According to the fundamental legal principle “Fraus omnia corrumpit” (fraud corrupts everything), any trademark filed fraudulently cannot legitimately confer a valid protection right to the applicant.

The inherent complexity of the concept of fraud in the field of trade mark law stems from its lack of explicit definition, both in French law and in European Union law.

In ia ruling of January 31, 2024, the French Supreme Court -Cour de cassation clarified this concept, stating that the absence of a likelihood of confusion between the contested trademark and the prior trademark, as well as the absence of intent to harm by the owner of the contested trademark, are not grounds to dismiss fraud.

Context of the case

In this case, the company Turlen filed a request for invalidity with the Director General of the French Trademark office INPI against a word trademark that exactly reproduced its earlier mark and covered various similar goods and services, arguing damage to its reputation and a likelihood of confusion. The Director General of the INPI partially granted the request, cancelling the contested trademark for some goods and services while maintaining its validity for others. Consequently, Turlen appealed this decision to the Paris Court of Appeal.

Decision of the Court of Appeal

By a ruling dated February 11, 2022, the French Court of Appeal rejected Turlen’s claim, concluding that there was no likelihood of confusion between the two trademarks for certain goods and services. In addition, the Court held that without clear evidence of the applicant’s intent to harm, it was not possible to invalid the contested trademark for those goods and services for which no prejudice to prior rights had been established. Following this decision, the company filed an appeal with the Court of Cassation.

The Court of Cassation must determine if proving a likelihood of confusion between a contested trademark and a prior trademark is required to establish the existence of fraud in trademark application?

Strict Interpretation of Fraud

The decision of the Court of Cassation in this case represents a particularly strict interpretation of the concept of fraud in trademark registration. By overturning the Court of Appeal’s ruling, the high court affirmed that the absence of a likelihood of confusion or evidence of infringement of prior rights does not necessarily exclude the existence of fraud in the filing of a trademark application.

The Court of Cassation ruled that neither the absence of proof of intent to harm by the owner of the contested trademark, nor the validity of the trademark for certain goods and services, are sufficient to exclude the possibility of fraud at the time of filing. Indeed, fraud, as a cause of absolute nullity, must be considered independently of a potential infringement of prior rights. The Court of Cassation thus criticized the lower court judges for misapplying the legal rules by partially dismissing the fraudulent nature of the contested trademark filing.

Indeed, relative nullity applies in cases of infringement of prior rights, while absolute nullity, which includes fraud, affects the overall validity of the trademark. In this case, the Court of Cassation observed that the lower court judges had confused the two categories of nullity. They wrongly inferred that the absence of a likelihood of confusion or infringement of prior rights could exclude the presence of fraud. This confusion led to a misapplication of the law, requiring rectification by the Court of Cassation.

Consequences and impact of the ruling: strengthening trademark protection

This ruling by the Court of Cassation illustrates the strict application of the principle that “fraud corrupts everything,” regardless of circumstances such as likelihood of confusion or infringement of prior rights. The Court emphasized the importance of distinguishing fraud, considered as a cause of absolute nullity, from relative nullity causes in trademark law. This distinction is crucial to ensure that each type of nullity is addressed according to its own merits and legal specifics.

This decision, both unprecedented and welcome, strengthens trademark legal protection by highlighting the necessity of thorough examination of intent during the trademark application process. It also serves as a reminder to lower court judges of their duty to motivate their decisions.

Dreyfus Lawfirm can offer expertise on these matters, providing crucial strategic advice and guidance to secure your trademarks and ensure their protection against fraudulent filings, thereby ensuring an effective defence of your intellectual property rights.

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The excitement surrounding the imminent Paris Olympic Games demonstrates the links between brands and athletes. In a media environment where authenticity and visibility are crucial to commercial success, partnerships with Olympic and Paralympic athletes represent exceptional visibility opportunities for brands. However, these collaborations must be meticulously managed within the framework of precise legislation, to prevent any transgressions, such as ambush marketing or infringement of intellectual property rights. These precautions are essential to ensure that promotion complies with established regulations.

Legal Framework for Olympic and Paralympic Games Communications

The regulatory framework governing communications associated with the Olympic and Paralympic Games is designed to protect the exclusive rights of official partners and uphold the integrity of Olympic trademarks. These assets, listed in article L 141-5 of the French Sports Code, include emblematic symbols such as the Olympic rings and legally protected terms such as ‘Olympic’ or ‘Paralympic’. These elements are registered trademarks subject to rigorous regulations concerning advertising and partnerships.

Consequently, it is essential to meticulously craft a commercial strategy to prevent ambush marketing tactics, which involve unauthorized associations with the Games for commercial gain. For instance, posting an athlete’s performance on social media and using tags that incorporate Olympic assets without official authorization from the organizing committees. Such practices, often perceived as attempts to gain undue association with the event without being an official sponsor, can lead to legal action for trademark infringement.

It is important to distinguish between two main periods for communication campaigns: outside the Games and during the Olympic Games, each governed by its own set of rules and restrictions.

Use of athletes’ images outside the Games: freedom with conditions

Outside the periods of the Olympic and Paralympic Games, brands and companies without official partnerships or licenses with the International Olympic Committee (IOC) can still collaborate with athletes to promote their products or services. These non-official partners, who have personal agreements with the athletes, may use the athletes’ names and images in their advertising, provided they do not use or reference protected Olympic trademarks. This restriction aims to prevent any confusion or implicit association with the Olympic Games, thereby safeguarding the exclusive rights of official partners while allowing athletes to benefit from personal endorsements to highlight their sporting achievements.

Communications management during the Games: Compliance with Rule 40

Rule 40 of the Olympic Charter and the IPC Handbook sets out guidelines for the use of participants’ images in advertising at the Olympic and Paralympic Games. Established to preserve the authenticity of the Games and avoid excessive commercialisation, this rule aims to ensure that athletic performances remain the focus of attention, while protecting the exclusive fundraising rights of the official partners.

During the Games period, from 18 July 2024 (opening of the Olympic Village) to 13 August 2024 (two days after the Closing Ceremony), advertising must adhere to specific standards to be considered compliant. Advertisements must be “generic” and established well before the onset of the Games—initiated at least 90 days prior and officially registered on a designated platform by June 18, 2024.

Such campaigns must consistently maintain their pre-Games intensity without any significant amplification during the Games themselves, to prevent any implied association with the Games or its organizing bodies like the IOC, IPC, CNOSF, CPSF, Paris 2024, or the French delegation. The only permissible link to the Games in these advertisements is the inclusion of an athlete’s image, ensuring that all promotions remain within the framework designed to protect the Games’ integrity and the interests of its official sponsors.

As a result, official Olympic and Paralympic partners who have signed personal agreements with an athlete are authorised to use the athlete’s image and to broadcast advertisements in accordance with the terms of their contract with the International Olympic Committee and other organisations governing the Games. These partners can thus actively promote their collaboration with the athletes.

On the other hand, for non-Olympic or Paralympic partners, the Games period imposes specific restrictions: they may continue to broadcast advertisements as long as they do not use any Olympic assets and remain non-generic.

In addition, constant vigilance is required to monitor advertising campaigns during the Games in order to adjust or correct any communication that might violate these rules. This monitoring helps to maintain a balance between the visibility given to official sponsors and the restrictions imposed on non-official partners, thereby ensuring fair competition and respect for the Olympic spirit.

Prioritising vigilance: the key to success for Olympic and Paralympic athlete partnerships

The Olympic Games period offers a unique opportunity for athletes’ partners, incorporating legally informed commercial strategies that not only maximise the impact of partnership campaigns but also ensure brands are protected from potentially onerous legal risks. It is crucial to meticulously plan the launch of your advertising campaigns, to maintain transparent communication with the Games organising committees, and to ensure that the distribution of these campaigns does not cause confusion as to official affiliation with the Games or respect for Olympic intellectual property rights.

Dreyfus Lawfirm can offer expert assistance on these matters, strategic advice and guidance that are crucial to establishing a fruitful and serene partnership and collaboration at this exceptional time.

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On January 23, 2024, the Amiens Court of Appeal issued a significant ruling that defines the obligations of online hosting platforms in managing fraudulent advertisements. This ruling represents the first application in France of the GLAWISCHNIG-PIESCZEK jurisprudence, which was established by the Court of Justice of the European Union on October 3, 2019. The 2019 judgment underscored the need for a balanced approach between consumer protection and the regulatory duties of digital platforms. The recent decision by the Amiens Court of Appeal further clarifies the legal framework for hosting providers, underscoring their crucial role in preventing fraudulent content and ensuring safer online environments for users.

Context: negligence on the part of the accommodation provider in the face of reported fraudulent advertisements

In August 2020, a couple booked a vacation home through an ad on the Abritel website and paid €5,600, only to find out the listing was a scam, previously reported by the property’s actual owner. Despite these warnings, Abritel did not remove the ad. The Court of Senlis initially denied the couple’s request for compensation, leading them to appeal. They argued that Abritel failed to meet its obligations by not deleting the fraudulent listing. The Amiens Court of Appeal was tasked with determining if Abritel’s lack of action violated its legal duties under the French digital economy trust law (LCEN) and whether such negligence could establish legal liability.

Legal analysis: host liability in cases of knowledge of illicit content

The Court of Appeal upheld the judgement of the Senlis judicial Court, based on a strict interpretation of the French law on confidence in the digital economy (LCEN), n° 2004-575 of 21 June 2004. According to this law, the obligations of hosting platforms do not include proactive and systematic monitoring of all content published by users. Hosting providers are only liable if they have proven knowledge of the illegal nature of the content and fail to act quickly to remove it. Therefore, in the absence of evidence of such actual knowledge, web hosts are not liable for fraudulent acts committed by third parties.

In this case, however, the court found the host at fault and established its liability. The host removed the fraudulent advertisement two days after learning of its illegal nature. This delay was deemed insufficient by the court, which ruled that the host had not acted “as promptly as a diligent operator should have done.” The decision emphasizes the importance for hosting platforms to take immediate and effective action upon discovering illegal content to avoid liability.

Analysis of legal causality: No direct link between the web host’s fault and the damage suffered

The Court of Appeal of Amiens determined that the web host was not responsible for the losses incurred by a couple following a fraudulent transaction on their platform. Although it was established that the host did not act swiftly enough in removing a fraudulent advertisement, no legal consequences followed. The court pointed out the absence of a direct causal connection between the host’s delay in removing the advertisement and the couple’s financial loss. This was largely because the couple had opted to proceed with the payment outside the secure payment systems provided by the platform, contrary to the clear guidelines stated in the general terms and conditions. This decision highlights the critical role of following platform-specific security measures to avoid such risks.

Legal implications for hosting platforms: enhancing responsibilities in fraud prevention

 The recent ruling by the Court of Appeal of Amiens represents a notable advancement in the legal framework concerning the responsibilities of hosting platforms regarding fraudulent advertisements. The Court has elucidated that while hosting providers are not mandated to proactively screen every advertisement without initial notification, they are obligated to respond swiftly upon identifying illegal content. This clarification not only reinforces their legal responsibilities but also emphasizes the importance of users maintaining vigilance and adhering to recommended security measures to protect their transactions.

Moreover, this judgment could prompt legislative efforts to enhance the accountability of platforms, especially in combating online fraud. The persistence of these challenges, as evidenced by cases like the 2021 Abritel incident, highlights the ongoing need for greater regulatory scrutiny.

This case, in conjunction with the Glawischnig-Piesczek decision by the Court of Justice of the European Union, underscores the increasing necessity for digital platforms to take proactive steps against online misconduct. These decisions are gradually reshaping the roles and duties of platforms within the dynamic digital landscape, emphasizing the urgency for a robust regulatory framework to ensure a secure and trustworthy online environment.

Dreyfus Lawfirm can offer expert assistance on these matters, providing guidance and strategic advice to navigate the complexities of online fraud and platform liability.

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The fight against counterfeiting is a major challenge for the European Union, where the effective protection of intellectual property rights is recognized as a central pillar in supporting an innovative, resilient and competitive economy. The European Commission’s recommendation on March 19, 2024, heralds a pivotal move towards bolstering defenses against counterfeiting—a menace that not only siphons economic vitality but also poses significant risks to consumer safety and environmental sustainability. This comprehensive strategy underscores the European Union’s commitment to fostering an innovative, resilient, and competitive marketplace by safeguarding the fruits of ingenuity and hard work.

The critical nature of the Recommandation

Counterfeiting is a formidable adversary, casting a long shadow over nearly half of the EU’s GDP and jeopardizing 40% of its employment. The sectors at the forefront of green technologies and creative industries find themselves at the crossroads of innovation and infringement, making the battle against counterfeit goods a central economic and health issue.

Recommendation Highlights: A Blueprint for Action

The recommendation introduces key measures to strengthen cooperation between right holders, intermediary service providers and competent authorities. It promotes the use of appropriate tools and technologies to effectively combat counterfeiting and piracy.

These measures aim to protect investment and encourage innovation. They provide a framework for coordinated action against counterfeiting activities, essential for SMEs and industries dependent on intellectual property rights.

Implementation and challenges

The Recommendation underlines the need for coordinated action between Member States, right holders, intermediary service providers and competent authorities. It proposes a series of measures aimed at strengthening cooperation and efficiency in the enforcement of intellectual property rights across the European Union.

The Commission encourages the adoption of a set of tools and practices to combat counterfeiting effectively. This toolbox aims to promote cooperation between the various players involved, the use of cutting-edge technologies and the adoption of sector-specific best practices. It includes, for example, guidelines for monitoring online markets and managing infringement notifications, as well as recommendations for the use of counterfeit product recognition technologies.

Facing Implementation Headwinds

While the recommendation charts a course towards a fortified intellectual property regime in the EU, its successful implementation hinges on overcoming several challenges. This includes specific training on the latest trends in counterfeiting and the use of available technological tools to identify and track counterfeit products. Collaboration with experts in intellectual property and cybersecurity is essential to adapt enforcement strategies to emerging challenges.

A major challenge lies in the need for close international cooperation, given the cross-border nature of counterfeiting. The variability of legal frameworks and available resources between countries complicates the harmonization of efforts. Establishing effective mechanisms for judicial cooperation and information sharing between national and international authorities is crucial.

Another major challenge is to ensure that measures taken respect fundamental rights, such as the protection of personal data and freedom of expression. It is vital to establish clear and fair procedures for handling infringement notifications and for the intervention of the authorities, in order to avoid abuse and protect the legitimate interests of the parties concerned.

Counterfeiting often benefits from technological advances to evolve and adapt rapidly. Enforcement strategies must therefore be dynamic and capable of adjusting to new counterfeiting methods, while exploiting emerging technologies to improve the effectiveness of the fight against counterfeiting.

Conclusion: A Forward-Thinking EU in the Face of Counterfeiting

The European Commission’s recommendation on March 19, 2024, is a testament to the EU’s forward-thinking strategy in protecting intellectual property rights. It not only aims to safeguard the bloc’s economic interests and consumer safety but also sets a global standard for combating counterfeiting. As Europe embarks on this ambitious journey, the collective effort of governments, industries, and communities will be paramount in turning the tide against counterfeiting, ensuring a safer, more innovative, and competitive European Union.

Dreyfus Law Firm stands ready to guide and support stakeholders through these evolving challenges.

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In a landmark decision on February 28, 2024, the French Court of Cassation put an end to a legal battle that has captured the attention of the legal community since 2021, regarding the recognition of the database producer status of the well-known Leboncoin. This case, which progressed through various levels of the judiciary, is of paramount importance for understanding and applying the rights of database producers and the presumption of copyright ownership.

Background and Stake of the Case

The dispute began in 2021, when Leboncoin initiated legal proceedings against a competing company for database counterfeiting. This case is unique because Leboncoin, besides its main site, also manages a specialized real estate database and the site “avendrealouer.fr,” thereby reinforcing its status as a leader in the online classifieds market.

The Appeal Court had acknowledged that Leboncoin holds the presumption of copyright ownership over these databases, thus enabling it to request a counterfeiting seizure before even starting a trial. However, this seizure was time-limited and could not target activities that occurred before Leboncoin’s establishment.

The Significance of the Court of Cassation’s Decision

On February 28, 2024, the French Court of Cassation, definitively upholds the appeal decision, underlining several crucial points for the rights of database producers.

The Court’s decision unequivocally recognized the creation and active management of a database — including specialized ones like Leboncoin’s real estate platform — as grounds for granting an entity the status of database producer, along with all related rights.

This recognition carries with it a presumption of copyright ownership, which is instrumental in fortifying the legal defenses against database counterfeiting and unauthorized usage.

Thus, the ability for a database producer to request a counterfeiting seizure before any trial is a powerful tool in combating data piracy. However, the time limitation imposed by the appeal court serves as a reminder of the legal framework within which these measures can be applied.

Conclusion and Future Implications

The Leboncoin case highlights the complexity and importance of database protection in the digital era. The Court of Cassation’s decision reinforces the rights of database producers in France, thus offering enhanced protection against counterfeiting.

Moreover, the decision is a call to action for database holders, encouraging them to leverage their rights proactively to shield their digital creations from infringement and misuse. This judgment is bound to have repercussions on how intellectual property rights are perceived and enforced in the digital space, marking a turning point in French jurisprudence regarding database protection.

Dreyfus Law Firm stands ready to guide and support stakeholders through these evolving challenges.

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In a breakthrough decision, the EUIPO’s Board of Appeal recently addressed the complex landscape of trademark protection, setting a precedent with its ruling on the opposition between “BIOTROP” and “BIOTRON.” This case has sparked significant discussion among intellectual property professionals, especially regarding trademarks with low distinctiveness in the health and technical sectors.

Background of the Case

On October 15, 2021, BIOTROP PARTICIPAÇÕES S.A. (BIOTROP) applied for trademark registration covering a range of chemicals and services across classes 1, 5 and 35, including fungicides, insecticides, fertilizers, and associated retail services. CIFO S.r.l., a competing entity, challenged this trademark application, arguing it could be confused with their existing EU and Italian trademarks ‘BIOTRON’.

Initially, the EUIPO’s Opposition Division ruled in favor of CIFO S.r.l., acknowledging the potential for confusion regarding goods in classes 1 and 5, and for most services in class 35. Unconvinced, BIOTROP appealed to the EUIPO’s Board of Appeal (BoA).

Unravelling the Board of Appeal’s Verdict: distinguishing factors in “BIOTROP vs. BIOTRON”

The Board’s decision (R1656/2023-2) to deny confusion between the two trademarks, despite their apparent similarity and the related nature of their goods and services, underscores the nuanced approach required in evaluating trademarks.

The Board based its decision on several factors, including the average similarity in goods due to their purpose, sales channels, and market competition, while only a low level of similarity was noted between the services in class 35 and the goods in class 1.

The Board also discussed the distinctiveness of the trademarks, noting that the common prefix ‘bio’ was non-distinctive for biological or organic products. However, the suffixes ‘tron’ and ‘trop’ were deemed distinctive due to their lack of meaning.

Furthermore, the Board assessed the visual, phonetic, and conceptual similarities between the two marks. Despite the first six letters being identical, the distinctive suffixes and the inclusion of a figurative element in BIOTROP’s application were enough to create a different overall impression, particularly to a discerning audience.

This decision suggests a potential narrowing in the scope of trademark protection, focusing it on cases of nearly identical reproductions and highlighting the importance of distinctiveness.

New uncertainties: a decision creating legal risks for prior trademarks owners

The apparent minimal visual and phonetic resemblance between the trademarks raises doubts. With six out of seven letters shared, arranged identically from the start, it is challenging to dismiss the potential for confusion. Citing the alphabet’s finite nature, the ‘BIO’ prefix’s descriptive quality, and the contested mark’s simplistic design hardly negates the risk of confusion. One might wonder, how closely must trademarks resemble one another before they are deemed to have a moderate to high level of similarity? Under such scrutiny, it appears that the protection afforded by the prior trademark is nearly restricted to cases where a new trademark replicates it entirely, without any distinguishing features.

For trademark owners, this decision is a source of legal uncertainty. An important similarity between the signs and the goods and services no longer seems sufficient to create a likelihood of confusion, if a relatively insignificant part of the trademark is deemed distinctive.

The decision encourages new right holders to ensure that their trade mark applications highlight unique, distinctive elements in order to satisfy the EUIPO’s requirements and secure the trademark’s future.

By examining cases such as “BIOTROP vs. BIOTRON”, we gain valuable insights into the EUIPO’s current perspective on trademark protection. In navigating these complex waters, Dreyfus Lawfirm, stands ready to offer its expertise and support in protecting your intellectual property rights.

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Labeling of food products, and wines in particular, has always been a major concern for European regulatory authorities. With the aim of increasing transparency and better informing consumers, the European Union (EU) has adopted new rules that will significantly modify wine labeling. Regulation (EU) 2021/2117, applicable from December 8, 2023, will oblige wine producers to provide additional information on their labels, marking an important step in the evolution of food labeling standards.

Legal context

These new obligations fall within the framework of Regulation 1308/2013 of December 17, 2013, also known as the “CMO Regulation” (Common Market Organization), which already defines several requirements for wine product labeling. These requirements include the denomination of the product category, specific mentions concerning the degree of alcohol, the Protected Designation of Origin (PDO) or Protected Geographical Indication (PGI) where applicable, as well as information on the bottler and importer.

Regulation (EU) No. 1169/2011, known as the “INCO Regulation”, which lays down the general principles of food information for consumers, will also apply to these new labeling rules, unless otherwise stipulated. The INCO Regulation has introduced a broad definition of what constitutes an “ingredient”, including any substance used in the manufacture of a foodstuff and present in the finished product.

New Labeling Obligations

The major changes introduced by Regulation (EU) 2021/2117 concern the obligation for wine producers to include a list of ingredients and a nutritional declaration on the label. This list may be limited to an indication of the product’s energy value, but a complete version of the list of ingredients must be available electronically. Allergenic or intolerance-causing substances must, however, be clearly indicated on the product’s physical label.This information can be presented directly on the bottle label, legibly and indelibly, or dematerialized, for example via a QR code. This flexibility of presentation reflects the EU’s desire to adapt to technological developments, while ensuring that consumers are fully informed.

Implications for Producers and Consumers

The new labelling rules are designed to enhance transparency and enable consumers to make informed choices. They underline the importance for wine producers of complying with these requirements to ensure the smooth circulation of their products within the EU internal market.

For producers, this means updating their labeling practices and potentially incurring additional costs to comply with the new rules. However, the transitional period provided for in the regulation, authorizing the disposal of stocks produced or imported before December 8, 2023, offers time to adapt their processes.

Legal implications

These changes raise several important legal issues:

Compliance and Sanctions: Producers must ensure their compliance with the new rules to avoid sanctions. Effective implementation of these requirements requires a review of labeling practices and technological adaptation for those opting for dematerialized solutions.

• Transparency and Consumer Protection: The main aim of these rules is to increase transparency and better inform consumers about the products they consume. This could have positive repercussions in terms of informed choice and public health.

• Impact on the international market: For non-EU producers, these requirements represent an additional challenge to access the European market. They need to align with these standards to maintain and expand their presence in this market.

• Practical and technical issues: The implementation of the dematerialized option raises practical issues, notably concerning the accessibility and reliability of online nutritional information and ingredient lists.

Conclusion

The adoption of Regulation (EU) 2021/2117 is a giant step towards a more transparent and regulated wine industry responding to growing consumer concerns about their health and the origin of the products they consume. However, their successful implementation will depend on the ability of producers to adapt to these requirements, and the willingness of the authorities to ensure effective and uniform application of the law.

Dreyfus et Associés, in partnership with a network of lawyers specialized in Intellectual Property, is positioned as a pillar for wine producers. We offer tailor-made assistance to navigate this new era of labeling, ensuring compliance while preserving the essence of each brand.

The contemporary art market faces a worrying increase in artistic fraud, encompassing both counterfeiting and forgery[1].

For instance, in the Spies-Ernst scandal[2], a painting sold as an original Max Ernst was later unveiled as a forgery by Wolfgang Beltracchi, crafted with materials that were not available in Ernst’s era.

This incident highlights the sophisticated techniques employed by modern forgers and the significant challenges faced by experts in authenticating artworks.  In response, the Conseil Supérieur de la Propriété Littéraire et Artistique’s (CSPLA – French Higher Council for Literary and Artistic Property)[3] report highlights the inadequacies within France’s existing legal statutes in combating these illegal practices, notably the 9 February 1895 law.

This scrutiny indicates a pressing need for an overhaul of the legal framework to enhance the safeguarding of artworks and their creators.

Current Legal Context

The Bardoux Law of 1895 stands as a foundational legal measure for combatting artistic fraud in France. Yet, its effectiveness is increasingly challenged by technological advancements and novel fraud techniques, including the exact replication of artworks. These activities, while not directly violating copyright laws, significantly compromise the integrity of the art market.

Proposals for reform:

• Towards the creation of an “artistic fraud” offence?

This report evaluates the bill adopted by the Senate on 16 March 2023, which aims to modernise the legal framework against artistic fraud. This reform proposal seeks to broaden the definition of “artistic fraud” to include all forms of illicit reproduction, increase criminal sanctions and create a more dissuasive repressive component.

Currently, the general laws in the Penal Code and the Consumer Code, covering fraud and deception, fall short in effectively combating art forgery. These laws lack specificity regarding art fraud, leading to legal ambiguity and a broad range of interpretations. This lack of clarity and the insufficient deterrent effect of existing penalties have made it easier for counterfeiters and their collaborators to evade serious repercussions. Consequently, the outcomes of legal actions against such individuals are often deemed inadequate, highlighting the need for more targeted and stringent measures.

• Civil liability of the perpetrator of artistic fraud?

The primary recommendation of the mission is to implement fines that are tailored to the financial capacity of the fraudster and the severity of the offense. Furthermore, it advocates for categorizing organized artistic fraud as a crime that warrants specialized criminal procedures. Additionally, the proposal suggests enabling specific associations to participate as civil parties in legal actions concerning these offenses, aiming to strengthen the enforcement and legal response to artistic fraud.

Civil law can also be useful against artistic counterfeiting, but it is limited to certain aspects of the dispute.

For instance, contract law permits the annulment of sales if the work’s nature has been misrepresented, addressing the aftermath rather than directly sanctioning counterfeiting. To enhance this approach, the Mission suggests adding a civil dimension to the existing criminal framework. This addition would enable victims of artistic fraud to seek compensation for their losses, thereby providing a more comprehensive remedy for those affected by such fraud.

It is recommended that a provision be added to the French “Heritage” Code ‘Code du patrimoine[4] stating that “any artistic fraud entails the civil liability of its author”, thus clearly establishing the possibility of civil proceedings for the cases described in article L. 112-28, provided that fraudulent intent is proven.

Adapting to new technologies

A key point of the report is to adapt legislation to the challenges posed by digital technologies. Advances in artificial intelligence and the proliferation of online platforms facilitate the proliferation of fakes, making them more difficult to detect and combat. The report proposes the inclusion of specific measures to address the impact of new technologies on the art market.

1. Artificial Intelligence (AI) Impact: the mission proposes a duty of transparency for AI applications in art creation, suggesting that regulations should mandate clear disclosure about the use of AI in both the creation and distribution phases of artworks.
2. Digital Networks: The mission recommends encouraging soft law norms for online platforms to cooperate with rights holders, including setting up reporting mechanisms for counterfeit art. It also suggests legal measures to enable judges to order preventive actions against the online dissemination of fraudulent art.
3. Non-Fungible Tokens (NFTs): The mission suggests applying existing laws to NFT-related art fraud while also recommending the development of certification mechanisms prior to NFT minting to enhance reliability and trust in digital art transactions.

These recommendations aim to adapt the legal framework to effectively counter the challenges posed by digital technologies in perpetuating art fraud.

Conclusion and outlook

The CSPLA report provides a solid basis for rethinking legislation in the light of technological developments and new forms of fraud. Implementing the recommendations would strengthen the effectiveness of protection and enforcement mechanisms and provide greater legal certainty for those involved in the art market.

Given the urgent need to reform the legal framework and protect the rights of creators, Dreyfus Law Firm stands ready to guide and support stakeholders through these evolving challenges.

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[2] https://ial.uk.com/the-spies-ernst-case-art-experts-in-france-can-breathe-a-sigh-of-relief/

[3] In France, the High Council of Literary and Artistic Property is an independent advisory body that advises the Minister of Culture and Communication on literary and artistic property. To read the report (in French) : https://www.culture.gouv.fr/Nous-connaitre/Organisation-du-ministere/Conseil-superieur-de-la-propriete-litteraire-et-artistique-CSPLA/Travaux-et-publications-du-CSPLA/Missions-du-CSPLA/Rapport-de-mission-sur-les-faux-artistiques

[4] For the purposes of this Code, heritage is understood to mean all property, whether immovable or movable, in public or private ownership, which is of historical, artistic, archaeological, aesthetic, scientific or technical interest.

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In a significant decision dated December 6, 2023 ([2023] EWCA Civ 1451 Case No: CA-2023-000692), the Court of Appeal of England and Wales has given a new interpretation of legal acceptance and reiterates the importance of monitoring trademark usage to avoid acquiescence.

Context: The Dual Use of the Acronym ICE

The case involved Industrial Cleaning Equipment, a British company, which sued Intelligent Cleaning Equipment Holdings, a Chinese manufacturer, for using the acronym ICE and several similar logos. Both companies had trademarks registered in the UK. The Claimant registered its logo in 2016, while the Defendant had international registrations dating back to 2015, which were recognized in the EU and subsequently in the UK following Brexit.

First instance Judgment

At first instance, the Claimant accused the Defendant of trademark infringement and passing off and the defense of statutory acquiescence was rejected by the judge.

But What is acquiescence? Acquiescence in trademark law is when a trademark holder tolerates unauthorized use of their trademark over an extended period, potentially leading to a loss of rights to challenge this use later.

In this case, it was accepted that the Claimant had knowledge of use of the Defendants’ UKTMs in the UK since around July 2014, but denied having any knowledge of registration of such marks until July 2019, when the Claimant’s solicitors sent the Defendants a letter before claim alleging trade mark infringement and passing off.

Proceedings were issued on 24 May 2021, and the judge at first instance found in favor of the Claimant. The judge held that the defense of statutory acquiescence raised by the Defendants under section 48 of the Trade Marks Act 1994 (TMA 1994), could not succeed because the five-year period only starts to run when the earlier trade mark owner has knowledge of both the use of the later trade mark, and of its registration.

The decision hinged on the EU Court of Justice’s ruling in the Budvar case (C-482/09 – Budějovický Budvar), which required knowledge of both the use and registration of the later trademark for acquiescence.

The Appeal and its groundbreaking decision

The Defendants appealed on two main grounds. Firstly, they argued that knowledge of the registration of the later trademark was unnecessary for acquiescence. Secondly, they claimed that the relevant date for calculating acquiescence should be the international registration date.

A New Interpretation of Acquiescence

The Court of Appeal conducted an in-depth analysis of the principle of statutory acquiescence, particularly referring to the Budvar decision and other EU case law.

It found that the Budvar decision was an isolated judgment and that EU courts, including the EUIPO Board of Appeal and the General Court, had interpreted the legislation differently. These interpretations focused on the requirement of a registered mark being used for five years, without necessitating knowledge of its registration.

Consequently, the Court of Appeal departed from Budvar, holding that statutory acquiescence only requires knowledge of the use of a later mark after its registration.

However, regarding the start date for calculating acquiescence, the Court sided with the Claimant, marking the date as either the acceptance by the EUIPO or the second republication date, not the WIPO registration date. Unfortunately for the Defendants, they were therefore still ultimately unsuccessful in their appeal.

The Court concluded that acquiescence only requires knowledge of the use of the later trademark after its registration, not knowledge of the registration itself.

Conclusion on the Importance of Monitoring Trademarks

This decision marks a significant shift in UK trademark law, realigning it with the broader trends in EU General Court and EUIPO case law. It underscores the importance for trademark owners to monitor not just the use but also the registration of marks that might infringe their rights. Regular checks on trademark registries are crucial to avoid unintentional acquiescence.

The ruling also highlights the nuanced distinction between use and registration in trademark law. For practitioners, this decision emphasizes the need for vigilance and proactive strategies in trademark monitoring and enforcement.

By clarifying the requirements for statutory acquiescence, it offers guidance and a renewed understanding for trademark practitioners and owners.

*Image générée par DALL E 3e version Microsoft

In the realm of brand protection, a crucial inquiry is measuring the value or Return on Investment (ROI) of programs dedicated to monitoring and enforcement. This measurement is essential for two reasons: firstly, to justify the initial expenditure on the brand protection endeavor, and secondly, to assess its value after a certain period of implementation. Consequently, some have argued in favor of certain methodologies for calculating the ROI of brand protection initiatives. These typically include evaluating the cost associated with each active infringement and estimating the percentage of lost revenue potentially recoverable after an infringement is addressed.

However, these approaches and methodologies, are difficult to put into practice. Indeed, ROI methodologies seem to be more appropriate when it comes to counterfeiting rather than brand protection itself.

Therefore, Compliance, which focuses on what would be lost instead of what could be gained may be a more effective solution to evaluate risks and gains regarding brand protection.

1. Calculation of the ROI

Understanding ROI in Brand Protection

Return on investment calculations, in theory, would allow the brand owner to have an overview of costs, expenses and losses pertaining to the protection of his trademark.

Also, when it comes to e-commerce marketplaces, ROI can feasibly be calculated a posteriori, ie. post-enforcement.

Data-Driven Approaches for ROI Calculation:

This calculation is based on the total numbers and value of items removed via enforcement actions as well as data caps (ex : if a market place offers millions of a same infringing item, it probably suggests that they will manufacture them on demand, not that millions of items are sitting in a warehouse). This data can be scraped by most brand protection service providers.

Similar ideas can be used to carry out ROI calculations in other contexts where the data is available. Indeed, in case of takedowns regarding social medias, mobile apps or piracy, data such as the number of followers or likes, the number of downloads or of individual sharing a copyrighted content, can be used as proxies. The standard methodologies tend to use a ROI calculation in the form of :

ROI = C x E

C is some measure of « cost », ie. the revenue difference between an infringement being active and being removed ;

E is the number of enforcements

Challenges in Applying ROI Methodologies

Several factors would need to be taken into account regardless, such as variable substitution rates (the measure of the proportion of customers who will buy a legitimate item if the infringing item is made unavailable via a takedown action), and the consideration on the long-term impact as well as on brand valuation (visibility, customer loyalty).

On another hand, a priori calculations, i.e before any enforcement, offer much less visibility, if none at all, considering that this calculation is be based on assumed numbers instead of exact data.

Therefore, a ROI is more likely to be calculated on anti-counterfeiting efforts (seizure of products, recovery of damages…) rather than on the defense of a brand portfolio.

2.The solution of compliance

Cyber risk is ever-present and is one of the major challenges a company may face. Domain names are often vectors for fraud, enabling employees and consumers to be misled by the imitation of the company’s name or trademarks.

While monitoring tools can help identify fraudulent domain names early on, calculating the Return on Investment (ROI) becomes tricky, especially after acquiring these domains and redirecting their traffic to the brand owner’s official website. This redirection is done in the hope of converting some of the traffic into revenue for the brand owner.However, this approach is not exactly viable since the data (webtraffic, connections…) is very hard to quantify.

Moreover, this vision is not sustainable as it suggests that the brand owner will keep the recovered domain name and redirect it to an active website. Both are extremely unlikely as they would negatively affect not only the Search Engine Optimization of the brand, but also the reputation of the trademark.

As it happens, a domain name used for fraud is rarely redirected to an official site. This would discredit the official site and create confusion between what is official and what is not – a rather bad idea when acting to neutralize fraudulent domain names.

Proactive Compliance Measures

Therefore, preventive actions that follow the logic of compliance seem more suited to avoid losing brand value and money, such as :

• Conducting brand audits among domain names to assess risks.
• Implementing monitoring systems for domain names and social media.
• Preemptive registrations of domain names in at-risk extensions.
• Taking proactive actions against potentially harmful domain names.
• Establishing procedures and a crisis management unit for rapid response to infringements.
• Developing or updating the company’s domain name policy, ensuring internal and external dissemination.

Ultimately, the decision between focusing on ROI or compliance in brand protection strategies should be guided by the specific needs and context of the brand. A balanced approach that incorporates elements of both strategies could be the most effective path. Nevertheless, while applicable to anti-counterfeiting efforts, ROI methodologies offer less quantifiable insights and can be challenging to implement accurately. Compliance, on another hand, provides a broader, more preventive framework that safeguards brand integrity.

For expert guidance and tailored solutions in navigating these complex brand protection strategies, consider partnering with Dreyfus Law Firm, where our dedicated team specializes in offering comprehensive legal expertise to protect and enhance your brand’s value in the digital landscape.