The judges of the Paris Court of Appeal, ruling on a referral from the Court of Cassation, adopted a strict approach to similarities between a figurative trademark and a later , semi-figurative trademark in a dispute between two companies specialized in ready-to-wear clothing.
The company Compagnie Financière de Californie (“Compagnie de Californie”), which specializes in street wear chic clothing, is the owner of the trademarks on the sign, in particular for clothing products.
In 2013, the company noted that International Sport Fashion, also active in the fashion industry, had registered and used a trademark that it believes to be similar to its own:
The signs in question have the shape of an eagle’s head, without detail, reproduced in black and white within a circle.
In order to obtain compensation for the damage it considers to have suffered, Compagnie de Californie brought an action for infringement.
After having been dismissed at first instance and on appeal, the company turned to the Court of Cassation, which referred the case back to the trial judges after partial cassation.
The referring Court of Appeal first compared the trademarks in question. Its analysis is rigorous, particularly from a conceptual standpoint: it considers that the trademark of Compagnie de Californie refers to “the dark side of the bird of prey while the other refers to the image of a much less aggressive bird” (certainly due to the presence of a closed beak).
The court points out, among other things, that visually, these birds’ heads are not facing the same direction and that one has the beak closed and the other open.
On the phonetic level, the court notes, unsurprisingly, that the mark at issue will be pronounced “Eagle Square” in reference to the verbal element it contains, which will not be the case for the earlier mark.
The court, therefore, considers that there is no likelihood of confusion between the marks.
Next, it examines the question of the exploitation by International Sport Fashion of its mark for clothing products. The Court takes into account all possible elements such as the packaging which contains the goods. The name “EAGLE SQUARE” is affixed to the packaging; it, therefore, considers that there is no likelihood of confusion in the minds of consumers.
It also states that the contested sign which appears by itself on some of the articles is each time bicoloured, “inducing a caesura in the sign”, which gives an overall impression, very different from the earlier mark.
The court, therefore, did not grant the applications of Compagnie de Californie.
Thus, with respect to figurative marks, it is necessary to meticulously estimate the chances of success of an infringement action, since great similarities are generally required to recognize the likelihood of confusion.
This case shows that even marks with a comparable style (presence of a bird in a circle, with only the head entirely painted black) can coexist in the market.
It is questionable whether the Court of Appeal would have taken a different approach had International Sport Fashion affixed the only black and white eagle head to its products. The question also arises as to whether the outcome might have been partially different had California Company also registered, as a trademark, its coloured eagle (which can be found in red on its official website https://www.compagniedecalifornie.com/).
Therefore, in addition to a detailed analysis of the chances of success before bringing an action, it is also necessary to protect the trademark as exploited, taking into account its variants, so as to benefit from the widest possible scope of protection.
AMS Neve Ltd, Barnett Waddingham Trustees, Mark Crabtree c/. Heritage Audio SL, Pedro Rodríguez Arriba,
It is possible to bring an actionbefore a national court with the purpose proving an infringement of the EU trademark in that Member State, even if the third party has advertised and marketed his goods in another Member State.
That is the answer given by the Court of Justice of the European Union to the preliminary ruling question concerning the interpretation of Article 97(5) of Council Regulation (EC) No 207/2009 of February 26, 2009 on the European Union trade mark.
That reference was made in the context of a dispute between the parties:
– The applicants : AMS Neve, a company founded in the United Kingdom, for manufacturing and marketing audio equipment, represented by its director Mr Crabtree. Barnett Waddingham Trustees “BW Trustees” is the trustee;
versus
– The defendants : Heritage Audio, a Spanish company also marketing audio equipment, represented by Mr Rodríguez Arribas
concerning an infringement action for alleged infringement of rights conferred, inter alia, by an European Union trade mark.
The applicants are the owners of the European Union trademark and of two trademarks registered in the United Kingdom.
Having discovered that Heritage Audio was marketing imitations of AMS Neve products bearing or referring to a sign identical or similar to the said EU and national trademarks and was advertising those products, they brought an action for infringement of an EU trade mark before the Intellectual Property and Enterprise Court in the United Kingdom.
In order to prove the infringement in the United Kingdom, the applicants provided the documents in support of their action, including in particular the contents of Heritage Audio’s website and its Facebook and Twitter accounts, an invoice issued by Heritage Audio to an individual, resident in the United Kingdom.
Then, in order to prove the infringement in the European Union, they provided screen shots from that website showing offers for the sale of audio equipment bearing a sign identical or similar to the European Union trademark. They underlined the fact that these offers are in English and that a section entitled “where to buy” is available on the website, listing distributors in various countries. In addition, they argued that Heritage Audio accepts orders from any Member State of the European Union.
While the Court agreed to rule on the protection of national intellectual property rights, it found that it lacked jurisdiction to rule on the infringement of the EU trade mark at issue.
The appellants appealed against that judgment to the United Kingdom Court of Appeal, which decided to enforce a stay on proceedings and to refer the following questions to the Court for a preliminary ruling:
– Does a national court of a Member State A have jurisdiction to rule on an action for infringement of the EU trademark on account of its advertising and marketing of goods carried out in Member State B?
– If so, what criteria should be taken into account in determining whether the company has taken active measures regarding the infringement?
The answers given by the CJEU are as follows:
– the plaintiff, depending on whether he chooses to bring the infringement action before the EU trademark court of the defendant’s domicile or before that of the territory in which the act of infringement was committed or threatened to be committed, determines the extent of the territorial jurisdiction of the court seized ;
o when the infringement action is based on Article 97(1), it shall cover acts of infringement committed on the territory of the Union (where the action is brought before the court of the defendant’s domicile or, if the defendant is not domiciled in the European Union, in the State in which he is professionally established);
o when it is based on paragraph 5 of the same Article, it shall be limited to acts of infringement committed or threatening to be committed within the territory of a single Member State, namely the Member State of the court seized ;
– in order to ensure that the acts of which the defendant is accused were committed in the EU , it is necessary to determine where the commercial content was actually made accessible to consumers and professionals for whom it was intended. Whether such advertising and offers subsequently had the effect of purchasing the defendant’s goods, is on the other hand, irrelevant.
In the present case, the advertisements and offers referred to by the applicants were aimed at consumers and/or professionals, in particular in the United Kingdom.
In those circumstances, the Court considers that the applicants have the right to bring an infringement action against that third party before a EU trademark court of the Member State within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display.
This possibility of bringing an infringement action before any competent national court to rule on acts of infringement committed in any Member State is very useful in particular to optimise the costs of proceedings, depending on the national regulations. France, for example, offers irrefutable methods of collecting evidence, such as a bailiff’s report, to establish facts of infringement, at attractive prices.
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The global health crisis caused by the coronavirus is a favorable context for phishing techniques. Indeed, many organized gangs of cybercriminals are pretending to be health organizations by using fake domain names. As a result, they send an e-mail pretending to be a health-related entity, in which they ask the recipient to click on a link and enter or confirm a login and password. For example, cybercriminals therefore send phishing e-mails containing domain names similar to those used by the Centers for Disease Control and Prevention. For example, cybersquatters have incorporated the domain name “cdc-gov.org” which is similar to the official domain name “cdc.gov”.
Thus, these malicious e-mails encourage users to click on a link that looks like it contains information related to the issues related to the coronavirus. In fact, Internet users are redirected to a fake website where they have to enter a username and password. In other cases, cybercriminals send phishing e-mails looking like they originate from the World Health Organization, inviting users to a link to download a document on security measures against the spread of the virus. Of course, this is not the case and users are redirected to a pop-up screen asking for a username and a password. It should be noted that some cybercriminals adopt a different tactic by posing as entities linked to the world of economics, such as shipping companies or manufacturing industries. The coronavirus crisis can have an impact that extends beyond health concerns. Hence, it is necessary to be doubly careful about the extension of these phishing campaigns, alert may be raised for example by e-mails containing numerous spelling mistakes.
The gTLD <.com> apparently occupies more than 40% of the domain name market share, according to statistics provided by the site www.domainnamestat.com. These results confirm that it is an unavoidable extension, especially because the <.com>, which addresses the whole world, is a strong rallying sign.
However, the negotiations in progress between ICANN and the <.com> registry, VeriSign, could lead to a modification of the approval on this extension, so that the <.com>’s price would increase by possibly 7% per year, from 2021 to 2024. In return for this right, VeriSign would pay $4 million to ICANN.
This negotiation is notably allowed by an amendment accepted by the American Department of Commerce, datedOctober 26, 2018, by which it was indicated that “in view of the more dynamic market of domain names, the Department considers it advisable to modify the cooperation agreement in order to provide flexibility in the prices related to the registration and renewal of domain names of the .com registry”.
If the price of <.com> increases, it will be relevant to see whether other TLDs recover some of its market shares, especially among the new gTLDs. If it seems unlikely that companies will abandon the names in <.com> that they already hold, newcomers to the market could possibly prefer other extensions.
The 2019 Finance Act harmonizes French and European tax rules in order to best promote the investment of patentable creations and inventions. We are talking about the French IP Box.
Thus, the taxation regime for the products of patents and similar industrial property rights is brought into line with OECD provisions.
While Irelandwas the first country to set up this system (1973), other countries followed suit, such as Belgium, China and, more recently, the United Kingdom (2013).
The principle allows companies to benefit from a tax advantage on their intellectual property assets with a tax rate that amount to 10% instead of 33% previously.
Eligible assets
The assets that are eligible for this plan are:
Patents and patentable inventions
Certificates of utility
Plant variety certificates
Copyrighted software
To be eligible, inventions must have been filed. Taking into account that the regime is open to software protected by copyright. It should also be added that this plan is applicable to annual net income calculated after deducting research and development expenses. The aim is to encourage research and development efforts in relation to the overall effect, i.e. in relation to all the investments that the company can make.
To be eligible for the reduction rate, the company will have to provide several elementsto establish its file such as:
Eligible assets
The rule for determining the protection of the proportion of net income taxable at a reduced rate
The method for allocating research and development expenses.
This makes it possible to monitor the company’s expenses and, above all, to justify the request for a reduction in the tax rate. It will be necessary to submit this file to the tax authorities under penalty of a 5% penalty.
The tax rate
The regime consists in deducting first the proceeds of sale and concession as well as research and development expenses and then, in a second step, calculating from this deduction the net result in order to obtain the net result of the assets on the basis of the Nexus ratio.
What is the Nexus ratio?
The idea is to limit “the preferential regime in proportion to the part of the expenditure relating to intellectual property. »
This is how the OECD defines this ratio. This is intended to sanction patents acquired and research and development costs subcontracted to affiliated companies. It should be noted that research and development costs in third party companies will not penalize the Nexus ratio. This ratio will be calculated on a cumulative expenditure basis.
Some consider this ratio a “not irrefutable presumption.”
Conclusion
The advantage of this regime is that it will encourage companies to their research and development in France and produce quality intellectual property assets that generate income.
The French company Adventure is specialized in the sale of paramotors. It owns the French semi-figurative trademark including the terms “adventure” and “paramotor” as well as the domain names “paramoteur.com” and “adventure-paramotors.com”.
The company has filed a UDRP complaint before the WIPO Arbitration and Mediation Center against the domain name <adventureparamotorsusa.com>, claiming that it infringes its rights.
The domain name was registered on March 14, 2018, by respondent Mike Robinson who acted as the Complainant’s authorized reseller for the United States. The domain name offered the Complainant’s products and services for sale. Due to the low level of sales generated by the Respondent in the United States, the Complainant decided to terminate the dealership agreement and instructed the Respondent to stop using the domain name <adventureparamotorsusa.com>.
The dispute between the parties arises as a result of the Respondent’s refusal to comply with this request. Indeed, the latter is ready to close the website on the condition that the complainant pays him $10,000, a sum that would represent the investment made by the Respondent for the construction of the website.
The French company maintains that the website associated with the disputed domain name was created by the Respondent without the prior express authorization of the Complainant.
The Complainant’s position is not supported by the expert, who considers that it fails to demonstrate that the Respondent registered and used the domain name in bad faith. The expert states: “the domain name was registered on March 14, 2018, the month the parties entered into their commercial agreement. It is also the month when the parties met to discuss the agreement (…). The panel assumes that the parties must have discussed during that March 2018 meeting the means by which the Respondent planned to promote the Complainant’s products in the United States (…). After all, the plaintiff must have known that the defendant would have an online presence and, usually trademark owners are concerned about whether these marketing elements (…) are in line with the image of the trademark. Similarly, the expert notes that “in none of the exchanges (…) between the parties during the term of the agreement did the Complainant argue about the registration of the domain name by the Respondent”.
The various exchanges between the protagonists show that the Complainant’s only reproach to the Respondent is that the latter continued using the domain name after the termination of the Concession Agreement, and not the registration of the domain name per se. Therefore, the Complainant does not prove in any way that the domain name was registered in bad faith. According to the expert and in view of the content of the exchanges between the parties, the Respondent did register the domain name in good faith for the purpose of promoting and selling the Complainant’s products under its trade agreement.
The expert ruling on the case concludes that the complaint should be dismissed.
In addition, he also states that the complaint was filed in bad faith by the Complainant, seeking to deprive the Respondent of ownership of its domain name.
Indeed, the UDRP procedure is not a tool for deliberately depriving a respondent of a domain name in circumstances that are outside the policy of the procedure.
In regards to the facts of the case, the Complainant clearly should have known that its complaint could not succeed since the respondent had registered the domain name in good faith.
Thus, great care must be taken with regard to the portfolio of domain names related to the company name or trademarks, as these are valuable assets. Drawing up a restrictive naming charter makes it possible to prevent as far as possible any dispute regarding the ownership of names that may arise with business partners.
Dreyfus firm, an expert in trademark law, can help you with the management of your domain names and trademarks portfolios.
The UDRP procedure is an effective tool for obtaining the transfer or cancellation of a domain name registered and used in bad faith. However, it should not be used as a pressure tactic to recover a domain name that is legitimately held by a third party. Where a complaint is filed without a serious legal basis, or primarily with the aim of depriving the registrant of a domain name, the panel may find Reverse Domain Name Hijacking, meaning that the complainant has used the UDRP procedure in bad faith.
The case Advice Group S.p.A. v. Privacy Administrator, Anonymize, Inc. / Michele Dinoia, Macrosten LTD (WIPO Case No. D2019-2441) is an illustration of this risk.
The Advice group case: a warning against insufficiently grounded complaints
Advice Group is an Italian company founded in 2006 and specialized in marketing. It is based in Turin and also has offices in Rome and Bari, as well as subsidiaries in Bulgaria, Kosovo, Portugal, Colombia and Peru. After becoming aware of the registration of the domain name <advicegroup.com> by a third party, the company filed a UDRP complaint with the WIPO Arbitration and Mediation Center, seeking transfer of the domain name.
The disputed domain name had originally been registered in 2005 and was later acquired by Michele Dinoia, of Macrosten LTD, in September 2014. The domain name resolved to a parking page displaying commercial links and indicating that Internet users could contact the registrant if they were interested in acquiring the domain name.
First, that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights
Second, that the Respondent has no rights or legitimate interests in respect of the domain name
Third, that the domain name was registered and is being used in bad faith.
In this case, the panel accepted that the domain name was confusingly similar to the Complainant’s Italian figurative trademark “ ” No. 2015000025292. However, this was not sufficient to justify a transfer.
The panel chose not to make a definitive finding on the issue of rights or legitimate interests, given its conclusions on bad faith. Nevertheless, it made several observations that were favorable to the Respondent. In particular, the domain name was composed of dictionary terms, namely “advice” and “group”, and the Respondent had not actively used the domain name to target the Complainant. The domain name merely resolved to a standard parking page, with a message allowing interested users to contact the registrant regarding a possible purchase.
The panel also noted that there were many companies throughout the world using the name “Advice Group”. This weakened the Complainant’s argument that the Respondent must necessarily have had the Complainant in mind when acquiring the domain name.
Bad faith as the decisive issue
The issue of bad faith was decisive. The panel emphasized that, at the time the Respondent acquired the domain name in September 2014, the Complainant had not yet registered its trademark. The trademark was filed only in June 2015 and registered in December 2016. As a result, the domain name predated the Complainant’s trademark rights.
Nothing in the evidence suggested that the Respondent had targeted the Complainant when acquiring a domain name made up of common English words. The fact that Internet users could make an offer to acquire the domain name did not, in itself, prove that the Respondent had registered it with the specific intention of selling it to Advice Group at an excessive price.
The complaint was therefore rejected.
Reverse Domain Name Hijacking: when the complaint itself becomes abusive
More importantly, the panel found that the complaint constituted a case of Reverse Domain Name Hijacking. The Complainant had accused the Respondent of cybersquatting even though it had not provided evidence of targeting, and despite the fact that the domain name, composed of generic terms, predated the Complainant’s trademark registration. The panel considered that the Complainant should have known that it could not establish bad faith registration.
This decision remains highly relevant today. The updated WIPO practice, including the WIPO Overview 3.1, confirms the importance of a rigorous evidentiary analysis, particularly in relation to bad faith and abusive UDRP complaints. Panels continue to be attentive to cases where a trademark owner attempts to use the UDRP procedure to obtain a domain name that it could not acquire through ordinary commercial negotiation.
Practical lessons for trademark owners
The practical lesson is clear: where a domain name consists of generic, descriptive or common terms, proving bad faith is particularly difficult. It is not enough to show that the domain name is identical or similar to a trademark. The complainant must establish that the respondent specifically targeted its trademark, business, reputation or customers.
Conversely, certain elements may strengthen a UDRP complaint, such as trademark rights predating the domain name, reproduction of the complainant’s official website, use of the domain name for the same goods or services, fraudulent email activity, a direct offer to sell the domain name to the trademark owner, or a documented pattern of cybersquatting.
Before filing a UDRP complaint, trademark owners should therefore carefully verify the date of registration or acquisition of the domain name, the date on which their own trademark rights arose, the distinctive or generic nature of the sign, and the available evidence showing that the respondent actually targeted them.
Failing this, the complaint may not only be rejected, but may also result in a finding of Reverse Domain Name Hijacking, turning the procedure against the complainant itself.
Conclusion
The Advice Group decision serves as a useful reminder that the UDRP procedure is not intended to resolve all disputes involving a domain name. Its purpose is to address clear-cut cases of abusive registration and use, not to provide a shortcut to obtaining a domain name legitimately held by a third party.
For trademark owners, the key issue is therefore not merely whether the disputed domain name is identical or similar to their trademark, but whether there is sufficient evidence to show that the respondent specifically targeted their rights. This case thus demonstrates that filing a weak or opportunistic complaint can have consequences that go beyond the mere dismissal of the complaint.
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.
1.Can a trademark owner file a UDRP complaint if the domain name was registered before its trademark?
Yes, but the complaint will usually be more difficult to prove. Under the UDRP, the complainant must show that the domain name was registered and used in bad faith. If the domain name predates the trademark rights, it may be difficult to establish that the registrant targeted a trademark that did not yet exist. However, exceptions may arise where the complainant already had unregistered rights, strong reputation, or where the respondent clearly anticipated the complainant’s rights.
2.Is the UDRP the right procedure for every domain name dispute?
No. The UDRP is designed for clear cases of abusive domain name registration and use. It is not intended to resolve complex contractual disputes, business disagreements, former partnership issues, or conflicts involving competing legitimate rights. In such cases, court proceedings or negotiated solutions may be more appropriate.
3.Does a respondent have to actively use the domain name for bad faith to be found?
No. Passive ownership of a domain name may, under certain circumstances, constitute bad faith. However, passive ownership is evaluated with caution and does not automatically suffice to establish bad faith.
4.What type of evidence should be collected before filing a UDRP complaint?
A complainant should collect evidence of its trademark rights, reputation, chronology, screenshots of the website, WHOIS records, DNS records, MX records, redirections, phishing attempts, commercial links, offers for sale, prior correspondence, and any pattern of similar domain name registrations by the respondent. The stronger the factual record, the lower the risk of filing an insufficiently grounded complaint.
5.Can a domain name made of common words still infringe trademark rights?
Yes. A domain name made of common words may still infringe trademark rights if it is used to target a specific trademark owner. For example, bad faith may be found where the domain name reproduces the complainant’s branding, redirects to competing services, is used for phishing, or creates a misleading association with the complainant. The key issue is not only the wording of the domain name, but the respondent’s intent and use.
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Written by Dreyfus17/07/2020 
The judges of the Paris Court of Appeal, ruling on a referral from the Court of Cassation, adopted a strict approach to similarities between a figurative trademark and a later , semi-figurative trademark in a dispute between two companies specialized in ready-to-wear clothing.
the sign, in particular for clothing products.
CJEU – September 5, 2019
The gTLD <.com> apparently occupies more than 40% of the domain name market share, according to statistics provided by the site www.domainnamestat.com. These results confirm that it is an unavoidable extension, especially because the <.com>, which addresses the whole world, is a strong rallying sign.
The 2019 Finance Act harmonizes French and European tax rules in order to best promote the investment of patentable creations and inventions. We are talking about the French IP Box.
” No.