Non classé Archives - Page 6 of 57

How Much Does an Intellectual Property Attorney Cost in the EU?

Written by Dreyfus06/03/2023

Protecting your copyrights, trademarks and other forms of intellectual property is essential to the success of your business. Therefore, it is important to understand the cost of effective protection. How much does an IP lawyer or attorney cost in the EU?

The cost of an IP lawyer or attorney in the European Union depends on several factors, including the expertise in question, the experience of the lawyer and the location of the lawyer. Some attorneys will charge for their services on a flat fee basis while others will charge on a time basis.

The complexity of the case and the amount of work required will also influence the cost of the service. When searching for an IP lawyer in the EU, it is important to consider the experience and reputation of the IP lawyer or attorney. A lawyer who has handled similar cases in the past will have a better understanding of the legal process and framework and will be more likely to provide effective representation.

Furthermore, it is important to choose an attorney who is familiar with the laws and regulations of the country where your business is located. Once you have chosen an intellectual property lawyer, it is important to determine the cost of their services.

Many attorneys will offer a free initial consultation, which can be a great way to get a sense of future fees. The attorney will be able to provide you with an estimate of their fees, or a detailed quote, as well as any additional costs associated with, for example, trademark filing fees or foreign agents that may be required.

In addition to legal fees, an IP attorney may also charge for any additional services they provide. This may include searching EU law, drafting documents or providing expertise. The cost of these services will vary depending on the lawyer and the services they provide.

When it comes to protecting your intellectual property rights, it is important to hire a qualified and experienced attorney or counsel. The cost of an IP lawyer or attorney in the EU can vary, but it is important to ensure that your lawyer is experienced, competent and able to provide effective representation.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

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.

Written by Dreyfus06/03/2023

In the European Union (EU), intellectual property rights are regulated by two offices: the European Intellectual Property Office (EUIPO) located in Alicante and the European Patent Office (EPO) located in Munich. Therefore, as an ordinary person or legal professional who owns an intellectual property right, you will probably need to hire a lawyer specialized in intellectual property in order to best protect. However, does this lawyer have to be licensed in the EU to practice? This means that if you are a company or an individual who owns intellectual property rights, you may need to hire an intellectual property lawyer to protect you and your business. Then it is important to consider, does that lawyer have to be licensed in the EU?

In short, the answer is no. An IP lawyer does not need to be licensed in the EU to practice. However, there are certain requirements that must be met to practice in the EU Primarily, an attorney must have a valid license in the jurisdiction where he or she practices. This license must be issued by the competent authority of the jurisdiction.

Secondly, the lawyer must have a valid professional qualification in intellectual property law. Furthermore, this qualification must be recognized by the EPO. The lawyer must also be a member of a professional body recognized by the EPO.

Finally, the lawyer must be registered with the EPO. This registration requires the provision of certain documents, including a valid license and a professional qualification in intellectual property law. Once the registration is complete, the lawyer will be added to the register of intellectual property lawyers authorized by the EPO. The lawyer will also be required to meet the ethical standards established by the EPO. These standards are set out in the European Patent Convention, which is the legal framework that governs intellectual property law in the EU and more specifically patent law.

Overall, an IP lawyer does not need to be licensed in the EU to practice. However, he must meet certain requirements to practice in the EU, including having a valid license, a valid professional qualification and being registered with the EPO.

For further information, do not hesitate to contact us:

contact@dreyfus.fr.

Written by Dreyfus06/03/2023

An intellectual property lawyer or attorney specializes in the protection and enforcement of intellectual property rights. Intellectual property (IP) rights protect intangible objects, such as inventions, intellectual works or trademarks. Depending on the country, these rights are governed by federal, state and international laws.

An intellectual property lawyer is an expert in the various fields of intellectual property law: patent law, trademark law, copyright law and design law. Thus, they are able to help their clients protect their ideas and creations against potential infringements. For example, an intellectual property lawyer or attorney can help a person or a company to file a patent or a trademark. They can also assist a client in the management of their copyrights. Finally, the lawyer specialized in intellectual property can take the necessary measures and act if necessary to prevent infringements.

One of the main services provided by a lawyer or attorney specialized in intellectual property is the filing of a patent application. A patent gives its holder exclusive rights to exploit an invention for a period of 20 years. The lawyer specialized in intellectual property will then be able to help you to establish a general and global strategy of defense of your invention in order to ensure it is protected.

Another service that can be provided by a lawyer specialized in intellectual property is the registration of a trademark. Just like the patent right, the trademark right refers a control of possible exploitation of the sign. The trademark is a distinctive sign allowing to link products or services to the company from which they originate. The lawyer or intellectual property attorney can help a person or a legal entity register a sign as a trademark and then defend this trademark against infringements.

In addition to assisting in the creation of a trademark or patent right, an intellectual property lawyer can ensure that the right in question is respected. For example, an intellectual property lawyer will be able to negotiate a license agreement for an intellectual property right, to act in case of infringement and to help a person in the legal sector this copyright, etc.

Finally, an intellectual property lawyer can provide advice and guidance to clients on how best to protect their intellectual property assets. They can help clients to understand the various aspects of intellectual property law and provide advice on how to best protect their ideas, designs and inventions from theft or misuse.

Written by Dreyfus06/03/2023

Intellectual property (IP) lawyers and attorneys provide a variety of services to help protect a company’s or individual’s creations and inventions from being copied or misused. IP lawyers and attorneys specialize in the legal protection of copyrights, trademarks, patents, and trade secrets. These four areas of IP law are the main focus of IP attorneys, but they can also provide other services related to IP rights, such as drafting licensing agreements, infringement actions and litigation strategy.

When it comes to copyright protection, IP lawyers and attorneys assist their clients in drafting and negotiating copyright agreements, such as transfer and license agreements. In addition, they can help prevent and protect their clients from potential copyright infringement.

When it comes to trademarks, IP lawyers and attorneys can help their clients register their trademarks in France and in the European Union with the EUIPO. They can also assist their clients who would like to register their trademarks internationally and specifically, in the United States, thanks to their partnerships with other firms. Moreover, they can also advise their clients on how to protect their trademarks against infringement and how to enforce their rights against those who infringe their trademarks.

Furthermore, patents are another area in which IP lawyers and attorneys specialize. An IP attorney can assist a client in filing and prosecuting a patent application. They can also help with patent infringement and licensing disputes.

Finally, IP lawyers and attorneys can help clients protect their trade secrets. They can advise clients on how to protect their trade secrets, such as implementing confidentiality agreements, patents, and non-disclosure agreements. Additionally, they can help clients enforce their trade secrets against those who attempt to use or disclose them without authorization.

In addition to the above services, IP lawyers and attorneys also provide other services related to IP law. These services can include conducting IP audits to identify potential IP issues, providing IP licensing advice and assistance, filing IP litigation, and providing IP training.

In conclusion, IP lawyers and attorneys can be valuable assets to businesses and individuals who wish to protect their intellectual property. As mentioned above, an IP attorney can provide a multitude of services to help protect copyrights, trademarks, patents and trade secrets. Attorneys and lawyers can be involved at the outset of a client’s project, but also throughout the project’s life and in the event of litigation.

Written by Dreyfus03/03/2023

An intellectual property attorney is a lawyer specialized in intellectual property law, who has a mission to support the protection of intellectual creations. Intellectual property law includes industrial property such as patents, trademarks and designs, as well as literary and artistic property. Intellectual property lawyers have a unique set of skills and knowledge related to filing, drafting contracts, as well as litigation related to intellectual property rights.

The purpose of an intellectual property lawyer is to assist individuals and businesses in protecting their intellectual property rights. This includes providing legal advice and representation to clients involved in the development, protection and enforcement of their intellectual property rights, primarily in the areas of patent, trademark, design and copyright.

Patents: A patent is a government grant that gives the owner exclusive rights to make and sell his invention. To obtain a patent, you must file a patent application with the national or regional Intellectual Property Office and meet the criteria for patentability including novelty, inventive step and industrial application. An intellectual property lawyer can assist in the patent application process, as well as in the application of a patent.

Trademarks: A trademark is a sign that distinguishes the products or services of a company from those of its competitors. The trademark can be a word, a name, a logo, etc. or a combination of these elements. Being one of the industrial property rights, it is necessary for the owner to file the trademark application with the coorect office. In order to be registered, the trademark must also meet certain criteria, including availability, distinctiveness and lawfulness. Trademarks have a central place in the work of intellectual property attorneys because they are important assets and the capital of companies.

Designs: Intellectual property lawyers also assist clients with the protection of designs. They protect the appearance of a product or part of a product characterized by lines, contours, colors, etc.

Copyright: Copyright is the legal protection of an original work expressed in tangible form. Copyright protects not only literary works, but also musical, graphic, and sound creations, as well as software and applied art. Although copyright is automatically protected without procedures, it is recommended to file the application for registration. An intellectual property lawyer can assist in the registration and enforcement of a copyright.

An intellectual property lawyer is an important asset for individuals and companies seeking to protect their intellectual property. The role of intellectual property lawyers contributes significantly to the development of technology as well as the economy.

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 Dreyfus25/01/2023

eSports viewers may reach 29.6 million per month by the end of 2022, beginning of 2023, according to Insider Intelligence.

The eSports ecosystem may surpass $1 billion in revenue this year. NewZoo the leading resource for analytics and market research, projects a potential revenue to hit $1.8 billion.

eSports is most certainly a new industry with projected high value and the intellectual property rights of eSports needs to be protected adequately.

So, what are eSports?

As defined by the website dictionary.com, eSports refers to competitive tournaments of videogames, especially among professional gamers. This covers all videogames, including virtual simulators of traditional sports and their tournaments.

Protecting the brand for eSport tournaments

The eSport tournament is a sports competition but it is also an entertainment as well. Therefore, it is recommended to secure trademark rights targeting both “sports activities” and “entertainment” in class 41 (although the links between sports and eSports are somewhat controversial, it is recommended to aim at a larger scope of services). Services, which are more specifically related to competitions, must also be designated such as “organisation of competitions” or “organisation of games and competitions, using the Internet”.

If the company organising the competition, where in some cases, may be the Game Publisher, also offers promotional products for sale, the trademark must be protected in the corresponding classes. For example: class 25 for clothing, class 9 for NFT collectibles, class 16 for posters.

This is essential, especially if licences are subsequently granted to certain partners. The “Advertising” in class 35 may be referred to if the organiser offers advertising services for the benefit of sponsors during tournaments.

Protection must be considered for the verbal element to be protected and for the logo that will be used. In respect to this point, it is necessary to ensure the transfer of the copyright in regard to the visual is obtained, especially if it is realised by a third party or an employee.

Exploitation of a tournament: What happens with the copyright licences?

A traditional sporting event, such as a football match, cannot be protected by copyright as an intellectual creation or work. (See Football Association Premier League v QC Leisure and Karen Murphy v Media Protection Services Limited C-403/08 and C-429/08).

In comparison, according to the Court of Justice of the European Union (CJEU), the “video games […] cannot be regarded simply as computer programs but complex multimedia works expressing conceptually autonomous narrative and graphic creations. Such games must therefore be regarded as intellectual works protected by copyright” (see Nintendo Co. Ltd, Nintendo of America Inc., Nintendo of Europe GmbH v. PC Box Srl, 9Net Srl Decision No. C-355/12).

In retrospect, there is no owner of a traditional sport. However, with videogames, the Game Publisher may have property rights to the game or its elements including source codes, characters, music, landscape, etc. These are all protected through copyright, providing that they are actually original.

In the decision of the French Court of Cassation dated 25 June 2009, the judge found that a video game is a complex work requiring the application of a distributive regime. It should include the regimes of software, audio-visual work, as well as the musical work, and other specific elements.

The Publisher acquires the different rights for distribution and commercial exploitation purposes. The exploitation may be done in the form of video game sales, tournaments, or sales of licenses to “players” for non-commercial use.

It is important to note that the organizers of eSports events will be required to obtain the necessary user rights to make the videogames publicly available at tournaments or through other distribution channels, such as online streaming services (eg. Twitch or Youtube).

In the ecosystem of eSports, competitions are filmed and broadcast on social networks and on video.

Earlier, in 2022, Goldman Sachs predicted that for eSports, revenue streams for media rights and sponsorship could amount to 40% and 35% respectively. To date, however, there has not been an applicable regime associated to eSports in respect of broadcasting rights, sponsorship and gamers’ Intellectual Property rights under French jurisdiction. Therefore, concerned Actors would be well advised to integrate these revenue numbers into their operating strategy.

Most recently, the French Ministry of Culture has proposed a new law No. 2021-1382 dated 25 October 2021 seeking to find a comprehensive solution for videogames whereby the legislator has given the Chairman of the National Gaming Authority the power to block injunctions after an accelerated judicial procedure on request, against circumvention websites.

It is crucial to have a legal plan to self-protect before organising an eSport competition, interms of trademarks, to be ready to come up against infringements, as well as in terms of copyright, to avoid infringing the publisher’s rights.

As a complex ecosystem, the intellectual property rights to eSports are governed by a web of contractual documents due to the lack of national and international regulations. They are usually drawn up by the Publisher in collaboration with their intellectual property counsels. While a complete specific legal framework is still pending, the rules today are mainly in the hands of the Publisher.

1. The use of designs in the metaverse

Registering the feature of a product is all the more important for some individuals or companies. When an individual or company is granted design protection, it obtains a monopoly on the exploitation of the design.

This is explained in Article 19 of the Council Regulation (EC) on Community designs which concludes “a registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes”.

The EUIPO noted that the term “use” is understood in a broad sense. Therefore, it can include the use of a product on the Internet and thus, in the metaverse. This makes sense since the metaverse is a new “market” for business.

2. The availability of unregistered designs in the metaverse

For a design to be protected, it is essential that it meets the condition of novelty.

Under both European and French law, a design is considered to be new if, at the date of filing of the application for registration or at the date of ownership claimed, no design has been disclosed. According to article 11 (2) of the Council Regulation (EC) on Community designs “a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialized in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality”.

When a luxury house suggests new designs on the metaverse, is it disclosure ?

From a certain perspective, metaverse is a world without any borders where individuals can have access to a bunch of different goods or services.

Consequently, when a company or an individual publishes or exposes a design in the metaverse, the notion of novelty is undermined. So far, there has been no clear answer concerning this question. This question also induces another one: does the uploading of new creations in the metaverse give rise to unregistered design rights in certain territories, such as the United Kingdom?

3. Protection of designs in the virtual world

The last issue raised by the EUIPO concerns the protection of designs in the virtual world.

In fact, one of issues that may be considered is whether products in the metaverse meet the same definition as a product in the real world.

Article 3 of the Council Regulation (EC) on Community designs enounces that a “product means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs”.

A handicraft item is a product made in one-off pieces or in a small series of pieces. It requires the knowledge and skill of one or more craftsmen.

Therefore, some will argue that a product in the metaverse cannot be considered as a handicraft or industrial product.

The EUIPO’s response on this issue does not provide any clear answer due to the lack of case law on the matter. As a matter of fact, it is difficult to say that digital designs are industrial or handicraft items. Nonetheless, the EUIPO accepts digital designs, which are generally classified in class 14-04 of the Locarno classification (such as “icons (for computers)”). Hence, we could completely envision the extension of this class or alternatively, the possibility to add the virtual version of goods in their traditional class (such as class 2 for clothing).

The metaverse is the technology of the moment. However, it raises numerous questions, particularly in relation to designs as to the use of products, their availability and protection within the metaverse. Although the EUIPO gave us some answers as to the use of a product within the metaverse, most of the answers will come with case law.

SEE ALSO …

♦ https://www.dreyfus.fr/en/2022/03/11/metaverse-is-it-necessary-to-register-specific-trademarks-for-protection/

Written by Dreyfus04/08/2022

veille (WIPO, Arbitration and Mediation Center, Case No. D2022-0770, 11 May 2022, BH Vigny, BH Hotels, BH Balzac v. Paulo Ferreira, MBI Holdings)

In the decision held on May 11th, 2022, companies BH Vigny, BH Hotels, BH Balzac, all belonging to the same group, saw their UDRP complaint get rejected for lack of precision on an ongoing legal procedure.

The dispute involved five different domain names, namely <amarantebeaumanoir.com>, <amarantecannes.com>, <amarantechampselysees.com>, <hotelbalzac.com> and <hoteldevigny.com>, each of which referred to a French luxury hotel. The domain names were registered by Respondent, MBI Holdings. The evidence in the case shows that the director of MBI Holdings was also the director of two other entities: JJW Luxury Hotels and Amarante.

The domain names were registered while JJW Luxury Hotels and Amarante still owned the hotels in question. JJW Luxury Hotels owned the Hotel Balzac and the Hotel de Vigny, while Amarante managed the Amarante Champs-Elysées, Amarante Beau Manoir and Amarante Cannes.

The case is complex as it takes place in the context of a takeover between JJW Luxury Hotels and Amarante and Complainants. Several hotels in France had been acquired by the Complainants, including the above-mentioned hotels. Shortly before the UDRP complaint was filed, the three Complainants, members of the same group, had initiated not only a business transfer agreement, but also a trademark assignment agreement with the Respondent. According to the Complainants, the effect of this agreement was to grant full ownership of the trademarks and domain names associated with the aforementioned hotels.

However, Respondent argued that, contrary to the Complainants’ assertion, the transfer of the businesses and associated trademarks had not yet become permanent. In fact, a dispute was pending before the French court. Similarly, it appeared that certain contractual provisions provided for the retention of certain company funds in an escrow account. These provisions therefore suggested that the transfer of assets were not complete, final or irreversible.

Paragraph 4(a) of the UDRP requires three elements to be met in order to claim the transfer of a disputed domain name: similarity of the domain name to a prior right of the Complainant, evidence of the absence of a right or legitimate interest of the domain name’s current holder, and evidence of bad faith registration and use of the domain name by the current holder.

The first element is in default, according to the Expert, who however moderates his statement. The question of ownership of rights is raised, as the Respondent claims that the rights to trademarks and domain names have not yet been validly transferred. The Expert asserts that the evidence provided by the Complainants is not sufficient in order to determine whether the transfer of ownership is actually effective. In fact, Complainants did not provide any information on the ongoing legal proceedings, nor did he mention them in his complaint.

Understandably, the second requirement of paragraph 4(a) is not specifically discussed by the Expert, as it is essentially linked to the first. If Complainants are not able to demonstrate that the transfer of rights has taken place, they cannot prove that the Respondent, who previously held the rights, no longer does so.

Finally, the third requirement also poses a challenge for the Expert. In light of the context, it seems unlikely that the domain names were registered in bad faith, as the Respondent appeared to demonstrate a legitimate registration and use of the five domain names. Again, the lack of evidence does not allow the Panel to conclude that the bad faith test is met.

In summary, the texts are applied strictly and it is quite easy to understand the Expert’s position in this case. The solution could undoubtedly have been quite different if Complainants had communicated about the ongoing legal proceedings and submitted evidence that would have demonstrated the Respondent’s bad faith. According to the Expert, this case is not a classic case of cybersquatting, but rather a concurrent dispute to legal proceedings already underway.

Written by Dreyfus02/08/2022

Social media platforms allow their users to create unique usernames which become part of their virtual identity, allowing them to share content and network with other platform users. These accounts become an integral part of our virtual life so many would say they are, in fact, one’s intangible property.

A. Can we know for sure who has right to ownership?

There are different types of social media accounts – personal and business – and although, in most cases they are easily distinguishable, sometimes the lines are blurred especially when employees of companies take on marketing roles.

Personal accounts are straightforward, as long as you read the fine print. You go on vacation, snap a photo and update your status on how your well-deserved vacation is going by uploading it to Instagram or Facebook, a platform you may use to connect with your friends and family. You are the only one who has access to your unique log in details such as username and password, hence a private account.

‘Business’ accounts run by a company’s employees are more complicated, regarding ownership and access to, what would otherwise be, private information. So, who owns business social media accounts accessed and controlled by employees? There are various factors which contribute to making that decision. Ideally, you want to ensure that other platform users recognise the username and associate it with the business, not the employee, like a trademark. The subject of content is still a grey area – is it the intellectual property of the employee or the company itself?

B. The hardships of distinguishing ownership in Hayley Paige v JLM Couture

The former question was the focal topic of discussion in the U.S. case of Hayley Paige Gutman v JLM Couture, where the parties disputed ownership rights of the hybrid Instagram account. Referring to the account as ‘hybrid’ due to the nature of the arguments presented by the parties.

This case was filed as a result of an alleged misuse of the account after Gutman advertised third party products without the approval of her employer, JLM Couture. The defendant, Gutman, argued that due to the style of the posts on her Instagram handle @misshayleypaige, the account was of a private and personal nature, created in personal capacity, even though she has used the account to promote her bridal collection designed for her parent company, JLM Couture.

The appellant, JLM Couture, counter proposed the account being a business account due to the significant percentage (95%) of the content consisting of marketing for the brand, Hayley Paige. The decision favoured the arguments of JLM Couture, stating that Gutman was under a contractual obligation to give her employer access to the account in question since she has signed a contract allowing the company to reserve the right of ownership over any marketing platform and contents published under the name of Hayley Paige or any derivative thereof in relation to her branding. Eventually, multiple negotiations and a restraining order (against Gutman) later, it was agreed that Gutman’s social media account was primarily used for marketing purposes, regardless of the odd personal content here and there, and JLM Couture had the contractual right to access it.

The economic value of a business social media account is often greater than a personal one, especially those which have a large following. Companies rely on these social media platform followings to grow the image and reputation of their establishment. Often, when there are blurred lines regarding the ownership of social media accounts, employees can easily damage a company’s imagine. For instance, in the case of PhoneDog v Kravitz, after the termination of Kravitz’s employment, he used the Twitter account originally created to advertise the services of PhoneDog during his employment, to advertise the services of its competitor. The appellant sued for misappropriation of the account and disclosure of trade secrets. The parties settled and Kravitz continued to use the Twitter account, but the appellant endured financial loss and, without a doubt, a loss of clientele.

A business’ right to ownership of social media accounts used for marketing purposes should be made clear, not only to avoid legal disputes such as those mentioned above but also to protect the integrity and image of the company. Employment contracts should contain social media clauses stating that any content produced and published on the social media account under the management of the business belongs exclusively to the business. So, a business social media account constitutes virtual property so why should you risk losing it?

Who really owns a social media account?

The user is the account holder, but the platform retains ownership of the infrastructure. The terms of use generally state that access can be restricted or removed at any time.
➡ A social media account is an intangible asset, governed by contractual terms.

Can a social media account be transferred or sold?

In principle, selling or transferring a personal account is prohibited by most platforms’ terms. However, in a professional context (influencer, brand), monetization or transfer may be allowed under contractual arrangements.

What happens if there is a dispute over a social media account?

In the event of a dispute (employer/employee, co-founders, heirs), courts analyze management, usage history, and intent to determine ownership. Including specific clauses in contracts or policies is strongly advised.

Written by Dreyfus04/04/2022

On November 2, 2020 Louis Vuitton Malletier filed an opposition against the application for registration of the figurative mark “LOVES VITTORIO” designating the same goods in classes 25 and 26, on the basis of Article 8(1)(b) of the European Union Trade Mark Regulation (EUTR). The Office rejected the opposition on the grounds that the similarity between the earlier sign and the contested sign was slight, and thus not sufficient enough to create a likelihood of confusion on the part of consumers with an average level of attention. The opponent invoked article 8, paragraph 5, of the EUTR concerning the reputation of the trademark. However, due to a lack of evidence the judges rejected the complaint without examination of its merits.

1. Assessment of the likelihood of confusion in light of the overall impression given by the signs

Since the “SABEL BV v. Puma AG” judgment handed down on November 11, 1997 by the Court of Justice of the European Communities, a new approach to the assessment of the similarity between two signs has been put forward. This approach is more global, notably by studying the three following criteria: visual aspect, aural aspect and conceptual aspect. As a result, the Office conducts a step-by-step analysis of these criteria between the earlier mark and the application for registration of the contested mark.

First of all, on the visual aspect, the Office found a very low degree of similarity insofar as the two signs “have in common only the letter L” and “partially coincide in the stylization of the two letters”. In addition, although the stylization and colours used in the two signs are the same, consumers will perceive these elements as being merely decorative. The judges especially note a difference between the two signs by the addition of the words “LOVES” and “VITTORIO” and the letter “N” in the contested sign.

Likewise, in terms of aural similarity, the judges found only a slight degree of similarity in the pronunciation of the letter “L”. Finally, the Office stated that the two signs are conceptually different.

Thus, the Office concludes that the few similarities between the two signs are not sufficient to cause a likelihood of confusion for the consumer with an average level of attention and that they will distinguish the origin and the source of each sign. Moreover, the relevant public will perceive the sign as a whole, in particular by the addition of the terms “LOVES” and “VITTORIO” as well as the letters “L” and “N”, and will not limit itself to the same stylisation.

However, it must be noted that there is a visual similarity that could lead the relevant public not to perceive the difference between the letters “LV” and “LN” in a clear and precise manner, especially since the added term is “VITTORIO”.

Moreover, in view of the identical goods covered by the two signs, it seems somewhat surprising that the judges did not take this into account, given that according to the “Canon Kabushiki Kaisha and Metro-Goldwyn-Mayer Inc.” judgment handed down on September 29, 1998 by the Court of Justice of the European Communities, a low degree of similarity between the signs can be compensated by a high degree of similarity between the designated goods or services.

2. The unfortunate exclusion of the reputation of the earlier mark

At first glance, this decision may seem surprising in the sense that the earlier mark “LV” is a mark that supposedly enjoys a strong reputation.

Indeed, this reputation could probably have led the judges to grant the opposition request to the application for the registration of the contested mark, if the latter ” unduly [took] advantage of the distinctive character”; “or the reputation of the earlier mark”; “or [was] detrimental to them”.

However, this exclusion of the reputation of the mark is fully justified insofar as the Office renders its decision by limiting itself to the evidence and arguments provided by the opponent. However, the opponent did not provide evidence of the mark’s reputation, in accordance with Article 7(2)(f) of the European Trade Mark Delegated Regulation

It is therefore essential before the filing of any opposition to analyse the similarity between the signs and the goods and services between your trademark and the disputed trademark application, and particularly to provide all relevant evidence demonstrating the intensive use of the trademark or its reputation.

This decision highlights the importance of the evidence provided during a procedure relating to the relative grounds for refusal of registration of a trademark application, evidence that could undoubtedly have allowed a different turn of events.

Non classé

How Much Does an Intellectual Property Attorney Cost in the EU?

Does an IP lawyer need to be licensed to practice in the EU?

What are the services provided by an intellectual property attorney?

What services does an intellectual property attorney provide?

What is an intellectual property attorney?

eSports: Reflective Points to Consider in Regard to Intellectual Property

SEE ALSO…

What are the design issues in the metaverse ?

1. The use of designs in the metaverse

2. The availability of unregistered designs in the metaverse

3. Protection of designs in the virtual world

SEE ALSO …

No cybersquatting in the event of uncertainty regarding the transfer of a trademark

Social Media Accounts are property, but who has right to ownership?

Who really owns a social media account?

Can a social media account be transferred or sold?

What happens if there is a dispute over a social media account?

How could Louis Vuitton, a well-known brand, fail to prevent the registration of a competing trademark?

1. Assessment of the likelihood of confusion in light of the overall impression given by the signs

2. The unfortunate exclusion of the reputation of the earlier mark

See also…

Sign up for our newsletter and stay informed about the latest developments in intellectual property and the digital economy!

News from Dreyfus Blog

Categories

Categories

Contact