Trademark Archives

What does the 2026 China trademark law Update mean for trademark Owners?

Written by Nathalie Dreyfus27/07/2026

Introduction

China adopted a substantially revised Trademark Law in June 2026. The new legislation, comprising 87 articles, is expected to enter into force on 1 January 2027. It addresses malicious filings, trademark hoarding, deceptive signs, excessive enforcement practices and misconduct by trademark agencies.

Filing activity must reflect a legitimate business rationale

Chinese authorities are seeking to distinguish commercially justified filings from speculative accumulation. Bad faith may be inferred from repeated imitation of third-party signs, large numbers of unexplained applications, appropriation of public resources, infringement of prior rights or systematic squatting.

A company should therefore no longer file extensive lists of marks and goods without being able to justify their utility. We recommend documenting the following at the time of filing:

the intended use of each mark;
the relationship between the specification and the planned activity;
how the sign was selected;
which clearance searches were performed;
whether distributors, manufacturers or local partners had prior access to the brand.

These records may become important where an application pattern is challenged as excessive or inconsistent with genuine commercial needs.

Brand owners must supervise enforcement agents

Recent case law also demonstrates that enforcement cannot be outsourced without governance. In a Shanghai case, a trademark owner had issued blank authorizations to an agency and law firm that brought repetitive, profit-driven claims. The owner was held jointly liable because it had failed to exercise reasonable care.

Representatives should identify the relevant infringements, permitted measures, settlement authority, reporting obligations and internal approval thresholds. A brand protection program should remain targeted, documented and proportionate.

A rigorous assessment of a trademark’s validity by the courts

Chinese case law takes a more stringent, but also more fact-based, approach to absolute grounds for refusal.

First of all, deceptive trademarks require an objective misleading effect. Article 10 prohibits signs capable of misleading the public as to the quality, origin or characteristics of goods. However, an assumed association or promotional suggestion does not necessarily establish deception.

MAMBA FOREVER, filed for computer game software, was accepted after the CNIPA refusal was overturned. Although “Mamba” was associated with Kobe Bryant, the expression did not misdescribe an inherent characteristic of the software or objectively mislead purchasers.

Similarly, promotional wording included in a mark for baby nappies was accepted because it remained within ordinary consumer expectations.

The outcome was different for a tea mark combining “1837”, prestige-related French expressions and “THE FINEST TEAS OF THE WORLD”. The sign conveyed potentially inaccurate claims regarding history and exceptional quality. Continued use later resulted in an administrative fine of RMB 400,000, illustrating that an absolute-ground objection may create a use-related compliance risk rather than merely prevent registration.

Second of all, contemporary public perception is increasingly important. A linguistically neutral term may acquire an unlawful or damaging market meaning. The Chinese term BIQUGE had become associated in the online literature sector with piracy-based reading platforms. Its registration was invalidated because that established meaning adversely affected copyright administration and public interests.

Clearance work should therefore cover platform terminology, sector-specific slang, social-media usage and meanings that may have developed after filing.

Penalties for bad faith and trademark squatting

Combating trademark brandjacking in China remains a priority, but the courts are now seeking to ensure that this policy does not penalize bona fide trademark owners.

Knowledge of a trademark acquired through a relationship with a distributor may constitute bad faith. Subsequent commercial use, even if prolonged, does not necessarily validate a fraudulent registration. However, when a trademark initially registered in bad faith is subsequently repurchased by its true owner, some rulings refuse to hold the owner liable for the consequences of the original fraud.

One particularly significant ruling ordered the fraudulent applicant to withdraw its pending applications and have its registrations canceled. This civil injunction could reduce trademark owners’ reliance on a series of administrative opposition, invalidation, and appeal proceedings.

New forms of counterfeiting to anticipate

Virtual and physical goods may be considered related. In the G. Patton case, a car trademark was used on virtual vehicle skins in a video game. The court considered that the absence of a physical product did not automatically exclude similarity. The commercial relationship between the goods and the likelihood that consumers would assume a common source remained decisive.

Businesses in the automotive, fashion, sports, entertainment and luxury sectors should review their protection for virtual objects, gaming content, avatars and immersive environments.

Classification does not override marketplace reality. In the Jinwei dispute, an alcoholic beverage was compared with a well-known non-alcoholic drink. Despite their classification differences, the court examined packaging, sales channels and target consumers and found a significant likelihood of confusion.

Watching only identical goods within the same class will therefore fail to identify material commercial risks.

Upcycling may fall outside trademark exhaustion. A company transformed second-hand luxury bags into new products while retaining visible monograms. The court held that exhaustion did not apply after substantial alteration. Recycling does not authorise a trader to make a third party’s famous mark the central selling point of a materially different product, particularly without a prominent disclaimer.

The effective remedies in China

A coordinated Chinese enforcement strategy may combine:

trademark infringement claims;
unfair competition proceedings involving imitations of product presentation, trade names, and parasitic conduct;
copyright or design rights for certain graphic elements;
Criminal proceedings in cases of organized counterfeiting
Customs measures and local administrative actions

Courts are showing greater willingness to award punitive damages where infringement is intentional and serious.

Criminal protection has also expanded. The 2025 judicial interpretation issued by the Supreme People’s Court and Supreme People’s Procuratorate clarified the handling of criminal intellectual property cases, including the protection of service marks.

Conclusion

Recent developments in trademark law in China confirm four key trends: stricter regulations on trademark applications, a practical assessment of the market, a diversification of legal remedies, and more deterrent penalties. A regular audit of the Chinese trademark portfolio should therefore cover registered trademarks, pending applications, Chinese translations, digital assets, local partners, and evidence of use.

Dreyfus Law Firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Should a Chinese-language version of the trademark be filed?

This is strongly recommended where consumers, distributors or the media use a transliteration or translation of the mark. Otherwise, a third party could appropriate the name used locally.

How can a trademark filed in bad faith be cancelled?

The rights holder may consider opposition proceedings, invalidation proceedings, an action based on prior rights or, depending on the circumstances, a civil action for unfair competition. Evidence of prior dealings and the applicant’s knowledge of the mark will be decisive.

Can a registered trademark be cancelled if it is not used?

Yes. A trademark may be subject to cancellation where it has not been used for three consecutive years without a legitimate reason. The owner must then be able to provide dated and geographically relevant evidence of use directly linked to the goods or services covered.

Which documents should be retained to prove use of a trademark in China?

It is advisable to retain invoices, distribution agreements, customs documents, catalogues, advertisements, screenshots from online sales platforms and photographs of packaging. These materials should show the trademark, the goods concerned, the dates of use and, where possible, the Chinese territory.

Can a company take action against the use of its trademark in a Chinese company name?

Yes. The incorporation of an earlier trademark into a company or trade name may be challenged where it creates a likelihood of confusion or reveals an intention to benefit from the reputation of the rights holder. An unfair competition action may supplement remedies based on trademark law.

This publication is intended for general public guidance and to highest issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Written by Nathalie Dreyfus22/07/2026

Introduction

Trademarks are no longer limited to names or logos. Companies now increasingly seek to protect more innovative elements of their brand identity, such as sounds, colours, animations, shapes, distinctive patterns or even audiovisual sequences. These signs, commonly referred to as non-traditional trademarks, play an increasingly important role in branding strategies, particularly in the luxury, technology and digital sectors.

Although French law now allows such signs to be protected, their registration remains subject to strict conditions, especially in terms of distinctiveness. Recent French and European case law shows that protecting non-traditional trademarks requires a particularly rigorous legal strategy.

Why have non-traditional trademarks become strategic?

Trademark protection is no longer confined to names or logos. In sectors such as luxury goods, fashion, cosmetics, digital services and entertainment, companies are increasingly seeking to protect sensory or visual elements capable of immediately identifying their products or services: a jingle, a colour, an animation, a packaging shape, a pattern or an audiovisual sequence.

The French legal framework applicable to non-traditional trademarks

This development has led French law to progressively recognise non-traditional trademarks, in particular following the reform resulting from Directive (EU) 2015/2436, transposed into French law by the PACTE Law of May 22, 2019.

Article L.711-1 of the French Intellectual Property Code no longer requires a sign to be represented graphically: it is sufficient for the sign to be represented in the register in a manner that is clear and precise. This reform has made it possible to register sound trademarks, motion trademarks, multimedia trademarks and holograms through new accepted formats.

However, this broader approach does not mean that any original sign can automatically be protected. French and European courts remain particularly demanding when assessing the distinctive character of such trademarks.

French law adopts a broad definition of a trademark. Article L.711-1 of the French Intellectual Property Code allows the protection of any sign capable of distinguishing the goods or services of one undertaking from those of its competitors.

The main categories of non-traditional trademarks include:

sound trademarks;
colour trademarks;
three-dimensional trademarks;
position trademarks;
pattern trademarks;
motion trademarks;
multimedia trademarks;
holograms.

The main difficulty lies in public perception. Unlike a traditional word trademark, consumers do not spontaneously perceive a colour, a shape or a sound as an indication of commercial origin.

Trademark offices and courts therefore apply particularly strict scrutiny in order to avoid allowing one economic operator to monopolise elements that are necessary for competition or merely decorative.

Sound trademarks: accepted protection, but subject to strict requirements

Sound trademarks have grown significantly with the development of digital platforms, voice assistants, and mobile applications. Today, a strong sonic identity can be just as recognizable as a logo.

Applications are generally filed in the form of an MP3 file. However, not all sounds are eligible for trademark protection. A sound or sequence of sounds that is too short, commonplace, or functional cannot be registered as a trademark.

This was illustrated in the Ardagh Metal Beverage case of July 7, 2021, concerning an application to register a combination of sounds produced when opening a can of carbonated beverage (General Court of the European Union, July 7, 2021, Case T-668/19). In that case, the Court refused registration of a sound consisting of the opening of a can followed by a fizzing sound. It found that consumers would perceive the sound as a functional noise inherent to the product itself, rather than as a trademark.

This decision highlights a fundamental principle: a sound must be perceived as an indication of commercial origin, rather than as a merely technical or customary feature.

By contrast, original jingles or sonic signatures that are used consistently may benefit from effective trademark protection.

Colour trademarks: particularly restricted protection

Colour trademarks are among the most difficult categories of trademarks to protect. Courts generally consider that colours should remain available for use by competitors.

The litigation concerning Christian Louboutin’s application for a semi-figurative trademark representing a red shoe sole is one of the most emblematic examples.

Initially, the Paris Court of Appeal and subsequently the French Supreme Court (Cour de cassation, Commercial Chamber, 30 May 2012, No. 11-20.724) invalidated the trademark on the ground that its representation lacked sufficient precision. Following a new application identifying a specific Pantone shade and clearly defining the position of the colour on the shoe, the courts ultimately recognised the validity of the trademark.

This case shows that a colour may be protected where it is:

precisely defined;
applied consistently; and
perceived by the relevant public as a commercial signature.

Case law also confirms that a colour trademark may lose its distinctive character. In the “Pink Pantone 212” case (Cour de cassation, Commercial Chamber, 10 July 2007, No. 06-15.593), the French Supreme Court revoked the trademark on the ground that the colour had become commonplace in the dairy sector.

Three-dimensional trademarks: the difficulty of protecting a shape

Three-dimensional trademarks protect the shape of a product or its packaging. They are frequently used for perfume bottles, beverage bottles, cosmetic containers and certain food packaging.

However, courts generally consider that consumers perceive a shape as the product itself, rather than as a trademark. The shape must therefore depart significantly from the norms and customs of the sector.

The Guerlain case perfectly illustrates this requirement. In its judgment of July 14, 2021, the General Court of the European Union upheld the protection of Guerlain’s famous lipstick shape, due to its particularly unusual and immediately memorable appearance (General Court, July 14, 2021, Guerlain v EUIPO, T-488/20).

By contrast, shapes dictated by a technical function remain excluded from trademark protection under Article L.711-2 of the French Intellectual Property Code. Even strong reputation cannot overcome this prohibition.

Position, pattern and multimedia trademarks

Position trademarks protect the specific placement of a sign on a product. They are particularly used in the luxury and fashion sectors.

The Louboutin case demonstrates that the validity of such a trademark largely depends on the precision of the filing and the consistency of commercial use.

Pattern trademarks raise similar issues. Courts seek to determine whether the pattern is perceived as a genuine commercial signature or as a mere decorative element.

In the decision regarding the trademark registration for the Burberry tartan, the Paris Court of Appeal recognised the distinctiveness of the pattern due to its specific geometric arrangement (CA Paris, October 26, 2011, n°09/24801). However, the court strictly limited the scope of the monopoly in order to avoid excessive appropriation of checked patterns.

Multimedia and motion trademarks are also growing rapidly with the development of digital interfaces, streaming platforms and audiovisual content. Such signs may now be protected, provided that the animation or audiovisual sequence is perceived as an indicator of commercial origin.

The difficulties of protecting and enforcing non-traditional trademarks

Despite recent developments in European law, olfactory trademarks remain practically impossible to register.

In the Sieckmann decision (Court of Justice of the European Union, December 12, 2002, Case C-273/00), the Court held that a scent could not be represented with sufficient clarity and precision by means of a chemical formula, a written description, or a physical sample.

This position was confirmed in the “ripe strawberry scent” case (General Court of the European Union, October 27, 2005, Case T-305/04), in which the judges considered that olfactory perception remains fundamentally subjective.

In practice, companies therefore tend to rely on other protection mechanisms, such as:

trade secrets;
unfair competition;
copyright;
contractual strategies.

How to effectively secure rights in non-traditional trademarks

The protection of non-traditional trademarks requires a comprehensive approach combining intellectual property, marketing strategy and litigation anticipation.

Before filing, it is essential to carry out in-depth searches in the INPI, EUIPO and WIPO databases in order to identify any prior rights.

Companies should also prepare evidence of acquired distinctiveness at an early stage, including:

advertising investments;
marketing campaigns;
consumer studies;
surveys;
sales figures;
evidence of intensive use.

In practice, an effective strategy rarely relies on a single trademark. Companies generally combine several complementary tools: word trademarks, designs, copyright, unfair competition and parasitism claims.

Conclusion

The protection of non-traditional trademarks in France is now a major strategic tool for companies seeking to strengthen their brand identity. However, French and European case law shows that these signs remain subject to particularly strict scrutiny, especially regarding distinctiveness.

The Louboutin, Guerlain and Burberry cases show that courts systematically seek to strike a balance between protecting marketing innovation and preserving freedom of competition.

An effective strategy therefore requires a rigorous approach, combining precision in the filing, consistency of use, evidence of distinctiveness and coordination with other intellectual property rights.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Is the purchase or assignment of a non-traditional trademark subject to specific rules?

Unlike a word trademark, the assignment of a non-traditional trademark, such as a colour, shape or sound, must be accompanied by strict continuity in the conditions of use that enabled the sign to acquire distinctiveness. A substantial change in use by the new owner may weaken the validity of the sign or even expose the trademark to revocation proceedings.

How long does the registration procedure for a non-traditional trademark take?

It is generally longer than a standard trademark filing, as the examination of distinctiveness is more thorough. The procedure may take several months, or even more than a year in the event of objections from the office or opposition proceedings.

What is the cost of filing a non-traditional trademark in France?

The cost varies depending on the type of sign and the complexity of the matter, particularly where evidence of distinctiveness must be prepared. Overall, official filing fees remain comparable to standard trademark filings, although additional costs may arise in the event of examination objections or disputes.

Can a non-traditional trademark lose its protection after registration?

Yes. Like any trademark, a non-traditional trademark may be subject to revocation, in particular for non-use during a continuous period of five years or for becoming generic where the sign becomes the usual name of the product.

Can a company oppose the registration of a non-traditional trademark considered too close to its own?

Yes. Any company holding an earlier right may file an opposition if it considers that the filed sign infringes its rights.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific situations or to constitute legal advice.

Written by Nathalie Dreyfus10/07/2026

INTRODUCTION

EU Trademarks is entering a more demanding phase. With the 2026 edition of the EUIPO Guidelines entering into force on 1 July 2026, businesses can no longer rely on broad, generic or strategically vague wording when protecting brands in the European Union. The message is clear: precision, evidence and consistency are becoming central to EU trade mark strategy. The EUIPO Guidelines are not legislation, but they are the Office’s main practical reference for users, examiners and professional representatives, and they reflect the Office’s current examination practice.

The 2026 EUIPO Guidelines affects how businesses should define, file, defend and enforce EU trade marks.

AI, virtual goods and Web3: broader terms are no longer enough

The EUIPO’s current practice confirms that virtual goods must be specified with clarity and precision. The term “virtual goods” alone is not accepted unless the type of virtual goods is identified, for example “virtual goods, namely virtual clothing.”

This approach is particularly important for businesses active in AI, SaaS, Blockchain, digital assets, gaming, virtual marketplaces and Web3 environments. A filing for “AI software” or “virtual goods” may appear commercially flexible, but it is legally fragile. The EUIPO expects the applicant to describe the function or category of the product or service. A stronger specification would identify the operational use of the technology: “AI-based software for medical image analysis,” “downloadable virtual cosmetics for use in online virtual environments,” or “software for authentication of digital assets using blockchain technology.”

The same logic applies to the comparison of goods and services. The EUIPO Guidelines state that virtual goods are digital content and are generally classified in Class 9, rather than in the class of the corresponding physical goods. The Office also recognises that real-world goods and their virtual equivalents may be perceived similarly in certain circumstances, but the assessment remains case-by-case.

Slogans: distinctiveness must be demonstrable

Advertising slogans remain registrable as EU trade marks, but the decisive issue is whether the slogan functions as a badge of origin rather than as a promotional message. The EUIPO Guidelines recall that slogans should not be subject to stricter criteria than other signs, in line with Court of Justice case law. However, in practice, a slogan made up of ordinary commercial language will be vulnerable where consumers perceive it only as praise, encouragement or a marketing statement.

The new CP17 common practice on the distinctiveness of slogans, adopted in November 2025, forms part of the EU convergence movement on how slogans are assessed.

Businesses should therefore avoid filing slogans in isolation without evidence of brand use, market recognition or a distinctive conceptual element. A slogan such as “Better Future, Better Business” may be too generic for many services. A slogan that contains an unusual structure, paradox, memorable linguistic tension or strong link to a specific brand universe is more likely to survive examination.

Geographical indications: a new risk area for EU trade marks

One of the most significant developments concerns geographical indications, particularly after the creation of an EU-level protection system for craft and industrial products. Regulation (EU) 2023/2411 established protection for geographical indications for craft and industrial products, and from 1 December 2025, producers in and outside the EU can apply for such protection.

This is a major shift. Until recently, geographical indication strategy was mainly associated with agricultural products, wines, spirits and foodstuffs. It now extends to products such as jewellery, textiles, glass, porcelain and furniture.

For trade mark applicants, this creates a new clearance obligation. A sign may be refused not only because it conflicts with an earlier trade mark, but also because it conflicts with a protected geographical indication or evokes a protected origin. The EUIPO Guidelines include specific chapters on trade marks in conflict with geographical indications under Article 7(1)(j) EUTMR and opposition based on geographical indications under Article 8(6) EUTMR.

Practical example: a luxury accessories brand using a regional name to evoke craftsmanship may unintentionally create a risk if that name corresponds to, or strongly recalls, a protected geographical indication. Clearance searches must therefore include trade mark databases, GI registers and sector-specific product terminology.

Opposition, proof of use and bad faith: stronger procedural discipline

The 2026 practice also matters once a litigation begins. In opposition proceedings, proof of use remains a central procedural weapon. EUIPO practice confirms that proof of use must be requested by the applicant and operates as a defence plea in opposition proceedings.

This rule requires a well-thought-out procedural strategy. The initial response to an opposition should not be drafted mechanically. It must allow for an assessment of whether the opponent can actually demonstrate genuine use of its earlier trademark, for the relevant goods and services, in the territory in question, and during the applicable period.

Bad faith is another area of growing importance. The EUIPO Guidelines confirm that bad faith is examined in cancellation proceedings under Article 59(1)(b) EUTMR and is aimed at preventing abusive registrations contrary to honest commercial and business practices.

This is particularly relevant in cases involving defensive filings, repeat filings designed to avoid proof of use, parasitic registrations, trade mark squatting or filings intended to block a competitor rather than identify genuine commercial origin.

EUIPO Boards of Appeal: updated procedural rules

The revised Rules of Procedure of the EUIPO Boards of Appeal do not alter the substantive conditions for trade mark protection, but they have a practical impact on the conduct of appeal proceedings, particularly as regards time limits, suspensions, mediation and costs.

Under the revised rules governing the EUIPO Boards of Appeal, if all prior rights on which an opposition or application for invalidation is based have ceased to exist, the opposition or application for invalidation may be dismissed as unfounded, with consequences regarding costs.

The revised rules also align the practice of the Boards of Appeal with the EUIPO’s first-instance practice for joint requests for extensions and suspensions. Joint requests for extensions may now be granted for a period exceeding six months. The first joint suspension is granted by default for six months, while subsequent requests are granted for 18 months, or for the remaining period up to a maximum of two years per instance, with the possibility of unilateral opt-out.

In practice, these changes underscore the importance of strict management of time limits in appeals. When a time limit is suspended due to mediation, it continues to run once the proceedings resume, without starting over from the beginning. The parties will also need to clearly formalize their agreements on costs, as a simple, unsubstantiated unilateral statement will no longer be sufficient to prevent the Board of Appeal from ruling on costs on its own initiative.

Furthermore, a series of amendments also governs appeals relating to geographical indications protecting craft and industrial products, particularly with regard to procedural, linguistic and representation-related aspects.

What businesses should do

Businesses should adapt their EU trade mark strategy immediately. A robust approach should include:

Precise drafting of goods and services, especially for AI, software, digital assets and virtual environments.
Enhanced clearance searches, including EU trade marks, national marks, company names, domain names and geographical indications.
Evidence planning, including screenshots, dated use, sales figures, advertising materials and consumer-facing brand documentation.
Slogan assessment, focusing on whether the sign truly identifies commercial origin.

Portfolio audits, to detect overly broad, vulnerable or unused registrations. Anticipate oppositions by assessing the actual use of the prior rights asserted.

Conclusion: EU trade mark law in 2026 rewards preparation

The key development in EU trade mark law is the move from broad protection by default to protection based on precision, evidence and legal coherence. Companies filing in the European Union should no longer ask only whether a sign is available; they should ask whether the filing strategy is sufficiently precise to withstand examination, opposition and future enforcement.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

What is the risk of filing for digital activities with traditional wording only?A company that only protects traditional goods or services may find that its registration does not clearly cover new digital uses. This is particularly relevant for virtual goods, online environments, blockchain-related services and AI-based tools.

Can a trade mark strategy now require both physical and virtual protection?Yes. For some sectors, especially fashion, cosmetics, luxury goods, entertainment and retail, it may be useful to protect both physical products and their digital equivalents. However, the wording must be carefully adapted to each category.

Why should geographical indications be checked before filing a trade mark?Because a sign may be refused or challenged if it conflicts with a protected geographical indication. This risk is now broader because EU protection extends to certain craft and industrial products, not only to food, wine or agricultural products.

Why are the new rules on suspension and mediation important?They affect the timing of appeal proceedings. Parties should be careful when requesting suspensions or entering mediation, because the remaining time limits do not restart when proceedings resume. This makes deadline management particularly important.

Why is it important to pay special attention when comparing physical products and virtual goods?

Because virtual goods are not automatically considered similar to their physical equivalents. The analysis will depend, in particular, on the industry in question, market practices, and public perception.

Written by Nathalie Dreyfus23/03/2026

In 2025, the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center recorded a historic high of 6,282 domain name complaints, a 1.8% increase over 2024. Since the creation of the UDRP system in 1999, more than 80,000 disputes have been handled. These figures confirm a reality well known to intellectual property professionals: cybersquatting is not declining—it is growing in sophistication.

In this context, domain name monitoring is no longer optional—it is a fundamental pillar of any trademark protection strategy. Dreyfus & Associates, a firm specializing in intellectual and industrial property, supports companies in implementing effective monitoring systems. Nathalie Dreyfus, a court-appointed expert accredited by the French Supreme Court (Cour de cassation, Trademark specialty) and the Paris Court of Appeal (Trademarks and Designs specialty), leads this expertise for innovative businesses and business law attorneys.

This article explores the challenges of domain name monitoring in 2025, the tools and methods to deploy, and the legal remedies available in case of infringement.

Why has domain name monitoring become essential?

A constantly expanding threat landscape

The number of domain name extensions now exceeds 1,500, including gTLDs (.com, .net, .org), new generic extensions (.shop, .online, .tech, .law), and ccTLDs (.fr, .de, .co.uk). In 2024, ccTLD registrations grew by 3.7 million, a 2.7% increase. Each new extension multiplies the opportunities for abusive registration by cybersquatters.

Cybersquatting involves registering a domain name that reproduces or imitates a trademark with the intent to profit, whether through resale, traffic redirection, or customer diversion. Typosquatting exploits common user typos (for example, “dreyfuss.fr” instead of “dreyfus.fr”) to redirect visitors to fraudulent or competing websites.

Concrete consequences for businesses

The damages extend far beyond trademark image. According to the 2025 joint EUIPO-OECD report, global trade in counterfeit goods amounts to $467 billion, representing 2.3% of worldwide imports. Fraudulent domain names often serve as gateways to these networks: fake e-commerce sites, phishing pages impersonating legitimate brands, and counterfeit resale platforms.

ANSSI (France’s National Cybersecurity Agency), in its 2024 Cyber Threat Overview, reported 4,386 security events handled (+15% compared to 2023) and 5,629 data breaches notified to CNIL (+20%). Phishing through spoofed domain names remains one of the most common attack vectors.

Effective monitoring tools and methods

Automated multi-extension monitoring

Dreyfus & Associates implements continuous monitoring across all domain name extensions to detect any attempt at abusive registration. This monitoring relies on detection algorithms that analyze phonetic variations, intentional misspellings, and suspicious combinations incorporating the trademark name.

The advantages of this automated approach are twofold: it covers a volume of data impossible to process manually, and it enables a rapid response, often within 24 to 48 hours of a suspicious registration.

Detecting online trademark infringement

Beyond domain names, online trademark protection includes detecting abusive use on social media, marketplaces (Amazon, Alibaba, eBay), and search engines (ads misusing a brand). WIPO data shows that 95% of UDRP decisions result in the transfer of the domain name to the legitimate trademark holder, demonstrating the system’s effectiveness when monitoring enables timely action.

Integration with the overall trademark strategy

Domain name monitoring does not operate in isolation. It is part of a coherent approach to trademark portfolio management, encompassing prior art searches, filing, renewal, and monitoring. Dreyfus & Associates also uses its AI-powered trademark similarity analysis tool to cross-reference domain name alerts with existing trademark portfolios.

How to respond to a detected infringement

Cease and desist letter: the first amicable step

When an abusive registration is identified, a cease and desist letter is often the fastest and least expensive response. A formal letter drafted by an intellectual property specialist may be sufficient to obtain the transfer or deletion of the disputed domain name, particularly when the holder acts out of opportunism rather than organized malice.

The UDRP procedure: speed and efficiency

When the amicable route fails, the UDRP procedure administered by WIPO provides an effective alternative. It typically concludes within 45 to 60 days and costs between $1,500 and $4,000 depending on the number of domain names involved. In 2025, WIPO now covers more than 85 ccTLDs, significantly expanding the scope of this procedure.

Legal action: for the most complex cases

In cases involving significant economic damage or an organized cybersquatting network, infringement proceedings before the competent courts remain the most protective route. Nathalie Dreyfus’s role as a court-appointed expert accredited by the French Supreme Court gives the firm particular legitimacy in supporting business lawyers in these contentious proceedings where technical expertise makes the difference.

Dreyfus & Associates: comprehensive support

Dreyfus & Associates provides end-to-end support covering the entire intellectual property lifecycle. Prior art searches verify the availability of a sign before any filing. Trademark filing and renewal in France, Europe, and internationally are aligned with consistent digital naming strategies.

Watch and monitoring services cover all domain names, social networks, and trademark registries. This permanent vigilance is complemented by a cybersecurity framework adapted to current threats.

For attorneys specializing in business law who wish to collaborate on cases involving intellectual property issues, Dreyfus’s network of specialized attorneys offers a privileged framework for professional cooperation. Whether securing an M&A transaction, assisting a client who is a victim of cybersquatting, or structuring an international protection strategy, this collaboration brings together industry expertise and in-depth knowledge of IP law.

Conclusion

Domain name monitoring is not a cost—it is a strategic investment. Every day, new abusive registrations target the most exposed trademarks as well as lesser-known ones. Failing to monitor means leaving the door open to cybersquatters and exposing your business to financial and reputational damages that are often difficult to repair.

Dreyfus & Associates provides comprehensive expertise, from automated monitoring to litigation, to secure your digital presence for the long term. Contact us for a personalized assessment of your situation.

Frequently asked questions (FAQ)

What is domain name monitoring?

Domain name monitoring involves continuously tracking new domain name registrations to detect those that reproduce or imitate a protected trademark.

This monitoring makes it possible to quickly detect practices such as cybersquatting, typosquatting, or the registration of domain names used for phishing or fraudulent activities.

How long does it take to recover a domain name through the UDRP procedure?

The UDRP procedure administered by WIPO typically concludes within 45 to 60 days. Administered by WIPO, it represents a faster and less costly alternative to court proceedings. With a success rate exceeding 95% in favor of trademark holders, it is the preferred tool for combating cybersquatting.

It constitutes a fast and relatively cost-effective extrajudicial mechanism that allows the transfer or cancellation of a domain name registered in bad faith. It is considered the primary tool for combating cybersquatting.

Why engage a specialized firm rather than a registrar?

A registrar handles the technical aspects of registration. A specialized firm like Dreyfus & Associates provides comprehensive legal expertise: analysis of the registration’s legitimacy, conduct of UDRP proceedings, filing and monitoring strategy, and litigation support if necessary. The court-appointed expert designation also ensures an approach consistent with evidentiary standards.

What types of businesses need monitoring?

Any business with a registered trademark or significant online presence is concerned. WIPO data shows that SMEs represent 59% of parties in domain name disputes in 2025, proving that cybersquatting does not only affect large corporations. Dreyfus & Associates supports both startups and international groups.

Is monitoring useful if the business does not yet have a registered trademark?

Yes. Even without a registered trademark, a business using a distinctive sign as a trade name can assert its prior rights. However, trademark registration remains Dreyfus & Associates’ primary recommendation for effectively securing a digital strategy.

Written by Nathalie Dreyfus10/03/2026

European and French case law now imposes a renewed discipline on trade mark filing. The days when a broad specification was enough to guarantee solid protection are over. Here is a breakdown of the key issues and best practices.

Why case law on sub-categories is changing the game

Filing a trade mark confers an exclusive right. But this right only exists in relation to the specific goods and services designated in the registration. In practice, the value of a trade mark depends as much on the sign itself as on the specification accompanying it.

For several years now, European and French case law has consistently reiterated a straightforward principle: a trade mark must not confer a purely theoretical monopoly over markets that its owner does not actually exploit. This requirement finds very concrete expression in the concept of autonomous sub-categories and in the strengthened control of genuine use.

This context is all the more significant as companies face an increase in oppositions, invalidity actions and counterclaims for revocation, especially where older trade mark portfolios cover very broad specifications.

The specification of goods and services: the trade mark’s true legal perimeter

For a long time, a “broad filing” approach prevailed. Applicants sometimes opted for generic wording or simply reproduced class headings, with the aim of maximising protection without having to anticipate in detail how the trade mark would be used.

Today, however, this strategy entails increased risk. Where a trade mark is registered for a broad category but is only used for part of that category, it may be partially revoked. Protection then remains only for the segments actually used, which can drastically reduce the scope of enforcement.

The legal framework: genuine use, revocation and the burden of proof

French law provides for revocation where a trade mark has not been put to genuine use for five consecutive years. The reference provision is Article L.714-5 of the French Intellectual Property Code, interpreted in line with the applicable European framework, in particular Article 18 of the EU Trade Mark Regulation (EUTMR).

One essential point for businesses: the burden of proof lies with the trade mark owner. In the event of a challenge, it is not for the third party to demonstrate non-use, but for the proprietor to prove genuine, relevant and dated use.

Furthermore, where the specification is broad and divisible, proof must be provided for the relevant sub-categories. This explains why certain portfolios, despite being intensively exploited, are nevertheless weakened.

Understanding autonomous sub-categories: a jurisprudential concept

The concept of an autonomous sub-category does not stem from any express statutory definition. It is a concept developed through case law to reflect economic reality: within a broad category, certain goods or services may form distinct, identifiable and coherent groups.

Case law focuses in particular on criteria relating to the purpose and intended use of the goods and services. What matters is the expected use by the public and the economic function of the product or service, rather than its formal classification.

In practice, an overarching category such as “transport”, “cosmetics” or “software” may cover very different realities. The court may therefore consider that such a category is divisible into autonomous sub-categories and require segmented proof of use.

The European “Ferrari” case law: balancing protection and proportionality

The Ferrari cases (C-720/18 and C-721/18) of 22 October 2020 clarified the CJEU’s reasoning on use in relation to specifications covering categories of varying breadth. The logic is structured around a practical distinction:

Where a trade mark covers a precise and indivisible category, use in relation to part of that category may be sufficient.
Conversely, where the category is broad and divisible, use must be proven for each identifiable autonomous sub-category.

This distinction is particularly useful when building a filing strategy. It prompts a simple question: will the category claimed be perceived tomorrow as a “homogeneous whole”, or as a set of distinct segments?

French case law: the Court of Cassation decisions of 14 May 2025

First decision (No. 23-21.296): taxi services and the “transport” category

In a first decision (Cass. com., 14 May 2025, No. 23-21.296), the French Court of Cassation provides a very concrete illustration of the requirement to segment goods and services into sub-categories. The trade marks at issue were registered for “transport” and “passenger transport” services. The proprietor demonstrated genuine use for taxi services, and the Court of Appeal had considered this sufficient.

The Court of Cassation adopted a more demanding approach. It criticised the lower court for failing to assess whether taxi services constituted an autonomous and coherent sub-category within the broader category of transport services. It recalled that such an assessment must be objective and based on the purpose and intended use of the services.

Second decision (No. 23-21.866): cosmetics and essential oils

The second decision rendered on the same day (Cass. com., 14 May 2025, No. 23-21.866) further confirms and refines this requirement. The trade mark was registered for several broad categories of goods, including cosmetics and essential oils. The proprietor relied on use relating to specific products such as textiles impregnated with active substances or composite products incorporating essential oils.

The Court of Cassation overturned the Court of Appeal’s reasoning, criticising it for failing to examine whether those products genuinely corresponded to the goods as registered or whether they constituted autonomous sub-categories requiring specific proof of use.

These decisions confirm that the French Supreme Court now requires a strict alignment between the evidence of use relied upon and the exact scope of the specification.

The court’s power to subdivide the specification

One of the key lessons from recent case law is that the court is not bound by the wording of the specification as drafted. Even if the applicant has not provided for any subdivision, the court may carry out an objective division into autonomous sub-categories where justified by the purpose and intended use of the goods or services.

This power has very tangible effects. A simple and overarching specification may, in litigation, be broken down into multiple segments. The proprietor then faces a heavier evidentiary burden than anticipated.

In practice, this mechanism makes the filing strategy inseparable from the evidentiary strategy. Filing broadly is not merely a legal decision; it is also a documentary, internal and operational decision.

Filing a trade mark: the right level of precision

An effective filing strategy is based on a careful balance. If the specification is too broad, the trade mark may be vulnerable to revocation. If it is too narrow, the trade mark may be insufficient to support commercial development or to act against close competitors.

The question is therefore not whether to file broadly or narrowly, but how to file intelligently, calibrating the specification so that it is both commercially useful and legally defensible in the long term.

Anticipating proof of use: an operational component of trade mark strategy

In practice, the most sensitive issue is proof of use. When a trade mark is challenged, the question is not merely to prove that it is used. It is necessary to prove that it is used for the goods and services covered by the registration, and sometimes for autonomous sub-categories identified in litigation.

For each plausible sub-category, it is recommended to gather specific and segmented evidence:

Invoices or order forms identifying the type of product or service, with dates and geographical areas.
Catalogues, brochures, commercial leaflets or archived web pages showing the trade mark associated with the relevant segment.
Targeted advertising campaigns, announcements or promotional materials, dated and linked to a specific product or service.
Internal reports by business segment, where their content can be produced and relied upon in litigation.
Relevant contracts, in particular licences, distribution, maintenance, or evidence showing exploitation by an authorised third party.

Each item of evidence should be preserved within a structured file: not as an undifferentiated mass of documents, but as an organised set by sub-category.

Use by subsidiaries, licensees or distributors

In many corporate groups, trade mark use may be carried out by subsidiaries, distributors or licensees. Case law, in line with Article 18(2) EUTMR, generally accepts that use by an authorised third party may be taken into account, provided that such use takes place with the proprietor’s consent.

This nevertheless requires contractual and documentary organisation. It must be possible to establish the existence of authorisation and to demonstrate the reality of exploitation under the trade mark.

Use in a modified form: securing trade mark variants

Companies rarely use a trade mark in a form identical to the registered version. European and French courts, in line with Article L.714-5(3) of the French Intellectual Property Code and Article 18 EUTMR, accept use in a modified form provided that the modification does not alter the distinctive character of the sign.

As part of a filing strategy, it may therefore be advisable to anticipate certain variants by filing the word trade mark alone or by securing the main versions actually used.

Sub-categories and litigation: impact on opposition, invalidity and competition

The issue of sub-categories is not limited to revocation. It also affects disputes relating to likelihood of confusion, as the similarity of goods and services is assessed with increasing granularity.

For businesses, the key takeaway is that filing strategy must now be read in mirror with litigation strategy. A well-filed trade mark is easier to defend, easier to enforce, and more dissuasive.

Conclusion – Filing today means preparing tomorrow’s defence

Case law on autonomous sub-categories imposes a new discipline in trade mark filing strategy. Filing can no longer be conceived as abstract protection disconnected from actual use. It must be calibrated according to real markets and the evidence the company will be able to produce.

In practice, an effective filing strategy combines three dimensions:

An intelligently structured specification.
Anticipation of possible segmentation.
Proactive organisation of evidence.

This approach transforms the trade mark into a genuinely defensible and sustainable asset, serving the company’s growth and legal security.

FAQ – Frequently Asked Questions on Sub-Categories and Proof of Use

What is an autonomous sub-category in trade mark law?
An autonomous sub-category is a coherent group of goods or services, identifiable within a broader category, based on its purpose and intended use. This concept, developed through European case law (notably the CJEU’s Ferrari rulings) and adopted by the French Court of Cassation, allows the court to segment a trade mark specification and verify that genuine use is demonstrated for each relevant segment.

What is the time limit for demonstrating genuine use of a trade mark in France?
Under Article L.714-5 of the French Intellectual Property Code, the trade mark owner must demonstrate genuine use within five years following registration. After this period, the mark is exposed to a revocation action if no genuine use can be proven.

Who bears the burden of proving use?
It is the trade mark owner who must prove genuine use when challenged, not the third party initiating the revocation action. This rule follows from the principle that it would be disproportionate to require the applicant to prove a negative fact (non-use).

My trade mark is used by a licensee: does that count as genuine use?
Yes, case law accepts that use by an authorised third party (licensee, subsidiary, distributor) may constitute genuine use, provided it takes place with the proprietor’s consent and the mark continues to fulfil its essential function of guaranteeing origin. However, this must be properly documented (licence agreement, distribution agreement, group policy).

Can I use my trade mark in a slightly different form from the registered version?
Yes, both French and European law accept use in a modified form, provided the modification does not alter the distinctive character of the sign. However, substantial visual or conceptual changes may prevent recognition of use of the registered mark. It may be prudent to also register the main variants in use.

How should I organise my proof of use in practice?
It is recommended to build a structured file for each sub-category of goods or services, including dated invoices, catalogues, advertising materials, website screenshots, internal reports by business segment, and licence or distribution agreements. Each item should be dated, geographically located, and linked to a specific product or service.

Is an overly broad specification automatically vulnerable?
Not necessarily, but the risks are increased. If the mark is registered for a broad and divisible category, the court may subdivide that category into autonomous sub-categories and require segmented proof of use. If the proprietor only exploits part of the category and cannot document use for the other segments, the mark may be partially revoked.

What is the difference between the Nice Classification and autonomous sub-categories?
The Nice Classification is an international administrative tool that organises goods and services into 45 classes. Autonomous sub-categories are a jurisprudential concept based on economic and functional logic. The French Court of Cassation has expressly stated that the Nice Classification is merely an indication and does not bind the court in its analysis of genuine use.

For any questions regarding your trade mark filing strategy or the organisation of your proof of use, contact us: contact@dreyfus.fr

Written by Antony26/11/2025

In summary

Anticipate before harm occurs : register your key domain names, including variations, as soon as you file your trademark.
Monitor continuously: set up online monitoring for domain names, social networks, and marketplaces.
React quickly: have a clear plan, defined procedures, and expert support to contain damage effectively.

Dreyfus law firm supports businesses in securing their digital presence by combining legal strategy, technical governance, and proactive monitoring.

Introduction

In today’s digital world, visibility drives reputation and growth , but it also exposes trademarks to ever-increasing risks.

The thematic report published by the French IP Office (INPI) entitled “Trademarks and online presence: effectively protecting against digital infringements” has highlighted the wide range of digital threats faced by trademark holders trademark: cybersquatting, typosquatting, phishing, spam, identity theft on social networks, and counterfeiting on marketplaces.

Yet, these attacks can be anticipated and managed effectively through a structured strategy.

With more than 20 years of experience in intellectual property, this article explores the key risks, preventive measures, and best practices for effective trademark protection.

Dreyfus law firm helps companies move from a reactive approach to a proactive and resilient trademark protection strategy.

The main risks for a trademark online

Cybersquatting: registration of a domain name identical or similar to a trademark, often to divert traffic or resell it at a high price.
Typosquatting: creation of domains with slight spelling variations (e.g., “goggle.com”) to deceive users and collect their data.
Phishing: fake websites or emails imitating a trademark to steal confidential information.
Spam: mass email campaigns using domain names resembling the trademark, damaging its image and deliverability.
Counterfeiting on marketplaces and social media: unauthorized products sold under the trademark’s identity.
Identity theft: fake social accounts created in the trademark’s name to mislead consumers.

These risks combined can erode consumer trust, damage SEO performance, and severely impact trademark reputation.

Prevention: anticipating the threats

Register strategic domain names

We recommend securing domain names at the same time as filing a trademark.

Best practices include:

registering major extensions (.com, .fr, .eu, etc.);
reserving orthographic or phonetic variants;
considering new relevant extensions (e.g., .shop, .tech).

This proactive approach reduces exposure to domain-based attacks in a first-come, first-served environment.

Set up active monitoring

Continuous monitoring helps detect:

registrations of domains similar to your trademark;
fake social media accounts;
counterfeit products sold online.

Quick detection enables faster action and minimizes damage.

Secure your digital assets

Implement advanced security protocols (DNSSEC, HTTPS, DMARC, SPF, DKIM, MFA).
Manage subdomains and redirects with strict internal rules.
Integrate cybersecurity into trademark governance.

Dreyfus law firm also advises establishing a digital asset inventory, assigning responsibilities for each domain, and maintaining updated records.

Responding to an infringement

Identify and assess the infringement

When a potential infringement is detected:

determine the infringement type (cybersquatting, phishing, counterfeiting, etc.);
assess the level of urgency and potential damage;
identify the responsible party or domain holder.

Take immediate corrective actions

Request the suspension or transfer of the abusive domain through a UDRP or local procedure.
Report fake accounts to platforms for prompt removal.
Inform customers and partners transparently if their data or trust might be affected.
Launch a controlled communication plan to mitigate reputational damage.

Learn from every incident

Each incident is an opportunity to strengthen internal processes:

update security and governance procedures;
expand domain portfolio coverage;
provide regular staff training;
record incidents and outcomes to refine prevention.

The digital protection checklist

Map all official domain names and social accounts.
Reserve key domains and critical variants.
Activate DNSSEC, DMARC, HTTPS, and other core security measures.
Establish a multi-channel monitoring system (domains, social media, marketplaces).
Define a clear emergency response plan.
Train employees to identify early warning signs.
Measure key indicators: detection time, resolution time, and avoided costs.

Why this approach matters

A valuable intangible asset

Your trademark is more than a name ; it’s a strategic intangible asset.

Losing control online can destroy years of investment in trust and reputation.

A lever for trust and compliance

Consumers, partners, and authorities expect digital environments that are secure and transparent.

Robust online protection enhances credibility and demonstrates compliance.

A lasting competitive advantage

Prevention is always cheaper than crisis management.

Trademarks that anticipate risks gain in resilience and long-term performance.

How Dreyfus law firm supports companies

Dreyfus law firm helps trademark owners build a robust digital protection framework through six pillars:

Risk audit: identifying vulnerabilities and prioritizing actions.
Portfolio strategy: planning domain registrations and defensive coverage.
Governance: defining internal policies for domain management.
Monitoring: tracking domains, social networks, and marketplaces.
Crisis management: legal and technical assistance during an infringement.
Training: educating internal teams about digital threats and best practices.

With recognized expertise in intellectual property and digital law, the firm operates at the intersection of legal strategy, technology, and cybersecurity, in France and internationally.

Conclusion

Protecting a trademark online is no longer optional, it’s a core element of corporate strategy.

By combining preventive measures (registration, monitoring, security) and rapid response protocols, companies can reduce their exposure and strengthen customer trust.

Dreyfus law firm works alongside businesses to design and implement strong, adaptable digital protection strategies aligned with their global ambitions.

Q&A

What is cybersquatting?
It’s when a third party registers a domain name identical or similar to a trademark, intending to divert traffic or resell it.

How can a trademark protect itself online?
By combining trademark registration, strategic domain reservations, security protocols, and continuous monitoring.

What should I do if someone impersonates my trademark?
Gather evidence, identify the domain holder, and launch a UDRP or contact the relevant platform to request the blocking, deactivation or transfer of the domain name.

Why monitor social media?
Fake accounts can damage trademark trust, spread misinformation, or defraud customers , early detection is essential.

What does Dreyfus law firm offer?
The Dreyfus law firm helps companies design and implement legal and technical strategies for protecting and managing their trademark online.

Written by Nathalie Dreyfus09/07/2025

Introduction

In the field of intellectual property, trademark protection is a major issue for businesses. Beyond registering a trademark, there are strategies to anticipate conflicts and avoid costly litigation. Pre-litigation in trademark law is a crucial phase in which preventive actions help resolve disputes before they escalate into court proceedings. This process is essential to secure a company’s rights and preserve its reputation while avoiding unnecessary legal expenses.

This article explores the role of pre-litigation in trademark law, how it helps avoid conflicts, and the practical steps companies can take to use it effectively.

Protecting your brand : a strategic imperative

Protecting a trademark is essential to guarantee a company the exclusive use of its distinctive sign. This protection, obtained through registration with the INPI in France and the EUIPO in the European Union, helps prevent identity theft and preserves the uniqueness of the company’s image.

1.1 Standing out effectively in a competitive market

A registered trademark is a symbol of consumer recognition and loyalty. It ensures the company that its sign is protected against unauthorized use, allowing it to distinguish its products and services from those of competitors.

1.2 A brand as a valuable asset for the company

A trademark is not just a sign; it is also a valuable asset. A protected trademark enables the company to strengthen its market position, enhance its image, and even generate revenue through exploitation, assignment, or licensing.

Pre-litigation in trademark law: a strategic response before trial

Pre-litigation refers to the steps taken before any court proceedings in order to resolve a dispute amicably or preventively. The goal is to settle a potential trademark conflict without resorting to lengthy and costly legal procedures.

2.1 Identifying risks before they become disputes

One of the main tools in pre-litigation is monitoring. By quickly identifying any trademark infringement, the company can respond effectively to protect its rights before the situation worsens. Monitoring can cover both registered trademarks and unauthorized uses of distinctive signs on online platforms such as social networks, where third parties might use similar or identical marks for commercial purposes, as well as on e-commerce sites.

2.2 Reacting early: cease-and-desist letters and negotiation as key tools

When a conflict is detected, the first pre-litigation action is often to send a formal warning letter. This letter requests the other party to cease using the disputed trademark. If this step fails, a coexistence agreement or similar negotiation may be considered.

Pre-litigation: a lever to prevent legal escalation

3.1 Controlling costs and avoiding lengthy procedures

Judicial procedures can be extremely expensive in terms of legal fees and time. Pre-litigation helps identify issues as they arise and resolve them before they escalate into lawsuits. This avoids significant costs associated with court proceedings.

3.2 Protecting brand image discreetly

Legal disputes can be perceived negatively by consumers. Even a publicly won lawsuit can tarnish a brand’s image. Pre-litigation helps maintain a positive reputation by resolving conflicts discreetly and swiftly.

3.3 Optimizing resources: time, energy, finances

Legal conflicts demand considerable human and financial resources. Turning to pre-litigation allows the company to stay focused on its core business and avoid diverting energy toward a prolonged dispute.

Trademark disputes : hidden but formidable costs

Costly disputes extend beyond legal fees and can severely affect a company’s strategy. Key examples include :

Legal and expert fees: Lawyers’ fees, court expenses, and expert reports can amount to substantial sums
• Disruption to business operations: The company spends significant time defending itself rather than growing its business
• Missed opportunities: Engaging in a conflict can block partnerships, damage brand image, and lead to lost economic prospects

Anticipating such issues helps a company avoid the burden of a lengthy legal process, which may end up being far more expensive than preventive measures.

Building an effective strategy to avoid costly disputes

5.1 Implementing rigorous trademark monitoring
Implementing a trademark monitoring system is essential. This includes regularly checking new trademark filings and online activity. It helps detect potential infringements before they become major issues.

5.2 Smart negotiation with similar brands

In certain situations, it may be wise to negotiate coexistence agreements with companies using similar trademarks. This allows for clear boundaries regarding brand usage and helps prevent conflicts.

5.3 Acting without litigation: the amicable path as first response

If a conflict arises, sending a warning letter is often a prudent first step. If this proves ineffective, mediation or negotiation can help resolve the issue without resorting to court proceedings. These amicable approaches are usually quicker and less expensive.

5.4 Getting the right legal advice early On

It is advisable to consult a trademark law specialist to receive precise and tailored legal advice. A detailed legal assessment will help determine the most appropriate pre-litigation strategy.

Pre-litigation tools: anticipate to better protect

The following tools can be used to avoid costly trademark disputes:

Legal and commercial watch: Monitoring trademark databases and online platforms
• Trademark opposition: Challenging the registration of similar trademarks upon filing
• Mediation and amicable resolution: Using mediation services to reach a settlement without litigation

Conclusion : preventing means protecting your brand for the long term

Pre-litigation in trademark law is an essential tool for any company aiming to protect its brand identity without resorting to costly legal disputes. Through proactive measures, companies can minimize legal risks, maintain their brand reputation, and optimize internal resources.

Dreyfus & Associates offers recognized expertise in pre-litigation and trademark dispute management. We support our clients in designing preventive strategies to anticipate risks and effectively protect their intellectual assets.

Nathalie Dreyfus and the Dreyfus team.

FAQ

What is pre-litigation in trademark law ?

Pre-litigation refers to all amicable actions taken before initiating legal proceedings to resolve a conflict related to the use of a trademark. It includes monitoring, risk analysis, sending cease-and-desist letters, and negotiating agreements. This phase often allows for resolving disputes without going to court, thereby reducing costs and preserving business relationships.

Why monitor competing trademarks ?

Monitoring competing trademarks is essential for any business that wants to protect its identity effectively. A watch system allows companies to quickly identify new trademark applications that may cause confusion with their own, enabling them to act promptly to avoid disputes. It also helps detect unauthorized use of the brand online, on social media, or in points of sale, whether it involves imitation or abusive exploitation. Regular monitoring is also a tool for early detection of counterfeiting, which can seriously damage a company’s reputation and revenue if not addressed quickly.

How can trademark conflicts be avoided ?

It is crucial to check, before filing, that the chosen trademark does not infringe on existing rights. The application should clearly define the targeted products, services, and territories. Regular monitoring helps identify similar uses or filings. In case of risk, swift action such as an opposition or cease-and-desist letter is necessary. Finally, being assisted from the outset by a specialized attorney helps secure the entire protection strategy.

Written by Nathalie Dreyfus18/06/2025

In the ever-changing world of intellectual property, trademarks are strategic assets that distinguish products and services in the marketplace. However, their value lies not only in their registration, but also in the vigilance shown by their owners to prevent unauthorized use. One of the major legal pitfalls in this regard is foreclosure by tolerance, a mechanism that can deprive the owner of their rights if they fail to act within the prescribed time limits.

Forfeiture by tolerance cannot be equated with prescription. Forfeiture is based on the voluntary inaction of the trademark owner, whereas prescription is a rule of common law linked to time. Forfeiture prevents any action for invalidity or infringement, even if the facts are recent.

I – Understanding forfeiture by tolerance in trademark law

Definition and legal framework

Laches refers to a situation in which the owner of an earlier trademark knowingly tolerates, for a continuous period of five years, the use of a later registered trademark without taking any action. In European law, Article 61 of the EU Trademark Regulation (EUTMR) codifies this mechanism:

“1. The owner of a trademark of theEuropean Union who has, for five consecutive years, tolerated the use of a later European Union trademark in the European Union while being aware of that use may no longer apply for a declaration of invalidity of the later trademark on the basis of the earlier trademark for the goods or services for which the later trademark has been used, unless the registration of the later European Union trademark was made in bad faith.

The proprietor of an earlier national trademark referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) who has, for five consecutive years, tolerated the use of a later EU trademark in the Member State where that earlier trademark or other earlier sign is protected, while being aware of that use, may no longer apply for a declaration of invalidity of the later trade mark on the basis of the earlier trade mark or the other earlier sign in respect of the goods or services for which the later trade mark has been used, unless the registration of the later EU trade mark was made in bad faith.
In the cases referred to in paragraphs 1 or 2, the proprietor of the later European Union trademark may not oppose the use of the earlier right, even if that right can no longer be invoked against the later European Union trademark.

Where the conditions are met, the person who has tolerated the use may no longer contest the validity of the later trademark or prohibit its use.

Essential conditions for forfeiture

For forfeiture by tolerance to occur, four cumulative conditions must be met:

Knowledge: the proprietor of the earlier trademark must have been aware of the use of the later trademark.
Continuous use: the later trademark must have been used continuously for five years.
Good faith: the later trademark must have been registered and used in good faith.
Absence of legal action: no legal action must have been taken during this period.

Clarification of the concept of “knowledge”

The condition of actual knowledge by the owner of the earlier trademark is a central criterion for forfeiture by acquiescence, but also one of the most debated.

According to the settled case law of the General Court of the European Union (Case T-150/17) and the Court of Justice of the European Union (Case C-381/12 P), knowledge must be actual, not merely presumed. In other words, implicit knowledge or knowledge inferred from the behavior of the proprietor is not sufficient. Proof of actual knowledge of the use of the later trademark is required.

In particular, the Court of Justice recalled in judgment C-381/12 P that:

“The proprietor of an earlier trademark cannot be regarded as having had knowledge of the use of a later trademark unless he actually had knowledge of that use, and not merely implicit knowledge or knowledge inferred from the behavior of the proprietor of the trademark.”

Similarly, the European Union Court of Justice in case T-150/17 clarified:

“Consequently, the proprietor of a trade mark challenged by a declaration of invalidity cannot merely prove potential knowledge of the use of his trade mark by the proprietor of an earlier trade mark, nor can he adduce consistent evidence capable of giving rise to a presumption of such knowledge.”

It is therefore not sufficient that the later trademark is visible on the market or that there are infringement proceedings in other jurisdictions. For example, the mere presence of the disputed trademark in the results of an automated monitoring system does not constitute sufficient evidence in the absence of other concrete evidence.

However, evidence of actual knowledge may result from:

correspondence between the parties referring to the use of the trademark;
joint presence at trade fairs where the trademarks are used;
or the signing of a prior coexistence agreement (case 3971 C).

In case R 1299/2007-2, the EUIPO clarified an important point concerning the condition of knowledge in the context of estoppel by acquiescence. It ruled that the proprietor of the earlier trademark does not need to be aware of the registration of the later trademark, i.e., it is not necessary for them to have formal knowledge that the later trademark has been filed or registered with the competent office. However, it is essential that the proprietor of the earlier trademark has actual knowledge of the use of the later trademark during the relevant period, i.e., that they know that the trademark is being used on the market, despite its registration.

Thus, the period of tolerance begins to run only from the moment when the proprietor of the earlier trademark has actual and objective knowledge of the use of the later trademark, and not simply of its existence as a filing or administrative registration, for five consecutive years. The Board of Appeal ruled, in particular:

“What is important in this context is the objective circumstance that the sign (the use of which was knowingly tolerated by the applicant for annulment) must have existed for at least five years as a Community trademark (CTM).”

II – Risks associated with failure to defend trademark rights

Legal consequences

Failure to take timely action against the unauthorized use of an identical or similar trademark may result in a permanent loss of rights. Once the right has been forfeited through tolerance, the prior owner can no longer bring an action for invalidity or infringement against the later trademark for the products or services concerned. This legal barrier requires absolute responsiveness in order to maintain the enforceability of one’s rights.

Economic consequences

The economic effects of a failure to defend one’s rights are equally damaging:

Weakening of the trademark: The coexistence of similar trademarks weakens the uniqueness and symbolic value of the earlier trademark. The strength of a trademark lies largely in its ability to distinguish itself clearly from other signs used by competitors. When a similar trademark is tolerated or left unopposed, this differentiation gradually becomes diluted. The earlier trademark then loses some of its exclusivity, which can alter its symbolic value among consumers and business partners. This deterioration affects not only the qualitative perception of the trademark, but also its commercial strength and its ability to embody the identity and values of the company.
Consumer confusion: Similar trademarks can confuse the public, undermine trust, and divert sales. Consumers faced with a fragmented range of similar signs may find it difficult to clearly identify the origin of products or services. This uncertainty undermines consumer confidence, which can result in hesitation to purchase or even rejection of the market. Furthermore, confusion may encourage the misuse of the reputation and renown of the earlier trademark by the owners of later trademarks, to the detriment of consumer loyalty to the original trademark.
Loss of market share: Competitors taking advantage of the similarity may capture a share of the customer base by unfairly benefiting from the reputation of the original trademark. This capture of customers is often based on an illegitimate appropriation of the reputation and marketing efforts of the original owner. The impact is reflected in a decrease in sales and, ultimately, an erosion of the original brand’s competitive position. In a competitive market environment, this loss can permanently undermine the economic and strategic viability of the company.

III – Strategies for active trademark protection

Proactive monitoring and detection

Rigorous market monitoring is essential. The implementation of monitoring systems enables the rapid detection of infringing registrations or uses. Regular audits and analysis of national and international databases are also crucial tools for anticipating litigation.

Legal action and timely responses

As soon as unauthorized use is identified, it is advisable to act without delay. This may take the form of:

formal notices (see limitations below),
oppositions to the registration of conflicting trademarks,
or legal action if necessary.

These measures not only serve to avoid foreclosure, but also strengthen the legitimacy and exclusivity of the trademark.

Interruption of the foreclosure period

The starting point and suspension of the grace period are also the subject of extensive case law.

The CJEU ruling C-482/09 established that simply sending a formal notice is not sufficient to interrupt the foreclosure period, unless this letter leads to a concrete result (e.g., voluntary withdrawal, a coexistence agreement, or the initiation of legal proceedings).

Only administrative or judicial action—such as an action for invalidity before the INPI or the European Union Intellectual Property Office (EUIPO) or an action before the national courts, such as an action for infringement—can effectively interrupt the five-year period.

A recent ruling (Case C-466/20) confirmed that sending an unsuccessful warning, even if it proves clear opposition, is not sufficient to prevent foreclosure if no formal action follows. The Court specifies that:

“Any interpretation of Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 as meaning that the sending of a warning letter is sufficient, in itself, to interrupt the limitation period would allow the proprietor of the earlier trademark orother earlier right to circumvent the limitation period by tolerance by repeatedly sending, at intervals of nearly five years, a letter of formal notice. Such a situation would undermine the objectives of the limitation period by tolerance, as recalled in paragraphs 46 to 48 of this judgment, and would deprive that system of its effectiveness.”

This decision highlights the importance of active vigilance and legal responsiveness in the face of unauthorized use of an earlier trademark.

Similarly, the signing of a coexistence agreement interrupts the period of foreclosure by tolerance, thereby suspending the period during which the owner of the earlier trademark could lose its rights due to its tolerance. However, if that agreement is subsequently breached or ceases to have effect, a new period of five years begins to run, provided that the proprietor of the earlier trademark again becomes effectively aware of the use of the later trademark. This rule was clarified by decision R 267/2014-2.

In that case, the Board of Appeal held, inter alia:

“Consequently, since the application for a declaration of invalidity was filed on July 11, 2012, the contested decision correctly concluded that less than five consecutive years had elapsed between the end of the verbal agreement, i.e., from the moment when the applicant for invalidity had the opportunity not to tolerate the use of the contested Community trademark, and the application for a declaration of invalidity. On the other hand, even if it were considered that the verbal agreement between the parties had not been breached and had ended when the proprietor of the Community trademark filed opposition against the Community trademark application ‘BONASYSTEMS’ on February 16, 2010, that verbal agreement should, in the absence of evidence to the contrary, be considered still valid. Consequently, the proprietor of the earlier trade mark is still not in a position to refuse to tolerate the use of the latter Community trade mark in the United Kingdom. It follows that the application for a declaration of acquiescence must be dismissed.

Thus, the period of forfeiture can only be resumed if two conditions are met simultaneously: the effective termination of the coexistence agreement and the prior proprietor’s awareness of the continued use of the later trademark.

Conclusion

Actively defending your trademark is not just a legal obligation: it is a strategic imperative. Knowing and anticipating the effects of foreclosure by tolerance is essential to preserving the value, exclusivity, and integrity of a trademark portfolio. A policy of systematic vigilance, combined with targeted and rapid responses, is the best guarantee for ensuring the longevity of an asset as sensitive as a trademark.

The law firm Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

This article was published on the Village Justice website.

FAQ

1. What is foreclosure through tolerance in trademark law?

Foreclosure by tolerance occurs when the owner of an earlier trademark knowingly tolerates the use of a later registered trademark for five consecutive years without taking action. After this period, the owner of the earlier trademark can no longer seek to invalidate the later trademark, unless it was registered in bad faith.

2. What are the essential conditions for foreclosure by tolerance?

To trigger foreclosure by tolerance, four conditions must be met: the trademark owner must have knowledge of the use of the later trademark, the later trademark must have been used continuously for five years, the later trademark must have been used in good faith, and no legal action must have been taken during this period.

3. What are the legal consequences of not defending your trademark in time?

Failing to act against unauthorized use of a trademark within the prescribed period can result in a permanent loss of rights. Once foreclosure by tolerance is established, the owner can no longer challenge the validity or prevent the use of the later trademark for the relevant products or services.

Written by Nathalie Dreyfus22/04/2025

The rise of artificial intelligence (AI) has revolutionized numerous sectors, including brand naming. Many companies now question whether a name generated by AI can benefit from legal protection as a trademark. This article reviews the relevant French legal framework and analyzes whether such a name can be registered, provided it complies with the provisions of the French Intellectual Property Code (Code de la propriété intellectuelle, CPI).

The Legal Framework for Trademarks in France

Definition and Acquisition of Trademark Rights

According to Article L.711-1 of the French Intellectual Property Code, a trademark is defined as a sign capable of distinguishing the goods or services of a natural or legal person from those of others. Ownership of a trademark is acquired through registration, pursuant to Article L.712-1 of the same code. Registration grants the holder exclusive rights over the trademark for the goods or services listed.

Conditions for Trademark Validity

For a trademark to be valid and registrable, it must meet the following conditions:

Distinctiveness: The sign must be capable of distinguishing the goods or services of one company from those of another.
Lawfulness: The sign must not be contrary to public order or accepted principles of morality.
Non-deceptiveness: The sign must not mislead the public, particularly regarding the nature, quality, or origin of the products or services.
Availability: The sign must not infringe any prior rights, such as already registered trademarks or protected business names.

These criteria are outlined in detail by the French National Institute of Industrial Property (INPI).

Applicability to AI-Generated Names

Compliance with Legal Requirements

A brand name generated by artificial intelligence may be registered in France as long as it complies with the above-mentioned conditions. The mere fact that the name is AI-generated does not preclude registration, provided it is distinctive, lawful, non-deceptive, and available. Notably, Article L.711-1 CPI does not impose any requirement regarding the origin of the sign, which means names generated by automated systems are not excluded from protection.

Specific Considerations Related to AI

Different considerations apply under copyright law. Unlike trademark law, which is focused on distinctiveness and availability, copyright protection requires human creative input and that the work reflects the author’s personality. Indeed, Article L.112-1 of the French Intellectual Property Code states that “works of the mind, whatever their genre, form of expression, merit, or purpose,” are protected, provided they are original.

As such, while a name generated by AI is unlikely to qualify for copyright protection without human input, it can nevertheless be registered as a trademark, assuming it fulfills the requirements set out in Articles L.711-1 et seq. of the CPI.

Recommendations for Businesses

Registering a trademark that results from a process involving AI requires a legally sound and strategic approach. Although the law does not exclude names generated by AI, their validity depends on a detailed legal analysis under the French Intellectual Property Code.

It is therefore essential to consult with an intellectual property expert – such as a specialized attorney or industrial property counsel – to secure the entire process. This professional can:

Assess the compliance of the name with the validity criteria set out in Articles L.711-1 and following, particularly its distinctiveness, lawfulness, and lack of conflict with prior rights;
Proceed with a thorough clearance search, which is critical to avoid future legal disputes;
Review the terms and conditions of the AI tools used, particularly regarding ownership or assignment of the generated content, which may include restrictive clauses;
Structure and document the name creation and selection process, to demonstrate, if necessary, a substantial and voluntary human intervention in the final choice.

This approach significantly strengthens the legal security of the trademark filing and helps anticipate risks related to the algorithmic origin of the sign.

Conclusion

Trademarks generated by artificial intelligence can be protected under French law, provided they meet the requirements of the Intellectual Property Code. By following the appropriate steps and involving qualified legal counsel, companies can effectively safeguard brand names created with the help of AI tools.

At Dreyfus Law Firm, we stand ready to provide comprehensive legal strategies tailored to each client’s needs. Our services include advising on trademark protection, and litigation support across multiple jurisdictions.

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

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FAQ

1. Can an AI-generated name be registered as a trademark in France?

Yes, provided that it satisfies the criteria of distinctiveness, lawfulness, non-deceptiveness, and availability as outlined in the Intellectual Property Code.

2. Does the origin of the name (human or AI) affect its trademark validity?

No. The CPI does not distinguish based on the origin of the sign. What matters is compliance with the legal conditions for registration.

3. What are the risks of registering an AI-generated name without proper legal vetting?

There is a risk of refusal by the trademark office or future litigation if the name infringes prior rights.

Written by Nathalie Dreyfus17/04/2025

Key considerations for wineries and wine businesses in the United States

Wine labeling is more than just listing the varietal, region, or vintage—it’s a creative and strategic endeavor that shapes a winery’s public identity. Elements such as labels, logos, colors, fonts, taglines, and even bottle shapes can become critical assets, each subject to complex legal protections. In the United States, two primary areas of intellectual property (IP) come into play: copyright (for creative works) and trademark (for brand identifiers). When properly leveraged, these legal tools can protect a producer’s investment in design and branding, deter counterfeiters, and bolster a winery’s reputation in a crowded market.

This article delves into copyright and trademark laws as they affect the packaging and labeling of wine, highlighting the interplay with Alcohol and Tobacco Tax and Trade Bureau (TTB) regulations, and offering practical guidance for ensuring comprehensive protection of your label designs.

The importance of packaging and labeling in the wine industry

Brand differentiation and market perception

Visual Identity: In a sector where numerous bottles vie for attention on retail shelves, your label and packaging are often the first points of consumer engagement. A carefully crafted design can influence purchasing decisions.
Storytelling and Heritage: Many wineries infuse their labels with elements reflecting their history, terroir, or family legacy. Whether it’s a depiction of a vineyard landscape or a stylized crest passed down through generations, these creative visuals become a key part of the wine’s story.

(Stat Note: According to data from the Wine Market Council, up to 70% of wine-buying decisions are made in-store based on label appeal and perceived brand quality.)

The convergence of art and commerce

Wine labels transcend mere product description, often functioning as miniature works of art. This dual function—practical (identifying the wine) and artistic (evoking themes, emotions, stories)—can lead to overlapping legal protections under copyright law (protecting creative expression) and trademark law (protecting distinctive brand elements).

Copyright protection for wine labels and packaging

What copyright covers

Copyright in the United States protects “original works of authorship fixed in any tangible medium of expression.” For wine labels, this typically applies to:

Illustrations, graphics, and artwork: Any unique drawings, images, or decorative elements.
Photographs: If the label features original photography of a vineyard, estate, or other subjects.
Textual designs: Certain stylized text arrangements that reflect creative authorship, beyond merely stating the wine’s variety or region.

Under 17 U.S.C. § 102, you automatically hold the copyright to your label from the moment it’s created in a fixed form. However, registering the work with the U.S. Copyright Office (copyright.gov) offers additional legal benefits, including the ability to seek statutory damages and attorneys’ fees if you prevail in an infringement lawsuit.

Registration benefits and best practices

Enhanced enforcement: Registered copyrights provide a clear record of authorship and ownership.
Public notice: By registering, you publicly assert your claim, deterring would-be infringers.
Copyright notice: Including a notice (e.g., © [Year] [Owner Name]) on the label strengthens your position, though it is not mandatory for protection.

(Practical Tip: Some wineries register new label designs as soon as they’re finalized, particularly for high-end releases or limited-edition bottles that rely heavily on unique artwork.)

Limitations of copyright in labeling

Mandatory statements: Label elements required by TTB regulations—such as alcohol content, origin, net contents—cannot be copyrighted. They are considered functional or factual.
Generic or descriptive terms: Words that merely name a varietal (e.g., “Cabernet Sauvignon”) or region (e.g., “Napa Valley”) are not subject to copyright protection.

Trademark protection in wine labeling and branding

Distinctive elements eligible for trademark

Trademarks can protect a wide range of “source identifiers,” such as:

Brand names and winery names: For instance, “Silver Oak” or “Jordan Winery.”
Logos and stylized text: A custom emblem or stylized brand wordmark.
Taglines or slogans: Marketing phrases that help consumers identify and recall your wine.
Bottle shapes or label configurations (Trade Dress): If they are distinctive and non-functional. For example, a uniquely shaped bottle could be considered protectable trade dress when the shape itself signifies the brand.

The role of the USPTO

In the U.S., trademark registration is handled by the United States Patent and Trademark Office (USPTO) (uspto.gov). A federal trademark registration confers:

Nationwide protection: Deters infringers beyond your immediate region.
Legal presumptions: Proof of ownership and exclusive rights to use the mark in connection with specified goods.
Potential for international filing: Serves as a basis for Madrid Protocol applications via the World Intellectual Property Organization (WIPO).

Label approval vs. trademark registration

It’s crucial to distinguish between TTB label approval and USPTO trademark registration:

TTB: Focuses on compliance with labeling regulations (alcohol content, origin, disclaimers). Approval does not guarantee any IP rights in the brand name or artwork.
USPTO: Examines distinctiveness, likelihood of confusion, and existing prior rights. A name greenlit by TTB might still face refusal or opposition at the USPTO if similar marks exist.

(Example: A wine label approved by TTB with the word “Sunset Ridge” could still be refused by the USPTO if “Sunset Ridge Cellars” is an existing registered trademark.)

Navigating overlaps and potential conflicts

Copyright vs. Trademark

Copyright covers the artistic aspects—illustrations, creative text layout, or photographs.
Trademark covers the brand name, logos, or distinct label designs recognized by consumers as indicating a particular source.
These two can coexist. For instance, a visually ornate label design can have copyright protection for its artwork and trademark protection for the brand name or a stylized logo.

Confusion with geographic terms and appellations

Wine labeling often highlights regions or appellations (e.g., Napa Valley, Sonoma Coast, Willamette Valley). While these terms may be necessary to describe the product, they generally cannot serve as trademarks if they are considered primarily geographic.

Appellation conflicts: Groups like the Napa Valley Vintners Association actively defend the Napa name, ensuring it’s only used by wineries meeting certain AVA (American Viticultural Area) requirements.
Deceptive marks: A label referencing a region or type of wine (e.g., “Champagne,” “Port,” or “Burgundy”) without following legal standards or sourcing may be found deceptive by the USPTO and refused registration.

Common pitfalls

Generic or descriptive brand names: A term like “Chardonnay Reserve” is unlikely to qualify for trademark registration if it only describes the wine.
Overreliance on disclaimers: The USPTO may require disclaimers for descriptive words—such as “Winery,” “Estate,” or “Vineyards”—to avoid granting exclusive rights over generic or descriptive terms.
Failure to monitor: Neglecting to keep an eye on new trademark filings or unauthorized uses of your art or brand name can allow infringers to establish competing rights.

Case studies, statistics, and a hypothetical scenario

Case study: artistic label dispute

A California boutique winery, “Moonlight Cellars,” hired a freelance artist to create a highly detailed label for its new Merlot. The label featured a watercolor painting of an owl perched under a moonlit sky.

Copyright conflict: The artist later discovered the winery had slightly modified her painting for limited-edition releases without seeking permission. She filed a copyright infringement claim.
Trademark overlap: The winery had successfully registered “Moonlight Cellars” as a trademark but had neglected to secure permission for derivative use of the artwork.
Outcome: Through negotiation, the winery purchased additional rights. This underscored the need for clear licensing agreements that address both the original and potential future uses of label artwork.

Stats on wine label design and IP registration

A 2025 report by the USPTO indicated that trademark applications within Class 33 (wines and spirits) rose by 12% year over year, reflecting the increasing number of independent labels and craft producers. Separately, the Graphic Artists Guild noted a 20% rise in requests for label design-related copyright registrations, emphasizing the growing commercial importance of visual identity in the wine sector.

Hypothetical client example: Golden Crest Wines

“Golden Crest Wines,” a Washington-based winery, launched a new Rosé line with a stylized gold crest design. They:

Secured a trademark for the name “Golden Crest Wines” and the stylized crest logo via the USPTO.
Registered the label artwork with the U.S. Copyright Office to protect the crest’s elaborate design and background art.
Ensured TTB compliance by accurately listing the AVA and alcohol content.

Result: A cohesive IP strategy minimized the risks of both brand confusion and unauthorized replication of the label design.

Practical tips for protecting wine packaging and labels

Use written agreements for artwork

Whenever hiring freelance designers or agencies:

Clarify ownership: Decide whether you, as the winery, will own the full copyright upon creation, or whether the artist retains some rights.
License scope: Define if the artwork can be used across multiple product lines, websites, or future limited editions.
Work-for-hire provisions: In many cases, you must explicitly state that the work is “made for hire,” otherwise the artist may retain the copyright.

Conduct thorough searches before launch

USPTO TESS: Check for existing marks that could conflict with your proposed brand name, logo, or slogans.
Copyright Office records: If using stock imagery or previously commissioned art, ensure no overlapping claims or restrictions exist.
Appellation guidelines: Verify any TTB or AVA requirements for wording, disclaimers, or usage permissions.

Register, monitor, and enforce

Timely registration: File for trademark registration as soon as you decide on a brand. Similarly, register label designs or other major creative elements with the Copyright Office.
Monitoring new filings: Watch for potential conflicts in the USPTO Official Gazette and relevant creative marketplaces (e.g., popular design platforms).
Take swift action: If you spot an infringing label or brand name, consider sending a cease-and-desist letter or filing an opposition (for trademarks) or infringement suit (for copyright) where appropriate.

Plan for international protection

For wineries aiming to export or eventually tap into foreign markets (EU, UK, Asia, etc.):

Trademark extension: The Madrid Protocol allows you to extend your USPTO registration internationally through WIPO (wipo.int).
Labeling laws abroad: Investigate local regulations on disclaimers, mandatory health warnings, and protected geographical indications (like “Rioja” in Spain or “Bordeaux” in France).

Conclusion

In a competitive landscape where packaging and labeling speak volumes about your wine’s quality and origin, both copyright and trademark laws serve pivotal roles. Copyright can guard the creative essence of your label—its artwork, typography, and visual flair—while trademark secures your brand identity, ensuring that names and logos become cornerstones of consumer trust.

When carefully managed, these protections deter copycats, elevate brand perception, and may even become valuable business assets for expansions or partnerships. However, success hinges on anticipating legal hurdles, from TTB compliance to potential conflicts with existing marks or appellations.

Why work with Dreyfus?

Recognized Expertise: With over 20 years of experience in intellectual property and a deep understanding of wine regulations, our team assists clients in creating ironclad label strategies.
Global Network: We facilitate international registrations, ensuring that wineries eyeing overseas markets remain protected under multiple jurisdictions.
Tailored Guidance: Each winery’s story is unique. We offer strategic advice adapted to your creative vision, marketing goals, and compliance needs.

The cabinet Dreyfus et Associés is in partnership with a worldwide network of lawyers specialized in Intellectual Property.

Ready to protect your wine’s visual identity?

Contact us to develop a customized plan to safeguard your label and brand assets.
Subscribe to our newsletter for the latest legal updates in wine labeling and IP.
Download our practical guide, “5 Essential Tips for Copyright and Trademark Protection in Wine Labeling,” featuring case studies and checklists.

Additional Resources

USPTO: uspto.gov
TTB: ttb.gov
U.S. Copyright Office: copyright.gov
WIPO: wipo.int
Graphic Artists Guild: graphicartistsguild.org

Shape your wine’s story with confidence—fortify your labels and packaging using robust legal frameworks.