Hogan Lovells updates

Success for Saone-et-Loire
Hogan Lovells
  • Intellectual Property
  • France
  • June 26 2017

The Versailles Court of Appeal recently affirmed the Nanterre Court of First Instance's decision in relation to the transfer of three domain names infringing the trademark of a collectivité territoriale (the catch-all term for French communes, departments and regions). The court of appeal reviewed three decisions delivered under SYRELI, an alternative dispute resolution procedure, to resolve domain name disputes under the '.fr' country code extension for France.

Paris Court of Appeal clarifies confusion
Hogan Lovells
  • Intellectual Property
  • France
  • May 15 2017

The Paris Court of Appeal recently found that, among other things, use of the domain name 'lecomptoirducoton.fr' had resulted in both trademark infringement and unfair competition in relation to the trademark COMPTOIR DES COTONNIERS. According to the court, when a domain name is not identical to a trademark, the likelihood of confusion between the two signs should be assessed. This assessment includes a likelihood of association, which should be evaluated internationally.

Identity theft by domain name
Hogan Lovells
  • Intellectual Property
  • France
  • May 01 2017

The Paris Court of First Instance recently ordered the transfer of a domain name consisting of the name of a person whose identity had been misused, most likely fraudulently. The court noted that, under the Post and Electronic Communications Code, the registration or renewal of a domain name may be refused or the domain name may be cancelled if it likely infringes IP or personality rights, unless the domain name holder has a legitimate interest in the domain name and is acting in good faith.

No requirement for domain names to be distinctive in unfair competition claims
Hogan Lovells
  • Intellectual Property
  • France
  • March 13 2017

The Court of Cassation recently provided a useful clarification in relation to unfair competition claims based on domain names. The court stressed that a domain name need not be either distinctive or original for an unfair competition claim to be admissible, but that these are relevant simply when assessing likelihood of confusion.

Domain name transferred under UDRP restored in absence of infringement
Hogan Lovells
  • Intellectual Property
  • France
  • February 27 2017

The Paris Court of Appeal recently ruled that a domain name that was transferred under the Uniform Domain Name Dispute Resolution Policy had to be transferred back to its initial owner due to the absence of trademark infringement. The court stressed that it was insufficient for the allegedly infringing website merely to be accessible in France or the European Union.

Disparagement or FRAND offer?
Hogan Lovells
  • Intellectual Property
  • France
  • January 09 2017

The Marseille Commercial Court recently ruled that the sending of letters to the customers of a smartphone creator and seller warning them against possible infringement constituted offers for a fair, reasonable and non-discriminatory licence and was thus not considered unfair competition. The key discussion was not patent infringement, but rather unfair competition due to the sending of letters by a non-exclusive licensee enforcing a standard-essential patent.

Domain name complainant gambles and wins
Hogan Lovells
  • Intellectual Property
  • France
  • August 22 2016

A World Intellectual Property Organisation panel recently ordered the transfer of a domain name that misspelled the complainant's trademark and was used to provide online gaming, casino and gambling services. Under the Uniform Domain Name Dispute Resolution Policy, the panel held that the respondent was using the fame of the complainant's trademarks to improperly increase traffic to its website for commercial gain.

Court rules that proteins produced through different methods are same product under SPC regulation
Hogan Lovells
  • Intellectual Property
  • France
  • August 15 2016

In 2007 the US government filed a supplementary protection certificate (SPC) application in regard to a European patent for proteins used in the Cervarix vaccine, which was rejected on the basis that the proteins were identical to those covered by the SPC corresponding to the Gardasil vaccine. The dismissal was recently upheld on appeal on the basis that the proteins were a single product, regardless of their potentially different forms and manufacturing methods.

Court orders transfer and damages for fraudulent domain name registration
Hogan Lovells
  • Intellectual Property
  • France
  • May 16 2016

In a recent decision the Paris Court of First Instance ruled that a domain name had been fraudulently registered, ordering the transfer of the domain name to the claimants and awarding €2,000 in damages. This decision is a useful illustration that, under French law, a court can order the transfer of a domain name registered or used fraudulently, and that a party whose rights have been infringed can seek and obtain a specific damages award.

Court finds domain name violates rights in trade name and copyright
Hogan Lovells
  • Intellectual Property
  • France
  • March 14 2016

The Nanterre Court of First Instance has held that the domain name 'cecilederostand.fr' had been registered fraudulently and in violation of the claimant's rights in the trade name 'Cécile de Rostand' and the domain name 'cecilederostand.com', and its copyright in the virtual character Cécile de Rostand.

Clarification of conditions of enforcement of 'silence amounts to acceptance' principle and its exceptions
Hogan Lovells
  • Intellectual Property
  • France
  • January 25 2016

The new Decree 2015-1436 specifies the conditions of enforcement of the 'silence amounts to acceptance' principle and its exceptions for requests relating to industrial property. The decree clarifies uncertainties around the enforcement of exceptions relating to the rights of citizens in their relationships with administrative agencies, particularly in relation to compliance with the IP Code.

Infringement claim relating to software rejected for being too vague
Hogan Lovells
  • Intellectual Property
  • France
  • September 07 2015

The Paris Court of First Instance recently dismissed a software and database-related infringement claim because the details of the claim were too vague and ambiguous to allow the defendant to formulate a valid defence. The court found that the claim was confusing as it did not clearly specify on which work of authorship the claimant was basing its infringement claim and possibly relied on multiple different IP rights.

Interim relief for unauthorised transfer of domain names with Community trademark
Hogan Lovells
  • Intellectual Property
  • France
  • June 08 2015

The Paris Court of First Instance recently granted an injunction to a French food and tea company for the immediate transfer of six domain names which had been initially registered in its name by a Dutch web designer which had then transferred them to its own name without authorisation. The court claimed jurisdiction as the dispute related to the infringement of a Community trademark on French territory.

Last episode in Vente-privée.com saga
Hogan Lovells
  • Intellectual Property
  • France
  • May 11 2015

The Paris Court of Appeal has ended the ongoing judicial debate over whether the trademark consisting of the domain name VENTE-PRIVEE.COM is distinctive for e-commerce services for the purpose of French law. This long-awaited decision resolves the disagreement between two different sections of the Paris Civil Court, which issued contradictory decisions at the end of 2013 in this respect.

New episode in Vente-privée.com saga
Hogan Lovells
  • Intellectual Property
  • France
  • March 16 2015

The Lyons First-Instance Tribunal recently considered whether a trademark consisting of the domain name VENTE-PRIVEE.COM could be considered well known for the purposes of French law. The decision came after the Paris First-Instance Tribunal issued two contradictory decisions on the same issue at the end of 2013, leaving it to the Paris Court of Appeal to resolve the conflict in a much-anticipated decision.

Addition of a top-level domain can make a trademark distinctive
Hogan Lovells
  • Intellectual Property
  • France
  • January 05 2015

The Paris Court of Appeal recently ruled that while the term 'SeLoger' on its own was descriptive in relation to real estate, it was distinctive when combined with the top-level domain '.com'. The court's reasoning was based on the fact that the domain name 'seloger.com' and associated website had been extensively used before the claimant registered 'SeLoger.com' as a trademark.

New laws proposed in field of copyright and cultural heritage
Hogan Lovells
  • Intellectual Property
  • France
  • November 10 2014

The minister of culture and communication recently presented a proposal for adapting French law to EU law in the field of copyright and cultural heritage. The proposal aims, among other things, to increase the term of protection of the rights of performers and producers of phonograms and videograms. The government has initiated an accelerated procedure for the proposal.

Council of State cancels another Private Copy Commission decision
Hogan Lovells
  • Intellectual Property
  • France
  • October 27 2014

The Council of State has cancelled a decision of the Private Copy Commission because, in holding that all recording media were subject to a private copying levy without providing an exemption or a refund right for media – especially those bought for professional purposes – whose terms of use do not allow for a presumption of use for private copying, the decision ignored the applicable provisions of the IP Code.

Domain names may infringe droit d'auteur
Hogan Lovells
  • Intellectual Property
  • France
  • September 08 2014

The Lyons Court of Appeal has confirmed a first-instance decision which found that the registration and use of a domain name constituted not only trademark infringement, but also infringement of French copyright law, known as 'droit d'auteur'. Droit d'auteur is approximately equivalent to copyright law in other countries, although there are some important differences.

French football league draws in domain name recovery battle
Hogan Lovells
  • Intellectual Property
  • France
  • June 09 2014

The French professional football league, the Ligue de Football Professionnel, recently attempted to recover two domain names corresponding to the designation of the French main football competition, the Ligue 1, using the Uniform Domain Name Dispute Resolution Policy (UDRP). While it managed to score 'ligue1.biz', its shot passed wide of the goal for 'ligue1.org'.

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