Search terms: Intellectual Property, France
The Paris Court of Appeal recently decided that while prior continuous use of the term 'Artocel' as part of a company name, trade name and signage could constitute a valid defence to a claim for trademark infringement, it could not justify registration and use of the domain name 'arcotel.fr'. The decision highlights the difficulties of French courts when attempting to reconcile traditional infringement provisions on the one hand and more recent domain name provisions on the other.
France recently adopted a new law on the safety of drugs and health products. The law contains various provisions aimed at strengthening the transparency of the Public Health Code, monitoring drugs and governing health products. Two provisions of this law also introduce exceptions to IP rights on drugs.
The Paris Court of Appeal recently rejected a request for a preliminary injunction brought by Novartis, the owner of a supplementary protection certificate (SPC) for a medicinal product, against Actavis, which used the product in combination with another active ingredient. The court held that Novartis could assert its rights under the SPC only against third parties that manufactured or sold its product alone.
The Paris Court of Appeal recently ruled in favour of Nintendo against retailers and importers of linker devices. The digital rights management set up by Nintendo on its games consoles prevents users from using counterfeit games. However, a linker can circumvent the digital rights management and allow counterfeit games to be played on a Nintendo games console.
The Third Chamber of the First Instance Court of Paris, which has exclusive national jurisdiction over patent litigation, recently began accepting for the first time the filing of documents that are similar to the 'protective letter'. A potential infringer now has the opportunity to provide the presiding judge in advance and ex parte with its defence against a potential infringement.
In October 2009 the French Association for Internet Names and Cooperation (AFNIC), the registry for the '.fr' country-code top-level domain, was ordered to pay compensation of €4,500 to the owner of the FRANCE LOTS trademark for failing to 'freeze' a domain name upon its request. However, to AFNIC's great relief, this decision was recently overturned.
The Comité Interprofessionnel du Vin de Champagne (CIVC) has lost a complaint filed under the Uniform Domain Name Dispute Resolution Policy with the World Intellectual Property Organisation. The complaint involved the domain name 'champagne.co' and was denied on the grounds that the CIVC failed to prove that the domain name was identical or confusingly similar to a trademark or service mark in which it had rights.
The private copying exception and copyright levies are hot topics in France.The country's highest administrative court recently issued an important ruling in this regard, cancelling an earlier decision of the Private Copy Commission because it failed to distinguish between recording devices for professional use and recording devices that could be deemed to be used for private copying.
The Criminal Chamber of the Supreme Court has rendered a decision regarding the criteria to determine the jurisdiction of French courts in case of online infringement of IP rights. Although the other chambers of the Supreme Court had previously considered the relevant public to be the sector of the public that is "attracted" by a website, this new decision seems to consider that the relevant public is the targeted public.
The Paris Court of First Instance has ruled that the use of the term 'free' in a domain name was not free, since it had become a well-known trademark owned by French internet service provider Free SAS. The court rejected Osmozis's contention that Free's trademark in the term 'free' was descriptive of the products or services for which it was registered.
The Paris Court of Appeal has confirmed that the purchase of keywords constitutes trademark use in the course of trade and can also constitute unfair competition. However, the reservation of domain names with the mere intent to prevent competitors from registering them, but without using them, cannot be considered to be trademark use, although it may constitute an act of unfair competition.
The Paris Court of First Instance has ruled in favour of French national railway operator SNCF in a case involving the registration of a domain name infringing its SNCF trademark. Given the damages awarded in the case, the court decision sends a strong message to cybersquatters targeting SNCF, its trademarks and domain names.
In recent years a comprehensive framework has been built around trademarks within domain names, making use of alternative dispute resolution procedures. French company La Cerise Bleue recently won a complaint filed with the World Intellectual Property Organisation over the rights to a '.fr' domain name, based on its rights in the French trademarks CERISECLUB and LA CERISE BLEUE.
The Supreme Court has held that a tobacco manufacturer had a legitimate interest in requesting the revocation of two trademarks owned by Next Retail on the grounds of lack of use. The court ruled that the registration of a subsequent trademark cannot be cancelled on the basis of trademarks that have not been put to genuine use within a continuous period of five years.
A recent decision of the Paris Court of First Instance has provided further guidance on the enforcement of performance and database rights under French law. The court held that the redirection of an internet user to a window showing a television programme did not constitute performance of that television programme. Furthermore, the provision of such links did not breach database rights.
The Supreme Court has confirmed that Chanel SA had legitimate reasons to oppose the further marketing and sale of its products by Caud SARL, which operates a discount store business, in accordance with Article 713-4 of the IP Code. Chanel's infringement claim was based on the unsatisfactory conditions in which Chanel's products were advertised and offered for sale in the discount store.
The First Chamber of the Supreme Court has rendered a key decision regarding the right to publish a work protected by French author rights. As the owner of the right to publish posthumous works was not the same as the owners of the patrimonial rights in the same works, the court had to determine who was entitled to enter into a publishing contract regarding these works.
Since 2003 it has been possible to register domain names containing characters outside the basic Latin alphabet, presenting new opportunities for cybersquatting. French company Celio France SAS was recently a victim of this behaviour, but successfully challenged this before a World Intellectual Property Organization panel, which agreed that the domain name 'célio.com' was confusingly similar to its trademarks.
The town of Tignes in France recently failed to obtain the transfer of the domain name 'tignes.com' under the Uniform Domain Name Dispute Resolution Policy. The respondents, two residents of the town, convinced the panel that their website was non-commercial and dedicated to the history of the town of Tignes, and thus did not infringe the complainant's rights.
The Paris Civil Court of First Instance has confirmed that Ferrero SpA's three-dimensional trademark for products in Class 30, including sweets, is valid following a challenge brought by German company Candy Team. The court also ruled that Candy Team had sought to promote its own products by taking undue benefit from the investments made by Ferrero for its Tic Tac products, which constituted distinct acts of parasitism.
The Paris Tribunal of First Instance recently issued a ruling involving the domain names of two rival companies which reaffirmed the strength of domain names as protectable, distinctive signs and their potential priority over trademarks. Mistergooddeal filed an action against MGD for trademark infringement and claimed damages of €100,000 and €10,000 in legal fees.
Hansgrohe AG owned an EU design for its Raindance shower head. It instituted legal proceedings for design infringement and unfair competition against the owners of the Lagoone shower head, which was protected as a French design. The Paris Court of Appeal overturned a first instance decision, deciding that the Lagoone shower head infringed Hansgrohe's design rights on its Raindance shower head.
'Texto' is the French word for text message. The Paris Court of Appeal recently confirmed that the term 'texto' could not be registered as a trademark, thus confirming the cancellation of the trademark TEXTO, as registered by Société Française du Radiotéléphone.
Under French law, an infringement can exist if an allegedly infringing product has all the essential features of the claim, even though there is no literal infringement. The courts have developed a liberal, pro-patentee doctrine of equivalents - a means whose structure does not literally reproduce the claims of the patent is equivalent if it has the same function as the patented means and achieves similar results.
La Française des Jeux has the state monopoly on the organization of sweepstakes in France and owns a number of trademarks in connection with its business, such as LOTO, LOTOPHONE and SUPERLOTO. It recently successfully obtained the transfer of 27 '.fr' domain names from a registrant which had attempted to 'free ride' on the fame of its trademarks.
Société Du Figaro, publisher of the long-established Le Figaro newspaper, has successfully obtained the transfer of the domain name 'lefigaro.tv' under the Uniform Domain Name Dispute Resolution Policy. The panel confirmed that the domain name was identical to the LE FIGARO trademark and confusingly similar to the trademark LE FIGARO TV MAGAZINE.
The Comité Interprofessionel du Vin de Champagne is responsible for managing, promoting and protecting the CHAMPAGNE appellation of origin. It has recently succeeded in recovering several domain names which infringed its trademark rights, the latest being 'champagne.ie'.
The French Intellectual Property Office (INPI) was recently embroiled in a dispute over its website 'e-soleau.org'. As the INPI was clearly the first to register the domain name and could submit proof of trademark rights, the World Intellectual Property Organization had no difficulty in denying a request for the transfer of the domain name to the complainant.
A German magazine publisher successfully obtained cancellation of the domain name 'maxi.fr' on the basis of its own MAXI trademark. However, the next day the domain name was registered by a French waste management and research company. The publisher failed in its attempt to block this registration on the grounds of trademark infringement and unfair competition.
The Supreme Court has recently ruled that there was no act of unfair competition in the registration of the domain name 'argus.fr', as the term 'argus' had acquired a generic nature in the public's mind. The court noted that the registrant used the domain name for non-competing activities, suggesting that the court might have held otherwise had the activities been competing.
Some internet business models, such as the use of trademarks in keyword advertising, collide with the law of certain jurisdictions. This is the case in France, where the courts have issued numerous decisions against the providers of keying services. French case law has forced Google to revise its AdWords system in order to be less vulnerable and demonstrate its willingness to work with brand owners.
In 2005 the Paris Court of First Instance found Sedo GmbH - a company that organizes the sale and purchase of domain names - liable for trademark infringement and ordered it to pay €10,000 damages plus costs. The Paris Court of Appeal has now confirmed the first instance decision and ordered Sedo to pay damages of €75,000 plus costs.