Untitled - Novagraaf

Transcription

Patents
1. The developments in the European Patent Convention,
an update.......................................................................................P. 3 à 4
2. Computer-implemented inventions, or the legal adventures
of the patentability of software, continued .......................................P. 5 à 6
Trademarks, Designs & Models
1. Exploring the fickle practices of the offices .....................................P. 7 à 10
2. Protecting logos ............................................................................P. 11 à 12
3. Famous surnames, first names and trademarks ..............................P. 13 à 14
Domain names
1. Infringement on the Internet : the French riposte ............................P. 15 à 18
N o v a g r a a f F r a n c e - N o v a g r a a f Te c h n o l o g i e s
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1
Dear Readers,
T
his autumn promises to be busy, with a host of events in which the Novagraaf
Group will be participating: the Congress of the AIPPI (International
Association for the Protection of Intellectual Property), to be held in Paris from
3 to 6 October, and the PTMG (Pharmaceutical Trade Marks Group) conference in
Athens from 29 September to 1 October.
These conferences are an opportunity for us to meet you, of course, but also to
learn about recent developments in our area of Intellectual Property: these
developments are the subject of articles in our newsletter, for example with regard
to the European Patent Convention (EPC), or the French response to Internet
infringement via the procedure for resolving disputes over .fr domain names.
Finally, the rather erratic practices of some offices, the relationship between fame
and trademarks and how to protect your logos are other topics we look at in our
letter.
Enjoy your reading.
Bérengère EGASSE
Intellectual Property Attorney
(Trademarks, Designs & Models)
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P
T
A
at e n t s
he developments in the
European Patent Convention,
an update
W
hen revising the European Patent Convention
(EPC), which gave rise to the so-called EPC
2000 text, the diplomats in charge of the
"Articles" section of the Convention sought to grant
greater power to the Administrative Council, in charge of
the "Rules" part, to enable it to adapt the EPC more
easily and more quickly to developments in the
world of patents, because holding a diplomatic
revision conference is a slow and cumbersome
procedure. As a result, the "Articles" section of the
EPC was simplified and some aspects transferred
to the "Rules" part which is amendable by the
Administrative Council.
Since the implementation of the EPC 2000, the
Administrative Council has not been slow in using
this new power.
Without going into the procedural details, because
that is not the purpose of this Newsletter, it is worth
recalling the main modifications and the consequences
they have had for applicants.
Marc Bethenod
(Patents)
Among them is the fact that the EPC has undergone
substantial changes with regards to filing deadlines
for divisional applications.
Since 1 April of this year, divisional applications can
only be filed within two years of the receipt of the
first Communication from the Examining Division or
of any Communication in which the Examining
Division has objected that there is a unity of invention
issue. For "old" pending requests, the deadline is
extended until 1 October 2010 if the calculations
show that the previous rule led to a deadline before
that date.
This rule was established by the EPO because it
was found that some applicants were managing to
maintain a pending application by filing successive
divisional applications for as long as the corresponding
product had not been industrialised/marketed in
order, in the end, to have a patent whose claims would
adequately cover the marketed product. However,
the EPO held that this was an abuse of process and
therefore introduced this new rule to prevent this
practice.
In its current form, this rule poses numerous
practical problems and, in particular, that of
overrunning the period of two years, to the extent
that the association of European representatives
has brought the matter up before the EPO. It is
therefore not impossible that the EPO will make
new changes, perhaps not to the rule itself but at
least to the way that is implemented, for example by
informing the applicant of when the period of two
years begins.
The second rule change concerns the status of the
written opinion associated with the European
search report, or the international search report if
the EPO was the research organisation (which is
the case for French applicants). Now, if this opinion
contains objections, a response must be made
before the actual examination begins.
Thus, in practice, this opinion must be considered
as a Communication from the Examining Division,
which must be answered no later than the payment
of the examination fee or the confirmation of the
request for examination.
......
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P
A
at e n t s
This requirement is particularly tough for PCT
applications entering the European phase, because
the response must be made no later than following
the so-called R. 161-162 notification which means
that there is only one month to answer. This means
that it is important to have prepared the response
beforehand, either as soon as or even before the
entry into the European phase, or following receipt
of the international search report.
The same is true for the amendment which will
come into effect on 1 January 2012 and which
obliges the applicant to provide the EPO with the
result of the priority claim search report, in cases
where a priority is being claimed, of course. In the
case of France, as the EPO is the research
organisation, it already has this information at its
disposal and no further formalities will be necessary
as a result of this new rule.
Other changes have an impact mainly on
applications from non-European countries where
practices are very different from those of the EPO.
For instance, there is the obligation to give details
of the origin of modifications by referring to the
registered document as well as the possibility for
applicants to select a group of claims on which they
wish the search to be carried out when there are a
number of independent claims of the same type.
When we examine these new rules we observe that,
under the pretext of improving quality, the EPO is
seeking to maximise the productivity of its
examining divisions by forcing applicants to abide
by ever increasingly formal rules so that
applications become ever more standardised. █
Marc Bethenod
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P
C
A
atents
T
omputer-implemented inventions
or the legal adventures of the
patentability of software, continued
his spring, the Enlarged Board of Appeal
issued an opinion on the case law that has
grown up around the Boards of Appeal of the
European Patent Office on the patentability of
inventions relating to, or including, software. Some
time earlier, the Supreme Court of the United States
of America had reached a decision on the same
subject (the so-called "Bilski" case).
The decision of the Enlarged Board of Appeal
upheld the jurisprudence of the Boards of Appeal,
which has at least ensured stability and legal
predictability, if nothing else. Software-implemented
inventions are therefore potentially patentable
provided they are new inventions, demonstrating an
inventive step and industrially applicable, as for all
other inventions.
Marc Bethenod
(Patents)
We will not focus here on the novelty aspect, which
is indistinguishable from all other kinds of invention,
and turn our attention to the notion of inventive step
which is in fact the main criterion used by the EPO
to determine the validity of an application such as
this.
With the conventional method of the EPO, known as
the "problem-solution" method, the examiner must
search for the prior art closest to the invention. In
general, this is a document dealing with the same
area as the invention and sharing the most features
in common with it.
By comparing this document with the claimed
invention, the examiner then must list all the
characteristics of the invention which are not to be
found in the closest document.
Then, and here lies the specificity of analysing
these kinds of invention, he must separate the socalled technical features from the non-technical
features. A feature is said to be "technical" if, to put
things rather schematically, it involves something
physical, for example data as a given set of bits. A
feature is called "non-technical" if it relates to a
convention such as money, a business, a marketing
plan, etc.
What are the main points to consider
when seeking protection for an invention
of this kind through a patent?
The invention must be an invention: that is to say
that an invention must be technical in nature in the
means by which it is implemented or in its purpose.
Consequently, a new economical method of tax
planning is not an invention. If this same method
were implemented on a computer, it would not be an
invention either because, as the jurisprudence
holds it, the mere circulation of electrical currents in
accordance with the usual operational method of
computers does not make the invention technical.
To assess inventive step, it is only the technical
features that should be taken into consideration
when defining the objective technical problem
solved by the claimed invention.
The analysis then continues in the conventional
manner by establishing whether the prior art
referred to and/or general knowledge would have
prompted the person skilled in the art, when
confronted with the same objective technical problem, to
modify or adapt the most similar prior art such that he
would have arrived at a result falling within the
terms of the claim and consequently achieving what
the invention achieves.
......
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at e n t s
This means that the EPO examines the patentability
of computer-implemented inventions more through
the prism of inventive step than by looking at the
possible exceptional nature of the patentability of
computer programs "as such".
Experience shows that this analysis works well in
most situations, but it has its limits in certain
situations where the very definition of the technical
aspect is a problem. The debate therefore is shifted
onto a different question: is this feature technical or
not? The way that the feature in question is
described can therefore have a crucial influence on
the response to that question.
It is therefore important to take this different approach into
account when drawing up an application, if the intention
is to extend it to the US.
Fortunately, other offices, such as the Chinese Patent
Office, use an approach similar to that of the EPO.
Therefore, despite opposition from a number of very
vocal lobbies, the patenting of a computer-implemented
invention is still possible in Europe by following the
rules laid down by the jurisprudence over the last 15
years. █
Marc Bethenod
To muddy the waters a little further, we would simply
recall that the American jurisprudence on this matter
does not use the notion of "technicality" but other
notions such as, for instance, the transformation of a
physical element or the use of a machine.
......
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E
A
ra d e m a r k s , D e s i g n s & M o d els
T
xploring the fickle practices
of the offices
rademark law in almost all countries all over
the world says more or less the same thing,
that is that names and denominations of any
kind can be registered as a mark, such as words,
groups of words, surnames and geographical names,
pseudonyms, letters, figures and abbreviations,
providing that they are not only the necessary,
generic or usual name of the product or service,
that they are not used to refer to a feature of the
product or the service, that they are in no way
contrary to public order or good morality or that
their use is not legally prohibited or they are not
liable to mislead the public with regard to the
nature, quality or geographical origin of the product
or service.
Establishing whether a sign falls into one or other
of these categories is of course a subjective
matter and therefore can vary not only from one
examiner to another but perhaps more frequently
from one office to another.
If we take the case of letters, for example, the law
says that they can be considered as registerable
trademarks, but what do the offices say?
The practice of the OHIM as regards letters and
digits on their own is to accept to register them if
they are sufficiently stylised so that the overall
graphic impression prevails over the mere
existence of the letter or digit. In other words, the
graphic has to be designed in such a way that the
viewer forgets that originally it was just a digit or a
letter...
In 2006, the OHIM refused to register the letter α
for a German company marketing alcoholic
beverages. The examiner considered that this sign
was a faithful reproduction of the lower case Greek
letter "α", without graphical modifications, and that
Greek-speaking purchasers would not detect in that
sign an indication of the commercial origin of the
goods described in the trademark application. The
applicant challenged the refusal and the
subsequent decision and lost the case before the
Board of appeal.
Armelle Bié
The company finally succeeded before the Court of
First Instance, which accepted the argument that the
refusal of the OHIM was inadequately substantiated and
was de facto tantamount to refusing to register an
unstylised single letter, which is contrary to an
assessment based on fact, one of the principles of
Community regulations. The OHIM appealed to the
CJEU, which has just dismissed the appeal (ECJ
Decision of 9 September 2010).
It is interesting to observe that the examination
guidelines provided by the (Swiss) Federal Institute
of IP, an office which is not bound by Community
principles, define the notion of an abstract distinctive
character according to which a trademark cannot be
comprised by a sign which, under no circumstances
can be understood and recognised by the public as
distinctive sign and which will therefore be
automatically rejected.
The Swiss Office refused to register
the sign G (fig.1), on the grounds that
this letter alone is "not sufficiently
stylised", as the style was neither
unusual nor memorable according to
the Office, but simply a minor variation
of a standard letter.
fig.1
On the other hand, the Swiss office registers letters
from foreign alphabets, such as the Greek
alphabet, provided they are not descriptive in
nature. For example, the letter α used for alpha-ray
measurement devices was refused. But the result
is not that this letter is regarded on the basis of an
abstract distinctive character but on the basis of a
concrete distinctive character.
More enigmatic still is the Russian office which has
refused to register the sign GBB for clothing on the
grounds that it is "devoid of any distinctive character as
it consists simply of letters which have no verbal
character nor any special graphic form". The Russian
office has generously given us six months to come
up with a response.
However, registering global elements or more
elaborate graphics does not necessarily mean that
you are immune from administrative subjectivity.
......
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A
- Sacrosanct neutrality -
The Swiss Office refused to register the sign
Madonna (fig.2) for various products from classes
3, 9, 25 etc., considering that this sign is made up
of the "Italian word referring to the Virgin Mary,
Mother of Jesus, and is therefore liable to offend
the religious sentiments of consumers who belong
to the Christian community."
The applicant tried to reason with the Office,
emphasising that the sign had a number of
meanings other than that of referring to the Mother
of God, such as, inter alia, the first name of a rather
well-known American singer. The applicant
concluded by saying that in modern times, in
Switzerland, nobody's religious sentiments were
offended by the use of the word Madonna for
commercial purposes. In the many discussions he
had with the Office, the applicant also argued that
while the Christian community seemed to be the
reference public in this particular case, it was
important to take a step back from the Swiss
population to get a better idea of whether or not a
sign such as this jeopardised public order. As an
example, he cited the fact that the sign MADONNA
has been registered as a community trademark for
alcoholic drinks, without any objection, despite
being effective in a number of countries with a
much higher proportion of Christians than
Switzerland, such as Poland, Italy, Spain and
Portugal. The office replied that it is traditional for
alcoholic beverages to bear the names of saints
and so the public has become accustomed to this,
which explains why no one is shocked.
fig.2
fig.3
Our applicant was therefore truly dismayed to find
out that in the meantime the Swiss office itself had
accepted to register the sign MADONNA in classes 9,
16, 35, 38 and 41. This registration was justified by
the Office on the basis of the colours used which
divide the sign into two separate words, Ma and
Donna, thus obfuscating any religious character
and rendering the two cases entirely incomparable.
It would have been very easy for him to lose his
patience at this stage.
However, our stubborn applicant finally brought his
case before the Federal Administrative Court which
once again found against him last April in a
judgement which went into great detail on the
religious origins of the sign Madonna and which
sentenced him to pay court costs of 2500 Swiss
francs.
In the same vein, the Swiss Office also refused to
register the sign ST.MICHEL for foodstuff since "it
is a reference to one of the archangels and is
therefore likely to offend the sensibilities of some
of the people at whom the products under claim are
aimed, namely those belonging to the Christian
community."
Other offices indicate clearly that marks containing
words with religious connotations cannot be
registered. Similarly, the Kuwaiti Office informs
applicants that no registrations for pork or alcoholic
drinks can be accepted.
It is worth noting that the Swiss Office tries to help
applicants looking for a registerable Swiss
trademark by giving access on its website to a
database of signs with comments on whether or not
they are deemed as having distinctive character.
We learn, for example, that the word WESTERN is
not in principle considered to be a geographical
reference, and that PACIFIC is a priori acceptable,
except for seafood products. Similar to ATLANTIC"
https://www.ige.ch/markenpraxis/mapraxisf.htm.
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A
More royalist than the king ?
Profiling ?
It has now become a firmly established principle
that most offices consider that they are not bound
by decisions taken by foreign offices.
And consider the case of the
unfortunate guitar manufacturer
who wanted a community trademark
to protect his guitar headstocks
(fig.4).
For instance in 2008 the Benelux Office, which has
a reputation for severity in the examination of
absolute grounds, dismissed the sign FLEUR DE
MALT for flour in particular, on the grounds that
according to the definitions in the (French) dictionaries
LE PETIT ROBERT or Le GRAND LAROUSSE, the
word "fleur" refers to "the best part. Fleur de farine
[wheat flour]: the finest part of the meal." This
refusal was therefore based on the French
language, whereas the INPI had earlier accepted
to register this same sign without batting an eyelid.
It was the Benelux Office once again which refused
to register the sign TALENTSOFT especially for
"Software (recorded programs) for managing
human resources" on the grounds that "the sign
consists of the generic name TALENT and the
common computer abbreviation SOFT (for software).
These elements can be used to designate the kind
or quality of the products and services mentioned in
classes 9, 35 and 42. The noun phrase in question
is also descriptive." A flat refusal, then. And yet at
the same time, this sign has been registered in the
United Kingdom and the United States, both offices
that are reputed to be very demanding in this
regard, and where nobody could be suspected of
not knowing English.
fig.4
The OHIM rejected the mark, stating that
"Regardless of whether, in the professional
circles concerned, a guitar headstock can be an
indicator of origin, the assessment made of the
requested trademark has been unable to identify
any feature which could be perceived, at least by
part of the relevant public, as a reference to the
commercial origin of the products in question. The
examiner found that for a substantial proportion
of consumers, the trademark being applied for
was a conventional guitar headstock which is
primarily a functional element of the instrument.
He also concluded that while it was possible for
manufacturers to opt for different colours or shapes
for different elements of a guitar headstock, this
choice, from the point of view of consumers, was
based on purely aesthetic criteria. He held that
small differences that do fall within the scope of
what is customary in the trade do not lend
themselves to indicating the commercial origin."
In his appeal against the examiner's decision, the
applicant argued that the requested trademark
showed clear differences with the headstocks of
guitars by other manufacturers. The Board of
Appeal reviewed the examples of common guitar
headstocks across the sector which the applicant
had submitted to it during the examination
procedure and concluded that the shapes of guitar
headstocks could be very different. By comparing
the guitar headstock represented in the requested
trademark with these other various shapes, it
concluded that it did not fall outside the scope of
what is customary in the trade and was therefore
only a variant of one of these many shapes.
Is this still a case of an examination of a sign able
to constitute a trademark which indicates origin, an
argument which was swept aside right from the
outset by the OHIM, based on the criteria of shapes
which are different, or not, from those already in
existence (novelty? originality?).
......
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A
Conversely, the Swiss Office refused to
register the logo (fig.5) that had been filed for
toys on the grounds that this logo could take
the form of the products being designated. In
this case, the office seemed to be confusing a
three-dimensional trademark or model and a
two-dimensional logo, intended to be affixed to
the products.
fig.5
And finally, when the OHIM moves closer towards reality, it
is hard to believe: The OHIM Board of Appeal finally came to
accept the similarity between the marks LA GITANA and
QUINTANA, considering them to be phonetically similar, in
particular for French consumers for whom the onset
syllables GI and QUI are liable to be almost identical.
This is all the more the case that the products, namely
alcoholic beverages, are identical and "more often than not
these products (alcoholic drinks except beers) are ordered
in a noisy atmosphere, such as bars and restaurants, where
the slight phonetic differences between the trade marks
would be difficult to make out. In such locations, orders are
made orally and it is only sometimes possible to consult the
drinks menu before ordering. Furthermore, in a great many
cases, alcoholic beverages (unlike beers) are served directly
into a clear glass, without the possibility for consumers to
see the bottles from which they have been served." From
the reasonably aware and attentive consumer, we have
moved on to a consumer who is the victim of his environment. We
look forward to the day when the OHIM publishes a decision
taking into account the fact that the average consumer of
alcoholic drinks may be suffering from dullness of the
senses due to high blood alcohol levels. Infringement in the
liquor trade has a fine future ahead of it. █
Armelle Bié
Author's note: The trademarks mentioned in this article are
given for purely informational purposes and their citation can
under no circumstances be deemed infringing use. (Trust me
I am IP Attorney).
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A
rotecting logos
Y
ou have just created a logo,
i.e. a new and individual graphic
mark which will appear on your
marketing materials and also on
your products.
This logo will therefore very often be associated with
your wordmark and will in the same way identify
your company and your products in the eyes of
customers.
So you are wondering "How do go about protecting
it?" In France, three laws may apply :
- The law on copyright This law holds that protection begins as from the
moment the work is created. This protection is
obtained without any special formalities, the only
requirement being that the creation – in this case
your logo – is original.
The creator must ensure that he is able to prove the
paternity of the work, which proof can be provided
by any means.
The creator is automatically vested with the rights
over his work. This automatic nature is the source of
frequent disputes, especially in the case of logos
created by external suppliers at the request of
companies which then subsequently wish to change
their service supplier.
If the creation of the logo has been entrusted to an
external designer, you should check that there has
been an agreement on the transfer of economic
rights at the time the designer's fees are paid.
In the absence of a rigorously worded transfer
agreement, the designer retains ownership of the
graphic which he created and can therefore prohibit
the unauthorised reproduction of his work. This can
of course have serious consequences for the
company.
Pierre de Boisse
If on the other hand you have provided for the
proper assignment of the property rights, you
already have significant protection of your logo,
provided that it demonstrates originality.
- The law on designs and models This specific law protects not only the shape and
appearance of an object but also the outline of a
design, whether industrial or artistic. This law sets a
number of conditions for validity, but of them only
novelty is of interest here.
Unlike copyright, there are a number of formalities
for submitting a registration application containing a
reproduction of the logo to the authorities.
The legislation on designs has certain advantages,
but also disadvantages.
Once the model has been duly registered, it
provides a logo, if it has been demonstrated to be
novel, with absolute protection. This protection is
not limited to specific product and/or services. The
principle of speciality does not hold and the bearer
is entitled to claim exclusivity, regardless of the field
of activity.
The holder of a registered design is not required to
use it and cannot therefore incur forfeiture of his
rights for failure to use.
However, the lifespan of a model is limited and after
25 years of protection by successive extensions of
five years, the design falls into the public domain.
- The law on trademark rights This is the usual protection which covers distinctive
signs being recalled that a logo is a visual sign
affixed to the product or the packaging or any other
medium, identifying the manufacturer and its
products in the same way as a word mark does.
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ra d e m a r k s, D e s i g n s & M o d els
A logo registered as a trademark does not need to
be original because, unlike the requirements for
copyright law and for the law on designs and
models, the rights arising from a trademark are not
rights covering a new creation.
We have not recalled why it is useful to conduct a
priority search beforehand.
The requirement is simply that the sign be arbitrary
and fanciful.
Our advice is of course always to conduct a search
of this kind among the figurative marks in the class
or classes concerned, but we must nevertheless
emphasise that such a search, because a logo can
be protected by a number of distinct forms of legislation,
will necessarily be somewhat incomplete.
Registering a trademark provides very efficient
protection since the law has provided for a
procedure of opposition, which is an administrative
procedure whereby it is possible to obtain the
dismissal of a contentious prior sign without having
to apply to the Courts.
For example, while it is relatively easy to search
among the models in one of the international
classes under the Locarno Agreement, the same
does not hold true for a work protected simply by
copyright, because there is no register that can be
consulted.
Once again, protection under trademark law has
advantages and disadvantages.
A trademark has an indefinite lifespan, provided
that the renewal is sought regularly every 10 years.
On the other hand, the owner of the trademark has
a duty to use it because otherwise, there is a risk
that he will lose his rights if a third party brings an
action for forfeiture.
Trademark protection is limited only to those
products and/or services designated in the registration,
pursuant to the principle of speciality.
***
So when adopting a logo, there will always be a
degree of uncertainty about its availability, in
particular if it is original, because this originality
ensures that it has automatic protection without the
need to go through the formalities of registration. █
Pierre de Boisse
***
As we have seen, a figurative sign such as a logo
can be an amply protected because it is possible
for it to be covered by the accumulation of three
complementary laws: copyright, design right
and trademark law.
......
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ra d e m a r k s , D e s i g n s & M o d el s
A
amous surnames, first
names and trademarks
trademark is defined by the Intellectual
Property Code as "a sign capable of graphic
representation which serves to distinguish the
goods or services of a natural or legal person".
Although the law sets down certain validity conditions for
trademarks, article L 711-1 grants each individual
considerable leeway in the choice of sign they wish
to use as a trademark.
Thus, since 1964, any person or entity may register
his or her surname, or that of a third party, as a
trademark.
Trademarks which consist of a surname are very
widespread today, particularly in the luxury and
haute couture sectors.
A number of celebrities have also taken this path:
many of them have decided to build on their reputation by
registering their surname as a trademark. Recently,
we have seen actor Gérard Depardieu, Céline
Dion and Johnny Hallyday register their name as a
trademark for a wine or a perfume.
A surname is an attribute of legal personality which
can be defended, in the event of infringement, on
the basis of Articles 57 and 1382 of the Civil Code.
Alexandra
Boyer de Choisy
Lawyer
The case law of the last thirty years has largely
established the principle that only famous family
names can be protected against unauthorised use by
third parties.
Fame is a condition for protecting a family name,
since fame alone can cause a likelihood of confusion
between a surname and a brand.
For instance, the court found against primary school
teacher François DOP, who was seeking the cancellation
of the trademark DOP owned by L’Oréal, but allowed
Alain Ducasse, the famous starred chef, to cancel
trademarks which used his surname and which had
been registered without his consent.
The commercial use of the surname of a celebrity is
his or her own exclusive right and therefore leads to a
form of unavailability for third parties. In other words,
a person who is well known can prohibit anybody else
using his or her name for business purposes, simply
because he or she is famous.
The holder of a trademark can be prosecuted for
fraud if he registers a well-known surname which
creates a risk of confusion between the products
being sold and the bearer of the name.
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ra d e m a r k s , D e s i g n s & M o d el s
Under Article L 711-4 g) of the Intellectual Property
Code, a surname is a priority which can be opposed
to third parties wishing to register it as a trademark,
provided that it is well known in the country.
French case law has become very protective of the
property interests of famous people. For instance,
in addition to protecting reputations on the basis of
surnames, the courts have also, in a particularly
surprising decision, decided to protect the first
name of a well-known person. This was the decision
taken by the Court of Appeal of Aix-en-Provence in
2007. In this case, the winner of a reality TV show
aired on the channel M6 obtained the transfer of a
contentious trademark comprising her first name,
Loana, on the basis that the name was extremely
well-known at the time the registration application
was made.
Because a first name is not considered as an attribute
of legal personality, the conclusion must be that the
court was seeking to protect the reputation of the
plaintiff.
The fame of a person thus generates a property right
over one's family name, but also over one's image.
The numerous disputes that arise from this will be the
source of considerable litigation, particularly if judges
grant the same level of protection to well-known first
names. It seems clear that the coexistence between
the right to a name and the right of trademarks is
dependent on the sovereign discretion of the courts,
since fame is simply an issue of fact. Case law on
these matters will need to be monitored carefully. █
Alexandra Boyer de Choisy
......
14
D
I
A
omain names
nfringement on the Internet :
the French riposte
V
iolations of Intellectual Property rights on the
Internet are frequent and take many forms.
For example
- the sale of counterfeit products that poses the
question of the liability of the various stakeholders
such as EBay,
- cybersquatting and other similar practices (e.g.
typosquatting and dotsquatting)
- or the fraudulent acts of third parties, and in
particular competitors, for speculative purposes, for
diverting customers or with intention to harm
(purchase of keywords with the trademark of third
parties or even the reservation of domain names
including registered trademarks).
Carole Roger
Regarding the fraudulent reservation of domain
names which infringe the rights of a third party,
there are several possible courses of action,
namely:
- an amicable attempt by the means of a cease and
desist letter sent to the holder of the domain name,
- a judicial proceeding that can seek to obtain the
payment of damages, but is a lengthy and costly
procedure for the rightholders,
- alternative dispute resolution procedures (ADR) by the
means of proceedings brought before authorities
such as the WIPO (World Intellectual Property
Organisation) in Geneva, the CMAP (Paris Centre
for Mediation and Arbitration) and the French
Internet Rights Forum (FDI).
These last proceedings often lead to swift decisions
(between one and two months maximum) for lower
costs. However, only the decisions of the WIPO are
legally enforceable and can lead to a decision to
transfer a domain name or have it removed.
Alongside these procedures, the AFNIC (Association
Française pour le Nommage Internet en Coopération),
which is the authority in charge of the registry of
French extensions, introduced a little over two
years ago (regulation adopted on 22 July 2008),
and only for domain names in .fr, a PRocedure for
REsolving cases of manifest breaches of the
provisions of the DECree of 6 February 2007 on the
allocation and management of Internet domain
names,
It is this procedure, more commonly known as
PREDEC, that we wish to focus on today.
......
15
D
A
omain names
WHO IS THIS PROCEDURE AIMED AT ?
This procedure covers beneficiaries eligible under
the provisions of Articles R. 20-44-43 to 46 and in
particular :
- national institutions, national public services, local
authorities and groups of local authorities, the
choice of domain name shall not harm the name,
image or reputation of the French Republic, or have
the purpose or effect of causing confusion in the
mind of the public (Art. R. 20-44-44),
It is important to note that the provisions of the
decree do not apply to registrations prior to 7
February 2007, although there is a specific
provision for the domain names of local authorities
(see the judgement of the Court of Cassation of 9
June 2009, on the domain name sunshine.fr).
Furthermore, there must be no judicial or
extrajudicial proceedings relative to the domain
name pending or undertaken for the duration of the
procedure.
_
- holders of intellectual property rights, a domain
name identical to or that may be confused with any
of these rights cannot be chosen, unless the
applicant has a right or legitimate interest in
asserting this name and is acting in good faith (Art
R. 20-44-45),
- to individuals whose family name is registered by
a third party who has no right or legitimate interest
in asserting this name and is acting in bad faith (cf.
Art. R. 20-44-46).
_
WHEN DOES THIS PROCEDURE APPLY?
This procedure is applicable only for clear cases of
violation in which the unlawful registration of the
domain name cannot be in doubt. This might for
example cover cases in which the domain name
• reproduces the exact names of the institutions of
the French republic, a public service, a public
institution;
• exactly reproduces the name of a local
government authority without the permission of the
deliberative assembly and falls outside the remit of
possible exemptions under the decree;
• reproduces a trademark identically or practically
identically, without the holder having a right or a
legitimate interest and if he is not acting in good
faith (Typosquatting, Dotsquatting);
• identically reproduces the family name of an
individual, without the holder having a right or a
legitimate interest and if he is not acting in good
faith
HOW DOES THE PROCEDURE WORK ?
The application form must be submitted online to
the PREDEC platform, accompanied by all the
relevant supporting documents and payment of the
AFNIC procedural costs, which are inexpensive
(250 euros net).
After the admissibility of the application has been
assessed, the defendant is informed and has 15
days to file an answer.
The AFNIC makes its decision known within fifteen
(15) calendar days of the expiry of the deadline for
the Holder to answer.
Depending on the remedy sought by the
Complainant, the AFNIC may order the Transmission of
the domain name to the complainant, the Blocking
or Deletion of the domain name, or may reject the
request. Contrary to legal proceedings, the purpose
of the Procedure is not to award damages to the
Complainant.
......
16
D
A
omain names
The substantiated decision of the AFNIC is set down
in writing and notified to the parties and to the
Registry Office.
Before the decision is enforced, the AFNIC allows
the parties to launch actions before the national
courts or start up an Alternative Dispute Resolution
(ADR).
As an illustration, some concrete examples of
recent cases :
1) No decision given :
- For the domain name misencil.fr, as proceedings
were pending with the Tribunal de Grande Instance
de Paris for similar events.
2) Applications rejected for domain names:
- mesfruits.fr : the bad faith of the defendant, who
did not use that name for an active site (web page
saying "it works!"), being not demonstrated. Similar
case for maul.fr where the domain name corresponded to
a blank web page.
- ressource.fr because this domain name was
registered at a date prior to the entry into force of
the decree.
- fnx.fr because the domain name corresponded to
a parked site linking to sites that were not competitors of
the complainant’s business.
- renault-ze.fr because the blatant violation was
not established, as the domain name in question
referred to a spoof site without any commercial
activity .
- secalliance.fr insofar as it was based on a company
name and that this cannot be considered an intellectual
property right.
3) Applications granted and transfer of domain
names ordered :
- geotaxi.fr insofar as this corresponded to an
identical trademark belonging to the complainant and
directed to a competitor's site.
- mericourt.fr as the domain name was identical to
the name of the town of Méricourt and corresponded to
an Internet site which contained commercial links to
sites of the dubious nature.
......
17
D
A
omain names
- wwwratp.fr since it was a clear case of dotsquatting
and given the fact that the domain name wwwratp.fr
referred to a parked site containing commercial
links to sites offering services identical or similar to
the RATP
In the same vein, see Decisions supertoinette.fr and
dolcevitagazdefrance.fr.
- auchan-online.fr because the domain was likely
to be confused with the AUCHAN brand, and that
evidence of bad faith on the part of the holder was
overwhelming, as he had attempted to sell the
domain name, invoking the possibility that
competing companies would attempt to purchase it.
In the same vein, see Decisions hypermarche-leclerc.fr
and bouyguestelecomm.fr.
- olivierclaude.fr because the domain name was
identical to the surname of the complainant and was
used for a site linking to online casinos. No
homonymy was proven.
***
Subject to meeting the necessary conditions, we
believe that this quick and cheap procedure is a
very useful tool, in particular for holders of intellectual
property rights who are frequently faced with the
fact that their domain name rights have been
affected.
By way of conclusion, it is also worth remembering
the advice of the AFNIC in this matter: "prevention
and watchfulness are the best weapons!". It is
highly recommended that all contentious conducts
be detected as quickly as possible, in particular by
means of automated surveillance, in order:
"1) to be informed as quickly as possible and to
stop the disorder swiftly,
2) not to lose the evidence of the holder's bad
faith,
3) to avoid the risk of being accused of a lack of
response in the event of an application for summary
proceedings."
We are of course on hand to help you in your
domain name reservation and defence strategy. █
Carole Roger
......
18

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