent that the surname of the singer, registered as a trademark, could be considered as part of the assets of the Hermès company. The outcome of this case shall enlighten us.

Furthermore, on 11 September last, the saddler welcomed in a press release that Jane Birkin seemed to be satisfied by the measures adopted by the Hermès house following the controversy appeared this summer.

Introduction

The entry into force of the digital publishing contract in France constitutes a structural reform of copyright law as applied to the book industry. By formally incorporating digital exploitation into the intellectual property Code, the French legislature put an end to persistent legal and contractual uncertainty and rebalanced the relationship between authors and publishers.

Digital publishing can no longer be treated as a mere technical extension of print publishing. It is now governed by an autonomous, demanding and strictly regulated legal framework. This evolution raises practical questions: What new obligations do publishers face? How is digital remuneration calculated? Under what circumstances may an author recover their digital rights?

A reform integrated into the French Intellectual Property Code

The ordinance of November 12, 2014 formally integrated digital exploitation into the statutory regime governing publishing agreements. Articles L.132-1 et seq. of the French Intellectual Property Code establish a fundamental principle: digital exploitation must be expressly provided for and precisely regulated.

This clarification put an end to overly broad clauses providing for the transfer of rights “on all media now known or unknown.” Such wording is no longer sufficient to secure the lawful exploitation of works in digital form.

Publishing agreements must now distinguish between print and digital modes of exploitation while ensuring overall economic consistency. This requirement directly addresses a recurring question raised by authors: may a publisher exploit a work in digital format without a specific clause? The answer is clearly no.

Digital exploitation: an autonomous and regulated obligation

One of the reform’s major contributions is the extension of the obligation of continuous and permanent exploitation to digital formats. A publisher cannot rely on mere passive availability. It must ensure effective distribution, genuine accessibility and consistent promotion of the work across digital platforms.

This obligation implies active conduct. The work must remain available to the public under normal commercial conditions. Prolonged unavailability or total absence of promotional efforts may constitute a contractual breach.

Transparency is the second cornerstone of the system. Royalty statements must clearly distinguish between print and digital sales. Authors must be able to identify download volumes, generated revenues and the calculation basis for their remuneration. This annual reporting obligation restores informational balance in a technological environment often characterized by opacity.

Author remuneration in the digital environment

The guiding principle remains proportional remuneration. In the digital sphere, this rule is particularly significant given the multiplicity of technical intermediaries involved in distribution.

Authors’ royalties are calculated on revenues derived from digital exploitation, in accordance with contractual provisions that must be precisely defined. Although digital platforms have reshaped the value chain, they have not altered contractual responsibility. The publisher remains the author’s primary contractual counterpart.

It is the publisher’s responsibility to ensure financial traceability and to avoid ambiguity regarding the royalty calculation basis. In practice, negotiations frequently focus on whether royalties are calculated on the retail price, the publisher’s net receipts, or the actual revenues received after platform commissions.

Termination, reversion of rights and corrective mechanisms

The entry into force of the digital publishing contract introduced reinforced protective mechanisms. In the event of failure to comply with the obligation of continuous and permanent exploitation, the author may formally notify the publisher to remedy the breach. If the publisher fails to comply within the prescribed period, termination may be declared.

This procedure serves as a critical safeguard, preventing publishers from retaining digital rights without genuine intent to exploit them.

The reform also provides for mechanisms allowing the re-examination of economic conditions. Where market developments substantially alter the contractual balance, renegotiation may be requested. This reflects an adaptation of copyright law to technological and commercial evolution.

Strategic implications for authors and publishers

The entry into force of the digital publishing contract extends beyond a technical adjustment. It reshapes contractual governance within the book industry.

For publishers, it requires rigorous legal structuring and transparent accounting practices. Any drafting imprecision may result in litigation or loss of exploitation rights.

For authors, it strengthens control over the digital dissemination of their works. They are entitled to demand effective exploitation, detailed reporting and remuneration consistent with statutory principles.

In a context where ebooks coexist with audiobooks, subscription models and international platforms, contractual security has become a central component of publishing strategy.

Conclusion

The entry into force of the digital publishing contract in France represents a decisive step in adapting intellectual property law to contemporary uses. It imposes transparency, effective exploitation and economic balance.

This new legal framework enhances author protection while professionalizing publishing practices. It calls for heightened vigilance in drafting and negotiating publishing agreements.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. Must a digital publishing contract include a specific digital clause?
Yes. Since the 2014 reform, digital exploitation must be expressly provided for and governed by distinct contractual provisions. A general clause is no longer sufficient to secure the transfer of digital rights.

2. What does the obligation of continuous and permanent exploitation mean in digital publishing?
The publisher must ensure effective and ongoing digital availability of the work. Merely listing the work online without active distribution or promotion may constitute a contractual breach.

3. How are royalties calculated for an ebook?
Royalties are generally based on a percentage of revenues derived from digital exploitation. The contract must clearly define the calculation basis to prevent ambiguity or disputes.

4. Does an old clause covering “all media now known or unknown” include digital formats?
Not necessarily. Current legal standards require precise identification of transferred rights. Overly broad clauses may be challenged if digital exploitation is not specifically detailed.

5. Under what circumstances may an author recover their digital rights?
An author may seek termination of its publishing contract in the event of failure to ensure continuous exploitation or other serious contractual breaches. After formal notice and absence of remedy, digital rights may revert to the author.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

The development of tools to combat cybersquatting, in particular DPML (Domains Protected Marks List) and MPML (Mind + Machines’ Protected Marks List) mechanisms, is a significant shift in online trademark protection. In the face of the proliferation of generic top-level domains (gTLDs) and the industrialisation of fraudulent domain name registrations, reactive litigation alone is no longer sufficient.

The key issue is no longer how to recover an infringing domain name, but how to prevent its registration altogether. In this context, preventive blocking mechanisms represent a decisive strategic opportunity for trademark owners.

A digital environment conducive to large-scale cybersquatting

The expansion of generic top-level domains (new gTLDs), initiated under the ICANN framework, has profoundly transformed the digital environment for rights holders. Whereas monitoring efforts were historically focused on a limited number of strategic extensions such as .com, .net or .fr, the landscape now includes hundreds of thematic and sector-specific extensions.

This fragmentation has created particularly favourable conditions for cybersquatting. Practices have become more diversified and sophisticated, including mass speculative registrations following public announcements, targeted typosquatting, exploitation of SEO vulnerabilities, phishing campaigns and identity theft schemes.

In such an environment, relying solely on post-infringement remedies often results in a continuous and costly defensive effort.

For more information about online infringements, please see our previously published article.

Structural limitations of traditional anti-cybersquatting procedures

Trademark owners traditionally rely on mechanisms such as the UDRP (Uniform Domain Name Dispute Resolution Policy), the URS (Uniform Rapid Suspension System) or national court actions. While these tools remain essential, they are fundamentally curative in nature.

Each procedure requires evidence of bad faith, prior rights and a likelihood of confusion. They involve legal costs, procedural timelines and internal resource allocation. Most importantly, they intervene only after the infringement has occurred, sometimes after reputational damage has already been inflicted.

As the number of extensions increases, the cumulative cost of individual enforcement actions may become disproportionate. The strategic challenge is therefore to shift from a reactive to a preventive approach.

DPML : a large-scale preventive blocking tool

The DPML (Domains Protected Marks List) is based on a straightforward but powerful principle : preventing the registration of a domain name corresponding to a trademark across a portfolio of extensions operated by a specific registry.

Available to trademark owners whose marks are recorded in the Trademark Clearinghouse (TMCH), the mechanism does not grant ownership of the domain names but blocks their registration by third parties. It operates as a preventive neutralisation tool.

The strategic value of DPML lies in its multiplier effect. Instead of defensively registering a trademark across each relevant extension, the owner activates a single mechanism covering an entire portfolio of extensions. This approach rationalises overall costs and simplifies administrative management.
For highly exposed or international trademarks, DPML offers a proportionate response to industrial-scale cybersquatting risks.

MPML : a blocking tool specific to the Minds + Machines registry

The MPML (Mind + Machines’ Protected Marks List) is a blocking service implemented by the Minds + Machines (MMX) registry.

Inspired by the DPML model, it enables trademark owners whose marks are :

• registered,
• composed of at least three characters, and
• validated with the TMCH (Trademark Clearinghouse),

to obtain an identical match block, and, depending on the options available, an extended block, across the domain name extensions operated by Minds + Machines.

Unlike a standalone multi-registry mutualization system, the MPML applies exclusively to the portfolio of TLDs operated by this registry (for example: .law, .fashion, etc.).

Certain domain names may be excluded from the mechanism (in particular names reserved or blocked at the ICANN level). The duration and specific terms of the block vary in accordance with the applicable registry conditions.

The MPML therefore follows a logic comparable to that of the DPML : a preventive tool, linked to a specific registry, designed to optimize protection across its portfolio of extensions.

An economic and reputational opportunity for trademark owners

The benefits of blocking mechanisms go beyond reducing litigation. They directly contribute to reputational protection and the safeguarding of strategic launches.

The period preceding the public announcement of a new product or trademark is particularly sensitive. Speculative registrations frequently occur within hours of an official communication. Activating a blocking mechanism beforehand can effectively prevent such opportunistic behaviour.

A recurring scenario involves technology or financial companies targeted by phishing campaigns using domain names identical to or closely resembling their trademarks. Preventive blocking significantly reduces the vectors available for impersonation.

DPML and MPML therefore form part of a broader digital risk management strategy.

Conclusion

DPML and MPML now represent a major strategic opportunity for trademark owners seeking to anticipate cybersquatting risks. When implemented within a coordinated domain name management policy, these mechanisms strengthen the resilience of intangible asset portfolios and enhance corporate digital credibility.

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

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

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

Q&A

1. Does DPML completely prevent any use of a trademark in a domain name ?
No. DPML blocks the exact match of the protected sign within the covered extensions but does not automatically neutralise complex combinations or additional descriptive terms. Complementary monitoring remains necessary.

2. Can a DPML block be lifted if the trademark owner wishes to use the domain name ?
Yes. The trademark owner may generally override the block in order to register and use the relevant domain name, subject to the registry’s applicable conditions. This flexibility allows strategic adjustments.

3. Do DPML and MPML cover country-code extensions such as .fr, .de or .cn ?
No. These mechanisms primarily apply to certain generic top-level domains (gTLDs). Country-code domains are governed by specific national registry policies and require a dedicated strategy.

4. Can an unregistered trademark benefit from DPML protection ?
Access to blocking mechanisms requires a registered trademark validated through the Trademark Clearinghouse, excluding unregistered or purely commercial designations.

5. Does implementing DPML eliminate the need for domain name monitoring ?
No. While blocking significantly reduces risk, it does not replace active monitoring, particularly for extensions not covered or for variants outside the scope of the blocking mechanism.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

The Court of Justice of the European Union (CJEU) has provided an essential clarification: retail services, when properly defined, can be protected as services falling under Class 35 of the Nice Classification. This recognition applies not only to the sale of goods but also to the sale of services, thereby expanding the scope of trademark protection for businesses operating in hybrid commercial environments. Understanding the legal framework, the conditions of admissibility, and the practical implications is crucial for any company wishing to secure its brand.

The legal framework of retail services in Class 35

Trademark law in the European Union was harmonised by Directive 2008/95/EC, later replaced by Directive (EU) 2015/2436. Class 35 of the Nice Classification covers services such as advertising, business management, and retail trade.

The long-debated question was whether the act of commercialising goods or services constituted an autonomous service eligible for trademark protection. The CJEU answered positively, provided that applications respect the requirement of clarity and precision set out in EU law.

The conditions of admissibility for retail services

To be accepted in Class 35, retail services must:

• Specify the types of goods or services concerned (cosmetics, clothing, financial services, etc.);
• Be presented as an activity distinct from the goods themselves;
• Be drafted so that authorities and competitors can clearly understand the scope of protection claimed.

This requirement stems directly from the IP Translator judgment (CJEU, C-307/10), which imposes a precise and unequivocal wording of trademark specifications.

The Netto Marken-Discount ruling: scope and practical implications

In this case (10 july 2014 C-420/13), the CJEU confirmed that retail services cover both goods and services. These activities therefore fall within Class 35, as long as their wording is sufficiently precise.

Practical implication: a trademark registration can now protect both the physical sale of goods (e.g., supermarkets, fashion stores) and the sale of intangible services (e.g., online travel agencies, financial service platforms).

This reinforces the ability of brand owners to act against third parties seeking to exploit a trademark in a distribution context.

The boundary between goods and services in retail

The ruling clarifies a previously delicate distinction. Traditionally, goods fell within Classes 1 to 34, while services belonged to Classes 35 to 45. By recognising the retail of services, the CJEU acknowledges the evolution of commerce, where companies often act as both producers and service providers.

Example: a telecom operator markets mobile phones (goods) but also mobile subscription plans (services). Trademark protection must reflect this dual reality.

Jurisprudential developments in 2025

Since the 2014 ruling, EUIPO practice has evolved. In 2025, case law confirms that:

• Specifications such as “retail services for pharmaceutical preparations” are admissible;
• Overly broad wording such as “all retail services” is refused;
• Courts require that evidence of use specifically relates to retail services, pursuant to Article 18 EUTMR.

The General Court has recently emphasised that these services must demonstrate a separate economic value to justify protection.

Practical guidance for trademark applicants

To optimise protection, businesses should:

• Seek advice from industrial property specialists;
• Draft specific descriptions of retail services;
• Prepare evidence of use in advance;
• Anticipate international divergences, as some jurisdictions (United States, China) do not recognise retail services in the same way.

An integrated strategy is therefore essential to avoid gaps in brand protection.

Conclusion

The recognition of retail services in Class 35 represents a significant step forward for trademark protection. The CJEU’s approach reflects commercial developments and provides businesses with an effective tool to secure their activities, both for goods and for services.

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. Does the CJEU recognise retail services as protectable in Class 35?
Yes, provided they are defined with clarity and precision.

2. Does this protection cover only goods?
No, it also extends to intangible services.

3. What details must the application include?
It must specify the types of goods or services concerned.

4. What is the risk of overly broad or vague wording?
The application may be refused for lack of precision.

5. What is the practical importance of the Netto Marken-Discount ruling?
It broadens trademark protection to new forms of commerce.

Introduction

The creation of the “digital safe” label by the French Data Protection Authority (CNIL) formed part of a broader structural evolution of digital law, driven by the rise of dematerialization and the growing need for data security. As companies increasingly outsourced the storage of their strategic information, the reliability of storage systems became a central legal issue, both in terms of personal data protection and electronic evidence.

However, the entry into force of the General Data Protection Regulation (GDPR) in 2018 significantly reshaped the regulatory tools available to supervisory authorities. In this context, the CNIL has gradually abandoned its system of national labels in favour of European certification mechanisms, notably those provided for under Article 42 of the GDPR.

As a result, the “digital safe” label no longer constitutes an operational mechanism. It nevertheless remains a key reference for understanding the legal and technical requirements applicable to secure digital storage services.

Definition of a digital safe under CNIL guidelines

In its reference framework dated January 23, 2014, the CNIL defined the digital safe as a secure online storage space enabling the preservation of electronic documents in various formats.

Such systems rely on an architecture ensuring that both data and associated metadata remain accessible exclusively to the data subject or to authorised individuals. This strict access control is a fundamental component of personal data protection.

From a legal standpoint, a digital safe is based on three core guarantees :

• confidentiality,
• integrity,
• availability of the stored information.

It is therefore not merely a technical tool, but a mechanism designed to ensure both data security and the evidentiary value of electronic documents.

The rationale behind the CNIL digital safe label

The CNIL digital safe label was introduced in response to the increasing need to structure a market driven by the electronic storage of high-value legal documents, such as contracts, employment data, and accounting records. Based on the French Data Protection Act of January 6, 1978, this mechanism enabled the CNIL to certify that digital services complied with high data protection standards.

The label pursued a dual objective :

• On the one hand, it provided users with a trusted benchmark to identify secure solutions.
• On the other hand, it contributed to structuring the market by establishing objective criteria for reliability and security.

However, this national approach was fundamentally challenged by the European harmonisation introduced by the GDPR. The Regulation now promotes certification mechanisms at EU level, aimed at ensuring consistency across the digital market within the Union. Consequently, the CNIL no longer issues labels under the French Data Protection Act.

Conditions for obtaining the label

The CNIL framework was based on twenty-two cumulative requirements covering the entire data lifecycle. In particular, it required that the provider be responsible both for the technical operation of the service and its provision to end users, thereby ensuring full accountability for all data processing activities.

The requirements addressed access security, user rights management, the robustness of cryptographic mechanisms, and the conditions governing data storage and retrieval. Particular emphasis was also placed on traceability and transparency towards users.

The system further required continuous compliance, based on regular audits and proactive risk management. Although no longer in force, these requirements remain highly relevant under the GDPR, particularly with regard to data security obligations.

The specific regime for sensitive data

The CNIL framework established a clear distinction between ordinary data and sensitive data, in particular health data, which were subject to enhanced safeguards. Due to their nature, such data could not be stored in a digital safe without complying with specific requirements, notably the use of an authorised hosting provider, as provided for under Article L1111-8 of the French Public Health Code.

This approach anticipated the GDPR’s risk-based framework, which imposes heightened protection for sensitive data and requires additional safeguards in terms of security and processing. It reflects a hierarchy of risks that now lies at the core of European data protection law.

Impact on compliance and electronic evidence

Although predating the GDPR, the CNIL framework anticipated many of its core principles, particularly in relation to data security and risk management. However, in the absence of a maintained labelling system, the use of a digital safe can no longer be presented as formal proof of compliance.

It nevertheless constitutes a relevant indicator of the implementation of appropriate technical and organisational measures within the meaning of Article 32 GDPR, thereby contributing to the demonstration of the accountability principle. The role of the framework has therefore shifted : from a certification tool, it has become a technical and evidentiary benchmark that may be relied upon in the context of audits or litigation.

In addition, the requirements associated with digital safes should be considered in light of Regulation (EU) No 910/2014 of July 23, 2014 (eIDAS), which governs trust services and aims to ensure the legal validity of electronic documents across the European Union. Although it does not directly regulate storage systems, it enhances the reliability of stored documents by ensuring their integrity, traceability and enforceability, notably through mechanisms such as electronic signatures and time-stamping.

Conclusion

While the creation of the CNIL digital safe label marked a significant step in the legal framework governing digital storage services, its discontinuation in favour of European certification mechanisms reflects a broader evolution in regulatory approaches.

This development illustrates the transition from a national labelling system to a European framework based on accountability and the ongoing demonstration of compliance, thereby confirming the central role of the accountability principle in the regulation of the digital economy.

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

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

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. What is the difference between a digital safe and a standard cloud storage solution ?
A digital safe differs from a cloud service due to its legal framework and enhanced safeguards. It incorporates mechanisms ensuring traceability, document integrity, and long-term preservation under conditions that guarantee evidentiary value. Although no longer based on a formal CNIL label, these requirements remain consistent with the security standards expected under the GDPR and the eIDAS Regulation.

2. Does the CNIL digital safe label still exist ?
The CNIL’s labelling system, as it existed prior to the GDPR, has been discontinued. It has been replaced by European certification mechanisms under Article 42 GDPR. However, no equivalent certification specifically dedicated to digital safes currently exists.

3. Are there equivalent requirements today ?
The requirements underlying the former CNIL label continue to exist under the GDPR, particularly the obligation to implement appropriate technical and organisational measures (Article 32), as well as through sectoral standards and best practices. The 2014 CNIL framework remains a useful reference in this respect.

4. How does a digital safe contribute to GDPR compliance ?
The use of a digital safe aligned with high security standards demonstrates the implementation of appropriate safeguards. While it no longer constitutes formal certification, it remains a relevant evidentiary element in demonstrating compliance with the accountability principle.

5. Are documents stored in a digital safe enforceable abroad ?
Yes, provided that their integrity, traceability and reliability can be demonstrated. The use of a secure digital safe may strengthen evidentiary value, particularly within the EU framework under eIDAS, although recognition ultimately depends on applicable procedural rules in each jurisdiction.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.