Understanding the Declaration of Use in Argentine Trademark Law: A Comprehensive Guide

Written by Dreyfus27/08/2024

In Argentina, the robust protection of intellectual property rights, particularly trademarks, hinges significantly on procedural compliance. One such critical procedural requirement is the filing of a Declaration of Use, which plays a pivotal role in the lifecycle of a trademark.

This guide delves into the nuances of this requirement, its implications for trademark holders, and the associated legal and administrative processes.

The Legal Imperative of the Declaration of Use

Under Argentine trademark law, every trademark holder is obliged to file a mid-term affidavit of use, known as the Declaration of Use, between the fifth and sixth anniversaries of the trademark’s registration. This declaration serves as a key checkpoint to ensure that trademarks registered in the country are actively utilized in commerce.

The failure to comply with this requirement has significant repercussions. Primarily, the Trademark Office (TMO) will not approve any renewal applications for the trademark until the Declaration of Use has been appropriately filed for the registration period in question. This mechanism ensures that only those trademarks that are actively used continue to enjoy the legal protections afforded by registration.

Contents and Submission of the Declaration

The Declaration of Use involves submitting a written statement that lists the goods and/or services for which the trademark has been actively used over the past five years. This list should encompass all products or services that fall within the trademark’s scope of protection, potentially extending to related goods or services even in different classes or those used as a commercial designation.

It is crucial to note that at the time of this filing, the Patent and Trademark Office (PTO) does not require evidence of actual use. The primary goal is to receive a formal declaration from the trademark holder. However, should the declaration not be submitted timely, it triggers a rebuttable presumption of non-use. This does not automatically lead to the expungement of the registration but makes the trademark vulnerable to cancellation actions. Such actions can be initiated by third parties demonstrating a legitimate interest or by the PTO itself.

Concurrency with Renewal and Potential Penalties

The Declaration can also be filed concurrently with the trademark’s renewal application. In such cases, it must be submitted immediately before the renewal application and through a specific process tailored for each class involved. If the declaration accompanies a renewal, additional annual official fees are imposed.

Be aware that submitting a false declaration, whether due to error or fraud, can precipitate cancellation proceedings. These proceedings can be initiated by any third party with a legitimate interest and are adjudicated through a judicial process, underscoring the importance of accuracy and honesty in the filing.

Fees and Administrative Details

The cost of filing the Declaration of Use is relatively modest. There is a fee per trademark, per class and a late filing during the grace period.

Documentation Requirements

To file the Declaration of Use, certain documents are essential:

Power of Attorney (PoA): A notarized and legalized PoA, signed by an authorized representative, must be submitted. This can be legalized via an Apostille or directly at the Argentine Consulate. Although a scanned copy of the PoA suffices for initial deadlines, the original should be available upon request by the TMO.
List of Goods/Services: A detailed list of the goods and/or services associated with the trademark usage over the last five years must be provided. This documentation should comprehensively cover the trademark’s scope of protection and related commercial uses.

Conclusion

The Declaration of Use is a fundamental element of trademark law in Argentina, ensuring that trademarks are not merely registered but actively employed in commerce. By adhering to these requirements, trademark holders can safeguard their rights and maintain the integrity of their brands in the Argentine market.

At Dreyfus Law Firm, we understand the complexities of trademark law in Argentina. Our experienced team provides comprehensive legal support to ensure that your Declaration of Use is filed accurately and on time, protecting your valuable trademark rights. Trust us to navigate the intricacies of Argentine trademark law, ensuring your intellectual property remains secure and enforced.

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FAQ

1. What is a declaration of use in Argentine trademark law?

A declaration of use in Argentina is a formal statement filed by the trademark owner confirming that the registered mark is being used in the country. This declaration is required to maintain the validity of the trademark after the fifth year of registration.

2. When must a declaration of use be filed for a trademark in Argentina?

Trademark holders must submit the declaration of use between the 5th and 6th year after registration. Failing to file on time may result in fines or the cancellation of the trademark.

3. What are the consequences of not filing a declaration of use in Argentina?

If the declaration of use is not submitted within the required time frame, the trademark may be subject to cancellation or other administrative penalties, potentially compromising the owner's rights.

Written by Dreyfus02/07/2024

In an increasingly globalised world, companies are faced with a growing problem: dupes. Dupes have become an increasingly prevalent phenomenon in the field of intellectual property, especially in trademark and design enforcement.

A dupe is a product inspired by an original product that attempts to capture the look, style and even the packaging of the original product, without being an exact reproduction. Duplicate” is neither a reproduction nor an imitation or copy. Unlike counterfeiting, which illegally reproduces a protected brand, dupes often play in legal grey areas. They use names, logos or packaging that evoke the original without copying them directly. In fact, the aim of the dupe manufacturer is not to make people believe that his articles are those of the brand from which he takes his inspiration, but to capture the attention of consumers by following in the footsteps of the trademark owner, without however copying exactly the distinctive elements of that brand.

How can companies effectively protect their trademarks and innovations in an environment where dupes exploit legal grey areas without explicitly breaking intellectual property laws?

Dupes can seriously compromise companies’ revenues by offering low-cost alternatives. While some consumers knowingly buy an imitation, many others are fooled by the striking resemblance into believing they are buying a genuine product for less.

However, the quality of these ‘inspired products’ is often much lower than that of the originals, which can seriously damage the reputation of the original trademark. When consumers associate the poor quality of dupes with the genuine trademark, this can lead to a decline in trust and loyalty.

Pursuing legal action against dupe manufacturers is often a complex and expensive process. It requires considerable resources, both in terms of time and money, but it is essential to protect trademarks and maintain their integrity in the marketplace.

A few strategies to counter the harmful effects of dupes

In order to secure your trademark rights, it is essential to set up active market surveillance in order to quickly detect dupes. To do this, it is advisable to use online monitoring tools that can identify imitations on e-commerce platforms, social networks and other distribution channels. These sophisticated monitoring systems can provide immediate alerts if suspicious products are detected, enabling a rapid and appropriate response.

It is also essential to ensure that your trademarks and designs are properly registered and protected in all the territories in which you operate. This protection must include not only trademarks, but also copyrights and patents, where applicable. This may involve registering and protecting your packaging as a trademark. Distinctive and unique packaging can be legally protected, strengthening the defence against dupes. Well-designed and protected packaging can deter imitators and facilitate legal action against them. Protecting packaging also helps to maintain brand integrity and image.

Working with other companies to fight counterfeiters can also be very effective. Partnerships can include sharing information about counterfeiters and taking joint action to put pressure on online sales platforms to remove adverts for counterfeit products. Cross-sector cooperation can enhance the effectiveness of anti-counterfeiting measures.

Finally, it is advisable to implement traceability technologies such as QR codes or RFID (radio frequency identification) chips to enable consumers to check the authenticity of your products. These technologies can also help track and identify dupe distribution points. Increased traceability improves product transparency and safety, while making it easier to take action against counterfeiters.

Conclusion

Dupes represent a major challenge for businesses, but with a proactive strategy and concrete actions, it is possible to protect your trademarks and minimise their negative impacts. By combining market surveillance, legal protection, consumer education and the use of advanced technologies, you can strengthen the defence of your intellectual property.

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Written by Dreyfus26/04/2024

EU trademarks (EUTMs) serve as a cornerstone for businesses within the European Union, allowing for a unified approach to trademark protection across diverse jurisdictions. This harmonized system not only simplifies procedures but also ensures consistent legal safeguards against infringement, essential for brand integrity across the EU’s expansive market.

Jersey’s Unique Position

Jersey, while geographically close to Europe, maintains a distinct legal and economic relationship with the EU. This unique position affects various aspects, including intellectual property rights and specifically, the applicability and enforcement of EU trademarks on the island. Understanding this unique relationship is critical for businesses and legal practitioners navigating the realm of trademark protection in Jersey.

Key Changes Affecting EU Trademark Protection in Jersey

In a declaration of March 2024, as part of the consultation on primary trademark legislation, the Government of Jersey set out the position regarding the protection of European Union Trademarks (EUTMs) under the Trademarks (Jersey) Law 2000 (TMJL).

The protection of EU trademarks in Jersey has undergone significant changes, particularly highlighted by the legal landscape shift post-April 2009. Initially, Jersey’s Trademarks (Jersey) Law 2000 facilitated automatic protection for European Union Trademarks (EUTMs) on the island. However, with the repeal of the Community Trademark Regulation in 2009 and subsequent lack of amendments to Jersey’s law to align with new EU regulations, the automatic protection for EUTMs was discontinued. This change marks a critical juncture, emphasizing the need for businesses to actively seek protection within Jersey’s jurisdiction.

In its declaration, the Government of Jersey also set out its position on the protection of international trademarks through the Madrid Protocol under the Trademarks (Jersey) Law 2000 (TMJL), stating that while international trademark registrations protected in the UK under the Madrid Protocol are “automatically protected in Jersey without the need for re-registration locally by virtue of Article 13 of the TMJL and the definition of a protected international trademark in Article 1 of the TMJL”; international (EU) trademark designations, on the other hand, “are not (and have never been) automatically protected in Jersey because they do not fall within the scope of the definition of protected international trademark in Article 1 of the TMJL and, therefore, do not benefit from the protection afforded by Article 13 of the TMJL”.

Consequences for Holders of EU Trademarks

The Government of Jersey set out that holders of an EUTM could obtain trademark protection in Jersey by re-registration of a trademark first obtained in the United Kingdom (this includes so-called ‘comparable UK trademarks’).

This pivotal shift from automatic to non-automatic protection for European Union Trademarks (EUTMs) underscores the evolving nature of trademark law in response to broader regulatory changes. It requires businesses and legal practitioners to be more vigilant and proactive in their intellectual property strategies.

The cessation of automatic EU trademark protection in Jersey poses new challenges and necessitates European businesses to adopt new adaptation strategies, including a thorough reassessment of current trademark portfolios with an eye towards securing or extending protection through the UK re-registration process. This proactive approach ensures continued safeguarding of intellectual property rights within Jersey’s unique legal framework.

The Importance of Legal Advice

Now more than ever, specialized legal advice is crucial. Intellectual property lawyers and industrial property attorneys with expertise spanning Jersey and EU jurisdictions offer invaluable guidance, helping businesses navigate the complexities of the new trademark landscape effectively. This legal support is essential for aligning trademark strategies with current regulations, ensuring ongoing compliance and protection.

Conclusion: Looking Forward in Trademark Protection for Jersey

The future of trademark protection in Jersey will be shaped by ongoing legal developments and the strategic responses of businesses and legal practitioners. Staying informed, adaptable, and proactive is key to navigating these changes successfully. As the legal framework continues to evolve, fostering a deep understanding of both Jersey-specific and broader EU trademark regulations will be indispensable for securing and maintaining robust trademark protection.

Dreyfus & associés partner with an international network of Intellectual Property attorneys

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Written by Dreyfus29/03/2023

In a world where the lines between different artistic disciplines are becoming increasingly blurred, fashion designers often draw inspiration from art to bring their collections to life or to promote their brands.

This issue echoes the recent dispute between the brand Zadig&Voltaire and artist Julian Charriere over a promotional video for the brand that features a flaming fountain, similar to the one captured by the artist in his “And Beneath it all Flows Liquid Fire” video in 2019.

Many fashion designers are inspired by works of art to create their collections and advertising campaigns. However, some of them cross the line and copy the work of established artists almost exactly, without giving them the credit they deserve. This practice is not only ethically questionable, but can can also be harmful to the original artists in terms of violating their intellectual property (“IP”) rights.

Legal issues of intellectual property in fashion and art

Copyrighting protects original works of the mind, whether they are literary, musical, graphic, plastic or photographic creations. Fashion designers may be tempted to take inspiration from a work of art to design a new piece or an advertising campaign, but it is essential to consider the legal issues related to IP.

Plagiarism, or mindless copying of a work, is a violation of copyright. In the case of fashion, it can mean using a work of art without permission to create prints, patterns or even the shape of a garment. If the copying is obvious, the original artist can sue for damages.

The fine line between fashion and art is even more blurred as many luxury brands have launched their own art foundations such as the Cartier Foundation or the Louis Vuitton Foundation.

However, it is important to note that copyright does not protect ideas, only their expression. Thus, taking inspiration from a work of art in order to create a fashion piece is not necessarily illegal, so long as the creation is suitably original and does not directly copy the work in question. Additionally, some artists occasionally can collaborate with fashion designers, such as Louis Vuitton, who recently worked with Japanese artist Yakoi Kusuma to produce a new collection as well as to transform the Louis Vuitton store in Paris, now decorated with a monumental silhouette of the artist.

Consequences of intellectual property infringement

IP infringement can have negative consequences for artists and the fashion industry.

Plagiarism robs original artists of recognition and fair compensation for their work. When a piece of work is copied without permission, the original artist is not credited or paid for their work. This can lead to a loss of income for artists, causing them to abandon their creative work or settle for less than their talent.

In addition, intellectual property infringement hinders innovation in the creative industry. When artists are not rewarded for their work, it can discourage innovation and the creation of new works. Companies that copy original works do not need to devote resources to research and development of new ideas, as they can simply copy those of others.

Finally, intellectual property infringement can have a negative impact on the brand image of companies that engage in this practice. Consumers are increasingly aware of the importance of ethics and corporate social responsibility. When a company is accused of plagiarism or intellectual property infringement, it can damage its brand image and consumer confidence in the company.

In summation, the phenomenon of plagiarism of art by fashion raises complex questions and considerable stakes, both artistically and legally. The line between inspiration and copying can sometimes be unclear, and the fashion industry seems to navigate these murky waters in search of creativity and innovation.

While some see this appropriation as a democratization of art and a way to enrich fashion, others see them as a threat to the value and integrity of original works. At a time when legislation is struggling to adapt to these issues, it is the responsibility of fashion designers and consumers to commit to ethical fashion that respects art and its creators.

It is critical to continue the dialogue between the different actors involved and to rethink the mechanisms of intellectual property protection to ensure a fair balance between creative freedom and respect for copyright. Creators, as well as artists, can call upon professionals such as Industrial Property Attorneys, with their networks of lawyers specialized in intellectual property, to ensure that no IP rights are infringed upon.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

Written by Dreyfus13/03/2023

Intellectual property (IP) litigation is an important tool for protecting and enforcing rights in IP assets, such as patents, trademarks, and copyrights. When an IP owner’s rights are infringed or someone else is using their IP without permission, the owner may have the right to take legal action against the offender. IP litigation can help the owner to protect their valuable IP assets, as well as their reputation and market position.

The benefits of IP litigation include:

1. Protection of IP Rights IP litigation is an effective way to protect your IP assets from infringement. It allows you to enforce your IP rights and stop unauthorized use of your IP, while also deterring future infringers. By filing a lawsuit, you can also seek damages or other relief to make up for any losses caused by the infringement.

2. Strengthening of IP Rights Through the process of IP litigation, you can also strengthen your IP rights. This is because the court may issue an injunction that requires the infringing party to stop using your IP or to pay you for any profits they made from using your IP. This can help to bolster your IP rights and make it more difficult for others to infringe on them in the future.

3. Deterrence of Unlawful Use The threat of IP litigation can also act as a deterrent to others who may be considering using your IP without permission. By demonstrating that you are willing to take legal action to protect your IP rights, you can create a deterrent effect that can help to discourage others from infringing on your IP.

4. Valuable Legal Remedies IP litigation can also provide you with valuable legal remedies that can help you to recover the costs of defending your IP rights. In some cases, you may be able to recover damages or other relief to compensate you for any losses caused by the infringement.

In addition to these benefits, IP litigation can also provide you with a sense of satisfaction that you are protecting your IP rights and standing up for what is right. It can be a powerful way to make sure that your IP is respected and protected. So how can you make the most of IP litigation? Here are a few tips:

1. Understand Your IP Rights The first step to making the most of IP litigation is to understand your IP rights. You should be familiar with the different types of IP protection and what rights they provide, as well as any related laws or regulations. This will help you to identify potential infringements and determine whether or not you have the right to take legal action.

2. Seek Professional Advice It is also important to seek professional advice when it comes to IP litigation. An experienced IP lawyer can provide you with guidance on your legal rights and remedies, as well as help you to pursue a successful legal action.

3. Take Action Quickly Acting quickly is key when it comes to IP litigation. You should take action as soon as you become aware of a potential infringement, as the longer you wait, the more difficult it may be to prove your case.

4. Gather Evidence The more evidence you have to support your case, the stronger it will be. This means gathering evidence such as documents, emails, and other records that show the infringement occurred.

By following these tips, you can make the most of IP litigation and protect your valuable IP rights.

Written by Dreyfus10/03/2023

The advent of Web 3.0 has ushered in a new era of digital law, and it has become important for businesses and individuals to understand the implications of this new legal landscape. Web 3.0 law, also referred to as “smart contract” law, is a type of technology-based law that governs the use of digital assets and transactions. It is an incredibly important development in the world of intellectual property law, as it presents both opportunities and risks for businesses and individuals.

The primary benefit of Web 3.0 law is that it allows for the secure and seamless transfer of digital assets. Smart contracts are self-executing contracts that use blockchain technology to securely and anonymously store and transfer data. This increases the security and reliability of digital transactions, and makes them more efficient and cost-effective.

Furthermore, Web 3.0 law can help to protect intellectual property rights, as it allows for the secure tracking and control of digital assets. However, there are some potential drawbacks to Web 3.0 law. For one, it can be difficult to enforce, as the technology is still relatively new and there is not yet a unified legal framework.

Additionally, smart contracts are not always legally enforceable, meaning that parties may have difficulty obtaining legal recourse should a dispute arise. Furthermore, Web 3.0 law can be quite complex, and it is essential that businesses and individuals have a clear understanding of how it works in order to ensure that their legal rights are protected.

Overall, Web 3.0 law presents both opportunities and risks for businesses and individuals. It is an important development in the world of intellectual property law, and it is essential that businesses and individuals have a clear understanding of its implications. With the right knowledge and guidance, businesses and individuals can take advantage of the opportunities offered by Web 3.0 law while mitigating the risks.

Written by Dreyfus27/07/2021

Fragrance is nowadays a very important economic interest whether in art, luxury or marketing industry.

Faced with such interests, how does intellectual property try to protect it

The olfactory work: an intellectual work bearing the mind of the author?

The Intellectual Property Code aims, in a non-exhaustive way, the traditional forms of artistic expression (literary, graphic, musical creation, etc.), as long as they satisfy the conditions of originality and tangible form introduced by French law.

Beyond these traditional forms of artworks, case law studied a certain number of creations to determine whether they could be qualified as “intellectual work», such as recipes for example. Among them, olfactory work has been the subject of many discussions. In a world where materiality is omniscient, the fragrance tries, not without difficulty, to find a place in the “Panthéon des œuvres d’art”.

According to perfumers and other “aficionados”, fragrance is an art. However, the French Court de Cassation does not share the same opinion, remaining recalcitrant to the idea of elevating it to the rank of intellectual work and consequently, to grant the perfumer the author status.

Perfume fades, but this should not systematically exclude it from the copyright sphere. Indeed, the fragrance is by nature fluctuating, perishable. Yet, intellectual property does not, as a matter of principle, exclude ephemeral works from copyright protection.

The French Cour de Cassation assumes that the fragrance of a perfume which proceeds from the simple implementation of know-how, does not constitute within the meaning of articles L112-1 and L112-2 of Intellectual Property Code a creation of an expression form which can benefit from the copyright.

In other words, the Court assimilates this process of perfume creation to a simple implementation of a know-how, not protectable by French copyright, and rejects the identification of a form of creation through the sense of smell.

By taking this position, the French Cour de Cassation met with resistance from trial judges and doctrine (TGI Bobigny, 28 nov. 2006 ; CA Paris, 14 fevr. 2007 ; CA Aix-en-Provence, 10 dec. 2010).

Several judgments, on the contrary considered the fragrance as an olfactory form of creation whose originality cannot be denied. The judges also considered the fragrance originality through the novelty of its smell, the association of its scents. Faced with this craze, the Cour de Cassation reviewed its position on the matter but without opening the door to the protection for olfactory creations, considering that: copyright protects creations in their sensitive form, as long as it is identifiable with sufficient precision to allow its communication (Cass. Com., 10 déc. 2013, n° 11-19872).

The protection of fragrances by copyright remains a controversial debate. Only a reversal of case law could settle the issue in favour of perfumers, a position more than expected given the increasingly difficult protection of manufacturing secrets.

Today, it is only on the grounds of parasitism and unfair competition that the perfumer can rely on in case of unauthorized reproduction of the fragrance, as shown by the Lancôme decision. However, those grounds remain less advantageous than the infringement action, as it will be up to the plaintiff to prove the existence of a fault.

The fragrance: a protection by trademark law?

In the scope of industrial property, the fragrance can be apprehended and protected as a trademark.

Indeed, a fragrance can be registered as an olfactory trademark before the Intellectual Property French Office (INPI). Since olfactory memories are the longest to last, according to most scientists, more and more companies want to awaken this sense for the consumer by associating a pleasant smell with their products.

For a long time, this registration of an olfactory trademark was a problem since it could not be represented graphically. Since March 23, 2016, the “Trademark Package” removed this requirement in favour of the olfactory trademark.

Henceforth, the trademark may be protected as soon as it can be represented in any appropriate form through available technology. However, in practice, the registration of olfactive trademarks remains unusual because of its complexity.

Even if the graphic representation required has been deleted, it is still complex to represent the essence of a smell – a chemical formula cannot characterize a perfume. Furthermore, the trademark must be sufficiently distinctive to allow the consumer to identify the commercial origin of the goods and services covered by the smell; distinctiveness still difficult to demonstrate.

In parallel with trademark law, patent law can also be used to protect a smell, provided that it is new, industrially applicable and provides a solution to a concrete problem; conditions that are not necessarily easier to meet.

To conclude, fragrance protection is subject to many debates and difficulties. However, it is not impossible and some legal actors do not cease to claim this protection.

The importance of the olfactory cognitive memory, or the complexity and originality of the creation process, are the keywords defending the fragrance, subject of great legal attention.

Written by Dreyfus15/06/2021

The protection of intangible assets as well as the efficient management of zombie trademarks or patents portfolio contribute to the proper development of a company and its business.

Building a reputation is the very goal of any brand. This reputation is normally attached in law to the sign and to the company that filed and operates it. However, in the context of zombie trademarks, the mark does not symbolize the reputation of the current owner but that of the original owner.

Indeed, these zombie trademarks are signs that have been abandoned but still have marketing potential, a reputation.

A zombie trademark presupposes an indisputable relinquishment, that is to say an abandonment both in fact and legally. It then falls into the public domain.

As long as a brand continues to be used and is renewed every ten years, it can exist perpetually, contrary to patents and the author’s economic rights. However, sometimes a company discontinues the use of some of these signs.

This abandonment can occur any time, whether while the filing is still under review or even when the sign has been in use for a long time. In terms of non-use, a sign is abandoned when a holder stops using it without the intention of resuming its operation, for five consecutive years according to Article L 714-5 of the French Code of Intellectual Property.

Although perpetually renewable, in practice the vast majority of brands have a limited lifespan. They are born and they die. However, it happens that some experience a different fate. They are resurrected.

As we can see with the zombie trademarks, abandonment doesn’t have to be permanent.

A company that has given up its rights to a trademark cannot normally prevent a newcomer from bringing a trademark “back from the dead”. Indeed, the disputed sign has returned to the public domain, which theoretically allows anyone to be able to dispose of it freely.

An abandoned trademark is in principle available to everyone.

In France, it is possible to take action against a so-called deceptive brand. Article L. 711-3 c) of the French Intellectual Property Code provides that signs “likely to deceive the public, in particular as to the nature, quality or geographical origin of the product or service” cannot be adopted as a trademark. The former owner also sometimes has the opportunity to initiate unfair and parasitic competition claims.

Resurrecting a brand can thus be of major asset for a company wishing to take advantage of the notoriety of a distinctive sign that has returned to the public domain. However, some of these marks are not legally neither quite dead, nor quite alive, and it is advisable to be very careful, given that the case law is still rare and uncertain on this subject.

Dreyfus is experienced in anticipating, securing and optimizing IP portfolios, which ultimately adds value to our clients’ businesses.

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 with our articles written by Dreyfus’ legal team.

Written by Dreyfus13/04/2021

With the rise of the digital age, setting up a reliable and effective compliance strategy as well as mobilizing the skills of professionals have become key factors in the company’s performance, particularly in the field of intellectual property.

From the outset, it seems important to remember that compliance includes all the processes intended to ensure that a company, its managers and its employees comply with the legal and ethical standards applicable to them.

FromLAW No. 2016-1691 of 9 December 2016 on transparency, the fight against corruption and the modernization of economic life. on anti-corruption measures to the implementation of the Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (GDPR) of April 27, 2016, and including the duty of vigilance of parent companies and ordering companies (law of March 27, 2017) or the prevention of cyber risk (implementing decree of May 25, 2018 of the NIS directive), an undeniable operational impact on companies and their managers can be observed.

Likewise, the challenges and risks of intellectual property have increased in the virtual world. Domain names as well as social networks are likely to be the targets of multiple attacks.

The key challenges of compliance with regards to intellectual property risks (I) raise questions both about the practical consequences of compliance in all aspects of intellectual property the role of the “compliance officer” in this framework (II) and the role of the “compliance officer” in this framework (III).

The challenges of intellectual property compliance

The environment as well as legal decisions revolve around the long-term development of the company and justify the establishment of real legal engineering within companies whose intellectual property is decisive. This is the key challenge of compliance, which is both a framework for thinking and a method of solving problems, involving a large number of tools and components oriented by company strategy.

Legal, regulatory and fiscal constraints are increasingly stringent and make companies bear increased responsibility in case of negligence, or even simple inaction. In particular, the regulatory framework sets out increased requirements regarding the protection of consumers and personal data.

In the field of intellectual property, domain names are key assets to contemplate when analyzing the risks and drafting compliance plans. While they are a major asset, essential to the very functioning of the business (for example, for e-mail servers, they are also risk vectors: phishing, fraud, identity theft, forged e-mail …

Online fraud can lead to loss of turnover, endangerment of consumers, and if so, risks of civil or criminal liabilities of directors for non-compliance with enforceable laws and regulations. impact the stock market price, thus causing loss of customers.

It is therefore very important to put in place the appropriate strategies to anticipate dangers, react effectively in the event of a breach and ultimately protect the company.

The practical consequences of compliance in all aspects of intellectual and digital property

Compliance has an immediate impact on all aspects of intellectual property. Also, while the legislation is more and more restrictive for companies and intellectual property professionals, compliance requirements are reinforced. How to bring your company into compliance with the laws? What are the risks of not including the Internet in your compliance plan?

Beyond its legal meaning of compliance with the requirements of laws, regulations, Codes or even directives, compliance aims to protect the company and intellectual property professionals against any non-compliance with internal and external standards and its values. Intellectual property frauds are growing and becoming increasingly complex in the digital era, which requires taking action to mitigate risks for the company business, including in terms of compliance. Its objective is to avoid adverse consequences for the company and its managers, both financial and civil or criminal liability, or damage to image and reputation. It is ultimately part of a desire for lasting growth in all aspects of intellectual property, both in France and internationally.

To cope with these new standards, companies must put in place a governance policy capable of minimizing their exposure to risk vis-à-vis their customers, their shareholders, but also regulatory authorities.

To begin with, it is essential to identify the risks through the relevant audits.

Then, it is important to assess those risks and map them. The risk management policy shall be defined accordingly.

In particular, a policy for the management of Intellectual Property related risks calls for a virtually systematic surveillance system of trademarks among domain names.

The role of the “compliance officer”

The compliance officer must protect the company from any risk of non-compliance, and therefore ensure that the organization adopts good conduct in business practice, respects the rules of ethics and finally, complies with the various laws, regulations, or even European directives. It must therefore undertake a proactive approach, organize and implement the means necessary to comply with the regulations.

Likewise, it is important to anticipate risks: once they have been defined and supervised, the mission of the compliance officer being to protect the group and its reputation, he will have to analyze the rules and standards according to the context, the activity, and the business sector.

According to a study “Who are compliance professionals?” published on March 27, 2019 and carried out by the firm Fed Legal, 92% of compliance officers have a legal background. They are operational professionals who have a strategic vision as well as a multiplicity of soft skills, in particular an ability to persuade and an interest for teaching. In addition, 60% of compliance officers belong to legal services in which there are many recruitments, both in large and small companies.

When a company is questioned, the consequences are at the same time financial, commercial and human: the company reputation will suffer greatly. The compliance officer thus takes care of protecting his company from the financial, legal and reputational risks that it incurs in the event that it does not comply with laws, regulations, conventions, or quite simply a certain code of ethics or professional conduct.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.

Written by Dreyfus09/03/2021

As of May 24, 2021, the Madrid System will officially welcome its 108th member: the Islamic Republic of Pakistan.

On February 24, 2021, Pakistan deposited its instrument of accession to the Madrid System with the Director General of the World Intellectual Property Office (WIPO). The arrival of this new member brings the number of countries covered by the Madrid System to 124, and highlights the importance of this international system for the filing and registration of Trademarks.

The Madrid System provides a practical and cost-effective solution for the registration and management of trademarks worldwide. More than 1.5 million international trademarks have been registered since its creation in 1891. While the system has been in place for more than 125 years, three quarters of its member countries have joined it in the last three decades. After the recent accessions of Canada, Samoa, Thailand, and the Sultanate of Brunei, it is now up to Pakistan to join the protocol.

Pakistan’s adhesion to the Madrid Protocol enables the harmonization of Pakistani trademark law at the international level. With the filing of a single international Trademark application, Pakistani applicants now have the possibility to apply for protection in 124 countries. Likewise, Pakistan can be designated by applications from any state party to the Madrid system and international Trademark owners can easily extend their protection in the Pakistani market.

The international trademark system is a major asset for the registration of your trademarks abroad at a lower cost.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.

Marques

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