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Intellectual Property

Bringing a lawsuit does not necessarily preclude the UDRP procedure.

Written by Dreyfus05/08/2020

Usually, when a legal action is brought in the margins of the UDRP proceeding, the experts refrain from any decision on the merits and invite the Parties to settle their dispute before the court. However, whether or not to make a decision on the merits is left to the discretion of the expert.

 

Here, the dispute is between Associated Newspapers Limited from the United Kingdom on the one hand, and a natural person from Pakistan, Mr Makhdoom Babar, on the other. Associated Newspapers, the applicant, publishes the Daily Mail and The Mail newspapers. The Applicant claims that in November 2019, each issue of the Daily Mail sold more than one million copies.

 

The Respondent, Mr. Babar reserved the domain name <dailymailpk.com> on February 22, 2019.

 

The latter has repeatedly requested an extension of the time limit to file a response to the complaint, referring to the Covid-19pandemic as a justification for this request. Finally, the Respondent did not file a submission on the merits but indicated that it had filed a lawsuit in Pakistan to block the UDRP proceeding. He provided a document mentioning the complaint and indicated that the next hearing would take place on May 22, 2020.

The expert points out that they has the power to either stop the UDRP proceeding or not, when there exists a legal action in relation to the domain name at stake. The expert mentioned that many Panels in this situation refuse to suspend or terminate the procedure to avoid an indefinite delay in the decision. Especially when the legal action was introduced after the UDRP procedure, with the aim of disturbing it.

Following these preliminary remarks, the expert notes that there is no guarantee that the legal action will resolve the domain name issue. In fact, there is nothing in the file to show that the defendants in the legal action have been served with it or that they have agreed to submit to the jurisdiction in question. Furthermore, the court has not taken any action following the alleged hearing on May 22, 2020.

 

In addition, the action has not been brought to court in Massachusetts, United States, where the Registry Office is located. Thus, the Registrar may not enforce the decision in Pakistan.

Therefore, the expert decides to rule on the complaint and orders the transfer of the domain name to the applicant. To do so, he takes several elements into account. Firstly, the Complainant and the Respondent have already crossed paths in the past, since the Complainant had filed a complaint against them, concerning the domain name <dailymailnews.com>.

Secondly, the site set up by the Respondent on the name <dailymailpk.com> bears strong resemblances to that of the Complainant, to the extent that it cannot be a matter of coincidence alone, but rather of a desire to attract Internet users to its site by suggesting an affiliation with that of the Complainant. Thirdly, no articles have been published on the site since February 24, 2020, the date when the applicant was notified of the complaint. Finally, the expert notes that, in view of the circumstances, the defendant could not have been unaware of the existence of the “DAILY MAIL” trademark, which enjoys a great reputation.

 

 

Thus, the legal action does not per se obstruct the UDRP procedure. Nevertheless, it should be noted that in this case the defendant was a proven cybersquatter, at the origin of the legal action, initiated after the filing of the UDRP Complaint and in order to obstruct this procedure. Experts tend to react differently when the legal action precedes the UDRP action and especially when the dispute is between former trading partners. It is therefore necessary to remain vigilant before opting for the UDRP course of action.

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The new trademark nullity procedure before the French Trademark Office (INPI)

Written by Dreyfus03/08/2020

On April 1, 2020, a new trademark invalidity procedure came into force with the French “PACTE” legislation. This law transposes the European Directive 2015/2436, commonly known as the “Trademark Package”, and establishes a new administrative action for nullity before the French National Institute of Industrial Property (“INPI“).

Previously, only the French court of first instance in civil, criminal and commercial matters (“le tribunal judiciaire”) was competent in trademark nullity actions. From now on, this competence is shared with the INPI.

This administrative procedure before the INPI makes it possible to obtain a decision within a shorter period of time (between 6 and 10 months) and at a lower cost.

 

 

 

 

 

Which trademark can be contested ?

 

An action for nullity may be filed against a registered French trademark or an international trademark designating France.

 

 

On what grounds can you file an action for nullity of trademark ?   

 

A trademark may be declared invalid if it is vitiated by a defect which corresponds to a ground for invalidity. For instance, this is the case if it is:

– It is devoid of a distinctive character,

– It describes the designated products and/or services;

– It misleads the public,

-It is contrary to public order or morality.

If the trademark infringes a third party right,  it forms a relative ground for invalidity.

 

Who can form an action for nullity or revocation of trademark?

 

In the past it was necessary to justify before the courts an interest in forming such action (is it a French procedural requirement in taking legal action)   . This “interest to act” (“intérêt à agir”) could even be strictly assessed by judges.

With regard to the new procedure, when the action is based on an absolute ground for nullity, it is no longer necessary to prove an interest in bringing the proceedings.

The absolute ground for invalidity is one relating to the intrinsic value of the trademark. For example, if the trademark is descriptive of the goods it designates (such as “White chocolate” for … white chocolate), then any one may form an action for nullity without having to justify any harm.

 

 

When is the INPI competent?

 

The distribution of actions between the judge and the INPI is determined by articles L716-2 and L716-5 of the Intellectual Property Code.

Henceforth, the INPI has exclusive jurisdiction in certain claims, including for instance :

— nullity actions based on earlier trade marks (Community or French Trademark, International Trademark designating France or the EU, well-known trade mark)

– invalidity actions based on a domain name, only if its scope is not only local and there is a risk of confusion, or

– actions for invalidity of trademarks filed by the agent or representative of the trademark owner without his consent

This is the case for actions mainly concerning nullity based on one or more absolute grounds (such as misleading nature), but also for actions mainly concerning nullity based on relative grounds (such as infringement of prior rights of a trademark or a corporate name). However, French courts remain competent in regards to invalidity actions based on copyright or rights resulting from a protected design.

 

 

What about applications before the wrong authority (INPI instead of the judge and vice versa)?

When the plaintiff files an action before the wrong court, the action will simply be declared inadmissible.

 

 

How does the procedure at the INPI work? (Art. R. 716-1 from R.716-8 of the Intellectual Property Code)

 

The procedure begins with a one-month pre-instruction phase. During this admissibility examination, the INPI checks that the application contains all the required documents and information (statement of grounds on which each claim is based).

Afterwards will occur an investigation phase, which may last six months, and during which written exchanges will take place between the Parties : each Parties will set out their arguments and respect each other’s’ possibility of responding to accusations (the French procedural “principe du contradictoire”).

At the end of this investigation phase, the decision-making phase will take place, over a period of three months. It will be possible to limit the action in the course of the proceedings, by limiting it to either certain goods and services covered by the contested trademark, or to only some of the contested trademarks.

If the INPI confirms the trademark’s nullity the nullity shall be pronounced within three months, by decision of the General Director of the INPI and shall take effect on the date of filing. Nullity, therefore, has retroactive and absolute effect. The decision shall be entered in the National Trademarks Register and published in the Official Bulletin of Industrial Property (BOPI).

 

 

What remedies are available against the INPI’s decision?

 

The INPI’s decision, like every court decision, may be appealed against before the French Court of Appeal where the applicant is domiciled.

The Parties will have one month to appeal, by electronic means, upon notification of the INPI’s decision. The compulsory details of the appeal will be required, otherwise the appeal will be inadmissible. It is important to note that this action has a suspensive, but also devolutive effect, which means that judges will be obliged to retry the case in its entirety. During the procedure of appeal, the Parties have a three months deadline to submit their conclusions, including all their claims on the merits. If necessary, a claim can be brought against the decision of the Court of Appeal : it is called a “pourvoi en cassation” in French legislation. Either the Director of INPI or the Parties can form such a claim.

Ultimately, the new nullity action procedure before the INPI, relieves the courts (the “tribunal judiciaire”) by its simplicity and speed. Hence, decisions will be rendered relatively quickly and, above all, more actions will be brought thanks to the limited costs of an administrative procedure.

 

 

ABOUT THIS TOPIC…

 

– How to bring an action for invalidity or revocation of a trademark before the French Trademark Office INPI?

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E-reputation: what you need to know about your possible actions

Written by Dreyfus31/07/2020

If the Internet did not exist, you or your company would remain safe from public criticism, except for the one’s coming from journalists’ pen, or from economic actors revolving around your activity.  The absence of online media, Twitter, Facebook, Instagram, and search engines, excludes the possibility of gathering people around networks to discuss your business.

Nowadays it is essential to know how to deal with these criticisms, and sometimes, even slander.

It has already been eight years since the European Court of Human Rights (“ECHR”) stated that “websites contribute greatly to improving the public access to news and, in general, to facilitating the communication of information” (Ahmet Yıldırım v. Turkey, no. 3111/10, ECHR 2012).

However, “on the other hand, the Internet might adversely affect other rights, freedoms and values, such as the respect for private life and secrecy of correspondence, as well asthe dignity of human beings.” (Pravoye Delo and Shtekel v. Ukraine, no. 33014/05 ECHR 2011).

The Court recently reminded that “the right to protection of reputation is a right which, as part of the right to respect for private life, falls within the scope of Article 8 of the Convention”, echoing previous cases concerning defamatory statements in the press (Pfeifer v. Austria, no. 12556/03, 15 November 2007, and Polanco Torres and Movilla Polanco v. Spain, no. 34147/06, 21 September 2010).

Nonetheless, although there are many actions  to defend oneself when discovering “unlawful” content, such as defamation, libel, denigration or any form of abuse of freedom of expression, what actions should we take against dissemination of online content that is not unlawful, but is, nevertheless, damaging to our reputation, such as negative opinions or online newspaper articles relating to various facts about your experiences, arises?

 

Clarification of personal data, the right of opposition and the right to be forgotten

According to the french National Commission for Information Technology and Individual liberties (Commission Nationale de l’Informatique et des Libertés (CNIL)), an administrative authority whose role is to ensure respect for personal data, personal data is defined as “any information relating to an identified or identifiable natural person (…)”

Therefore, your name and surname are personal data, and with regard to the processing of this data, you have certain rights, such as the right to object or the right to erasure (also the right to be forgotteen).

 

  • The right to object

You may object at any time, for instance because of your specific situation, to the processing of personal data, while explaining your reasons, based on legitimate grounds.

In the event of an unsatisfactory response or failure to respond to your request, you may refer the matter to the CNIL.

 

You have the right to obtain the erasure of your personal data as soon as possible from the person, public authority, company or body processing your data (more commonly known as the “data controller“) in particular where there is no overriding legitimate reason for their processing . This includes in particular the right to dereferencing of links contained on search engines.

The operator of a search engine is in principle obliged, subject to the exceptions provided, to comply with requests for dereferencing of links to web pages containing personal data relating to criminal proceedings or convictions.

Requests for dereferencing from search engines can be made directly online via a corresponding tool. However, it is often necessary to send an official letter to the operators of websites containing harmful articles.

It will then be necessary to argue, for example by demonstrating the prejudice you suffer because of these articles – the cancellation of a professional appointment following the search of your name and surname could be one of them! – or by explaining that a web page mentions a step in a legal procedure that no longer corresponds to your current legal situation.

However, this right to be forgotten is weighed against the necessity of the processing, especially when it pursues a legitimate interest, such as the exercise of the right to freedom of expression and information.

 

Your request may, therefore, be refused if access to such information concerning you is considered strictly necessary for the information of the public. Indeed, according to Article 17 of the GDPR, there are certain situations which prevent the implementation of the right to freedom of expression and information.

 

In this respect, the controller or the authority seized must in particular take account of various criteria, including the nature of the data in question, their content, their accuracy, the repercussions which their listing is likely to have for the data subject, the notoriety of that person, etc.

 

In case of refusal of dereferencing or lack of response from the search engine, judicial solutions may be considered.

 

In sum, possible actions require complete mastering of the legal grounds and to cement your arguments when requesting dereferencing from the data controllers.

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The difficult recognition of colour trademarks

Written by Dreyfus30/07/2020

Article L 711-1 of the French Intellectual Property Code states that “figurative signs such as (…) arrangements, combinations or shades of colour” may constitute trademarks.

Thus, in order to obtain trademark rights to a colour, the colour must reflect the trademark in the mind of the consumers, i.e., when they see that colour, they think specifically of that trademark.

Despite numerous registrations of colours as trademarks, the French Trademark Office, the INPI rarely accepts those registrations.

The question then arises as to when such marks are admissible.

To do this, let us look at the case law that have marked this colourful saga!

 

 

  • Case law from the Court of Justice of the European Union

 

In a judgment dated 22 November 2018, the Court stated that “this sign must be distinctive, i.e. it must enable a consumer to identify the commercial origin of the goods or services covered by it in relation to those of competitors. However, a colour is generally perceived by the public as a decorative element, not necessarily as a sign identifying the commercial origin of goods or services. “(CJEU, 22 November 2018, C-578/17).

The judges further specify that one cannot register a colour but a shade or combination of shades which must be recognizable and identified according to a Pantone code, which is an internationally recognized colour code.

Louboutin has obtained trademark protection for its famous red sole. It is specified in the application that the right relates to a certain shade of red connected to a sole.

However, “colour trademark” should not be confused with the use of a colour in a logo. Indeed, in this particular case, one can resort to the registration of a coloured logo without having to resort to the Pantone.

 

 

  • Colour and unfair competition

 

A distinction must be made between colours that are protected as trademarks and those that are assimilated to the identity of the company. Thus, in the case of a color protected as a trademark, the company will be able to sue the competitor for infringement by demonstrating that there is a risk of confusion for the consumer. In the case of a color assimilated to the identity of the company, there may be a risk of parasitism or unfair competition if a competitor voluntarily decides to use the same colours in order to use them to mislead the consumers.

It is necessary to recall that the notion of “colour trademark” relates to the fact that in order to “be a trademark, colour must be assimilated to a combination of colours or a single colour, filed without shapes and contours”. This principle was laid down by the Court of Justice of the European Union in the Libertel judgment of 6 May 2003 and the Heidelberger Bauchemie judgment of 24 June 2004. Thus, a distinction must be made between colour trademarks and figurative trademarks that claim a specific colour shape without a verbal element.

This principle has been taken up in Article 4 of the European Trade Mark Regulation: “Any sign, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, may constitute trade marks of the European Union, provided that such signs are distinctive …”:

 

a) to distinguish the goods or services of one undertaking from those of other undertakings ;

b) to be represented in the Register of Trademarks of the Union in a manner which enables the competent authorities and the public to determine precisely and clearly the subject matter for which protection is granted to their owners. »

 

This principle was also taken up by the Singapore Treaty in 2006, which states that “it is possible to register trademarks consisting of non-visible signs and thus color or scent marks. “».

 

 

  • The Distinctiveness Criteria

 

In order to be distinctive, the colour sign must must comply with the principles laid down by the Court, and in particular in its Libertel ruling of 6 May 2003:

(a) it is graphically represented in a clear, accurate, complete, lasting, objective, accessible and intelligible manner. For this purpose, it must be possible to convert this colour by means of an internationally recognised identification code ;

(b) the color sign must make it possible to distinguish the origin of the goods or services which it designates and it must be distinguishable from competing undertakings;

(c) it must be taken into consideration the public interest prevailing in the sector of activity for which the registration of the sign is requested ;

This assessment is made by the judge on the basis of the facts but also on the use that has been made of it.

 

 

  • Cases of counterfeiting

 

As an example, the infringement by imitation of a monochrome sign was admitted for the colour shade of pink pantone 212 by the High Court of Paris (Tribunal de Grande Instance de Paris) in a dispute concerning the two fuschia pink bands underlining the edges of the decoration of infant milk products between Candia and Blédina.

Similarly, the French Supreme Court upheld the infringement of a red label champagne trademark in a decision opposing Charles Laffitte Société and Pieper Heidsik Company on the grounds that the Court of Appeal, in a reasoned decision, examined the overall impression produced by these trademarks, and characterized the infringement by imitation as provided for in Article L. 713-3 of the French Intellectual Property Code.

 

But in a judgment of 27 April 2006, the Versailles Court of Appeal ruled that the shade of a primary colour, frequently used in the stationery supplies field, is not of a serious nature (Court of Appeal of Versailles, 12th Chamber 1st Section, 27 April 2006).

 

 

  • Conclusion

 

Thus, it is clear that, while trademark offices and judges accept the possibility of registering a colour as a trade mark and assuming legal protection for it, the validity of such signs remains subject to strict conditions arising from both national and European legislation. This makes it difficult to recognise the validity of such signs. However, the protection of colour as an identity and therefore as a logo is widely accepted. One can thus speak of royal blue for Ikea, or turquoise blue for Tiffany.

 

It is therefore almost impossible to consider the protection of a colour shade or combination of colours without prior use. The applicant will therefore have to limit the protection sought to specific products or services to increase his chances of protection. The application must expressly indicate the colour reference indicated using an internationally recognized colour code (the Pantone code).

 

In particular, the applicant must precisely determine the position of the colours.

 

The protection of a trademark also requires proof of a distinctive character acquired through use. This requirement limits the registration of colours already present on the market and enjoying strong recognition among a relevant public.

 

The whole difficulty is therefore based on proof of distinctiveness acquired through use.

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Raising funds through your intellectual property assets?

Written by Dreyfus29/07/2020

Start-ups’ executives, having difficulty obtaining loans to raise funds, may benefit from promoting their intellectual property assets, which can be used as loan guaranties or other credits. Indeed, intangible assets are among the preferred asset classes for investors seeking strong guarantees. As such, investment funds are offering more and more original solutions to fund start-ups.

 

Beyond the traditional tools of funding through intellectual property such as licenses, new ways of raising funds using intangible assets are emerging: auctions (by auction houses specializing in this field), online tradings, trusts, mortgages, etc.

 

On which assets should you base your collateral?

 

 

  • Patents

 

The patent portfolio of research companies is a valuable asset, provided it is kept under control. Under a mortgage, or a trust, the source of income, in order to be certain, requires the patent to be licensed.

 

  • Trademarks, designs

If the trademarks are licensed, they can give rise to a certain and regular income. They offer a valuable guarantee if the business is successful.  For instance, in the late 1990s DreamWorks and the Tussauds Group both granted security guarantee over their IP covering both existing and future IP[1].

 

Moreover, designs have the advantage of having a value independent from the company’s status. Therefore, they can be a guarantee of value for investors.

 

  • Copyrights

Copyrights lasts up to 70 years after the author’s death : as such, once ownership and value are proven, they provide a valuable guarantee for the investor. Thereupon, the World Intellectual Property Organization (WIPO) has demonstrated that the taking of guarantees over copyright in the film and music industries is widespread and increasing in the biotechnology and software industries[2].

The forerunner of this financial innovation in intellectual property, David Bowie, will be remembered when he sold the “Bowie Bonds” which provided him with a regular income of over $1 million per year earned on the 25 albums he recorded before 1990.

 

It is therefore important to think of your intellectual property rights as real assets, and to reconsider the way they can be used: they can become effective security interests, especially for SMEs or start-ups that are launching their business.

 

This is true all over the world. For example, in India the government has introduced loan guarantee schemes through the possibility of mortgaging your trademarks or patents in order to encourage start-ups and cover the risk of real commercialization failures based on assets mortgaged by intellectual property rights.

 

To be continued!

 

It now appears possible to raise funds through your intellectual property assets. Dreyfus, an expert in legal issues related to intellectual property since 2004, helps you protect and enhance your rights and advises you on how to best manage your assets.

 

 

[1] [1]« Taking security over IP » Fieldfisher – February 2015

 

[2] « The Challenge of IP Financing » WIPO – September 2008

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Trademark revocation action now possible before the French Trademark Office

Written by Dreyfus28/07/2020

Since April 1, 2020, it has been possible to bring trademark revocation actions directly before the French Trademark Office following the transposition of European Directive 2015/2436 commonly known as the “Trademark Package”. This transposition gives rise to an overhaul of French intellectual property law and grants new powers to the French Trademark Office.

This new competence offered to the French Trademark Office is likely to lead to a consequent increase in forfeiture actions.

 

Previously, only the courts of law had jurisdiction in forfeiture actions. Jurisdiction is now shared between the judicial courts and the French Trademark Office, the aim being to facilitate access to this procedure and to reduce the number of courts.

Thus, according to article L716-5 of the Intellectual Property Code, the French Trademark Office has exclusive jurisdiction for forfeiture actions when they are brought as a principal claim and the court has jurisdiction for counterclaims.

 

What are the grounds for action in case of revocation?

 

It is possible to act on several bases:

  • Failure to use the trademark for 5 years
  • Trademark that has become the usual designation of the product or service
  • Brand that has become misleading

 

 

How does the forfeiture procedure work?

 

First of all, the parties have to resort to a dematerialized written instruction phase.

This forfeiture procedure complies with the adversarial principle. Two months after the filing of a forfeiture action, the holder will be able to present his observations.

Once the applicant has submitted his observations, the proprietor of the contested mark will be granted a period of one month to rebut them.

The duration of the forfeiture action varies according to the number of exchanges between the parties during the investigation phase. Thus, the procedure can vary between six months and one year, with the parties having up to three contradictory exchanges to present their observations.

The French Trademark Office has three months to rule from the end of the investigation phase. This decision may be appealed to the Court of Appeal.

 

 

Who can bring a forfeiture action?

 

The plaintiff does not have to show any interest before the French Trademark Office, unlike the case of an action brought before the court.

Therefore, the application may be made before the French Trademark Office by any natural or legal person and may relate to all the goods and services targeted by the trademark.

 

 

What about the proof of use of the trademark?

 

The burden of proof shall lie with the proprietor of the trademark whose rights are liable to lapse. The criterion of use is selected on the basis of the evidence given by the proprietor to prove that the trademark has been seriously exploited.

Thus, in order to prove genuine use of a trademark, the owner must keep and present to the French Trademark Office or to the judges, documents such as brochures, printouts of the website page, order forms, invoices or written statements, that provide evidence of use This is not an all-encompassing list.

 

Consequences of the French Trademark Office decision

The forfeiture will take place, in accordance with Article L. 714-4 of the French Intellectual Property Code, by a court decision or by a decision pronounced by the Director General of the French Trademark Office and will take effect on the date of the request or on the date on which a reason for forfeiture arose.

The decision shall be recorded in the National Register of Trademarks and published in the Official Bulletin of Industrial Property (BOPI).

 

Conclusion

The forfeiture procedure at the French Trademark Office will certainly lead to a greater number of actions, offering the possibility to act quickly and at lower cost

 

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.

 

ABOUT THIS TOPIC…

 

– How to bring an action for invalidity or revocation of a trademark before the French Trademark Office INPI?

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Sale of the domain name extensions: .cars, .car and .auto at auction

Written by Dreyfus23/07/2020

The domain name extensions (gTLDs) “.cars”, “.car” and “.auto” are about to be auctioned on July 13, 2020. Launched in 2015, these extensions have been at the forefront of innovation in the domain name and automotive marketing. They have been used around the world by dealerships, startups and major automotive technology companies.

After a five-year partnership, and more than $11 million raised, XYZ, a company offering new domain name options, and Uniregistry, both a registrar and a domain name registry, have jointly decided to divest this investment.

 

The auction will be conducted by Innovative Auctions, an independent auction consulting firm, and all assets to be auctioned will include the extensions in question, as well as all intellectual property rights, trademarks, social network accounts and high-value domain names such as <electric.car> and <rental.car>, which are currently reserved by Uniregistry.

It should be noted that this is the first gTLD auction in which anyone can participate. Interested parties can contact cars@innovativeauctions.com for more information.

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Admissibility of the complaint against several defendants, subject to the existence of a body of evidence

Written by Dreyfus22/07/2020

Source: WIPO, Arbitration and Mediation Center, May 7, 2020, No. D2020-0491, Crédit Industriel et Commercial S.A. and Confédération Nationale du Crédit Mutuel v. Whois Privacy Service / Yassine Ahmed / Yassine Cleoo / Yassinee Cleo / Yacin Helaloa / Robert Michel

 

The companies Crédit industriel et commercial (“CIC”) and Confédération nationale du Crédit Mutuel (“Crédit Mutuel”), which belong to the same group, jointly filed a UDRP complaint against six defendants, including an anonymous service, following the reservation of 25 domain names. One reproduces the trademark CIC ( ), the others the trademark Crédit Mutuel ( ).

In theory, the UDRP Complaint should only be directed at one defendant. However, a complaint against several defendants may be admissible if it is shown, by corroborating evidence, that the domain names were most likely reserved by the same person or are under common control, despite disparities in the information communicated by the registrants at the time of registration. This is known as “consolidation of the complaint”. Of course, each defendant is given the opportunity to rebut this alleged connection by filing a response in the proceedings.

Here, the expert accepted the applicants’ request for 24 of the 25 domain names in question. Indeed, numerous elements tend to show that these names are under common control:

– they have similar structures: <credit-mutual-online-space-customer-confirmation-mobile.net>, <credit-mutual-service-security.org>, <cic-online-space-customer-confirmationmobile.com>, etc.

. – three defendants have the same first name, except for a few spelling variations: Yassine Cleoo, Yassinee Cleo, Yacin Helaloa. And two of them have almost the same last name: Cleoo / Cleo;

– four defendants mentioned addresses in Madrid, Spain;

– the domain names have been reserved through the same registrar, Amazon Registrar, Inc. ;

– the reservation date is close: December 2019 ;

– all used the same anonymity service (first respondent, namely Whois Privacy Service).

On the other hand, the request for consolidation of the complaint was refused because of the 25th domain, reserved by the sixth defendant. In fact, the expert noted that the information which defines this domain name and its reserved name does not make it possible to establish a link with the other defendants:

– the structure of the domain is different: <creditmutuel.com;

– the reservee has given an address in France and not in Spain;

– the domain name was registered in January 2020 while the other domains were registered in December 2019. Thus, the expert, after analysing the complaint on the merits, agreed to the transfer of the first 24 domain names to the applicants. As for the domain name, they refused to pronounce its transfer, considering that it was not demonstrated that its registrant was linked to the other defendants. They specifies, however, that the applicants may very well file a separate complaint against this domain name if they wish so.

 

The consolidation of the complaint allows several complainants to file a joint complaint and to target several defendants at the same time or alternatively. When several defendants are involved, concrete elements that lead to the belief that the registrants are related, should be reported. In addition to elements relating to identity, one can take into account the structure of the domain names, the date of registration, the hosting providers and registration of the domain, the page that the domain points to, etc.

This possibility offered to complainants has several beneficial aspects: mutualizing costs, getting around the “trap” of cybersquatters which consists in filling in false data when reserving domain names, not to mention a considerable time saving for both right holders and arbitration centres.

 

Our commentary of the decision is available in the issue n° 7-8, July 2020, alert 54 of the review Industial Property.

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Invalidity action: assessment of the likelihood of confusion between a trademark and an earlier company name when the companies maintain economic links at the time of filing

Written by Dreyfus20/07/2020

In a decision of the Court of Justice of the European Union from April entretiennent, 2020 Gugler France SA v Gugler GmbH (Case No 736/18), the Tenth Chamber held, in the context of an invalidity action, that there is no likelihood of confusion between a trade mark and an earlier corporate name if, at the time of filing, the companies do in fact maintain economic links, and provided that there is no likelihood of error among the public as to the origin of the designated goods.

As a reminder, the Article L711-4 of the Intellectual Property Code states that it is not possible to register a trademark that could infringe prior rights, and in particular, if there is a likelihood of confusion, distinctive signs such as the company name or corporate name.

Thus, a conflict may arise when a company files as a trademark a sign that is identical to the corporate name of a company operating in the same sector of activity, creating in consequence a likelihood of confusion. The owner of the previous corporate name will then be entitled to act to cancel the trademark.

While the coexistence of a company name with a subsequently registered trademark had already been admitted (decision of the Paris Court of Appeal from February 24, 1999), it had also been affirmed that, if the use of the prior rights infringed their trademark right, the owner could request that the use be limited or prohibited (Commercial Chamber of the Court of Cassation of November 12, 1992). Therefore, the trademark right could defeat the prior right.

Thus, in case law, there is a certain prevalence of trademark rights over other distinctive signs.

In its decision from April 23 ,2020 Gugler France SA v. Gugler GmbH, the ECJ clarified the assessment of the likelihood of confusion between a trademark and an earlier company name.

 

The German company Gugler GmbH registered the semi-figurative Community trade mark “GUGLER” on August 25, 2003.

On November 17, 2010, Gugler France filed an application for a declaration of invalidity of the trade mark, in respect of all the goods and services designated, on the basis of its earlier company name.

The CJEU, seized after an application filed with the Cancellation Division of EUIPO and the filing of an appeal before the General Court of the European Union, confirmed the latter’s decision and dismissed Gugler France’s application for a declaration of invalidity.

In fact, on the day the trademark was registered, there were commercial relations between the parties, Gugler France being the distributor in France of the products manufactured by Gugler GmbH. In addition, Gugler GmbH held shares in the capital of Gugler France.

 

The Court held that the fact that consumers may believe that the goods and services in question come from companies which are economically linked does not constitute an error as to their origin.

The Court therefore rejects the argument of Gugler France that, in order to avoid the likelihood of confusion, the economic link must exist in a particular sense, namely from the holder of the earlier rights (Gugler France) to the holder of the later rights (Gugler GmbH).

According to the Court, the mere existence of a single point of control within a group in respect of products manufactured by one of them and distributed by another may be sufficient to exclude any likelihood of confusion as to the commercial origin of those products.

 

By this solution of the Court, the essential function of a trade mark right, which is the function of guaranteeing the identity of origin of the marked goods or services, is also indirectly recalled. The trade mark thus serves to distinguish the goods or services of one company from those offered by another company. Therefore, in this case, the commercial links between the two parties made it possible to consider that the goods had the same commercial origin.

 

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Figurative trademarks: be aware of the extent of your protection

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 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.

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