Intellectual property law

The rapid advancement of artificial intelligence (AI) technologies has necessitated the development of comprehensive frameworks to ensure their ethical and responsible use. In this context, the European Commission has introduced the third draft of the General-Purpose AI (GPAI) Code of Practice, aiming to guide AI model providers in aligning with the stipulations of the EU AI ActRegulation (EU) 2024/1689). This article delves into the primary objectives of this draft and explores its future implications.

I – Objectives of the third draft of the General-Purpose AI Code of Practice

A – Enhancing transparency

A cornerstone of the third draft is its emphasis on transparency. All providers of general-purpose AI models are mandated to disclose pertinent information about their models, including design specifications, training data sources, and intended applications. This initiative seeks to foster trust among users and stakeholders by ensuring they are well-informed about the functionalities and potential limitations of AI systems. Notably, certain open-source models are exempted from these transparency obligations, reflecting a nuanced approach to diverse AI development paradigms.

B – Addressing copyright concerns

The draft also tackles the intricate issue of copyright in AI development. Providers are required to implement measures that respect intellectual property rights, ensuring that AI models do not infringe upon existing copyrights. This includes establishing mechanisms for rights holders to report potential violations and for providers to address such claims effectively. The draft outlines that providers may refuse to act on complaints deemed “manifestly unfounded or excessive, particularly due to their repetitive nature.”

C – Ensuring safety and security

For AI models identified as posing systemic risks, the draft delineates additional commitments focused on safety and security. Providers of these advanced models are obligated to conduct comprehensive risk assessments, implement robust mitigation strategies, and establish incident reporting protocols. These measures aim to preemptively address potential threats and ensure that AI systems operate within safe and ethical boundaries.

II – Future perspectives of the General-Purpose AI Code of Practice

A – Implementation challenges

As the AI landscape continues to evolve, implementing the GPAI Code of Practice presents several challenges. Providers must navigate the complexities of aligning their operations with the Code’s requirements, which may necessitate significant adjustments in their development and deployment processes. Ensuring compliance without stifling innovation will be a delicate balance to maintain.

B – Global influence and harmonization

The GPAI Code of Practice has the potential to set a global benchmark for AI governance. By establishing comprehensive guidelines, the European Commission aims to influence international standards, promoting harmonization across jurisdictions. This could lead to a more cohesive global approach to AI regulation, benefiting both providers and users worldwide.

Alongside the third draft, the Chairs and Vice-Chairs are also introducing a dedicated executive summary and an interactive website. These resources aim to facilitate stakeholder input, both through written comments and discussions within working groups and specialized workshops. The final version of the Code is expected in May, serving as a compliance framework for general-purpose AI model providers under the AI Act, while integrating cutting-edge best practices.

C – Continuous evolution and adaptation

Recognizing the rapid pace of AI advancements, the Code is designed to be adaptable. It emphasizes the need for continuous evolution, allowing for updates and refinements that reflect technological progress and emerging ethical considerations. This flexibility ensures that the Code remains relevant and effective in guiding AI development responsibly.

Conclusion

The third draft of the General-Purpose AI Code of Practice represents a significant step toward responsible AI governance. By focusing on transparency, copyright respect, and safety, it lays a foundation for ethical AI development. As the cCde progresses toward finalization, its successful implementation will depend on collaborative efforts among stakeholders to address challenges and seize opportunities for global harmonization.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters.

We collaborate with a global network of intellectual property attorneys.

Join us on social media !

FAQ

The Court of Justice of the European Union (CJUE) now effectively neutralizes the reciprocity rule found in Article 2, §7 of the Berne Convention for works originating from a third country outside the European Economic Area (EEE). This shift has immediate consequences for stakeholders in the fields of design and copyright, illustrating the expanding scope of EU copyright harmonization. Below, we outline the core aspects of this change, moving from the overarching principle to its practical implications in a structured manner.

Context and Legal Foundations

• The Berne Convention and EU Law
  We observe that the Berne Convention has historically allowed signatory states to apply a principle of reciprocity to artistic and applied works from countries that did not offer equivalent protection. Recently, however, the CJUE clarified that the harmonization achieved by European directives (notably Directive 2001/29/EC) supersedes individual Member States’ prerogative to rely on reciprocity in areas that the EU has fully regulated. This decision stems from the principle that only the EU legislator may introduce exceptions or limitations once an aspect of copyright law has been harmonized across Member States.
• Official Sources and Regulatory References
  According to the CJUE’s interpretation, Member States must refrain from applying reciprocity where EU law intends for equal treatment, irrespective of an author’s nationality or a work’s country of origin.

Key CJUE Decision of 24 October 2024

CJUE, 1re ch., 24 Oct. 2024, Aff. C-227/23, Kwantum Nederland BV, Kwantum België BV c/ Vitra Collections AG
In its landmark ruling of 24 October 2024, the CJUE held that Member States cannot apply material reciprocity under Article 2, §7 of the Berne Convention to refuse or limit copyright protection for works of applied art originating in a non-EEE country. By doing so, the Court confirmed that only the EU legislator may decide on any limitation to economic rights granted under harmonized directives. The decision underscores the principle that national rules tied to the country of origin become inoperative where the EU has established overarching copyright norms.

Impact on Protection for Artistic and Applied Works

• Extended Copyright for Third-Country Creations
  By neutralizing the reciprocity rule, the CJUE effectively grants works originating from countries outside the EEE a level of protection in line with EU standards, provided they meet the originality and other formal criteria under EU law. This shift primarily benefits foreign creators of designs, industrial models, and artworks who previously faced potential restrictions if their home jurisdictions did not offer reciprocal protection.
• Reinforced Harmonization and Legal Certainty
  From a business and innovation standpoint, uniform copyright protection across the EU promotes legal certainty. Designers, manufacturers, and distributors now operate under clearer guidelines, facilitating smoother market entry and fewer obstacles linked to a work’s geographic origin.

Practical Consequences for Rights Holders

• Easier Enforcement: Foreign authors or rights holders can assert their copyrights uniformly throughout the EU, without having to prove reciprocal treatment in their home country.
• Encouraged Cross-Border Collaboration: Companies in the EEE may confidently license or acquire designs from third countries, knowing that these rights enjoy robust backing under EU directives.
• Reassessment of Agreements: Existing contracts or licenses that assumed limited rights based on reciprocity might need a thorough legal review to align with the CJUE’s position.

Recommended Next Steps & Best Practices

• Monitor Legislative Updates: Future EU legislative initiatives may further define or refine limitations.
• Review IP Portfolios: Rights holders should ensure that new or ongoing filings for design or copyright registration reflect this updated landscape.
• Consult Specialized Counsel: Given the complexity of international IP rights, professional guidance is indispensable to navigate cross-border transactions effectively.

The CJUE takes on profound significance for EU copyright enforcement. We advise rights holders, designers, and businesses to adapt proactively to this refined legal environment.

• Subscribe to Our Newsletter: Stay informed about important rulings and policy shifts.
• Follow Us on social media: Engage with our professional community for timely updates and best practices.

At Dreyfus Law Firm, we stand ready to provide comprehensive legal strategies tailored to each client’s needs. Our services include advising on copyright registration and enforcement, brand and design protection, domain name portfolio management, licensing and transfer negotiations, anti-counterfeiting initiatives, and litigation support across multiple jurisdictions.

Dreyfus Law Firm is in partnership with a global network of Intellectual Property attorneys, ensuring comprehensive assistance for businesses worldwide.

Join us on social media !

LinkedIn  

Instagram

FAQ

The rapid rise of artificial intelligence (AI) has led to significant advancements in various fields, including technological innovation. AI systems are now capable of autonomously generating inventions without direct human intervention. This new reality raises a fundamental question in patent law: Can an invention generated by an AI be protected by a patent?

This complex issue is at the center of concerns for intellectual property offices and legislators worldwide, who are debating how patent law should adapt to this new form of innovation.

 Patent eligibility of AI-Generated inventions

Patentability criteria

Pursuant to the article L611-10 of the French Intellectual Property Code, to be eligible for a patent, an invention must meet three fundamental criteria:

• Novelty: The invention must not have been disclosed to the public before the patent application was filed.
• Inventive step: The invention must not be an obvious improvement for a person skilled in the art.
• Industrial application: The invention must be capable of being used in industry.

When an AI generates an invention, assessing these criteria becomes more complex. The originality of the invention largely depends on the training data and algorithms used by the AI. It then becomes difficult to determine whether the invention is truly novel or merely a reformulation of existing information.

Furthermore, the inventive step requires that an invention is not an obvious outcome of prior knowledge. However, if an AI is programmed to analyze a vast corpus of technical data and propose optimized solutions, can its invention be considered as involving sufficient creative effort?

Challenges in recognizing AI as an inventor

One of the major legal obstacles concerns the attribution of inventorship. Today, most legal frameworks require the inventor to be a natural person.

The European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) have rejected patent applications where an AI was designated as the inventor.

For example, in January 2020, the EPO rejected two European patent applications in which the designated inventor was an artificial intelligence system named DABUS. This decision was based on the European Patent Convention (EPC), which states that only a human being can be recognized as an inventor.

The applicant, creator of DABUS, argued that this AI, based on artificial neural networks, had autonomously conceived the inventions. However, the EPO concluded that, under the EPC, the rights attached to inventorship, such as the right to be mentioned as an inventor or to assign a patent, can only be granted to natural or legal persons. AI systems, lacking legal personality, cannot be recognized as inventors.

This case highlights the legal challenges posed by artificial intelligence in the field of intellectual property.

These decisions are motivated by the fact that only humans can be legally recognized as inventors, particularly due to legal rights and liability considerations.

This stance raises a dilemma: When human intervention is minimal or nonexistent in the invention process, who should be credited as the inventor?

Some experts suggest attributing inventorship to the AI user or the entity that controls the AI, but this approach remains highly debated.

Legislative developments

International Perspectives

Given the uncertainties surrounding AI and patentability, several initiatives are underway worldwide:

• The World Intellectual Property Organization (WIPO) has launched consultations on the impact of AI in patent law and is considering potential reforms to harmonize approaches among different countries.
• The United States has seen the emergence of several legislative proposals aimed at clarifying the legal status of AI-generated inventions, although no major reform has been adopted so far.

In the United States, in October 2023, the White House issued an executive order aimed at ensuring the safe and reliable development of artificial intelligence (AI). In response, the USPTO published, in February 2024, guidelines on the patentability of AI-assisted inventions.

These guidelines specify that:

• AI may contribute to an invention, but
• Only a human who has made a significant contribution to each claim can be legally recognized as an inventor.

This position aligns with previous court decisions affirming that the inventor must be a natural person. Thus, patent applications involving AI must explicitly name individuals who have made a substantial contribution to the invention, excluding the possibility of designating the AI itself as the inventor.

This regulatory development highlights the importance of clarifying the respective roles of humans and AI systems in the innovation process, to ensure adequate legal protection for inventions in the United States.

Recent changes in patent law

Some countries have already introduced legislative changes:

• South Africa became the first country to grant a patent to an AI-generated invention, although this remains an isolated case.
• Australia also examined the issue, and in a decision on July 30, 2021, the Federal Court admitted this possibility (Thaler v Commissioner of Patents [2021] FCA 879).

These developments show that the recognition of AI-generated inventions is an evolving topic, and regulators will likely need to clarify their stance to address the challenges posed by AI and intellectual property.

Practical Considerations for Innovators

Strategies for Protecting AI-Generated Inventions

Businesses and innovators must anticipate legal challenges by adopting suitable strategies:

• Ensure a human role in the invention process: A researcher or engineer should be sufficiently involved to be designated as the inventor.
• Document every stage of creation: Keeping detailed records of how the AI operates and its role in the invention is essential.
• Explore alternatives to patent protection: When patentability is uncertain, other forms of protection, such as trade secrets, may be considered.

Implications for Intellectual Property management

Companies must adapt their patent management strategies to the challenges posed by AI. It is advisable to:

• Update contracts to clearly define ownership of AI-generated inventions.
• Monitor legislative developments to anticipate possible regulatory changes.

Conclusion

The emergence of AI in innovation raises profound legal and ethical questions. Current patent law is not fully adapted to this new reality. Legislators and intellectual property offices must therefore adapt to address the challenges posed by autonomous AI-generated inventions.

Until regulatory clarifications are made, innovators must adopt proactive strategies to effectively protect their inventions and safeguard their intellectual property rights.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, patent and AI-related legal matters. Our experts stay ahead of AI and copyright developments!

Dreyfus Law Firm collaborates with a global network of intellectual property attorneys.

Join us on social media !

LinkedIn  

Instagram

On February 7, 2025, the Paris Judicial Court issued a notable decision (Case No. RG 22/09210) in the dispute between Hermès International and Hermès Sellier against Blao&Co. This case raises essential questions regarding the protection of design works under French copyright law and trademark infringement. This article provides a detailed legal analysis of the ruling, highlighting its implications for designers and fashion companies. 

Case Background

Hermès International and Hermès Sellier, renowned for their iconic Kelly and Birkin bags, discovered that Blao&Co had been selling handbags under the brand name “NDG” since 2021. These products, particularly the “Paisley Jane” model, were marketed through Blao&Co’s website, social media platforms, and as NFTs on OpenSea.

Claiming that these handbags reproduced the distinctive features of their protected models, Hermès sent multiple cease-and-desist letters to Blao&Co in March and April 2022, demanding the cessation of the infringing bags’ sale, as well as the associated NFTs. After receiving no satisfactory response, Hermès filed a lawsuit in July 2022 for copyright and trademark infringement.

Arguments of the Parties

Hermès’ Position

Hermès argued that Blao&Co’s “Paisley Jane” bags were an unauthorized reproduction of their Kelly and Birkin models, which are protected under copyright due to their originality. Additionally, Hermès claimed that Blao&Co unlawfully used their registered three-dimensional trademark, particularly the signature lock closure featured on their bags.

Blao&Co’s Defense

Blao&Co contested the originality of the Kelly and Birkin bags, arguing that their features were common to many handbags or dictated by technical constraints. The company also denied trademark infringement, asserting that the elements used were generic and did not infringe on Hermès’ rights.

Legal Analysis of the Court

Originality of the Kelly and Birkin Bags

The court first examined the originality of the Kelly and Birkin bags, an essential condition for copyright protection. It was established that the Kelly bag has a trapezoidal shape with side gussets, a cut-out flap, a specific closing system, a special handle, four basic studs and a removable shoulder strap. The Birkin bag, on the other hand, has a slightly rectangular shape, a flap with a three-notch cut-out, a specific closing system, two special handles, specific gussets and four basic studs. The court concluded that these features were the result of free and creative choices, giving the bags a distinctive and recognizable appearance, thus satisfying the criterion of originality required for copyright protection.

Trademark infringement

Concerning trademark infringement, the court noted that Hermès has held a three-dimensional trademark registered since 2003, covering in particular the distinctive clasp of its bags. Blao&Co’s “Paisley Jane” bags were found to reproduce this clasp in an identical or similar manner, creating a risk of confusion in the mind of the public. The court therefore concluded that Blao&Co had infringed the trademark.

Implications of the Decision

For Fashion Designers

This ruling reaffirms the importance of originality in the protection of design works under copyright law. Fashion designers are encouraged to:

• Develop distinctive and innovative designs to ensure effective legal protection against unauthorized copies.
• Consider registering their designs as trademarks or design rights for enhanced protection.

For Businesses

Businesses must exercise caution to ensure that their products do not infringe existing intellectual property rights. This case underscores the importance of:

• Conducting thorough legal research before launching new products.
• Consulting intellectual property attorneys to assess potential risks and avoid costly legal disputes.

Conclusion

The Paris Judicial Court’s decision of February 7, 2025, establishes a significant precedent in fashion design and trademark protection. It recognizes the originality of fashion creations as works protected under copyright law and reaffirms the enforcement of three-dimensional trademarks against infringement.

Dreyfus & Associates Law Firm: Your Intellectual Property Partner

The Dreyfus & Associates Law Firm assists designers, businesses, and industry professionals in defending their intellectual property rights. Specializing in trademarks, patents, and design law, our expert legal team helps protect, value, and defend your creations against infringement risks and legal disputes.

Contact us for a personalized consultation and safeguard your designs!

Dreyfus & Associates Law Firm is partnered with a global network of attorneys specializing in Intellectual Property Law.

FAQ

In the rapidly evolving landscape of legal services, artificial intelligence (AI) has emerged as a transformative force, particularly in the realm of intellectual property (IP) law.

The integration of artificial intelligence into the legal sector signifies a paradigm shift, offering tools that augment the capabilities of legal professionals. In the field of intellectual property, where precision and efficiency are paramount, AI serves as a catalyst for innovation and improved client service.

I – The role of AI in legal assistance

Automation of repetitive tasks

AI excels in automating routine tasks that traditionally consume significant time and resources. Document review, contract analysis, and due diligence are now expedited through AI-driven platforms, allowing legal practitioners to focus on more complex and strategic activities. For instance, AI can swiftly analyze vast amounts of legal documents to identify relevant information, thereby reducing the time spent on manual reviews.

Predictive analytics in legal decision-making

Beyond automation, AI offers predictive analytics capabilities that assist in forecasting legal outcomes. By analyzing historical case data, AI models can predict the likelihood of success in litigation, enabling lawyers to devise informed strategies. This predictive power is particularly beneficial in intellectual property disputes, where understanding potential case trajectories can inform negotiation and litigation approaches.

II – Impact on intellectual property consultancy

Enhancing efficiency and accuracy

In the realm of intellectual property consultancy, AI enhances both efficiency and accuracy. AI-powered tools can conduct comprehensive prior art searches, ensuring that patent applications are both novel and non-infringing. Additionally, AI aids in monitoring potential IP infringements by scanning global databases and marketplaces, providing timely alerts to rights holders. This proactive approach enables IP consultants to offer clients robust protection strategies.

Challenges and ethical considerations

While AI offers numerous benefits, its integration into legal services presents challenges and ethical considerations. Concerns regarding data privacy, algorithmic bias, and the potential erosion of client trust must be addressed. Legal professionals are tasked with ensuring that AI applications comply with existing regulations and uphold the profession’s ethical standards. This includes maintaining transparency in AI-driven analyses and safeguarding sensitive client information.

III – Recent governmental initiatives

National AI Strategies

Governments worldwide recognize the transformative potential of AI and are formulating strategies to harness its benefits responsibly. For example, the French government has launched a national AI strategy aimed at fostering innovation while ensuring ethical deployment across sectors, including the legal domain. Indeed, an information report titled “Artificial Intelligence and Legal Professions” was adopted on December 18, 2024. This strategy encompasses investments in AI research, development of regulatory frameworks, and initiatives to upskill the workforce in AI competencies.

Regulatory frameworks and compliance

To navigate the complexities of AI integration, regulatory bodies are establishing frameworks that promote innovation without compromising ethical standards. These regulations address issues such as data protection, accountability in AI decision-making, and the prevention of discriminatory practices. Legal professionals must stay abreast of these developments to ensure compliance and to advise clients effectively on AI-related matters.

Conclusion

Artificial intelligence stands as a pivotal ally in the evolution of legal services, particularly within intellectual property consultancy. Its capacity to automate tasks and provide predictive insights not only enhances operational efficiency but also elevates the quality of client counsel. As AI continues to mature, its symbiotic relationship with legal professionals will undoubtedly redefine the landscape of legal practice.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters.

We are committed to integrating cutting-edge AI technologies to deliver unparalleled intellectual property services and  collaborate with a global network of intellectual property attorneys.

Join us on social media !

LinkedIn  

Instagram

FAQ

The convergence of artificial intelligence (AI) and data privacy law has introduced complex challenges and opportunities for businesses and regulators alike. The exponential growth of AI-powered systems, particularly those reliant on personal data, necessitates a balanced approach to innovation and compliance. This article explores how the General Data Protection Regulation (GDPR) addresses the complex legal issues raised by AI technologies, including accountability, data minimization, and lawful bases for processing, while highlighting recent case law and enforcement actions.

I – The legal foundations: AI and GDPR compliance

A – AI’s dependency on personal data

AI systems often require vast amounts of personal data to function effectively. From training large language models to deploying recommendation engines, personal data is indispensable. However, the GDPR imposes strict conditions on such processing, challenging AI developers to balance utility and privacy.

Key Issues Addressed by the GDPR:

• Lawfulness, fairness, and transparency (Art. 5 GDPR) : AI systems must be transparent in their data handling practices, ensuring individuals understand how their data is used.
• Purpose limitation (Art. 5 GDPR) : AI developers must define specific purposes for data processing and refrain from repurposing data without further legal justification.
• Data minimization (Art. 5 GDPR) : The principle mandates that only data necessary for the intended purpose is processed.

B – Lawful bases for AI data processing

The European Data Protection Board (EDPB) has clarified that legitimate interest may justify processing personal data in AI development, provided it passes a three-part test:

1. Identification of the legitimate interest.
2. Demonstration of necessity for processing.
3. Balancing this interest against individuals’ rights​​.

II – Key challenges in applying GDPR to AI

• Anonymization and Pseudonymization : The distinction between anonymized and pseudonymized data is critical in determining GDPR applicability. AI models trained on pseudonymized data remain subject to GDPR, whereas truly anonymized data falls outside its scope​.
• Transparency in complex systems : AI systems, particularly deep learning models, are often criticized as “black boxes,” making it difficult to explain how decisions are made. The GDPR’s right to explanation (recital 71) adds pressure on AI developers to enhance transparency.
• Cross-Border data transfers : AI systems relying on global data sources face scrutiny under GDPR’s strict data transfer rules. The recent Schrems II decision invalidated the EU-US Privacy Shield, compelling organizations to adopt alternative safeguards for lawful data transfers​​.

III – Enforcement and precedent: Lessons from case law

A – The OpenAI Case: Italy’s landmark fine

In December 2024, the Italian Data Protection Authority fined OpenAI €15 million for GDPR violations, including a lack of transparency, failure to verify user age, and insufficient safeguards for sensitive data. This case underscores the importance of robust compliance strategies in AI deployment​.

B – Meta platforms and data security breaches

The Irish Data Protection Commission’s €251 million fine against Meta highlighted the consequences of inadequate data breach notifications and poor system design​.

C – The European Commission’s Illegal Data Transfers

A 2025 ruling against the European Commission revealed unlawful data transfers to the US, emphasizing accountability even for public bodies​.

IV – Practical recommendations for AI developers and businesses

• Implement privacy by design and default : integrating privacy safeguards during the AI system’s design phase ensures compliance with GDPR’s data protection by design principle ( 25 GDPR).
• Conduct Data Protection Impact Assessments (DPIAs) : DPIAs are mandatory for high-risk AI systems processing personal data. These assessments help identify risks and mitigate potential non-compliance​.
• Strengthen transparency mechanisms : AI developers must provide clear, accessible privacy notices and explain automated decision-making processes, empowering users to exercise their rights effectively.
• Monitor regulatory developments : As the EU progresses with the AI Act, businesses must adapt to evolving legal landscapes to avoid penalties and maintain consumer trust.

V – Future Outlook: navigating AI’s legal landscape

The interplay between AI innovation and data protection laws will intensify as technologies evolve. The EU AI Act, set to harmonize regulations across member states, aims to create a comprehensive framework that addresses both risks and benefits of AI systems. Businesses that proactively align their operations with GDPR principles will not only mitigate legal risks but also gain a competitive edge in a privacy-conscious market.

Conclusion : Striking a balance

The relationship between AI and personal data protection exemplifies the tension between innovation and regulatory compliance. By embracing GDPR principles, businesses can harness AI’s transformative potential while respecting individual rights. This dual focus on efficiency and accountability will define the future of AI in an increasingly regulated world.

At Dreyfus Law Firm, our recognized expertise in intellectual property and new technologies is at your service to guide you through the intricate challenges posed by artificial intelligence and data protection.

Dreyfus Law Firm collaborates with a global network of IP attorneys.

Join us on social media!

LinkedIn  

Instagram 

FAQ

Since its inception, Dreyfus has established itself as a leader in the management of intellectual property rights (IPR) on a European scale. Faced with the rise of global trade and the growing challenges posed by counterfeiting, the company provides invaluable support to organizations of all sizes to protect and enhance their intangible assets. This article highlights recent trends in the enforcement of IPR in the European Union (EU), drawing on major jurisprudence to illustrate current challenges and solutions.

An Overview of the Fight Against Counterfeiting in Europe

The year 2023 marked a significant milestone in the EU’s efforts to combat counterfeiting. Over 152 million counterfeit items were intercepted, with an estimated value of approximately 3.4 billion euros. This represents a 77% increase compared to the previous year, highlighting the growing effectiveness of surveillance and enforcement measures, thanks to international cooperation and technological advancements.

Most Affected Product Categories

Products such as “Games,” “Toys,” and “Recorded CDs/DVDs” dominate the seizures in terms of volume. However, the rise in violations involving “packaging materials” and “labels” reveals a new trend where counterfeiters use neutral components to evade customs controls. This strategy was addressed in Coty Germany GmbH v. Amazon Services Europe Sàrl (C-567/18, CJUE, 2020), where the Court clarified the responsibilities of e-commerce platforms. Essentially, the company is not liable for trademark infringement unless it actively participates in offering or marketing counterfeit products.

Performance by Member States

Ten European countries stand out for their major contributions to seizures, with Italy taking the lead (74% of intercepted items). France, Romania, and Spain are also key players in these enforcement operations. The importance of cross-border cooperation was underscored in Top Logistics BV v. Bacardi & Company Ltd (C-379/14, CJUE, 2015), which clarified the conditions for seizing goods in transit within the EU

Transportation and Evasion Strategies

Counterfeiters exploit various transportation methods to move their products. Postal shipments account for 37% of cases, while maritime transport dominates in terms of volume, with containers holding thousands of items. This diversity underscores the need to adapt control methods to each logistical channel.

Trademarks at the Heart of Infringements

Trademarks are the most targeted rights, accounting for 84% of recorded infringements in 2023. Copyright violations (7%) and designs (3%) also raise concerns, particularly for high-profile brands.

Dreyfus: A Strategic Partner for IPR Protection

As an intellectual property specialist, Dreyfus offers key services to counter infringements:

1. Proactive Monitoring: The company uses advanced technologies to detect potential violations in physical and online markets.
2. Legal Management: With solid legal expertise, Dreyfus assists clients in IPR-related disputes by collaborating with national and international authorities.
3. Training and Awareness: By educating companies on the best prevention strategies, Dreyfus helps strengthen their internal capabilities.
4. Institutional Partnerships: The company works closely with organizations such as the EUIPO to enhance protection measures in the European market.

Future Challenges and Perspectives

Several challenges remain:

• Local Assembly: Counterfeiters use innovative strategies to assemble unbranded products in Europe, avoiding border seizures. In Nintendo v. BigBen Interactive (CJUE, C-25/16, 2018), the CJUE confirmed that intellectual property rights apply even when production stages are outsourced.
• E-commerce: The speed of online transactions complicates the detection and tracking of infringements. This issue was highlighted in Google France SARL v. Louis Vuitton Malletier SA (C-236/08, CJUE, 2010), which clarified the responsibilities of advertising platforms.
• Regional Disparities: Differences in resources and priorities among member states hinder a coordinated response. The case Comité Interprofessionnel du Vin de Champagne v. Aldi Süd (TGI Paris, 2019) illustrates the impact of variable standards on protecting geographical indications within the EU.

To address these challenges, Dreyfus advocates for a comprehensive approach based on technologies such as artificial intelligence and big data, as well as better harmonization of procedures across the European Union.

Conclusion

The year 2023 represents a turning point in the fight against counterfeiting in Europe. Thanks to a combination of concerted efforts, technological innovations, and landmark judicial decisions, the EU is better equipped to tackle these threats. Dreyfus positions itself as a key player in supporting companies in this essential battle, contributing to the protection of intangible assets and the preservation of European competitiveness. With concerted efforts and innovative solutions, it is possible to significantly reduce the impact of counterfeiting on the economy and society.

Dreyfus Law Firm collaborates with a global network of IP attorneys to provide tailored legal solutions

Join us on social media !

LinkedIn  

Instagram

Winning public tenders can open substantial opportunities for businesses. However, participating in these processes often involves navigating intricate intellectual property issues, particularly when delivering innovative solutions or creative services. This article provides a comprehensive guide to securing your intellectual property rights in public tenders, ensuring you retain control over your creations while meeting procurement requirements.

 Understanding the intersection of IP and public procurement

Why intellectual property clauses are important in public contracts ? Public contracts frequently involve the creation of intellectual works such as software, designs, or research. However, without well-drafted clauses, you risk losing rights to your creations. The inclusion of clear IP provisions ensures:

• Defined ownership: Establishes whether rights remain with the contractor or transfer to the public entity.
• Scope of use: Determines how the procuring entity may use the delivered results.
• Fair compensation: Reflects the value of IP rights in contract pricing.

IP in public procurement is governed by national laws and sector-specific agreements. In France, the Intellectual property Code and the public procurement code define default rules for IP ownership and transfer in public contracts. Internationally, EU directives provide harmonized principles for public procurement.

Key IP issues in public tenders

Ownership of results

The ownership of intellectual property created under public contracts varies depending on the type of deliverables and the procurement model:

• Licenses vs. ownership transfer: Default rules under French law (CCAG-PI, CCAG-TIC) often provide the public entity with a license, while exclusive transfer requires explicit contractual provisions.
• Existing works: Contractors typically retain rights to pre-existing works incorporated into deliverables, but must grant the public entity a license for operational needs.

Use of Pre-existing IP

Clearly identify pre-existing IP or know-how and establish its legal treatment:

• Declare all pre-existing elements upfront.
• Use non-exclusive licenses to prevent the loss of proprietary rights.

Confidentiality and protection of know-how

Protecting trade secrets and know-how is critical:

• Non-disclosure agreements: Ensure these are in place before tender submission.
• Restricted access clauses: Limit the use and dissemination of sensitive information shared during the tender process.

Compatibility with open data requirements

Public authorities often require results to be shared under open access frameworks. Define the boundaries for such usage, ensuring it aligns with your business model.

 Drafting effective IP clauses in tender proposals

Several steps for writing these clauses:

1. Clearly define deliverables

The contract should specify the IP status of each deliverable:

• Distinguish between bespoke developments and standardized solutions.
• State whether deliverables include software, designs, or reports.

2. Specify the scope of rights granted

Define the following:

• Territorial scope: E.g., national, European, or global usage rights.
• Duration: Temporary or perpetual rights.
• Purpose: Limit rights to specific uses (e.g., internal use).

3. Address modifications and derivative works

Explicitly regulate:

• The procuring entity’s ability to modify or adapt the work.
• Conditions for creating derivative works or sublicensing.

4. Include compensation for IP

Ensure your tender pricing reflects the value of IP rights being transferred or licensed:

• Itemize costs related to IP creation and licensing.
• Incorporate royalties for extended or expanded use.

Navigating complex scenarios

Collaborative innovation

When collaborating with public entities, co-created IP may arise. To safeguard your rights:

• Establish co-ownership agreements, detailing how rights are shared and exploited.
• Define rules for filing patents or registering designs.

Litigation and disputes

If disputes arise:

• Refer to arbitration clauses or administrative jurisdiction defined in the contract.
• Use preambles and detailed IP clauses as evidence of intent.

Handling open-source deliverables

When contributing open-source solutions:

• Verify licensing terms align with procurement requirements.
• Prevent conflicts between proprietary and open-source components.

Conclusion 

First of all, consult legal and IP professionals, as Dreyfus Law Firm, during tender preparation to:

• Draft robust IP clauses.
• Identify potential risks.

Then, review your portfolio to:

• Identify IP that may be affected by the contract.
• Ensure readiness for compliance and negotiations.

Then, benchmark standard practices in your sector for IP management in public procurement.

Finally, many procurement frameworks allow for dialogue phases—use this to clarify and protect your IP interests.

Securing intellectual property rights in public tenders requires a proactive approach, balancing the demands of public authorities with your strategic interests. By defining clear contractual provisions, understanding applicable laws, and protecting your pre-existing assets, you can safeguard your IP and build lasting value from public contracts.

Dreyfus Law Firm has been assisting clients in securing and maximizing the value of their intellectual assets. With deep expertise in intellectual property and tailored services, we ensure optimal management of your rights in public tenders and procurement.

Dreyfus Law Firm collaborates with a global network of IP attorneys to protect your innovations while maximizing their potential.

Follow us on social media !

LinkedIn  

Instagram

 FAQ

1 – How to protect your intellectual property in a contract?

To protect your intellectual property in a contract, it is essential to include specific clauses detailing the rights and obligations of the parties. Key aspects to consider include:

• Clearly defining the intellectual property covered (trademarks, patents, copyrights, trade secrets, software, etc.).
• Determining ownership of rights: specifying who owns the creations and innovations developed under the contract.
• Regulating the use of rights: setting out the terms for assignment, licensing, or usage of the intellectual property.
• Ensuring confidentiality: including a non-disclosure clause to prevent the leakage of sensitive information.
• Providing enforcement mechanisms in case of infringement (penalties, damages, termination, etc.).

A well-drafted contract helps anticipate disputes and secure the company’s intangible assets.

2 – What is an intellectual property clause?

An intellectual property clause is a contractual provision that defines the rights and obligations of the parties concerning protected creations, inventions, or trade secrets. It may cover:

• Ownership of rights: clarifying who holds the intellectual property created or used under the contract.
• Usage conditions: outlining the terms for assignment, licensing, or exploitation of the rights.
• Protection obligations: ensuring confidentiality and preventing any infringement of intellectual property rights.
• Remedies in case of disputes: specifying penalties for infringement, breach of commitments, or unauthorized disclosure.

This clause is crucial in service agreements, collaboration contracts, employment contracts, and distribution agreements to avoid legal uncertainties.

3 – What is trade secret in intellectual property?

A trade secret in intellectual property refers to a set of confidential information, methods, or technical processes that have economic value. This can include:

• Manufacturing formulas or industrial processes.
• Specific commercial or marketing strategies.
• Proprietary databases.
• Software or algorithms that are not patented.

Trade secrets are indirectly protected through business confidentiality and non-disclosure agreements (NDAs) but do not enjoy exclusive rights like patents or trademarks.

4 – How to protect your trade secrets?

Trade secrets can be protected through several mechanisms, including:

• Confidentiality agreements: signing NDAs with employees, partners, and service providers.
• Information access restrictions: limiting access to trade secrets to authorized personnel only.
• Establishing proof of ownership: documenting and dating key processes (e.g., through notarized records or deposits with specialized organizations).
• Employment or collaboration contracts: including confidentiality and non-compete clauses to prevent knowledge leakage.
• Technical security measures: securing databases, software, and sensitive documents with encryption and restricted access.

These precautions ensure the exclusivity of trade secrets and prevent unauthorized use by third parties.

When an intellectual property (IP) firm is mentioned and approached by specialized media outlets, it speaks not only to its credibility but also to its ability to innovate and offer concrete solutions to today’s legal challenges. That is precisely the case with Dreyfus, whose expertise in design law—as well as broader IP protection—was recently highlighted in the Expert Guide 2025 – Intellectual Property, published by Corporate LiveWire.

In this article, we take a closer look at that publication, outlining the key points covered in the interview with Nathalie Dreyfus, the firm’s founder, and showing how this recognition by the specialized press reinforces Dreyfus’s status as a leading authority in Europe on the modernization of design law. We also discuss the main issues raised in the Expert Guide 2025 article and explain how the firm puts this knowledge into practice to support its clients.

Dreyfus in the Spotlight in the Expert Guide 2025

The Expert Guide 2025 – Intellectual Property Publication

Expert Guide 2025, dedicated to intellectual property, is published by Corporate LiveWire, an international media outlet that regularly provides in-depth analyses and resources on legal and economic trends. In this edition, various renowned experts and specialized firms address critical topics such as:

• The Unified Patent Court (UPC) regime.
• Changes to trademark protection rules in certain African countries.
• Developments in copyright law for utilitarian objects.
• New digital regulations affecting trade secret protection and the rise of 3D printing.

In this context, a special focus is placed on the modernization of design law in Europe, a topic at the heart of current debates and set to gain new momentum with the phased implementation of revised legislative provisions starting in 2025.

The Article “The Modernisation of EU Design Protection: A New Era for European Creativity”

Written by Nathalie Dreyfus, founder of Dreyfus, this article—featured in Expert Guide 2025—explains the key aspects of the European reform on designs, including:

• The shift from “Community Designs” to “European Union Designs” (EUD), symbolized by the adoption of the Ⓓ icon to align branding with ® for trademarks and © for copyright.
• An expanded definition of “designs” and “products” to include virtual or animated objects, as well as user interface elements.
• A more flexible application process, allowing up to 50 designs to be grouped in a single filing, regardless of their classification under the Locarno Classification.
• Strengthened rights for owners, now clearly covering 3D reproductions and the unauthorized use of digital files intended for additive manufacturing.

Thanks to this article, which you can find on Corporate LiveWire’s website, readers can appreciate the full scope of the reform and the opportunities it creates, while also understanding the associated risks and challenges.

The Expertise of Dreyfus, an IP Specialist, Recognized by the Specialized Press

A Track Record Built in the Field

From its inception, Dreyfus has stood out thanks to a multidisciplinary approach that combines legal, technical, and strategic capabilities. This versatility allows the firm to:

• Anticipate market and legislative changes, especially in rapidly evolving areas (digital, AI, 3D printing).
• Advise a wide range of clients—major corporations, SMEs, startups, and independent creators—on building and defending their portfolios of designs, trademarks, and patents.
• Play an active role in European discussions through conferences, in-depth articles, and broader initiatives (experience-sharing, public consultations).

Moreover, Nathalie Dreyfus’s direct involvement in leading publications demonstrates the firm’s high-level recognition. Being invited to publish an analysis in a resource such as Expert Guide 2025 not only affirms Dreyfus’s professional legitimacy but also highlights concrete and pragmatic solutions to the challenges of design law.

Concrete Commitments in Response to the Modernization of Design Law

In her article, Nathalie Dreyfus highlights several crucial points on which the firm already assists its clients:

1. Adapting to the Ⓓ Symbol: educating companies about the importance of clearly indicating the protection of their creations and advising them on strategies for using the symbol (logo, packaging, marketing).
2. Managing a Design’s Life Cycle: from the conceptual stage to market launch, including potential renewals and defense against counterfeiting.
3. Addressing New Digital Formats: supporting the development of technical documentation that includes 3D renderings, animations, or screenshots.

These areas of expertise illustrate Dreyfus’s proactive approach and its capacity to provide businesses with ways to capitalize on their creations.

Challenges Raised by the Reform and Practical Solutions

Why Is This Reform Crucial?

• Uniformity: One of the main objectives of the reform is to further harmonize rules across the European Union, taking into account national specificities and the need to adapt to the digital era.
• New Forms of Piracy: 3D printing, sharing of STL files, and the rise of the metaverse require rethinking the rights granted to designers and businesses.
• Strengthening Competitiveness: Better protection boosts investment in design and encourages creativity, two crucial levers for international competitiveness.

The Contributions of Dreyfus, an IP Expert

To address these developments:

• Portfolio Audits: the firm offers a full audit of existing designs to identify gaps, filing opportunities, or renewal strategies best suited to new fee structures and updated protection durations.
• Litigation Support: if counterfeiting is detected, Dreyfus has extensive experience in proceedings before the EUIPO, French courts, and other European jurisdictions.
• Training and Awareness: Nathalie Dreyfus and her team regularly conduct webinars and seminars to demystify legislative developments and enhance the in-house expertise of their clients’ teams.

External Links and Additional Resources

To help you delve deeper into the issues discussed in this article, here are some useful links:

1. Expert Guide 2025 – Intellectual Property (Corporate LiveWire): you’ll find the full article entitled “The Modernisation of EU Design Protection: A New Era for European Creativity” by Nathalie Dreyfus.
2. EUIPO – European Union Intellectual Property Office: the EU’s official body for registering trademarks and designs, and the key organization behind the reform.

These resources allow you to gain a clearer understanding of the challenges and opportunities arising from the new European design legislation, as well as to consider potential strategies available to companies and creators.

Conclusion: Dreyfus, a Trusted Partner for the New Era of European Design

Specialized press, through the Expert Guide 2025 published by Corporate LiveWire, emphasizes the relevance of Dreyfus’s work in the intellectual property sphere. The modernization of design law in Europe—and the heightened focus on digital creations—marks a major turning point for both businesses and creators.

By being recognized and cited as an expert, Dreyfus solidifies its position as a leader in providing strategic, legal, and technical support to major corporations, SMEs, and individuals seeking to secure and capitalize on their intangible assets. The firm is at your disposal for further information, personalized case studies, or custom support.

Need Support Protecting Your Designs?

Contact Dreyfus:

• Phone: +33 1 56 59 11 00
• E-mail: contact@dreyfus.fr
• Website: www.dreyfus.fr

Benefit from the expertise of Nathalie Dreyfus and her team to anticipate the effects of the reform and implement the best practices to safeguard your creativity and maintain your competitiveness in the European market.

The evolution of AI and Copyright

The United States Copyright Office has released the second part of its comprehensive study on artificial intelligence and copyrightability. This latest report, dated January 29^th 2025, titled “Copyright and Artificial Intelligence, Part 2: Copyrightability“, delves into one of the most contentious legal questions of the modern digital era: Can AI-generated content receive copyright protection?

As AI tools like ChatGPT, MidJourney, and DALL·E continue to evolve, artists, musicians, and content creators are leveraging these technologies to assist in their creative processes. However, where does the boundary between human creativity and AI automation lie? This report provides critical insights into how the U.S. Copyright Office currently addresses AI-generated works and their copyrightability.

Background: A recap of Part 1 – Digital Replicas

Before discussing AI-generated works, it is essential to recall the findings from the first part of the U.S. Copyright Office’s AI report, which focused on digital replicas (e.g., deepfakes and AI-generated voices). Key takeaways from Part 1:

• Digital replicas (AI-generated likenesses of individuals) raise significant legal and ethical concerns.
• The report emphasized the lack of clear legal frameworks to address the unauthorized replication of an individual’s image or voice.
• The Copyright Office recommended further legislative action to protect against AI-generated deepfakes and potential misuse of identity rights.

With Part 2, the focus has now shifted to an equally pressing issue: the copyrightability of AI-generated content.

AI-Generated works and copyrightability

The fundamental question addressed in Part 2 of the report is: To what extent can AI-generated content be considered copyrightable under U.S. law?

1 – Human authorship requirement

According to the U.S. Copyright Act, only works created by a human author qualify for copyright protection. The Copyright Office reaffirms this principle, stating that:

• Copyright protection does not extend to material generated wholly by AI.
• AI-assisted works may qualify for copyright protection if there is sufficient human involvement in the creative process.
• The determination of copyrightability will be handled on a case-by-case basis.

There is a key precedent: Thaler v. Perlmutter (2023) – The U.S. courts upheld that AI-generated works cannot be copyrighted, reinforcing the human authorship requirement.

2 – The role of AI in creativity

The Copyright Office differentiates between AI as a tool and AI as an autonomous creator.

• AI as an assistive tool meaning that if AI is used to enhance human creativity, the final work may be eligible for copyright protection.
• AI as an autonomous creator meaning that if AI produces a work without human creative input, it cannot be copyrighted.

For example: a human artist using Photoshop, AI-based filters, or generative AI as part of their creative workflow can still claim copyright. However, a fully AI-generated artwork created without human selection, arrangement, or modification is not copyrightable.

3 – The significance of prompts

One of the most controversial topics covered in the Copyrightability Report is whether AI-generated content based on human prompts qualifies for copyright protection.

The Copyright Office’s stance:

• Writing a prompt alone is not sufficient for copyright protection.
• Prompts must involve “sufficient creative expression” and “substantive human input” to be considered authorship.
• A person modifying, arranging, or selecting elements of AI-generated content may qualify for partial copyright protection.

Therefore, an AI-generated images or texts created using a prompt may not belong to the user unless they demonstrate clear human creativity in the final output.

4 – Legal analysis and international approaches

Different countries are addressing AI and copyright in varying ways:

• United States: AI-generated content is not eligible for copyright protection unless there is substantial human involvement.
• United Kingdom: AI-generated works may receive limited protection under existing copyright laws.
• European Union: The EU AI Act mentions the obligation for AI systems to comply with intellectual property rights.
• China: AI-generated works can be copyrighted, but liability and authorship rules remain ambiguous.

The lack of global harmonization in AI and copyright laws could create significant legal uncertainties for creators using AI worldwide.

Implications and potential legal changes

The Copyright Office recognizes the complexity of AI copyrightability and explores potential legal reforms, including:

• Clarification of “substantial human involvement” in AI-assisted works.
• New guidelines for AI-generated content registration.
• Possible introduction of a sui generis (unique) legal framework for AI-generated creative works.

However, the report does not recommend legislative changes at this time, instead emphasizing case-by-case assessments.

Conclusion: The Future of AI and Copyright

The U.S. Copyright Office’s second report on AI and copyrightability establishes that:

• AI-generated works are not independently copyrightable unless there is clear human authorship.
• Prompts alone do not establish copyright ownership.
• The legal framework remains flexible but requires further clarification.

As AI technology continues to evolve, creators, businesses, and policymakers must navigate an uncertain legal landscape.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters. Our experts stay ahead of AI and copyright developments!

Dreyfus Law Firm collaborates with a global network of IP attorneys to provide tailored legal solutions in the evolving field of AI and copyright.

Join us on social media !

LinkedIn  

Instagram

In today’s increasing competitive market, safeguarding intellectual property is crucial for small and medium-sized enterprises (SMEs). Recognizing this need, the European Union Intellectual Property Office (EUIPO) is set to relaunch the SME Fund on February 3, 2025, offering financial assistance to SMEs seeking IP protection. This initiative program allows businesses to claim reimbursements of up to €1,000 for IP applications, reducing the financial barriers to securing vital protections.

Overview of the EUIPO SME Fund

The SME Fund is a well-established reimbursement initiative designed to support European SMEs in protecting their intellectual property rights. By offering financial aid, the fund encourages businesses to register trademarks, designs, and patents, thereby securing their innovations and enhancing market position. The 2025 relaunch continues the success of previous years, reflecting the EUIPO’s commitment to fostering a robust IP framework within the SME community.

Eligibility Criteria for SMEs

To qualify for the SME Fund, enterprises must meet the European Union’s definition of an SME, which includes:

• Employing fewer than 250 persons.
• Having an annual turnover not exceeding €50 million or a balance sheet total not exceeding €43 million.

Eligible SMEs can apply for vouchers covering up to 75% of certain IP service fees, including trademark and design applications. It’s important to note that specific eligibility criteria and services covered may vary; reviewing the EUIPO’s official guidelines is essential for clarity.

Application Process

Applying for the SME Fund is a streamlined process that involves several key steps:

1. Preparation: Evaluate your current IP assets to identify which require protection, ensuring the application aligns with business priorities.
2. Registration: Create an account on the EUIPO’s SME Fund portal to access application forms and resources.
3. Voucher Application: Submit an application specifying the IP services and attach necessary documentation.
4. Service Utilization: Upon approval, use the voucher to cover eligible IP service fees within the stipulated timeframe.
5. Reimbursement Claim: After completing the IP service, submit proof of payment to claim reimbursement up to the voucher’s value.

Benefits of Protecting Intellectual Property

Securing IP rights offers numerous advantages for SMEs:

• Market Exclusivity: Protects products and services from unauthorized use by competitors.
• Enhanced Brand Recognition: Enhances brand value and consumer trust through trademark registration.
• Revenue Opportunities: Enables licensing opportunities and potential revenue streams.
• Increased Business Valuation: Increases overall business valuation by safeguarding intangible assets.

By leveraging the SME Fund, businesses can overcome cost barriersassociated with IP protection, thereby fostering innovation and long-term growth.

Conclusion

The relaunch of the EUIPO SME Fund on February 3, 2025, presents a valuable opportunity for SMEs to secure financial support for intellectual property protection. By understanding the eligibility criteria and following the application process, businesses can obtain reimbursements of up to €1,000, ensuring their innovative assets remain safeguarded.

At Dreyfus Law Firm, we specialize in intellectual property law and are dedicated to assisting clients in navigating the complexities of IP protection. Our expertise guarantees that your business innovations are secure and legally protected. Dreyfus Law Firm is in partnership with a global network of attorneys specializing in Intellectual Property.

Contact us today for personalized support in accessing the SME Fund or securing your IP rights.

Join us on social media !

LinkedIn  

Instagram

The Dreyfus firm is a key player in the French intellectual property landscape. Specializing in trademark management, it supports its clients in all stages of protection, from registration to defense against counterfeiting. This article outlines the essential elements of French trademark regulations while highlighting Dreyfus’s role in this field.

A Strong Legal Framework for Trademarks

Legislative Foundations

In France, trademark protection is based on Law No. 91-7 of January 4, 1991, updated by Ordinance No. 2019-1169 and Decree No. 2019-1316. These reforms ensure alignment with European standards, facilitating trademark registration and management procedures.

An International Dimension

France is a party to several international conventions, including the 1883 Paris Convention and the 1994 TRIPS Agreement. It also participates in the Madrid systems for international trademark registration, ensuring protection beyond national borders.

Role of the INPI

The National Institute of Industrial Property (INPI) plays a central role by managing filings, oppositions, and invalidity actions. This institution ensures rigorous enforcement of trademark regulations, supporting innovation and brand integrity.

Trademark Registration and Management Process

Eligibility Requirements

Distinctiveness remains a cornerstone of trademark registrability. Recent case law highlights evolving consumer perception standards, particularly concerning basic English terms used in France (e.g., MySunbed, INPI, 27 May 2024). Meanwhile, decisions on deceptiveness emphasized the need for claimants to demonstrate misleading potential at the time of filing, rather than relying on post-registration evidence (INPI, 3 April 2024, NL 22-0199).

Non-traditional trademarks, such as holograms or sounds, are also accepted under specific technical conditions.

Unregistered Trademarks

French law does not recognize unregistered trademarks. However, well-known trademarks enjoy protection against misappropriation based on principles of unfair competition. Proving renown remains challenging, as it requires robust evidence such as prior judicial recognition or extensive consumer exposure (INPI, 12 July 2024, Immo Angels). Meanwhile, allegations of parasitic intent require clear links between the litgious trademark and a recognizable external reference, as demonstrated in the Cadault case (INPI, 29 April 2024).

Administrative Procedures

Trademark applications are submitted via the INPI’s online platform. While a prior search is not mandatory, it is highly recommended to prevent conflicts with existing rights.

Benefits of a Registered Trademark

1. Legal Protection: A registered trademark provides a presumption of validity and enables legal action in cases of infringement.
2. Ease of Management: Registration simplifies oppositions and cancellations while allowing the blocking of counterfeit product imports.
3. Strengthened Identity: A well-protected trademark enhances brand recognition and competitive advantage.

Validity Period and Renewal

A trademark is valid for 10 years and can be renewed indefinitely. Failure to use a trademark for five consecutive years risks cancellation, but the INPI provides solutions to justify its use.

Recent decisions reflect the broad evidentiary approach adopted by the INPI. Undated documents such as marketing materials and screenshots, when evaluated collectively with dated items, have been deemed admissible (e.g., INPI, 2 May 2024, Bob dépannage!). This flexibility underscores the importance of maintaining detailed usage records.

Opposition and Litigation

Opposition

Any interested party can oppose a trademark application within two months of its publication. This procedure is crucial to protect pre-existing rights.

Cancellation Actions

Trademarks can be canceled on various grounds, such as lack of distinctiveness or bad faith registration. These mechanisms remain vital tools for preserving registry integrity.

New Perspectives: NFTs and Artificial Intelligence

With the emergence of NFTs and AI, new trademark challenges are arising. Businesses must adapt their trademark portfolios to cover these new technologies and anticipate the legal challenges they entail.

Dreyfus’s International Recognition of Excellence

Dreyfus law has earned widespread acclaim for its outstanding expertise in intellectual property law, consistently ranking among the best in the field:

• WTR1000 2024: Nathalie Dreyfus has been ranked among the top professionals in intellectual property law, reflecting her unparalleled expertise and commitment to client success.
• Legal 500: Nathalie Dreyfus was referenced in the 2023 edition for her innovative approach to trademark management and strategic advice.
• Who’s Who Legal Thought Leaders France 2024: Nathalie Dreyfus was distinguished in this prestigious report, highlighting her thought leadership and significant contributions to the field.

These prestigious accolades highlight the Dreyfus firm’s unwavering dedication to excellence, its commitment to delivering exceptional legal services, and its reputation as a trusted partner in protecting intellectual property rights.

Dreyfus’s Judicial and International Expertise

Founding and managing partner of Dreyfus Law Firm, Nathalie Dreyfus is an officially accredited judicial expert with the Paris Court of Appeal in trademark and design law, as well as with the Court of Cassation in trademark matters. Her recognized expertise extends internationally, as she is also an accredited expert with WIPO (World Intellectual Property Organization) in Geneva, where she issued 17 decisions in 2024, and with the Forum (USA). Her unique combination of judicial and international experience positions her as a leading authority in the field, providing unparalleled insights and solutions to complex intellectual property issues.

Conclusion

By combining local expertise with an international vision, Dreyfus law firm offers an innovative approach to protecting trademarks in a constantly evolving world. Whether through advisory services, management, or litigation, Dreyfus remains a trusted partner for companies looking to enhance their intangible assets.

Join us on social media !

LinkedIn  

Instagram