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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.

Written by Dreyfus03/12/2020

The French National Institute of Industrial Property (INPI) issued a decision on March 23, 2019, rejecting Guerlain’s application for the trademark “Le Frenchy”, covering cosmetic and perfumery goods. The refusal was based on the grounds that the sign was unsuitable to guarantee the commercial origin of the goods in question, as it could indicate a characteristic of said goods, in particular a French origin.

Guerlain filed a successful appeal before the Paris Court of Appeal. The court rendered its decision on September 22, 2020, ruling in its favour: the sign “Le Frenchy” is sufficiently distinctive and is not descriptive, for the concerned goods.

In the contested decision, the Director of the INPI had considered that English is predominant in everyday language and that many expressions including the term “French”, such as “French manicure” or “French tech”, are commonly used in commerce. He added that the addition of the vowel “y” to the adjective “French” does not change the nature of this slang Anglicism.

Guerlain states that the term “Le Frenchy” evokes a “little Frenchman” in slang and that this reference to the French spirit alone is not enough to deprive the sign of distinctiveness.

The Court of Appeal agreed with Guerlain’s arguments, holding that “Le Frenchy” evokes “a person representing a style, a French way of life, a spirit” and not directly the origin of the good.

The combination of the article “le” and of the term “Frenchy” is unusual and arbitrary in relation to the goods in question. Therefore, the sign does not lack of intrinsic distinctiveness within the meaning of Article L.711-1 of the Intellectual Property Code. Similarly, it is not descriptive, within the meaning of Article L.711-2 b), of the goods concerned, as this trademark does not designate a characteristic of the goods, but rather aims to qualify the person who might consume the goods.

It might be assumed that the trademark was saved because the sign “Le Frenchy” includes a form of slang which is not directly related to the goods in question.

The decision might have been different if the sign at stake mainly comprised the word “French”.

For example, the European Union Intellectual Property Office (EUIPO) rejected the trademark ‘LIVE THE FRENCH WAY’ on December 9, 2019 for lack of distinctive character in relation to the services covered in classes 35, 39 and 43, as it would be perceived as a “laudatory promotional slogan”.

In any event, in case of doubt as to the validity of a sign, it is advised to file the projected trademark in semi-figurative form, if it is intended to be used in a stylised manner. Graphic elements increase the distinctiveness of a sign.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.

Written by Dreyfus25/11/2020

(WIPO Arbitration and Mediation Center Natixis Intertitres v. Super Privacy Service LTD c/o Dynadot / Fredrik Lindgrent Case No. D2020-1383)

Being the owner of a trademark that is identical to the disputed domain name is a real advantage in the UDRP procedure. Nevertheless, it is necessary to prove that the respondent was aware of said trademark rights, which is quite complicated when the trademark at issue hasn’t been widely advertised.

Natixis Intertitres, the subsidiary of Natixis, a French internationally known corporate company, holds the registered trademark “INTERTITRES”. This subsidiary filed a complaint before the WIPO Arbitration and Mediation Center in order to obtain the transfer of the disputed domain name <intretitres.fr> registered by a third party without authorization.

During the procedure, the identity of the registrant was disclosed, revealing a Swedish owner.

The Complainant sustained that the domain name was registered in reference to its trademark without any relation to the generic definition of the term “intertitres” especially considering that, in the French language, as in the French dictionary, the term is generally used in the singular form.

Moreover, the complainant finds the configuration of mail servers on a domain name that doesn’t refer to any website “suspicious”. Natixis Intertitres sustained that the Respondent’s intention was to take undue advantage of the Complainant and its trademark’s reputation.

The Respondent didn’t submit a formal response to the complaint but stated that he had reserved the domain name in order to create a site related to literature.

The expert in charge of this dispute acknowledges the likelihood of confusion between the trademark and the subsequent domain name, as well as the lack of proof of legitimate interest by the Respondent, who didn’t really explain the choice of this domain name.

However, the expert is not convinced by the Complainant’s arguments as regards the bad faith criterion. In this respect, he highlights two important points.

Firstly, there is no evidence that the Swedish-based registrant was aware of the trademark “INTERTITRES”. Natixis is certainly internationally known as a company, but this is not the case for its “INTERTITRES” trademark, which designates lunch vouchers mainly available in France. These vouchers are rather known under the names of “CHEQUE DE TABLE” or “APETIZ”. Therefore, it is unlikely that the Respondent was aware of this trademark.

Secondly, “INTERTITRES” is mainly a generic term. The fact that dictionary definitions are given in the singular form does not mean that the term does not exist in its plural form.

The complaint is therefore rejected.

In view of the above, it is essential for right holders to be aware of the scope of protection that their trademark can enjoy. Is the trademark sufficiently well known in the registrant’s country so that it is reasonable to assume that they had it in mind when they reserved the name? This question must be carefully considered, especially when the trademark has also an everyday language meaning and the disputed domain name is not used for an activity similar to the one for which the prior trademark is used. In this regard, the expert rightly pointed out that using a domain name primarily for having a letterbox is not prohibited (referring to the presence of e-mail servers on the disputed domain name).

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world and in their enforcement. Do not hesitate to contact us.

Written by Dreyfus20/08/2020

Uncle Ben’s, Eskimo Pie, Quaker Oats… Apart from the fact that they belong to the food sector, these brands have one thing in common: for a long time they did not seem to be a problem but current events, the #BlackLivesMatter movement and the evolution of society have rightly highlighted the racist side of their name, logo or slogan. These companies have made the decision to change their image and the brands they operate.

In order to be registered with the French office (INPI), a trademark must meet a lawfulness condition : it must not be contrary to public order and morality. Therefore, an obscene design, a Nazi insignia or a racist slogan will obviously be declared inadmissible at the time of their examination by the INPI services following their filings.

Independent assessment of the specialty

In trademark law, it is the sign itself that is taken into consideration. Thus, the lawfulness of the goods or services it covers is not relevant for assessing the conformity of a sign with the public policy. When assessing the conformity with the public policy and morality of the sign, the nature of the goods to which the mark is affixed or of the service which it designates is not relevant.

On the other hand, a mark deemed racist remains racist regardless of the nature of the goods or services it designates. The packaging mark “Paki” could have escaped the qualification of “contrary to public policy” with respect to the goods it designates. Indeed, the name of the mark is probably not intended to claim a racist idea, since it is a derivative of the verb “To Pack” meaning “to pack”. However, since the term “Paki” is also used to pejoratively refer to Pakistanis, the registration of this trademark would have contravened the principle of respect for public order and morality because of the racist reference implied by the trademark.

Assessment in regard to the relevant public

A trademark’s conformity to the public policy, and by extension its racist character, is determined by its potential to shock the public with which it will be exposed to. By “public”, we obviously mean the targeted consumers but also other people who, without being concerned by the said goods and services, will be exposed to this sign in an incidental manner in their daily lives. In this respect, the “Paki” trademark refused in the United Kingdom, where the racist term is very common, would probably not have caused the same unease in a country where this racist insult is not used.

It might also explain why trademarks such as Uncle Ben’s or Quaker Oats have not been considered racist at the time of their registration and for years to come. Intended for a predominantly Western audience and distributed in countries where “ordinary racism” has long been normalized, the public they were aimed at was not “shocked” by their image.

This situation is similar to the one of the Banania brand with the slogan “Y’a bon Banania”, vocalized by a Senegalese skirmisher. The slogan, meaning “It’s good” (C’est bon) in broken French, perpetuated, according to anti-racism associations such as the Movement against racism and for friendship between people (MRAP – Mouvement contre le racisme et pour l’amitié entre les peuples), the racist and denigrating stereotype that a black person was not capable of speaking French correctly. Until the 1970s, the slogan was commonly used by the brand. On May 19, 2011, the Versailles Court of Appeal ruled in favour of MRAP in a decision in which it required Nutrimaine, the company that owns the Banania trademark, to stop selling any product bearing that slogan.

Companies owning the Uncle Ben’s, Quaker’s Oats and Eskimo pie brands have announced that they will remove or change their visual identities that perpetuate racial stereotypes. When it comes to trademark law, the assessment of the racist character by trademark offices is becoming more meticulous.

Written by Dreyfus09/09/2019

WIPO, Arbitration and Mediation Centre, March 11, 2019, No. D2019-0035, Pharnext versus Wang Bo, Xiang Rong (Shanghai) Sheng Wu Ke Ji You Xian Gong Si

On numerous occasions, we have noticed that even those complainants who are represented in UDRP proceedings, could have been better informed about the nature and extent of the rights on which the respondent may rely. Detailed research is an essential prerequisite to filing a complaint, otherwise, the success of the complaint is jeopardised.

On January 7, 2019, the French company Pharnext, whose main activity is in the biopharmaceutical industry, filed a UDRP complaint seeking the transfer of the name <pharnex.com>, which had been registered by a Chinese company.

The complainant contended that it had trademark rights in PHARNEXT through ownership of its “PHARNEXT” logo protected by an international trademark since 2013 and used on its website located at www.pharnext.com.

The respondent had registered the domain name <pharnex.com> in October 2017. At the time the complaint was submitted, the disputed name connected to a website in both English and Chinese indicating that PHARNEX is a platform to help medical companies set up operations in China.

The complainant claimed that the respondent must have had the “PHARNEXT” trademark in mind when registering the domain name, because in May 2017, its partnership with Tasly, one of the most recognised pharmaceutical companies in China, had been announced. The complainant also said there is no plausible explanation for the Respondent’s registration of the Domain Name. It also claimed to have done searches which revealed no evidence that the respondent had any right or legitimate interest in the name.

However, the respondent, Xian Rong (Shanghai), firstly, proved that it had a licence on the “PHARNEXT” trademark for financial services, and secondly pointed to its active use of the trademark since December 2017. Although the ownership of a trademark does not automatically confer a legitimate interest or rights on the respondent, the complainant bears the burden of proof throughout the complaint.

In the present case, the expert was “convinced that the PHARNEXT trademark was registered in good faith”. She further noted that the domain name was used, before the filing of the complaint, in connection with a genuine offer of goods and services. Hence, though the domain name was confusingly similar to the complainant’s trademark, the complaint could not be accepted.

The expert stressed that “her findings are made in the limited boundaries of the UDRP; any matters outside the scope of the Policy may be handled by the parties in a relevant court of law.. Quite simply, the complainant had not proved that the disputed domain name had been registered and used in bad faith.

This decision once again highlights that it is essential to carry out research on all aspects of the proposed complaint; including the respondent and the sign from which the disputed domain name has been derived. For example, researching the “PHARNEX” sign on the Chinese databases would have made the complainant aware of the existence of the word mark “PHARNEX” on which the respondent relied. This would have alerted the complainant to a potential weakness in its case and enabled it to consider alternative strategies. It is essential to think of every possible defense a respondent may raise and be prepared to counter any such defense.

This brief was published in the July-August 2019 issue of the French magazine “Propriété industrielle”.

Written by Dreyfus28/08/2019

Protecting authors’ rights is a necessity in the digital age, as information flows more and more easily. That is why the European Commission reported in September 2017 that it was necessary to tackle illegal online content, while the French legislature has already transposed several European directives and has modified its literary and artistic property law.

In this respect, a great deal has been written by the Directive 2019/790 (EU), adopted on 26 March 2019 by the European Parliament. Among its 30 articles, we count in particular the establishment of a related right for press publishers (Article 15) and an obligation for platforms to control hosted content (Article 17). These provisions have been fiercely debated, and have led to multiple lobbying campaigns by authors and performers, newspaper publishers, and web giants (Google, Facebook and YouTube). In the present article, we will examine the changes made by the Directive.

New exceptions to copyright

There are currently many exceptions to copyright. In that respect, the Directive introduces three new exceptions to author rights and related rights in the digital environment. These exceptions and limitations are:

– Text and data mining for the purpose of scientific research when carried out by research organisations and cultural heritage institutions. However, rightholders are allowed to put in place technical measures aimed at ensuring the security and integrity of the networks and databases where their works are hosted. They may also expressly reserve their rights “in an appropriate manner”, for instance by machine-readable means, such as a digital watermark (Articles 3 and 4);

– The use of works in digital learning activities including distance learning. States may, however, provide a fair compensation for rightholders (Article 5);

– The copying by cultural institutions, for conservation purposes, of works which are part of their permanent collections (Article 6).

French law already provides similar exceptions in the article L. 122-53°) e) 8°) and 10°) of the French Intellectual Property Code, but this is not necessarily the case for all member States.

Under both French law and the Directive, these exceptions must be strictly interpreted and require that the work has been lawfully published.. All the conditions required by law must be met in order to benefit from these exceptions without having to obtain the author’s prior consent..

Furthermore, these new dispositions do not modify existing limitations and exceptions, such as parody or short quotation, which are retained (Article 17 (7) of the Directive). However, Member States will now have to specify that reproductions of visual works of art in the public domain cannot be protected by copyright unless the reproduction itself is original enough to be protected (Article 14). In France, this clarification is a mere application of copyright: a work in the public domain is no longer protected by author rights. Consequently, it can be freely reproduced without authorization. By contrast, if the production is original, it becomes a work on its own right and, as such, can be protected.

Licenses: out-of-commerce works, audiovisual video-on-demand works and collective management

The article 8 of the Directive authorizes collective management organisations to conclude non-exclusive licenses for non-commercial purposes with cultural heritage institutions for exploiting (reproducing, distributing, etc.) out-of-commerce work which are in their permanent collections.

According to Article 8 (5) of the Directive, a work is out-of-commerce: “(…) when it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public.”

Such licenses do not require prior mandate from the rightholder, but the collective management organization must be sufficiently representative of rightholders. The owner may, however, exclude at any time his works from this licensing mechanism, whether this exclusion is general or specific. In addition, the moral right to authorship of the work must be respected by indicating the author’s name, “unless this turns out to be impossible” (Article 8(2)).

Therefore, there is a switch from a prior authorization regime to an implied consent regime, and this will require greater vigilance on the part of authors and rightholders.

In France, article L. 134-4 of the French Intellectual Property Code already gives authors of out-of-commerce books the right to oppose to their exploitation.

Article 12 of the Directive provides that States may authorize collective management organizations to extend collective licenses to rightholders who have not authorized the organization to represent them.

Here again, the organization must be sufficiently representative of rightholders, and they in turn may exclude their works at any time from this licensing mechanism.

Furthermore, article 13 of the Directive provides for a negotiation mechanism in which “an impartial body or of mediators” will be in charge, in order to assist in the conclusion of licensing agreements “making available audiovisual works on video-on-demand services”.

The related right of press publishers

Article 15 of the Directive creates a related right for newspaper publishers established in a Member State. They can now be remunerated for use of their content by information service providers, in particular news aggregators. This right is subject to strict conditions of application and does not apply to :

– Private and non-commercial uses;

– Hyperlinks;

– Use of isolated words or very short extracts of a press publication;

– Works published for the first time before the Directive’s entry into force.

Moreover, this right is only granted for two years from January 1st of the year following the date on which that press publication is published.

This related right is a right of its own, and thus publishers no longer have to demonstrate they indeed own the economic rights transferred to them by the author of the work.

Part of the remuneration paid by service providers to newspaper publishers must be paid to the authors. However, the Directive does not specify how this payment must be carried out. In addition, authors can exploit their works independently of press publication.

Online content-sharing service are fully responsible (Article 17)

In France, platform operators enjoy the protective status of article 6-I-2 of the law “for confidence in the digital economy” n° 2004-575 of 21 June 2004. They are not

liable if they “promptly” remove the content at stake.

Platforms will now be liable if they communicate to the public without authorization works protected by copyright. However, they will be exempt from liability if they have:

– “Made best efforts to obtain an authorization” from rightholders;

– “Made best efforts” to ensure the unavailability of the work and

– Acted “ expeditiously” to disable access to the work or remove it from their websites after receiving a « sufficiently substantiated notice” of the rightholders.

Compliance with these requirements will be examined with regard to the type, audience, and size of the service, as well as the type of works downloaded. Article 17 (8) specifies that platforms are not subject to any general monitoring obligation, but its paragraph 4 (b) requires that they provide their “best efforts”, “in accordance with high industry standards of professional diligence”, to ensure the unavailability of protected works, which seems to be a sneaky way to require automatic content filtering.

Platforms that have been in service for less than three years, and which have an annual turnover of less than €10 million, will benefit from a less restrictive liability regime, as they will only have to make their best efforts to obtain an authorization and will have to act promptly upon receipt of a “sufficiently substantiated notice” from a right holder.

Furthermore, all platforms will be required to put in place an “effective and expeditious complaint and redress mechanism” so that users can challenge blocking or removal of a work posted online. States must also provide for alternative dispute resolution procedures.

Finally, it should be noted that authors and performers will now have to be remunerated in an “appropriate and proportionate” manner (Article 18). They must receive, at least once a year, information on the exploitation of their works (transparency obligation provided for in article 19). Contracts which are already concluded should be adapted to provide for an “additional, appropriate and fair remuneration” (article 20). Article 22 of the Directive also gives authors a right to revoke a license or a transfer of rights. These measures already exist in French law, but the Directive will harmonize European law.

The next step is the transposition of these provisions, which must be done by 21 June 2021 at the latest. France, which supports this text, should proceed with this transposition next summer. A proposal for a law on related rights with regard to press articles is already under consideration.

These developments are to be monitored…

Written by Dreyfus07/08/2019

The 65th international meeting of the ICANN took place in Marrakech, from the 24th to the 27th of June 2019. Several topics have been discussed such as the new gTLDs issues, the compliance between ICANN procedures and the GDPR provisions and the review of the rights protection mechanisms.

Future new gTLDs issues

Recently, ICANN faced an increase in the number of applications for top-level domains (gTLDs). In 2012, almost 2000 applications for new gTLDs were submitted to ICANN. At the end of this first round, more than 1000 gTLDs were created, for instance the <.brands>. ICANN awaits similar applications for the next round, which should take place in 2022.

Thus, new strategies have to be implemented to handle with those requests. At first ICANN foresees establishing priorities, based on the new gTLDs applications, to make the process more efficient. This process could be opened every year for a period of 4 months. However, ICANN could seek to limit the number of applications to 1000 per year.

Furthermore, TLDs with 2 characters will be permitted under the new process if these are composed by one letter and one number. Nevertheless, singular and plural versions of the same extensions are likely to be banned as coexisting gTLDs in the future.

On the other hand, ICANN’s Governmental Advisory Committee (GAC), specifically mentioned the <.amazon> issue in its report dated on 27 June 2019.

The ICANN Board had authorized the use of this gTLDs whereas several GAC members had expressed their concerns about the risk of the Amazon case becoming a precedent and expressed concern that a mutually acceptable solution had not been achieved. The GAC has requested ICANN Board to formulate its grounds for its approval. In addition, several South American governments object to its use.

GDPR and EPDP

The Expedited Policy Development Process Working Group (EPDP) implemented a compliance policy in regard to the GDPR, on March 2019. In our article about ICANN 63, we explained that when the GDPR came into force, it would produce several effects on the Whois protocol. For instance, personal data will no longer be accessible to the public. The EPDP has now to develop a unified access system centralizing protected data, based on the legitimate interests of IP owners.

Furthermore, some details about the Registration Data Access Protocol (RDAP) were given in the ICANN 65. This protocol has been created to eventually replace the Whois protocol. In fact, it performs the same functions as Whois, but its aim is to standardize data access. It shall be implemented by Registries and Registrars by the 26^th of August 2019.

Review of protection mechanisms provided by ICANN

The Rights Protection Mechanism (RPM) Working group is reviewing several ICANN procedures concerning gTLDs. It has developed preliminary recommendations about Sunrise and Claims periods. In the same way, some proposals have been developed to allow trademark owners to acquire a priority right to register their trademark as a domain name. In the absence of such a registration, third parties could register terms corresponding to the trademark.

Up to now, the first phase of the working group scheme consists in reviewing Uniform Rapid Suspension (URS) and the Trademark Clearinghouse (TMCH) mechanisms. Similarly, the UDRP procedure remains on the horizon, and the Group is expected to begin work on that in mid-2020. This will be the second phase of its work.

Meantime, as their work is not yet completed, we will have more information once their report is completed, which is expected to be in April 2020.

On the other hand, another working group was also formed to study Subsequent Procedures (SubPro) for new gTLDs. This working group confirmed its support of a User Guide, under the assumption that it becomes more precise, to make it easier to understand what gTLDs are.

Similarly, the SubPro working group expects to better communicate with trademark owners in order to limit the risk of counterfeiting, and to show how those new gTLDs could have a good effect on their activity.

Thus, ICANN 65 provided an opportunity to evaluate the work done thus far by the working groups. However, if clarifications have been made, few concrete changes have been put in place. The projects should take shape at the next meetings organized by ICANN.

The next ICANN meeting will take place in November 2019, in Montreal. We will continue to follow this matter closely.

Written by Dreyfus07/08/2019

According to the judgment « Adidas AG / EUIPO », T-307/17, of the 19th of June 2019, the General Court (ninth chamber) of the European Union dismissed an appeal by Adidas against the decision of the EUIPO to declare the famous « three-stripes » figurative trademark invalid on the grounds it lacked distinctive character.

This began when Adidas opposed the registration of the 2 stripes trademark of its competitor, Shoe Branding, who counterclaimed to have the Adidas “three-stripes” registration declared invalid on the grounds it lacked distinctive character. By a decision of 30^th June 2016, the cancellation division of the EUIPO declared the Adidas registration invalid, and by decision dated 7^th March 2017, the second Board of Appeal of the EUIPO upheld the original decision to cancel the Adidas trademark.

Therefore, Adidas appealed that decision to the General Court arguing that the challenged trademark had acquired distinctiveness through use. However, the Court ruled that there was a lack of inherit distinctiveness and also refused to recognise the acquisition of distinctiveness through use. In doing so, the Court said that Adidas did not provide sufficient evidence of distinctive character. According to the Court, Adidas had proved only that the necessary distinctiveness had been proved in only 5 of the EU member states.

It is important to remember that the distinctiveness is not established by providing evidence of sales and marketing figures for the products and services, but is judged by reference to the relevant public’s perception of the trademark. The Court said that distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception which the relevant public has of those goods or services. This meant that the Court considered the relevant public consists of all potential consumers of those goods in the European Union, and on the evidence filed said they would not make an obvious link between the « three-stripes » and the owner (Adidas). Although the « three-stripes » became the symbol of Adidas a long time ago the evidence filed by Adidas did not demonstrate an obvious link between the sign as registered and the products for which it is registered. There was no direct evidence the “three-stripes” as registered were actually used on the products covered in the registration. Therefore, the trademark’s distinctive character, and so its validity, could not be upheld.

The Court already accepted that a repetition of signs for a figurative trademark could be a valid trademark (TUE, 9th of november 2016, Birkenstock Sales/EUIPO, T-579-14 Representation of a pattern of wavy, crisscrossing lines). Nevertheless, in this case, the Court thought the trademark is composed of obvious non-distinctive elements.

Distinctive character can be acquired through use after registration (Com. 6th Déc. 2016, n°15-19048), but under the Directive 2008/95/CE of the 22nd of October 2008, evidence that the registration has acquired distinctive character has to be shown in each country of the European Union, (CJUE, 3rd chamber, 25th of July 2018, Nestlé SA c/ Mondelez UK Holdings & Services Ltd). Adidas was criticised for not having provided evidence covering every state of the EU. According to established case law, it is necessary to prove distinctiveness in all the states of the Union. On the other hand case law makes it clear that it may be sufficient to prove distinctive character in a substantial part of the EU dependant on the geographic importance of the states where distinctive character has been proved (CJUE, 24 of May 2012, Chocoladefabriken Lindt & Sprüngli AG c/ OHMI, C-98/11 P). Adidas could benefit from this case law.

Arguably, according to the Council Regulation n°207/2009, the European Court is going against the past judgments, but the decision is a necessary reminder of the need to prove distinctiveness acquired through use, in each country of the Union.

In the circumstances of this case, an appeal to the Court of Justice of the European Union is to be expected because of the effect of this decision on Adidas, which has registered several figurative trademarks of this kind. It may also have an effect on many other trademark owners. This judgement relates only to the specific trademark registration challenged and does not directly affect the other trademarks of Adidas, nor of any other owners.

Written by Dreyfus07/08/2019

Nathalie Dreyfus has been admitted as panelist and arbitrator in the CIRA Panel (Canadian Internet Registration Authority).

The CIRA Panel is a new Alternative Dispute Resolution Centre which belongs to the British Columbia International Commercial Arbitration Centre (BCICAC).

The main aim of CIRA is to settle disputes concerning domain names through a quick and relatively low cost mechanism, led by out-of-court arbitrators who meet certain requirements according to CIRA’s Canadian Presence.

The process is initiated by a complaint received in the CIRA Complaint Center which locks the disputed domain. A copy of the complaint is redirected to the Registrant who has twenty days to deliver a response. If so, a Panel of experts is appointed, whereas if there is no response the complainant may elect a single panelist. In both cases, a decision is given within twenty one days.

This decision is directly implemented by the CIRA.Since BCICAC was founded more than hundred cases have been solved by this institution.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.

Written by Dreyfus09/02/2018

After the filing of an intellectual property right, several types of changes are likely to occur, such as the owner’s move, the change of his name in a legal way or the assignment of his rights. Such corrections must be recorded in the relevant register, as this could have very damaging consequences for the holder.

Appropriateness of registration by the rights holder

By definition, registration is an approach made with the National Register of Trademarks, Designs and Patents by means of a paper or electronically, allowing the owner to notify changes in his intellectual property rights. This is important because it enables third parties to be informed of the ownership of trademarks, patents, designs and models as well as of the operations carried out on them.

Registries are national

In France, the National Registry of Trademarks only accepts registrations of trademarks whose effects are effective in France. Registrations concerning international trademarks are also impossible except in cases where they cannot be effected at the International Office (OMPI). This is particularly the case for the license, which must be registered directly with the National Registry in accordance with its own legislation. This is because the legislation of certain states such as Germany, Australia or New Zealand does not provide for the registration of trademark licenses, thus rendering their registration in the international register ineffective.

Changes affecting ownership or enjoyment of the trademark

According to Article L. 714-7 of the Intellectual Property Code, “any transmission or modification of the rights attached to a trademark must be registered in the National Register of Trademarks in order to be effective against third parties”. This article shows that if the assignee fails to register its assignment or trademark license, the assignee may not oppose these acts against third parties. On the one hand, this will prevent him/her from taking opposition action against a subsequent filing or in the context of a legal action and on the other hand, he/she may be held liable in the event of a mistake committed by the beneficiary of a trademark license, as stated in a judgment handed down by the European Court of Justice on 4 February 2016.

On the other hand, other more rare deeds such as mortgages, pledges or guarantees also deserve to be registered with the Registry, otherwise these deeds will not be enforceable against third parties.

Thus, licenses and assignments are not the only amendments requiring registration by the rights holder. The latter may indeed be affected by other operations although they are not expressly covered by Article L. 714-7 of the Intellectual Property Code.

These transactions include the following:

–Total or partial withdrawal of trademark rights: where the trademark has not been registered, it is possible to withdraw or specify some goods and/or services, or to withdraw the entire trademark. You may find yourself in this situation if the proprietor of an earlier trademark believes, for example, that this new application infringes his rights and requires the withdrawal of certain goods or services or, more significantly, the withdrawal of the trademark.

–The total or partial renunciation of the trademark: even if it is less common, these are cases in which modifications are requested after the registration of your trademark.

From a practical point of view, the right holder must also register in the Trademark Register:

–The change of address explained by the fact that if the INPI is not informed and the owner of the rights is not represented by an agent, he may never receive a reminder letter to renew his trademarks.

–The change of legal form (a SAS becomes an SA for example) because if the INPI is not informed of this change, it will refuse the renewal of the trademarks with the new data without justification.

–The change of name as illustrated by the harsh decision of the European Court of Justice of September 8th, 2016 confirming that the holder must register his change of name in order to avoid being deprived of his rights.

Limits of registration by the owner of the trademark right

The corrections that the holder may enter are limited, and are limited to the possibility of limiting the protection of his rights. Therefore, it is impossible to modify your sign, name or logo, nor is it possible to extend the protection of your right by adding products and/or services through registration.

Registration: the solution against the loss of rights

Failure to register the above-mentioned changes can have very damaging consequences such as forfeiture of rights. Moreover, the positions adopted by the courts continue to be increasingly rigorous, prompting companies to systematically register events affecting all intellectual property rights or their holders in order to avoid all types of damage.

Registering changes affecting your intellectual property rights is an essential step in terms of protection. Dreyfus & Associés has experts in trademark law, as well as in national, European and international trademark registrations. Dreyfus & Associés is the ideal partner to support you in this process of securing and updating your intellectual property rights.

Written by Dreyfus31/10/2013

Le TPICE a validé le rejet de l’opposition à une demande de marque figurative opéré par l’Office de l’Harmonisation dans le Marché Intérieur (ci-après OHMI) et sa chambre des recours le 17 mai 2013.

Le 13 juin 2006, la société Mundipharma AG a demandé l’enregistrement de la marque figurative suivante:

L’enregistrement a été demandé pour la classe 5, à savoir les « produits pharmaceutiques pour la médecine humaine, à savoir analgésiques ».

Le 3 mai 2007, Sanofi Pasteur MSD SNC a déposé une opposition à la demande précitée basée sur les marques françaises et internationales suivantes couvertes également en classe 5:

Marque française n°94500843

Marque Internationale n° 627401

Le 30 juillet 2010 la division d’opposition de l’OHMI a rejeté l’opposition et par décision du 22 juillet 2011, la quatrième chambre des recours de l’OHMI a également rejeté le recours.

La chambre des recours pour rendre sa décision s’est appuyée sur une comparaison des produits puis sur une comparaison des signes en présence.

En ce qui concerne la comparaison des produits, ils sont identiques et relèvent de la classe 5 « produits pharmaceutiques ».

En ce qui concerne la comparaison des signes, la chambre a cité une jurisprudence constante(1) qui rappelle que « l’appréciation de la similitude visuelle, phonétique ou conceptuelle des signes en conflit doit être fondée sur l’impression d’ensemble produite par ceux-ci, en tenant compte, notamment, de leurs éléments distinctifs et dominants ».

Sur l’analyse visuelle, la Chambre des recours a considéré que l’impression visuelle créée par l’un et l’autre signe est assez différente.
Sur le plan phonétique, elle a souligné que l’appréciation de la similitude des signes ne peut être réalisée car les signes sont purement figuratifs et abstraits.
Enfin, sur le plan conceptuel, elle a considéré qu’aucune des formes ne présente un contenu conceptuel. Les signes ne sont donc pas comparables sur ce plan là.

Le TPICE a approuvé la conclusion faite au point 23 de la décision attaquée : les signes ne sont similaires sur le plan visuel qu’à un degré marginal. En ce qui concerne le caractère distinctif des marques antérieures, la jurisprudence admet qu’une marque possède un caractère distinctif particulier, soit intrinsèquement, soit grâce à la notoriété dont elle jouit auprès du public(2).

En l’espèce les marques antérieures présentent un caractère distinctif faible. Elles sont composées de deux formes géométriques simples et n’attirent pas l’attention du consommateur.
De plus, l’argument tiré du caractère distinctif accru par l’usage des marques antérieures doit être rejeté. En l’espèce, les produits couverts par les marques en conflit sont identiques.
Les signes quant à eux présentent un faible degré de similitude sur le plan visuel et ne peuvent être comparés ni sur le plan phonétique ni sur le plan conceptuel.

Le Tribunal en tire donc la conclusion qu’il n’y a pas de risque de confusion !

(1) CJCE 12 Juin 2002, OHMI C/Shaker C-335/05.
(2) (CJUE 1er Novembre 1996, SABEL C-251-95).

Written by Dreyfus25/10/2012

Franck Muller is a Swiss watch manufacturer which slogan is “Master of Complications”. On January 14, 2011, the Bern Commercial Court denied a request of trademark infringement against Franck Muller.

At a watch show in March 2009, Franck Muller presented new models, with a “MEGA” inscription in the center of the watch. Another watch manufacturer, Omega AG, owner of the famous “OMEGA” trademark, considered that the use of a “MEGA” sign for watches was an infringement of its trademark.

In July 2009, Omega filed an action in order to prevent Franck Muller from using the sign in dispute.

According to the Swiss Trademark Act, a sign can only be eligible for registration if it has a distinctive character. It means that the sign has to be sufficiently different from signs commonly used to describe the product. For example, the word “clock” is not distinctive enough for a watch, because it describes the product. Therefore, it cannot be eligible as a trademark.

In the Omega case, the Court decided that the “MEGA” word belonged to the public domain and dismissed Omega’s action. Indeed, Judges considered that the word “MEGA”, a descriptive term from the Greek alphabet which means “super”, “top” or “big”, can only be used to describe the watch, and therefore, cannot be a valid trademark for those goods. Besides, they noticed that the word “MEGA”, in this case, was used to describe a special quality of the watches, precisely a very complex type of clockwork.

Consequently, the use of the sign “MEGA” for watches did not constitute an infringement of the OMEGA trademark.

The Court could have stopped its reasoning at this point, but Judges also examined the plaintiff arguments about the likelihood of confusion.

The likelihood of confusion is required to prove a trademark infringement. It is characterized when a relevant consuming, watch buyers in this case, is likely to be confused or mistaken about the source of the product.

To establish the likelihood of confusion, signs, but also goods or services, have to be compared. The more they are similar, the more the likelihood of confusion will be established.

In the present case, Judges considered that “OMEGA” had to be compared to “MEGA” and “FRANCK MULLER” or “MEGA” and “FRANCK MULLER GENEVA”. Indeed, “MEGA” was not the only inscription on the watch. “FRANCK MULLER” and “GENEVA” were also present. Therefore, the Court found that there was no likelihood of confusion.

In fact, the only likelihood of confusion may have been found in the “MEGA” syllable, but this word belongs to the public domain.

Another condition for the likelihood of confusion to be characterized is the similarity of goods or services aimed by the signs.

Judges decided that goods, watches for both parties, weren’t similar at all. Indeed, they explained, in support of theirs decision that the price of watches were far apart (more than 5 times of difference) from each other. They also noticed that the technology used, the distribution channels and the clientele were different to reject a likelihood of confusion.

This Swiss decision is particular hard on Omega AG. Judges have been very strict on the goods comparison. It is not established that an average consumer would make any difference between those two watches brands, even if one is much more expensive than the other!

Decision: Bern Commercial Court, January 14, 2011, Omega AG v. Franck Muller.

Written by Dreyfus09/06/2011

As from 01 July 2011, it will be possible for trade mark owners to file oppositions in Italy. Such oppositions will be available against Italian trade mark applications filed as of 01 May 2011 and International Registrations designating Italy, published in the WIPO Gazette as of July 2011. Oppositions will be filed with and handled by the Italian Patent and Trade Mark Office (the UIBM).

Such opposition proceedings can only be brought by certain earlier right holders, including owners of earlier registered or filed trade marks having effect in Italy, which are:

– either identical to the trade mark application opposed and designate identical goods and services; or
– identical or similar to the trade mark application opposed and designate identical or similar goods and services provided that there is a likelihood of confusion on the part of the public.

The opposition must be filed within a period of 3 months as from the publication of the trade mark application. Once the opposition is held to be admissible, there is a two-month cooling off period, intended to allow parties to find an amicable settlement. This cooling off period can be extended at the request of both parties up to a year.

If the parties fail to come to an amicable solution, the adversarial stage commences and the parties are given the opportunity to exchange their arguments. The applicant is given the opportunity to ask the opposing party to provide proof of use, if its earlier trade mark has been registered for more than five years on the date of publication of the trade mark application.

The UIBM must hand down a decision within a period of 24 months as from the filing of the opposition, either rejecting the opposition or accepting it in part or in full. It will be possible to appeal the UIBM’s decision within a period of 60 days.
The winning party may be awarded costs in accordance with a fixed schedule.

The introduction of opposition proceedings in Italy allows trade mark owners to deal with infringing trade mark applications on a cost efficient and relatively quick basis.

Trade mark owners are therefore well advised to put into place watch services in Italy so as to be able to react and if necessary file an opposition within the opposition deadline.

Click here to download the pdf version of this document

Written by Dreyfus26/05/2011

Slamming is the coined expression for the deceptive practices used by certain unscrupulous individuals and entities to persuade businesses and in particular trade mark owners to purchase unsolicited services. This practice is not new and is particular common in the fields of telecommunications and IP.

In relation to trade marks, slamming often takes the form of a false request for payment of fees sent to registered trade mark owners. Such invoices are set out on what looks to be the headed note of an existing IP office, using logos and names which are confusingly similar. Another common practice is for the scammer to warn a trade mark owner that a one of its “clients” has just instructed it to file a similar or identical trade mark in their jurisdiction, with the aim of persuading the owner to file, often unnecessarily, their trade mark in this country.

A new scam has recently been identified in China. Chinese trade mark agents have been sending emails or faxes to trade mark owners warning them of the recent filing of an identical trade mark by a third party. They claim that it is possible to file a “prior” trade mark application in order to preempt this third party application.

Such a procedure does not, of course, exist in Chinese law and the only options available to the trade mark owner are to file an opposition within the three months following the publication of the application or to bring cancellation action upon registration of the mark.

If you receive such an invoice or warning, you should deal with it with utmost caution and we invite you to contact us.

A non-exhaustive list of unofficial requests of payment of fees which have been brought to the attention of WIPO is available at the following address: http://www.wipo.int/pct/en/warning/pct_warning.htm

Click here to download the pdf version of this document

Written by Dreyfus05/05/2011

Located about 350 miles north of Australia, Timor is an island in the Indonesian Archipelago. This island is divided up into two territories: West Timor, which belongs to Indonesia, and East Timor.

Colonized by Portugal up until 1975, East Timor was subsequently occupied by Indonesia. The Democratic Republic of Timor-Leste became an independent state on 20 May 2002.

At present, this country has yet to adopt any trade mark legislation. However, whilst waiting for such legislation to be put in place, the East Timor authorities accept “provisional” filings in the form of cautionary notices, which are enforceable against third parties.

Furthermore, once a legislative framework has been put in place, it will be possible to convert these “provisional” filings into trade marks. These trade marks will in principle be protected with effect as from the initial date of the provisional filing. At present, multi-class filings are accepted. Brand owners are therefore well-advised to consider protecting their trade marks in this territory.

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Written by Dreyfus23/09/2010

Google has decided to change its AdWords policy in the countries of the European Union and EFTA so that it is close to the one already in place in most other countries. This change took place as from September 14, 2010.

This decision is in line with the Google decision of the Court of Justice of the European Union ( hereafter “CJEU”) dated March 23, 2010, Louis Vuitton vs Google, in which it was held that ” [a]n Internetreferencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword” is not liable of trademark infringement.

This change of policy is not without consequences for trademark holders.

GOOGLE ADWORDS: ADVERTISING AT THE CLOSEST OF INTERNET USERS!

The Google AdWords program allows to display contextual and targeted advertisements corresponding to the Internetusers’ interest.

The program is based on two principles: keywords and geolocation, which, when combined, allow a fine selection of the public targeted by the ad.

Various types of AdWords

There are three options for targeting keywords that determine how Google search triggers the ads:

•   The broad match that allows an ad to appear in the context of searches on
similar expressions and relevant variations. For example, the purchase of the keyword “Television” will trigger the display of an ad if a user does a search on “Samsung TV”;
•   The exact expression that allows the ad to appear in the context of a search corresponding to the exact expression even if it is associated with other terms. For example, buying the keyword “Samsung Television” will trigger the display of an ad if the user does a search on the phrase “flat screen Samsung television”;
•   The exact keyword that allows the ad to show up in the context of a search corresponding only to the exact expression.

The best known and most widely used (probably because it is the default choice) is the broad match. The broad match allows the display of an ad when the user enters one of the terms of the keyword, even when inverted or interspersed with other words.
The ads will show up for all requests regardless of the order in which the key words are entered by the Internet user, even if the request contains other terms.

Today, an ad may be displayed with:

•   the plural or singular forms of the keyword;
•   the synonyms of the keyword,
•   other “relevant alternatives” to the keyword.

Geolocation

The advertising campaigns using Google AdWords take two kinds of geolocation into account:

• The countries targeted by the campaign (at the discretion of the advertiser);
• The countries where the ads are viewed (the physical location of the user,
materialized by the IP address of his computer). It should be noted that this factor is paramount since a Google request on the same term does provide different results depending on the viewing area. For example, a French Internet user making a search on Google Germany (google.de) will not obtain the same results as a German Internet user making the exact same search. Indeed, the geolocation system determines where the Internet user is localized. For example, a search for a restaurant could provide a list of restaurants located at the corner of the street!

The triggering of ads is finally linked to the policy of trademark protection put in place by Google in the concerned countries.

THE EVOLUTION OF THE TRADEMARK PROTECTION POLICY

So far, in the countries of the European Union and in the EFTA countries, except the United Kingdom and Ireland, when a trademark owner sent a complaint to Google, citing unauthorized use of its trademarks in a keyword or in the text of an ad, Google could at its discretion take the decision to disable the keyword and / or withdraw the infringing ad. In prevention, Google could also blacklist trademarks on request of right holders so as to prevent their use in the AdWords system.

What are the consequences for trademark holders as from September 14, 2010?

•   Someone who advertises on Google in Europe may select brands
as keywords to trigger ads. Advertisers have been allowed by Google to use third-party trademarks as keywords in the United States and Canada since 2004, in the UK and Ireland since 2008 and in many other countries since May 2009.
•   Google will no longer blacklists keywords in prevention.
•   The trademarks that had been blacklisted as a preventive measure will be removed from Google’s list and will again be available for registration as keywords.
•   The advertisings based on the principle of broad match (which allows an ad to appear in the context of searches on similar expressions and relevant variations) will be displayed after searches on competing brands.
•   Google will only remove the text ads that may mislead Internet users on the origin of products and services presented in the ads:
– on request of a right holder and after an investigation from Google confirming the infringement;
– on request of a judicial decision.

Furthermore, so as to limit the risk of conflict, the advertisers are simply invited to fulfil a list of “negative keywords”, corresponding to protected trademarks. In case said keywords are used, the ads will not appear. The responsibility is then transferred to the advertiser.

RECENT CASE LAW

The responsibility of advertisers has been reminded and specified in the decision of the CJEU of July 8, 2010, Portakabin vs Primakabin, notably in case of a used goods reseller.

The advertiser can be punished only if the ad creates a likelihood of confusion related to the origin indicator function of the concerned mark. [The owner of a trademark has the right to prohibit someone to advertise with a keyword identical to its mark only if the ad generates confusion: “where that advertising does not enable average Internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or from an undertaking economically linked to it or, on the contrary, originate from a third party”.]

CJUE also specifies that ” a trade mark proprietor is not entitled to prohibit an advertiser from advertising – on the basis of a sign identical with, or similar to, that trade mark, which that advertiser chose as a keyword for an Internet referencing service without the consent of that proprietor – the resale of goods manufactured and placed on the market in the European Economic Area by that proprietor or with his consent, unless there is a legitimate reason, within the meaning of Article 7(2), which justifies him opposing that advertising, such as use of that sign which gives the impression that the reseller and the trade mark proprietor are economically linked or use which is seriously detrimental to the reputation of the mark ” The use of a trademark as a keyword by a reseller can therefore be prohibited only if the use of keyword gives the impression that the reseller and the trademark holder are economically tied or if such use is seriously detrimental to the reputation of the trademark.

These elements will be appreciated at the discretion of the various national courts.

In France, the French Supreme Court in the France vs. Gifam decision dated July 13, 2010 has confirmed the case law of the CJEU including the fact that by offering advertisers the use of third parties trademarks as keywords, Google has not committed any counterfeiting act.

The Court of Appeals also confirmed in the Multipass / Smart & Co decision dated 19 May 2010 that the advertiser makes a mistake when failing to register the protected trademarks as “negative terms” whereas it had been aware of the situation for several months. However, this case concerned a dispute about the broad match and took place in a highly competitive context. The decision should therefore be regarded as being closely related to the facts at issue.

WHAT STRATEGY TO ADOPT?

Taking into account the recent developments in case law and the new policy to protect trademarks implemented by Google, right holders must exercise greater vigilance regarding the use of their trademarks as keywords to identify potential abusive behaviour and take appropriate provisions against advertisers.

Monitoring the use of trademarks as keywords

With the end of the blacklisting of trademarks in the AdWords program, trademark holders have to put in place a specific trademark watch to detect the use made of their marks as keywords by third parties, including their competitors. One major difficulty of this watch is the principle of geolocation advertising, which requires a local presence in each country of interest and an analysis of the detected ads whatever the language of the ad.

Since late June 2010, our law firm has offered a watching system suited to the geolocation principle. Don’t hesitate to contact us.

Written by Dreyfus05/08/2010

The Canadian Federal Court rejected Proctor & Gamble’s (P&G) opposition to Colgate-Palmolive Canada’s (Colgate) trademark registration of a striped toothpaste design.

The design at issue was the coloured stripes of the toothpaste itself, not the packaging, consisting of a green stripe on top, a white stripe in the middle, and a blue stripe on the bottom.

All of P&G’s grounds for opposition were rejected by the Trademark Opposition Board. On appeal, the Federal Court upheld the Board’s finding that the grounds were raised improperly under the Trade-marks Act.

The grounds for opposition in which P&G alleged that the toothpaste design was not a trade-mark at all included:

1. The design was purely for ornamental purposes.

2. Because Colgate held patents that dealt with how to maintain chemical equilibrium in a toothpaste container and to keep the striped appearance when the toothpaste was dispensed, the design was unregistrable for being primarily functional in nature.

3. The design was not visible to consumers at the time the toothpaste was transferred because it was enclosed in packaging. Therefore, the design could not be “used” as defined in the Trade-marks Act.

4. The design lacked distinctiveness because it used the three most common colours in the toothpaste industry.

However, the Court found, respectively, that:

1. P&G had not satisfied its evidential burden because it offered no expert testimony to rebut Colgate’s affidavit, which stated that the toothpaste striping served no purpose and was chosen arbitrarily.

2. patents, manufacturing process, flavours and colouring agents did not necessarily demonstrate a primary function of the striped toothpaste, and there was no evidence that the stripes in Colgate’s toothpaste performed a function.

3. based on Colgate’s evidence of several ways in which toothpaste can be sold that allows the purchaser to see the toothpaste in the tube, it is not impossible to “use” the design in accordance with the Trade-marks Act.

4. there was no evidence of another party using the same stripe design for toothpaste. Therefore, there was no evidence that the stripe design could not distinguish Colgate’s toothpaste.

The Legal Imperative of the Declaration of Use

Contents and Submission of the Declaration

Concurrency with Renewal and Potential Penalties

Fees and Administrative Details

Documentation Requirements

Conclusion

FAQ

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

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

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

A few strategies to counter the harmful effects of dupes

Conclusion

Jersey’s Unique Position

Key Changes Affecting EU Trademark Protection in Jersey

Consequences for Holders of EU Trademarks

The Importance of Legal Advice

Conclusion: Looking Forward in Trademark Protection for Jersey

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

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