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Can the French public be advertised for the sale of non-prescription drugs on the Internet?

Written by Dreyfus21/03/2022

Stockage médicaments pour préparation de commande en ligneIn France, the online sale of non-prescription drugs is strictly regulated, for public health considerations. Thus, some advertisements are prohibited, including paid referencing on the Internet.

In a dispute opposing a Dutch company to French pharmacists and e-pharmacists, the Paris Court of Appeal ruled, on September 17, 2021, that the Holland based seller who advertised his products on French soil, as well as on the Internet did not, in doing so, carry out acts of unfair competition.

 

In 2015, shop-pharmacie.fr, an online sales site for non-prescription drugs administered by a Dutch company, launched a large-scale advertising campaign on French soil. Millions of flyers were thus included in postal packages sent by major e-commerce players such as Zalando and La Redoute. The Dutch company also carried out a paid referencing strategy on the Internet, targeting the French audience.

This campaign, which French companies could not in any case have carried out, appeared excessive and even unfair for some of the associations representing the profession. The Union des groupements de pharmaciens (the Union of pharmacists’ consortium) and the Association française des pharmaciens en ligne (the online pharmacists Association) thus sought to have this campaign qualified as an act of unfair competition, basing their request on legal provisions of the French Public Health Code.

The Paris Commercial Court granted this request but the Dutch company appealed this ruling. The Paris Court of Appeal then referred the matter to the Court of Justice of the European Union. The question raised was whether France could apply to e-pharmacies established in another EU Member State the same limitations it imposed on French e-pharmacists in regards with the promotion of their business and products on its territory.

 

Greater interests of the Internal Market and rejection of the French protectionism

Can European regulations, in particular Article 34 TFEU and the provisions of Directive 2001/83, allow an EU Member State to impose on pharmacists, who are nationals of another EU Member State, rules derived from Articles R.4235-22 and R.4235-64 of the Public Health and good practices Code issued by the public authority of the Member State?

The Court of Justice of the European Union answered this question in its October 1st 2020 decision C-649/18 by the negative. This legal and political decision relied namely on the fundamental notion of the European internal market.

This decision brought the protectionism of the French provisions to a standstill but it was initiated in 2016 by the French Competition Authority which at the time stated that the French legislation introduced “additional constraints that appear to be disproportionate for the intended purpose of public health protection” (French Competition Authority, 20th April 2016, notice n°16-A-09 §91). In 2019, another notice further supported this opinion and stated that online sale was “obstructed in its development by excessive constraints that limit the development of players established in France compared to their European counterparts” (French Competition Authority, 4th April 2019, notice n°19-A-08).

Thus, the European justice system decided to mitigate the implementation of the French legal limitations in order to protect the Internal Market.

 

Possibility of limiting advertising on French territory through targeted legal provisions

The Court of Justice of the European Union has established a first principle whereby a Member State can impose limitations on advertising if its legislation is strictly circumscribed. The Paris Court of Appeal followed this clarification in the dispute between French pharmacists and the Dutch e-pharmacy and ruled that the provisions invoked from the French Public Health Code were not specific enough. More precisely, they did not solely target drugs, but referred to the general term of “pharmaceutical products”.

The door is therefore left open for the French legislator to specify its legal provisions relating to the framework of pharmaceutical drugs online advertising.

 

Paid referencing on the Internet in principle possible for companies established in another Member State of the European Union

In order to prevent the over-consumption of pharmaceutical drugs, French law prohibits French e-pharmacies from carrying out paid referencing campaigns in the digital space, particularly on search engines and price comparators.

In this case, the Court of Justice of the European Union stated that such referencing is in principle possible, unless it is limited by a measure that is necessary and proportionate to the purpose of safeguarding public health. Therefore, the general rule is that referencing is possible, unless the opposing Member State provides a targeted, proportionate and necessary legal rule.

Yet, such legislation does not exist in France. Moreover, the provisions of the Public Health Code that have been included in the debate seem inadequate for e-commerce. Indeed, e-commerce has its own constraints, namely its universal, instantaneous and continuous access via the Internet. Consequently, it seems very difficult to provide a sufficiently concrete and specific framework for the practice of paid referencing on the Internet for this type of activity.

 

To sum up, French e-pharmacists and e-pharmacists located in other EU Member States are not on an equal footing regarding advertisements carried out in France.

This case provided the Paris Court of Appeal the opportunity to reaffirm the right to paid referencing by stating that the decree of December 1st 2016 “relating to the technical rules applicable to e-commerce websites for pharmaceutical drugs ” and relating in particular to the prohibition on referencing in search engines or price comparators in return for payment, was unenforceable. Furthermore, the French Council of State had annulled this decree on March 17, 2021.

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LEGAL WATCH : THE NAME PARISTECH.ORG

Written by Dreyfus18/03/2022

The name < PARISTECH.ORG >, operated by Parisian entrepreneurs, would not infringe Paritech’s rights.

At the end of the year 2021, a surprising UDRP decision was issued. It concerned a complaint filed against the domain name < paristech.org > that was registered by an anonymous registrant in 2017. The complaint was filed by the French ParisTech Foundation («ParisTech») who is known for its higher education services primarily in the fields of science and technology,

ParisTech notably owns two French Paristech trademarks, registered in 1999 and 2010 and subsequently renewed, as well as the international trademark “Paris Institute of science and technology Paristech” registered in 2010 and renewed in 2020. It also owns the <paristech.fr> domain name, registered in 2004.
The disputed domain name was used to disseminate French articles on a variety of topics, most of which related to technology and innovation. Before filing a complaint, the complainant attempted to contact the registrant at the address mentioned on its website, but without success.

 

After the complaint had been filed, the defendant indicated that he was open to find an amicable agreement with the complainant. Although it led to the suspension of the proceedings, the negotiations – whereof the content has not been reported – were not successful. Consequently, the proceedings resumed. The defendant submitted a late response to the complaint, which the expert decided not to accept, based on the consideration that it would not have changed the outcome of the case anyway.
In his analysis, the expert acknowledges that the domain name is identical to the complainant’s prior Paristech trademarks.

However, as far as the legitimate interest is concerned, his position may seem unexpected since he decided not to rule on the matter.

He noted that the website included articles on various topics that mostly related to technology and innovation. The site incorporates a «Paris Tech» logo at the top of the page and at the bottom, a reference to the city of Paris and a postal code.

He noted that the «Paristech» website is managed by two Parisian entrepreneurs who want to keep track of technological developments.

The only method of contact is an email address. Nonetheless, the complainant demonstrated that this email address does not work.

The expert further noted that the legal notices only contained the contact details of the OVH host and that the contact details did not correspond to those provided by the registration office.
However, he noted that there is no evidence to suggest that the purpose of the defendant was to target the complainant’s trademark. The “Paris Tech” logo on the site is different from that of the complainant. In addition, the expert stated that the content presented on <paristech.org> and <paristech.fr> are different.

He explained that «Paristech» can easily be understood as “Paris Technology” referring to the content of the site.

Based on these facts, the expert considered that the complainant failed to prove the defendant’s bad faith and referred to his comments on this point.

He considered that the defendant could have known about the Paristech trademark when he registered the domain name since the complainant’s trademark appears to be known in France in connection with its research education services and that the website is operated by Parisian entrepreneurs, where the complainant is based.

Nevertheless, he noted that the site was non-commercial, relating to technology and innovation, and did not refer to the complainant’s field of activity, namely education.

Moreover, the expert noted that the complainant did not provide proof that the registrant had proposed the domain name for sale before the start of the proceedings, nor that he would have obtained a financial gain by making use of this domain name through taking advantage of the risk of confusion. Hence, the domain name registration does not constitute an abusive reproduction of third-party trademarks.

He therefore rejected the complaint, stating that the choice to hide his contact information on the Whois file and to provide on his website a contact email address that does not work is not sufficient to conclude bad faith registration.
This decision may seem surprising given the complainant’s reputation among the French speaking and international public.

The domain name is strictly identical to the earlier trademark and reproduces part of the complainant’s legal name. The website is operated in French. However, the complainant is located in France where it enjoys a certain reputation.

The legitimacy of the site may seem questionable since no legal notice is inserted and the contact address is false. The defendant does not claim trademark rights or a legal name «Paristech».
The website’s topics are similar to those covered by ParisTech. The fact of not drawing active income or not actively proposing the sale of the domain name does not mean that the defendant did not intend to target the complainant’s trademark. We note that as of December 30, 2021, the site is inactive.

By consulting the history of the Whois of the disputed domain name, we can see that on February 12, 2017, the name was held by Mr. X, ParisTech company. According to our research, the latter was the general manager of ParisTech. Subsequently, the name became anonymous. Therefore, there appears to be a very clear link between the complainant and this domain name.

Finally, although the articles promoted on the site do not focus on education, it could be argued that the dissemination of informative articles can be related to it.

It appears that the expert based his decision primarily on the lack of commercial intent in the use of the disputed domain name.

However, the expert noted that if the content of the website were to change in order to infringe the complainant’ rights, then the complainant would be free to pursue legal action.

 

WIPO, Arbitration and Mediation Center, Case No. D2021-2417, October 28, 2021, Paristech Foundation v. Domain Administrator d/b/a privacy.cloudns.net

 

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Legal Watch: Two people file a complaint regarding the same domain name

Written by Dreyfus17/03/2022

When two people file a complaint regarding the same domain name, the domain name’s transfer isn’t necessarily granted to the trademark rights’ owner

The Uniform Domain Name Dispute Resolution Policy specifies in point 4) a) that the relevant disputes involve those where a domain name is “identical or confusingly similar to a trademark in which the complainant has rights”.

This is the case when the domain name has been registered and used in bad faith, when the registrant has no rights or legitimate interests and when the domain name registered by the domain name registrant is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Recently, the WIPO Arbitration and Mediation Center considered that, although the applicant had previous trademark rights, the transfer of the disputed domain name shall happen on behalf of the other complainants.

 

 

 

The complainants in this case were Victoria and David Beckham.

The first complainant, Victoria Beckham, a former member of the Spice Girls, is specialized in haute couture and commercialises clothes under her name on the website “www.victoriabeckham.com”. The trademark “VICTORIA BECKHAM” is notorious, especially in the United-Kingdom: it was designated as Designer Brand of the Year in 2011.

The second complainant is David Beckham, renowned for his soccer career, as well as for his professional collaborations with major brands.

He owns several trademarks, invoked in support of the complaint and in particular some registered in the United States “BECKHAM” No. 3342223, dated 20 November 2007, renewed, relating inter alia to clothing products and the trademark “BECKHAM” No. 4208454, dated 18 September 2021 in class 3, which includes perfumes. Thus, the trademarks cited in support of the complaint belong solely to him.

The Beckhams discovered the domain name <usbeckham.com> registered on 8 July 2020, after the registration of Mr Beckham’s trademarks. This domain name linked to a page selling clothing, handbags, shoes and accessories. The site was titled “BECKHAM® Official Online Boutique” and featured the header “BECKHAM” in a font similar to Victoria Beckham’s site. It also had a “Perfume” tab, which redirected to the <genewus.com> website, selling perfumes but also a range of swimwear bearing the name “Victoria Beck”.

Firstly, the expert observed that both complainants shared the same name BECKHAM, for which David Beckham had acquired trademark protection for perfumes and clothing. Hereby, the expert considered the consolidation of the complainants well-founded.
According to the expert the disputed domain name may generate a risk of confusion with the earlier trademarks as it incorporates the word BECKHAM.
Concerning the legitimate interest and the potential rights of the defendant, the complainants argue that they have not given any authorization to the defendant to use their name and that the latter held no rights on the sign “BECKHAM”.
The use of the domain name is confusing for products in competition with those of the complainants and have a title with the symbol ® implying that the respondent is the owner of the trademark “BECKHAM”. The term “Official” also suggests that the website is official. This demonstrates the respondent’s lack of good faith: the expert therefore considers that she has no right nor legitimate interest in the domain name.
Furthermore, with regard to the registration and use in bad faith, the expert considers that the applicants are very famous and that the defendant could not have been unaware of the applicants’ trademarks “BECKHAM”, given that she lived in London and in view of her interest in “high fashion” as mentioned on her website. Moreover, her name is not “Beckham”. However, this name has some significance in the world of high fashion through the applicants’ trademarks. The expert therefore considers that the defendant necessarily registered and used the domain name in bad faith.
Therefore, the complaint was accepted and the domain name was transferred to the first complainant, Victoria Beckham.

 

This ruling is interesting since most of the decision’s reasoning is based on Mr. Beckham’s trademarks. The trademarks in question were protected in particular for “clothing” and “perfumes”. Those same products are found on the disputed website.

A research reveals that there are several “VICTORIA BECKHAM” trademarks, but at first sight, they do not belong to Mrs. Beckham herself, but to her company. Although the company bears the same name, it was not a complainant in this litigation.

The consolidation of complainants makes it possible to consider that “2 become 1″ for the purposes of the complaint. Anyone of the complainants can obtain the disputed domain name whereas it is not decisive which one of them is mentioned as the actual trademark owner in the complaint.

Perhaps Victoria Beckham could have argued that she has common law rights regarding the name “BECKHAM”. However, these rights would have been in competition with those of her company.

(WIPO Arbitration and Mediation Center, Case n°D2021-1841, Victoria Beckham, David Beckham v. Contact Privacy Inc. Customer 1247653581/ Cynthia Panford)

 

See also…

♦Domain names

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Metaverse: is it necessary to register specific trademarks for protection?

Written by Dreyfus11/03/2022

*Image generated by DALL-E 3, Microsoft Version

The metaverse -a parallel virtual world which is booming in the Web 3.0 era- has become an unavoidable topic. This fictional world will combine prospectively and simultaneously virtual reality (VR), augmented reality (AR), blockchain, crypto-currencies, social networks, etc. Many companies are already planning to do business in this world following the company’s digital transition.

As a result, trademark applications covering products and services related to “digital virtual objects” have been multiplying since the end of 2021.

But how to effectively protect this new activity that calls for a whole new lexicon?

 

 

 

1.The metaverse, a new world for new ambitions?

In a few words, the metaverse can be defined as a fabricated virtual universe -mixing the words “meta” and “universe”, to designate a meta-universe in which social interactions would be extended and digitized. It seems to be directly inspired by the 1992 novel “Snow Crash” (“Le Samourai virtuel” in French) by Neal Stephenson.

This parallel digital environment embodies a new way to explore innovative and ambitious projects from a different perspective, before they take concrete shape in the actual world.

As an example, Aglet created its own range of sneakers, the “TELGAs”, after launching it as a digital collection for online games. The collection is also available on the OpenSea platform, alongside brands such as Nike and Adidas, who have stepped up to virtual collections in the form of Non-Fungible Tokens (NFTs).

NFTs, whose transactions are mostly hosted on the Ethereum blockchain, are essential components of the metaverse. This digital asset category, which is distinct from crypto-currencies such as Bitcoin and Ether, allows for authentic and unforgeable certification of the ownership of one of these virtual digital objects offered for sale in the metaverse.

The metaverse follows on from social networks and will undoubtedly allow companies to establish a strong online presence, beyond the operation of a traditional website.

Whether the metaverse is a trend that will last and become anchored in our culture is uncertain, though many large companies have already taken the plunge.

Before venturing into the metaverse, it is necessary to register specific trademarks, adapted to the goods and services of the metaverse. This will ensure efficient protection against infringement and will enhance the value of the company’s brand assets.  In this respect, it is important to draft an appropriate wording for the trademark.

 

2.How to design an adequate and optimal protection?

When launching an activity into the metaverse, the definition of the goods and services should be careful considered as the crucial element of a trademark is its wording above all. The filing process for a trademark application with the INPI, EUIPO, or any other national industrial property office, will indeed guarantee, to some extent, a monopoly on goods and services determined. This will confer also a commercial value to the trademark, once it is registered by an industrial property office.

As a reminder, once a trademark application has been filed, it is impossible to add classes of goods and services and to add any additional good or service, nor to add goods or services. Only a modification in the sense of a restriction of the wording will be considered.

The most relevant classes, which will contribute to the wording, are classes 9 and 41.

Class 9 allows for NFT coverage, although the product may not be accepted as such. More explanatory wording will be required. For example, one can target “downloadable digital products, i.e. digital objects created using blockchain technology”. These goods can be of all kinds: clothing, works of art, etc.

Class 41 covers the components of entertainment. In this respect, MMORPGs, which are defined as interactive games, which by their nature and concordance are closely associated with the metaverse, could be covered in class 41.

When a virtual trademark is to be exploited through points of sale, services class 35 seems unavoidable in order to include, among other things, “retail store services for virtual goods”.

In a complementary vision, it will then be necessary to think of designating the corresponding goods in the classes that classically cover them.

 

3.Virtual trademarks registered in various sectors

In early February 2022, Pumpernickel Associates, LLC filed a trademark application for “PANERAVERSE” No. 97251535 with the USPTO. This filing, initiated for virtual food and beverage products, NFTs and the ability to purchase real products in the virtual world, demonstrates a definite willingness by the American company to deploy these outlets in the metaverse.

McDonald’s has also filed trademark applications (No. 97253179; No. 97253170; No. 97253159) for “the operation of a virtual restaurant offering real and virtual products” and for “the operating a virtual restaurant online featuring home delivery”. In addition, the U.S. fast food chain also plans to obtain a trademark for “on-line actual and virtual concerts and other virtual events” and other entertainment services for a virtual McCafe (No. 97253767; No. 97253361; No. 97253336).

These are not the only trademark applications filed at this time; Facebook and Nike pioneered this trend, followed by luxury, textile, cosmetics and perfume brands. L’Oréal, for example, has filed several registration applications for perfume brands from its portfolio, in their digital version, with the French National Institute of Industrial Property (INPI)

 

4.Conceptual considerations

In light of this unprecedented craze around the metaverse, one might wonder whether these immaterial goods, whose projected use is exclusively intended for virtual exploitation, should not come under a new particular category of products, not defined to date under the Nice Classification.

The addition of an ad hoc class dedicated to these virtual goods and services seems complex insofar as many of them could overlap with already existing products and services. The list could be very long.

In any case, drafting a trademark for the metaverse requires a meticulous definition of the goods and services concerned.

The Nice Classification, despite the successive trademark filings made since November 2021, does not include for the moment, in its explanatory notes or product suggestions, any reference to goods and/or services closely related to the metaverse or NFTs. Perhaps it will do so shortly in view of the developments encountered.

What will be the boundaries between the metaverse and the actual world? The question is a structuring one for trademark law and competition law. The European Commissioner Margrethe Vestager and the president of the US antitrust authority, Lina Khan, are wondering about “the right time to put in place competition rules in this emerging sector”.

Dreyfus accompany you in the protection of your brands in the metaverse era and to draft with you a wording of goods and services adapted to your activity.

 

 

See also…

 

♦How to protect your brands in the digital era?

♦Why is it necessary to register a trademark?

♦United States: what are the options to protect a trademark?

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Is it possible to invoke a trademark that is not protected in the defendant’s country?

Written by Dreyfus08/03/2022

The trademark invoked by the applicant does not necessarily have to be protected in the country of the respondent

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISIONVente-privee.com v. 郑碧莲 (Zheng Bi Lian)Case No. DCN2021-0004

In order for a UDRP complaint to succeed, it is necessary to prove a trademark right similar or identical to the domain name, generating a risk of confusion. Then, it must be established that the respondent has no rights or legitimate interests, and finally, it must be shown that the respondent has registered and used the name in bad faith.

 

 

 

In order to establish this bad faith, it is essential to show that the respondent has prior knowledge of the applicant’s rights and that the disputed registration is aimed at these rights. Being the owner of a trademark protected in the country where the defendant is established is therefore a considerable asset. However, it is not a requirement.
Vente-privee.com is a French e-commerce company that has been operating for 20 years in the organization of event-based sales of all kinds of products and services at reduced prices, including major trademarks.
At the beginning of 2019, Vente-privee.com began a process of unifying its trademarks under a single new name: VEEPEE. This rebranding was widely promoted internationally. It had previously secured trademark rights to the “VEEPEE” sign via a filing an EUTM in November 2017 and via an international trademark filed the same day covering Mexico, Monaco, Norway and Switzerland. Vente-privee.com also owns numerous domain names matching “VEEPEE” such as <veepee.es>, <veepee.it>, <veepee.de> and <veepee.com>.

Having detected the registration of the <veepee.cn> domain name reserved in 2018 by a China-based registrant, the company filed a complaint with the WIPO Arbitration and Mediation Center seeking the transfer of the name.
The likelihood of confusion was easily admitted by the expert, who considered the domain name to be identical to the applicant’s earlier trademarks. On this occasion, he recalls that the trademark does not need to be registered in a specific country for the assessment of the likelihood of confusion.

This is in line with the assessment of WIPO’s Overview 3.0, which specifies in its section 1.1.2, quoted by the expert, that in view of the international nature of domain names and the Internet, the jurisdiction in which the trademark is protected is not relevant for the analysis of the first criterion. Bearing in mind, however, that this factor may be important for the examination of the other criteria.

the Panel notes that the Respondent has no business relationship with the Complainant and has not received any authorization from it to reserve the disputed domain name. As the Respondent did not respond to the Complaint, the Panel finds that Vente-privee.com has established that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally, on the issue of bad faith, the expert insists on the arbitrary nature of the name VEEPEE: “VEEPEE is a made-up word with no particular meaning in Chinese or English”. He also highlights the fact that the domain name has not been actively used, but on the contrary refers to a website in English, accessible to all, on which it is for sale.

Therefore, the expert orders that the disputed domain name <veepee.cn> be transferred to the Complainant.

This decision is a reminder that it is important to choose the right trademarks to be used in a UDRP complaint. Ideally, it is necessary to prove a registration in the country of the registrant, if possible prior to the domain name. In the absence of a registration in the relevant jurisdiction, it is important to demonstrate that the trademark is used and known outside the boundaries of its registration.

In this instance, we note that the disputed domain name is indeed subsequent to the applicant’s trademarks, but prior to the Vente-privee.com rebranding operation by almost a year. This information might have required analysis had the Respondent responded to the Complaint. Information that could have been counterbalanced, however, with the registration date of the name <veepee.com> (the <.com> targeting the international), which is very old: December 6, 1999.

 

SEE ALSO…

♦Domain names

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Online Trademark Protection

Written by Dreyfus07/03/2022

Monitoring, protecting and promoting your trademarks online: these are the core business activities of the Dreyfus law firm.

Our team assists you to anticipate, secure and optimize your trademarks, allowing you to enhance your business.

A successful trademark registration does not mean that your trademark is automatically protected. Nonetheless, your trademark has an undeniable business value and as such warrants to be monitored and defended. One of the important issues is that public entities such as the INPI, EUIPO or WIPO are not required to notify prior trademark owners when a third-party applicant files an application for a similar or identical trademark. Since these organisms do not assess whether trademark applications are likely to infringe earlier trademarks, it is up to the applicants to perform a prior art search. In other words, careful trademark monitoring is very important for an optimal and durable protection of your trademark. However, identifying risks and responding accurately, effectively and timely to potential harms is not always obvious.

That is why the Dreyfus team helps you monitor and protect your trademarks online. First, we detect potential infringements, then we inform you in due time when a (strongly) similar or identical trademark is filed.

Thanks to our innovative Dreyfus IPweb® solution, we are able to monitor and automatically detect trademark filings that are identical or similar to yours and to take steps against any potential infringement before a similar trademark enters the market. IPweb® provides direct access to a company’s domain name monitoring services. It covers all social media networks such as Facebook, Twitter, Instagram, and LinkedIn, as well as advertising platforms such as Google AdWords. Your trademarks are constantly monitored and you will be swiftly alerted in the event of a breach.

After assessing the similarity of the signs and the products and services in question as well as your chances of success, we will inform you immediately and, if necessary, advise you on the steps that should be followed. As it is better to be safe rather than sorry, it is important to act as quickly as possible and to contact the third-party applicant at an early stage, by sending him a warning, a letter of formal notice or even by filing an opposition against the trademark application to ensure that the said applicant uses an alternative name for his/her products and/or services.

 

Detecting potential trademark infringements and securing your trademarks online

 

We report potential trademark infringements on the Internet and social networks and we provide you with personalized advice regarding your portfolio management strategy, including weaknesses that could hinder the development of your (digital) business and give rise to possible litigation.

In this regard, we offer you appropriate and personalized strategies to anticipate dangers, such as online fraud (i.e. phishing, fake websites, identity theft, forged emails, etc.) which requires immediate action as it can be significantly damaging to the image and reputation of your trademark and may generate a financial loss.

For compliance purposes, we can help you put in place a strategy to prevent any breach caused by domain names. This includes – in addition to monitoring your trademark among Internet domain names – monitoring of your trademark on other social networks (such as Facebook, Twitter, LinkedIn, Instagram, YouTube, Snapchat) to detect and respond appropriately to any new breach.
With our intuitive platform, Dreyfus IPWeb®, we allow our clients to have access to – and closely follow their trademark files online. Moreover, our clients have access to the results of the performed surveillance on trademarks, domain names, corporate names or social networks. With these trace and control tools, we help you restructure the management of your trademark portfolio in an easy and accessible way.

 

 Online trademark audits

 

The next step consists of performing a trademark audit. It is a crucial step to get a global and transversal view of the potential value of your trademarks and to anticipate risks such as conflicts regarding ownership, the loss of rights on an unused trademark or the expiration of your trademark rights. With thorough online trademark evaluations, we will bring to light potential harmful situations and assess the risks and opportunities in relation with your trademark. Besides, trademark audits become important assets when negotiating licensing or assignment agreements.

Furthermore, the Dreyfus team offers you personalized recommendations to strengthen your trademark rights. The online assessment and promotion services offered by the Dreyfus team will allow you to have an accurate and global overview of your situation, from a legal, commercial and technological perspective.

 

(Pre)litigation

 

The Dreyfus law firm assists you with the defense and enhancement of your rights and helps you resolve your disputes efficiently, quickly and amicably. With its detailed knowledge of trademarks in the digital environment, our team helps you settle your disputes online, out-of-court and in a confidential, strategic and efficient manner. Thanks to its know-how and its many clients, the Dreyfus team follows continuously and closely ongoing issues and has an increased vision of current and future risks.

The Dreyfus team will help you successfully defend and enhance your trademark rights and will assist you with the resolution of disputes, infringement actions, problems relating to domain names, as well as during mediation and arbitration procedures. Have you discovered a website that infringes on your trademark? Do you have a French or European Union trademark or an international trademark having effect in France or in the European Union and would you like to file an opposition to an application for registration of a French trademark or an international trademark having effect in France?

Dreyfus & Associates assists you in effectively and rapidly defending your rights. In this regard, we help you introduce an opposition procedure before the INPI to prevent the registration of a trademark that infringes on your prior rights. We also assist you in initiating an out-of-court settlement procedure before the WIPO Arbitration and Mediation Centre, including the resolution of national and international domain name disputes.

 

SEE ALSO…

♦Trademarks, other distinctive signs and franchise

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Brief : DOMAIN NAMES: THE POTENTIAL CONFLICT OF DIFFERENT DOMAIN NAME SYSTEMS

Written by Dreyfus04/03/2022

A website can only be accessed if a system is able to link the URL entered by a user in his or her browser to the server of the website in question. This is called the Domain Name System (DNS). The DNS operates as an intermediary system through sending a request on the Internet in order to make the link between the address entered in the browser by the user and the actual access to the site. This is the reason why the DNS is often compared to a telephone directory as it allows to translate the names given by the user into names that are intelligible for machines.

When everything is set up properly to ensure that the DNS can play its role as an intermediary, it is sufficient to just have a device with Internet connection to access the site.

But currently some registrars offer domain names that don’t rely on the traditional DNS. Instead, they use technologies such as blockchain.

In order to be accessible, these domain names require the installation of specific tools such as particular browsers or plug-ins. These constitute additional costs for potential buyers who simply want to obtain a traditional domain name for their website.

 

These offers present two fundamental risks. The first issue relates to the communication of the Internet regulatory authority ICANN of November 24, 2021. It concerns the risk of confusion for consumers. In fact, it is not easy for the average consumer to make the distinction between these two types of offers whereas the purchase of these different domain names covers very different realities.

The second issue of this alternative resolution system consists of the risk of conflicts between domain names that would be registered through the traditional DNS system and those based on one of the new non-DNS systems.

These possible conflicts include name collisions. Hence, this phenomenon might intensify with the creation of parallel networks. This might occur when the system being used to translate names being entered by users into intelligible names for machines – in this case a non-DNS system – is sent to a DNS system, for which the address corresponds to the address of a different website.

In that case, the user would be redirected to the wrong domain name. These uncertainties could give rise to legal conflicts in the coming years if the new systems become more important.

 

 

Sources: ICANN Blog, Buyer Beware: Not All Names Are Created Equal, November 24, 2021, A. Durand
ICANN, Frequently Asked Questions: Name Collisions for IT Professionals

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Brief : THE DEREFERENCE OF WISH FROM SEARCH ENGINES: THE BEGINNING OF A NEW LEGAL SAGA?

Written by Dreyfus04/03/2022

On the 23rd of November 2021, the French Department of Economy and Finance ordered the dereference of the US online sales platform “Wish” from search engines. This decision was issued after an investigation conducted by the Directorate-General for Competition, Consumer Affairs and Fraud Prevention (DGCCRF) on a line of goods sold by the online platform. This investigation revealed a high percentage of non-compliant and hazardous products.

It appeared that 95% of all the surveyed electronic devices were non-compliant and 90% of them were hazardous. Therefore, the DGCCRF ordered Wish to comply with the applicable regulation on the 15th of July. However, as this injunction did not receive a satisfactory response, the website as well as the mobile application were dereferenced from search engines at the request of the department of the French Ministry of Economy and Finance.

The dereference of Wish from search engines was issued in compliance with article L. 521-3-1 of the French Consumer Code. Under this article, any competent agent is allowed to order the dereference of «online interfaces whose content are manifestly illegal».

 

 

According to the online platform Wish, this measure was disproportionate as it undermined its image and reputation and caused detrimental financial consequences to the company. However, it should be noted that the effectiveness of the decision remains relative because the dereference only applies in France. With a few clicks, it is often sufficient to change the settings of your browser, such as Google, to locate yourself in a different region.

Moreover, as of December 28, 2021, we note that the first two results of the Google search engine reveal a Google Play page to download the Wish app as well as the company’s Facebook page.

Finally, the website is of course directly accessible via its web address.

Unlike website blocking, dereferencing does not prevent access to a website. But in theory, it makes it more difficult to access it because you have to type the entire URL to access it, instead of just entering the name of the online marketplace in a search engine.

After the rejection of the request of an expedited appeal procedure (“recours en référé”) by the administrative court, Wish decided to file an appeal in cassation. A new judicial saga seems to be looming on the horizon.

 

 

Ministry of Economy and Finance: « Protection des consommateurs: lourde sanction pour la place de marché en ligne Wish »: www.economie.gouv.fr/protection-consommateurs-sanction-place-marche-ligne-wish
TA Paris, Ord. 17 déc. 2021, n° N°2125366/2
Press release of the Ministry of Economy and Finance, November 24, 2021, « Bruno Le Maire, Alain Griset et Cédric O annoncent des mesures exceptionnelles à l’encontre de la place de marché Wish pour sensibiliser et mieux protéger les consommateurs »

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Why is it necessary to register a trademark?

Written by Dreyfus24/02/2022

Registering your trademark allows you to protect it. For a French trademark, it must be registered with the INPI (National Institute of Industrial Property), but the protection can be extended to the European Union (EUIPO) and internationally (WIPO). When a trademark is registered on the national territory, in order to extend its protection, it is possible to register the trademark within the European Union and internationally. There is a right of priority which allows to file other trademark applications while benefiting from the filing date of the first application. The priority period is six months for trademarks.

Before considering filing a trademark with an office, it is necessary to make sure that the trademark is not already registered by another person. It is then sufficient to consult the databases of the offices in which are grouped all the trademarks already registered or in the process of being registered. The notion of distinctiveness is important in industrial property.

Indeed, a trademark is any sign, symbol, logo or any external appearance that will allow the average consumer not to confuse the trademarks between them. Signs allow companies to distinguish themselves from each other. A brand can take many forms: word, name, slogan, logo or a combination of several of these elements. This notion of distinctiveness is essential for the registration of the trademark, it allows to avoid an opposition procedure to the registration of the trademark on the basis of infringement.

Protecting your trademark allows you to use it without someone else infringing on it or without the use of your trademark infringing on another. Indeed, when your trademark is registered by the office, it does not infringe on the goods and services of an earlier trademark. If a new trademark infringes on your trademark, it is possible to file an opposition to the registration of this trademark.

 

Registration of trademark (INPI)

 

To register a trademark in France, the procedure is carried out in a dematerialized way on the INPI website. The duration of the registration is 10 years, the same period for each renewal to be made at the office. It is however possible to renew an expired trademark registration within 6 months following the last day of the month of expiration, however a 50% fee surcharge will be required.

 

How much will it cost to register a trademark with INPI

 

The INPI website specifies that the cost of registering a trademark with the INPI is 190 euros for one class and 40 euros for each additional class. For the renewal the price is 290 euros for one class and 40 euros per additional class.

The price for filing a trademark with the EUIPO is 850 euros for an electronic filing, plus 50 euros for a second class and 150 euros for any additional classes. For a renewal of a European trademark, it will be necessary to count 850 euros then 50 euros for a second class and 150 euros for all additional classes.

The price for an international trademark application varies depending on the countries that are covered by the application.

 

Today in France the registration of a trademark is not mandatory, however, not registering a trademark is taking risks. In France, the rights on a trademark are acquired by its registration and not by its use. Thus, the registration of a trademark provides legal protection.

However, it is important to perform prior searches to ensure that the trademark registration is possible. This work can be performed by patent attorneys, which adds a cost but ensures the validity of the trademark registration project.

 

 

See also…

 

♦Trademarks, other distinctive signs and franchise

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« .au direct »: the new Australian namespace that will launch on March 24, 2022

Written by Dreyfus08/02/2022

On the 24th of March 2022, a new name space will launch in Australia: “.au direct”.

It is a new name space that enables Australian citizens, permanent residents and organizations registered in Australia to register domain names directly before the .au.

Instead of registering and using domain names in the traditional namespaces such “com.au”, or “org.au”, “net.au”, “gov.au”, “edu.au” etc., Australian internet users will be able to opt for simpler and shorter domain names directly ending with “.au”.

In fact, the new name space enables two application possibilities. You can register a completely new “.au direct” name that isn’t registered in any existing .au namespace. The second option is to register the exact match of an already existing .au domain that you hold.

Where to register your “.au direct” domain name and at what price? 

From March 24, 2022, you will be able to simply register new or matching “.au” domain names through participating auDA accredited registrars. Bearing in mind that the rule of supply and demand applies, the registration prices vary between different registrars. It is likely that a potentially popular name is more expensive than an ‘ordinary’ one. Nonetheless, the official administrator of Australia’s .au top level domain (the “auDA”) sets the wholesale price for all .au domain names. Whether you opt for a “com.au”, “net.au” or “.au direct”, the wholesale price will be the same.

What are the requirements?

First of all, you need to prove a verifiable Australian presence. Article 1.4 of the .au Domain Administration Rules provides an exhaustive list of 17 natural and legal persons that are considered to have an ‘Australian presence’. In short it concerns Australian citizens, permanent residents of Australia and organizations and companies registered in Australia. This Australian presence is thus the first requirement for any person or organization who wants to register a “.au direct” domain name.

The second requirement regards the name itself. Although there are no allocation rules for the “.au” namespace, in the sense that you can freely choose any name, this doesn’t mean that there are no restrictions.

First, the name that you would like to register needs to be available. Considering the new namespace will launch in March 2022, the availability is not a problem (yet). But the ‘first come, first served rule’ applies so the risk of unavailability will be something to bear in mind.

Second, the name cannot be mentioned in the « reserved list ». Under the Licensing Rules, you can’t apply for a registration of a word, acronym or abbreviation that is restricted or prohibited under an Australian law or a name or abbreviation of an Australian state or territory, including the word ‘Australia’.

Finally, you can’t register a name that is deemed to pose a risk to the security, stability and integrity of the “.au” and global Domain Name System.

The second requirement consists thus of a negative requirement; you cannot register an unavailable name, nor a so-called reserved name.

How to register “.au direct” domain names?

Provided that the Australian presence and availability requirements are met, you will be able to register any new “.au direct” name via any participating auDA accredited registrar starting from March 24.

Furthermore, provided that these same requirements are met, Australian internet users will also be able to register the exact match of an existing .au domain that you already hold. However, this allocation process is a bit more complex. The .au Domain Administration Rules provide for a “Priority Allocation Process”. This process foresees a six-month “Priory Application Period” – from March 24 until September 20, 2022 – for holders of a “.au” name in another namespace (such as “com.au”, “org.au” or “net.au”) who would like to apply for its exact “.au direct” match.

For example, if you own the domain name “dreyfus.com.au”, you can apply for the registration of “dreyfus.au” within this period via an accredited registrar. If it appears that the requirements are met, you will get a priority status and you will be put on “Priority Hold for the Priority Application Period”. Through this status, you have the first opportunity to register the name which prevents third parties from registering it.

In some cases, there may be more than one applicant for the same “.au direct” domain name. For instance, if you hold the domain name “dreyfus.com.au” and a third party holds the domain name “dreyfus.net.au”, and you both want to register the “dreyfus.au” direct domain name, the “.au direct” exact match will be allocated according to the Priority Allocation Process.

A distinction is made between two priority categories. The first Priority Category regards names that are created on or before the 4th of February 2018. The second Priority Category regards Names created after the 4th of February 2018.

Under Article 1.9 of the .au Domain Administration Rules, Category 1 applicants have priority over Category 2 applicants.

In case there are multiple Category 1 applications, the name is allocated on agreement/negotiation between the Category 1 applicants.

Finally, if there are only Category 2 applicants, the name is simply allocated to the applicant with the earliest creation date.

As a final note, registering a “.au direct” domain name does not entail any negative consequences. You can always attempt to register your “.au direct” exact match because it has no consequences on your existing .au domain names. So, if you already own the domain name “dreyfus.com.au” and you want to register “drefyus.au”, the domain name “dreyfus.com.au” will not be affected by this registration and will continue to exist.

On the 24th of March 2022, the new “.au direct” namespace will thus launch in Australia.

This new name space that enables anyone with a verified connection to Australia, such as citizens and permanent residents of Australia and organizations registered in Australia, to register “.au direct” domain names. Instead of registering and using names in the traditional namespaces, it will be possible to opt for simpler and shorter domain names that directly ends with “.au”.

The first possibility is to apply for a registration of a new .au direct names that are not already registered in the .au registry.

The second possibility consist of registering the exact match of existing .au domain names. The allocation of these domain names is regulated by the specific provisions of the “Priority Allocation Process”.

About this topic…

♦.au direct update – .auDA WEBSITE

♦Reverse domain name hijacking

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