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French Court Clarifies the Limits of Added Subject-Matter in Divisional Patents – Wii Controller Case

Mon, 16 Feb 2026 16:18:59 GMT

Added Subject-Matter and Intermediate Generalisation: French Court Reaffirms the “Direct and Unambiguous” Test

On 3 December 2025, the French Court of Cassation issued an important ruling concerning the prohibition of added subject-matter in the context of a European divisional patent relating to a Wii video game console controller.

The decision provides valuable guidance on:

the assessment of inadmissible intermediate generalisations;
the interpretation of patent documents by national courts; and
the role of the “person skilled in the art” in the added subject-matter analysis under the EPC.

Legal Framework

Article 123(2) EPC prohibits amendments that extend the subject-matter of a European patent beyond the content of the application as originally filed.

Under Article 138(1)(c) EPC, a European patent may be declared invalid if:

its subject-matter extends beyond the content of the application as filed; or
where granted on the basis of a divisional application, it extends beyond the content of the earlier (parent) application.

The applicable test is whether the amended subject-matter derives directly and unambiguously , using common general knowledge, from the earlier application as filed.

Background of the Case

Nintendo Co. Ltd., proprietor of European divisional patent EP 518 relating to the Wii console controller, initiated enforcement actions against Bigben Interactive, a company marketing video game accessories.

In response, Bigben brought revocation proceedings before the French courts against the French part of EP 518.

During prosecution before the EPO, the patent claims had been amended to include the presence of an acceleration sensor located inside the controller housing.

The Paris Court of Appeal (21 April 2023) invalidated the French part of the patent, holding that:

the addition of the acceleration sensor resulted in an inadmissible intermediate generalisation, and
the subject-matter extended beyond the content of the earlier application.

Nintendo appealed to the Court of Cassation.

The Court of Cassation’s Ruling

The Court examined two central issues.

1. Distortion of the Patent Document

The Court of Appeal had considered that Figure 8 and the description established a “necessary link” between:

the acceleration sensor (68), and
the processor (66).

It concluded that isolating the acceleration sensor without expressly including a processor amounted to extracting a feature disclosed only in combination.

However, the Court of Cassation held that this interpretation distorted the patent document.

The parent application stated that:

“ the acceleration sensor 68 can be used in combination with the processor 66 (or any other processor) to determine the inclination, altitude or position of the housing .”

The wording did not establish an inextricable link between the acceleration sensor and a specific processor. By reading such a mandatory connection into the text, the Court of Appeal misrepresented the content of the earlier application and violated the principle prohibiting courts from distorting written evidence.

This constitutes a significant reminder that national courts must apply a faithful and technically accurate reading of patent documents.

2. Failure to Define the “Person Skilled in the Art”

The Court of Appeal further held that:

there was no evidence that a video game controller necessarily included a processor;
therefore, the addition of the acceleration sensor without explicitly including a processor constituted an inadmissible intermediate generalisation.

The Court of Cassation rejected this reasoning.

It recalled that the added subject-matter test requires assessing whether the amended feature derives directly and unambiguously from the earlier application from the perspective of the person skilled in the art, taking into account implicit technical knowledge.

Crucially, the Court of Appeal failed to define the relevant skilled person and to examine whether, for such a person, an acceleration sensor would implicitly require data processing by a processor.

If, from a technical standpoint, a processor is inherently necessary to process acceleration data, its presence may be implicit and need not be explicitly restated in the claim.

By omitting this analysis, the Court of Appeal deprived its decision of a legal basis under Articles 123(2) and 138(1)(c) EPC.

Practical Implications

This decision is noteworthy for several reasons:

1. Reinforcement of the “Direct and Unambiguous” Test

The ruling aligns French case law more closely with established EPO jurisprudence on added subject-matter.

2. Central Role of the Skilled Person

Courts must explicitly define the relevant skilled person and assess implicit technical features through that lens.

3. Limits of the Intermediate Generalisation Doctrine

Not every extraction of a feature from a disclosed embodiment amounts to an inadmissible intermediate generalisation. The decisive question is whether the feature is structurally and functionally linked to other elements in a manner that is technically inextricable.

4. Drafting and Prosecution Strategy for Divisional Applications

For patent applicants, the decision highlights the importance of:

drafting fallback positions with clear technical independence of features;
explicitly addressing whether components are structurally mandatory or functionally optional;
anticipating potential added subject-matter challenges in national revocation actions.

Conclusion

The Court of Cassation’s ruling provides welcome clarification on the added subject-matter analysis in the context of divisional patents.

By emphasising both the prohibition of document distortion and the necessity of properly defining the person skilled in the art, the Court reinforces a technically grounded and EPC-consistent approach to invalidity assessments.

The decision will likely influence future French revocation proceedings involving intermediate generalisations and divisional patents.

Elsa Duboin, Trainee Lawyer

Christine Chai, Managing Partner, Attorney-at-Law

Aurilex recognised in WTR 1000 – France 2026

Fri, 30 Jan 2026 15:46:43 GMT

Aurilex recognized in WTR 1000 – France 2026

Aurilex is pleased to announce that its Managing Partner, Christine Chai, has been recognised in the WTR 1000 – France 2026.

The WTR 1000 is a leading international guide dedicated to identifying the world’s foremost trademark professionals, based on extensive research, peer reviews and client feedback.

This recognition reflects our expertise in trademark law and broader intellectual property matters, as well as the trust placed in Aurilex by its clients. It also highlights the collective work and high standards of the Aurilex team in assisting brands with trademark protection, portfolio management and IP strategy in complex international and cross-border contexts, particularly across Europe.

Aurilex regularly advises international clients on the development, protection and enforcement of their IP rights, combining legal precision with a strong understanding of multi-jurisdictional and strategic considerations.

Airbnb Denied Hosting Platform Status Under French Law: No Liability Exemption for Illegal Subletting

Tue, 27 Jan 2026 17:25:14 GMT

When “neutral hosting” ends: Airbnb held outside the hosting safe harbour

In two landmark decisions dated 7 January 2026, the French Supreme Court ruled that Airbnb does not qualify as a hosting platform within the meaning of French law. As a result, Airbnb cannot rely on the statutory exemption from liability ordinarily granted to hosting service providers for unlawful activities carried out by users on their platforms.

Legal Framework: Hosting Platforms and Liability Exemptions

The liability regime applicable to online intermediaries in France is primarily governed by:

the Law for Confidence in the Digital Economy (LCEN) of 21 June 2004, as amended; and
the Digital Services Act (DSA) , adopted on 14 February 2024.

Under Article 6-I-2 of the LCEN, a hosting service provider is defined as an entity that merely stores digital content on behalf of users and makes it accessible to the public. Such providers benefit from a conditional exemption from civil liability for unlawful content stored by users, provided that:

they were not aware of the unlawful nature of the content; or
once aware, they acted promptly to remove or disable access to it.

This exemption is, however, reserved for operators playing a neutral and purely technical role .

Background of the Cases: Illegal Subletting via Airbnb

The disputes arose from the illegal subletting of residential apartments in Paris through Airbnb.

Pursuant to Article 8 of the French Law of 6 July 1989, tenants are prohibited from subletting their accommodation without the landlord’s prior consent.

In the cases at hand, landlords brought proceedings not only against their tenants, but also against Airbnb, seeking restitution of:

the rents received through the unlawful subleases; and
the commissions collected by Airbnb.

The Paris Court of Appeal adopted divergent positions :

In one case, it refused to recognise Airbnb as a hosting platform and ordered Airbnb to reimburse the commissions received.
In the other, it granted Airbnb hosting platform status and dismissed the claims against it.

The Supreme Court’s Reasoning: An “Active Role” Incompatible with Hosting Status

The French Supreme Court was therefore called upon to determine whether Airbnb could benefit from the hosting platform liability exemption.

Relying on settled case law of the Court of Justice of the European Union, the Court recalled that hosting status presupposes a strictly neutral intermediary role , limited to technical data storage and transmission.

In its January 2026 decisions, the Supreme Court concluded that Airbnb does not meet this criterion, as it plays an active role in the contractual relationship between hosts and travellers. In particular, the Court emphasised that Airbnb:

imposes binding rules on users and retains the power to verify compliance; and
actively promotes certain listings through mechanisms such as the “Superhost” label, thereby influencing user behaviour and transaction dynamics.

Such involvement goes beyond a neutral, technical function.

Practical Implications

The Court held that active participation and hosting platform status under the LCEN are mutually exclusive . Consequently, Airbnb cannot invoke the hosting provider liability exemption and may be held civilly liable when its platform is used for illegal subletting.

This decision significantly reinforces the accountability of online platforms that structure, organise, or promote transactions, and confirms a strict interpretation of liability exemptions under French and EU digital law.

Elsa Duboin, Trainee Lawyer

Christine Chai, Managing Partner, Attorney-at-Law

Five Years of France’s Trademark Reform: How INPI’s Invalidity and Revocation Procedures Reshaped Brand Protection

Thu, 04 Sep 2025 10:42:46 GMT

Five years later, France’s administrative trademark invalidity and revocation procedures have become an indispensable tool for brand owners.

France’s 2019 PACTE law introduced new administrative procedures for trademark invalidity and revocation , which came into force on 1 April 2020. This reform was a cornerstone of the modernization of industrial property enforcement: it aimed to make trademark law more accessible, faster, and less costly.

The objectives were clear: to give businesses, especially SMEs, the tools to defend their rights more efficiently, to clear the register of unused or abusive marks, and to prevent trademarks from unfairly blocking market access or harming the public interest.

Five years later, the French IP Office (INPI) has published its assessment in the report “ Cinq ans déjà ! Les procédures de nullité et de déchéance des marques devant l’INPI ”. The results show a system that has been widely adopted and is now a stable part of the French trademark landscape.

A Procedure Embraced by Businesses

Since 2020, nearly 2,200 applications for invalidity or revocation have been filed before the INPI, with more than 1,800 decisions delivered. The annual average—around 440 cases —is well above the level seen before judicial courts prior to the reform.

SMEs are major users of the system, filing over 35% of applications, while foreign companies have also relied heavily on it. On the defence side, 38% of respondents are SMEs and 37% are individuals.

Although professional representation is not mandatory, almost 90% of applicants are assisted by counsel. Lawyers are present in 51% of cases, industrial property attorneys in 41%.

Stable and Efficient Litigation Framework

Applications are split between invalidity (60%) and revocation (40%) . Within invalidity, 70% are based on relative grounds such as earlier trademarks, while absolute grounds like lack of distinctiveness or bad faith remain less common.

Bad faith is a notable trend : more than 150 decisions have been issued on this basis since 2020, with a success rate of around 50%. Fraudulent filings are alleged in over 20% of invalidity actions.

For revocation, non-use remains the overwhelming ground , though around 30 cases have also concerned degeneration or deceptive use.

Duration and Outcomes

The average duration of proceedings is 8.5 months . Uncontested cases can be resolved in 7 months, while complex disputes may last up to 17 months.

The results are decisive: in 85% of cases, applications are deemed justified . More than 1,000 trademarks have been annulled or revoked since 2020. Around 30% of cases are closed following amicable settlements, and only 3% end in inadmissibility.

Relative grounds: Over 85% of prior trademark claims succeed , including claims based on well-known marks.
Company names: Only half of claims succeed, while other signs (domain names, trade names) often fail due to lack of proof or legal basis.
Absolute grounds: Just 30% succeed (excluding bad faith), often because of evidentiary challenges .

The INPI also rules on costs: in over half of the cases, the losing party is ordered to pay, with an average cost award of €680.

Conclusion: A Maturing and Trusted System

Five years after its introduction, the administrative procedure for invalidity and revocation has reached maturity. The high level of adoption, particularly by SMEs, and the strong success rate of actions confirm its effectiveness.

The INPI’s system has become a trusted and efficient alternative to judicial litigation— faster, less costly, and widely accessible . For businesses navigating trademark strategy in France, it is now an indispensable tool.

Clara Courret, Trainee Lawyer

Christine Chai, Managing Partner, Attorney-at-Law

The General Court Rejects “NERO CHAMPAGNE”: A Landmark Ruling on PDO Protection

Fri, 29 Aug 2025 12:59:57 GMT

Conformity with Champagne PDO does not shield trademarks from scrutiny.

On 25 June 2025, the General Court of the European Union delivered an important judgment in case T-239/23, annulling a decision of the EUIPO Board of Appeal and refusing registration of the EU trademark “ NERO CHAMPAGNE ” for wines and related services.

This ruling strengthens the legal framework protecting Protected Designations of Origin (PDOs) , particularly the world-renowned Champagne .

Background of the Case

In 2019, Nero Lifestyle SRL (Italy) applied to register the word mark “NERO CHAMPAGNE” covering:

Class 33: wines,
Class 35: retail and advertising services,
Class 41: educational and cultural activities.

The application explicitly referenced wines compliant with the Champagne PDO specifications.

The application was opposed by the Comité interprofessionnel du vin de Champagne (CIVC) and the Institut national de l’origine et de la qualité (INAO) under:

Article 8(6) of Regulation (EU) 2017/1001 (EUTMR) , read with
Article 103(2)(a)(ii) and (c) of Regulation (EU) 1308/2013 (agricultural product markets).

These provisions prohibit both the exploitation and the misleading use of PDOs—even when the goods technically comply with PDO specifications.

Initially, the EUIPO upheld the opposition in part, but the Board of Appeal allowed registration for wines conforming to the Champagne PDO and related services . CIVC and INAO challenged this before the General Court.

The Court’s Key Findings

1. Misapplication of the “Limitation Theory”

The Board of Appeal relied on internal EUIPO guidelines assuming that a trademark limited to PDO-compliant goods cannot exploit the PDO’s reputation.

The Court rejected this approach as legally flawed. It stressed that Article 103(2)(a)(ii) applies regardless of conformity with PDO specifications. A case-by-case assessment is always required to determine whether a trademark exploits a PDO’s reputation .

2. Exploitation of Champagne’s Reputation

Even if used on PDO-compliant goods, a trademark may still evoke or unfairly benefit from the image and reputation of Champagne.

The Board of Appeal failed to examine whether “NERO CHAMPAGNE” misled consumers or diluted Champagne’s distinctiveness and prestige.

3. Lack of Adequate Reasoning

The Court also found a violation of Article 94(1) EUTMR and Article 296 TFEU. The Board had not adequately addressed the opponents’ arguments, such as:

the marketing context,
the evocative power of the word “nero” (Italian for “black”),
the risk of consumer deception.

4. Misleading Nature of “Nero” Champagne

The Court highlighted that “nero” could suggest the existence of a “ black Champagne ” or a product exclusively based on Pinot Noir grapes—both contrary to the Champagne PDO, which only authorises white or rosé wines.

Such a representation could therefore mislead consumers regarding the nature and composition of the product.

The Outcome

The General Court annulled the Board of Appeal’s decision and refused registration of “NERO CHAMPAGNE” in its entirety for Classes 33, 35 and 41.

Why This Matters

This decision is a milestone in PDO enforcement at the EU level. It clarifies that:

Conformity with PDO specifications is not a shield against legal scrutiny .
PDO holders are entitled to defend both the reputation and the integrity of their designations.
Trademarks incorporating PDOs require rigorous analysis of consumer perception, reputation exploitation, and the risk of misleading associations .

For brand owners, the ruling underscores the high level of protection accorded to PDOs like Champagne and highlights the risks of adopting marks that evoke or exploit these designations.

Key Takeaway

The “NERO CHAMPAGNE” judgment reaffirms the EU’s strict stance on PDO misuse. It sends a clear message: even technically compliant goods cannot be marketed under trademarks that trade on or distort the image of PDOs .

PDO holders thus remain well-equipped to safeguard the prestige and distinctiveness of their products across the EU.

Clara Courret, Trainee Lawyer

Christine Chai, Managing Partner, Attorney-at-Law

Public Data ≠ Free Data: Kaspr Sanctioned €240,000 under GDPR

Fri, 22 Aug 2025 02:27:02 GMT

The mere fact that personal data is publicly accessible online does not make its free use lawful for commercial purposes.

The General Data Protection Regulation (GDPR) , in force since 25 May 2018, is the cornerstone of personal data protection in the European Union. It imposes strict obligations on data controllers to ensure compliance, with heavy sanctions for violations.

On 5 December 2024 , the CNIL (French Data Protection Authority) imposed a €240,000 fine on the company Kaspr for serious breaches of the GDPR.

Kaspr offers a paid browser extension that enables its clients to access LinkedIn contact details of individuals they view. To provide this service, the company collected data from publicly accessible online sources and stored it in a database containing over 160 million contacts , which was then used for commercial prospecting and related purposes.

The sanction followed several complaints lodged with the CNIL by individuals who had been contacted through Kaspr. An investigation into the company’s data collection and processing practices revealed multiple GDPR infringements, including the absence of a valid legal basis for processing.

Key Findings of the CNIL Investigation

The CNIL identified several violations of the GDPR that justified the fine:

1. No valid legal basis for data collection

Kaspr harvested LinkedIn users’ data without their consent, even where individuals had chosen to restrict the visibility of their information.

2. Lack of transparency and information

Data subjects were not informed that their personal information was being collected, stored, and exploited by Kaspr.

3. Failure to respect data subjects’ rights

Kaspr did not provide effective mechanisms for individuals to exercise their rights of access, rectification, objection, or erasure of their personal data.

A Strong Reminder from the CNIL

Through this decision, the CNIL reaffirmed a key principle: the mere fact that personal data is publicly accessible online does not make its free use lawful for commercial purposes .

Under the GDPR, data processing must always respect the fundamental principles of lawfulness, transparency, proportionality, and limitation. Companies handling personal data are expected to adopt a proactive compliance approach, ensuring that collection and use of data are strictly aligned with regulatory requirements.

Marco Mouchot, Trainee Lawyer

Christine Chai, Managing Partner, Attorney-at-Law

Shared Letters, Different Brands: No Confusion Between ALEGRA DE BERONIA and ALEGRO

Mon, 18 Aug 2025 08:03:07 GMT

A case study on how sector-specific consumer habits and distinctive elements can outweigh partial similarities

The likelihood of confusion is a cornerstone of trademark law. Enshrined in Article 8(1)(b) of Regulation (EU) No. 2017/1001 , it serves as one of the main grounds for opposition proceedings before the EUIPO. Its purpose is twofold: to protect trademark holders against unlawful appropriation of their rights and to safeguard consumers from deception.

This risk of confusion arises when a trademark application is considered similar to an earlier mark, whether in its visual, phonetic, or conceptual characteristics, or in relation to the goods and services it designates. The assessment is holistic and depends on several criteria, including:

the similarity of the goods and services,
the degree of visual, phonetic, and conceptual similarity of the signs,
and the level of attention of the relevant public.

Where no similarity exists, opposition proceedings will be dismissed, and the contested trademark may proceed to registration.

The Case: ALEGRA DE BERONIA vs. ALEGRO

This principle was tested in a case decided by the General Court of the European Union on 4 May 2022 (Case T-298/21).

In January 2019, a company applied to register the word mark “ ALEGRA DE BERONIA ” for wines in Class 33 . In response, Bodegas Carlos Serres opposed the application, relying on its earlier trademark “ ALEGRO ”, and invoked Article 8(1)(b) of the EUTMR.

The opponent argued that the two marks shared the sequence of letters “ a-l-e-g-r”, creating visual, phonetic, and conceptual similarity. Combined with the identity of the goods (win es), this overlap, in its view, was sufficient to mislead the Spanish public and justify refusal of the later application.

The EUIPO Opposition Division upheld the opposition, finding a likelihood of confusion, a decision later confirmed by the Board of Appeal . However, Bodegas Beronia challenged this ruling before the General Court.

The General Court’s Judgment

The General Court annulled the EUIPO’s decision , ruling that the differences between the two marks were sufficient to exclude any likelihood of confusion. The Court made several important observations:

Structural differences matter : While the marks shared the sequence “ALEGR,” the addition of the distinctive element “ de Beronia ” altered the overall impression and allowed consumers to distinguish between the two.
Sector-specific consumer habits : In the wine industry, trademarks often contain several verbal elements. Consumers are accustomed to distinguishing between nuanced differences, which reduces the risk of confusion.
Overall impression prevails : The assessment must be made globally, considering not only common elements but also distinctive features that differentiate the marks.

Key Takeaways

This judgment reinforces established EU principles on the evaluation of likelihood of confusion:

The analysis must always consider the overall impression conveyed by the marks, not just isolated similarities.
Distinctive additions can be decisive in avoiding confusion, especially where consumers are attentive and used to encountering complex brand names (such as in the wine sector).
A finding of similarity in certain elements is not sufficient on its own; the full context of the marks and the relevant public’s perception must guide the analysis.

✅ In short: The ALEGRA DE BERONIA case illustrates the importance of a nuanced, contextual assessment when evaluating likelihood of confusion. It is a reminder that even where two marks share common sequences of letters, additional distinctive elements and consumer perception in a given sector may tip the balance against confusion.

Marco Mouchot, Trainee Lawyer

Christine Chai, Managing Partner, Attorney-at-Law

More Than Just a Card: How Business Cards Can Trigger Trademark Liability

Thu, 17 Jul 2025 16:47:03 GMT

Why using a trademark without consent — even on a simple business card — can have costly consequences.

Trademark law, a key pillar of intellectual property rights, protects distinctive signs and brand identifiers from unauthorized use. Under Article L713-1 of the French Intellectual Property Code, the owner of a registered trademark has the exclusive right to exploit it and decide whether to authorize third parties to reproduce or imitate it. Use of the mark without such authorization constitutes infringement.

A recent ruling by the Paris Court of Appeal on October 16, 2024, offers a clear illustration of how the courts apply these principles — even to something as seemingly minor as a business card.

In this case, the company SUD GESTION, owner of the trademarks A+ GLASS and A+ GLASS LE TRAVAIL BIEN FAIT, accused two companies, ALPHA GLASS and ALLO VITRAGE AUTO, of trademark infringement. According to SUD GESTION, the defendants used its trademarks on business cards distributed to potential customers, creating confusion and misleading the public into believing they were still part of the A+ GLASS franchise network — even though that business relationship had ended. The allegations were supported by multiple witness statements and a bailiff’s report confirming the distribution of business cards displaying the A+ GLASS logo.

In its defence, ALLO VITRAGE AUTO argued that it had no fraudulent intent. The company claimed it had used the A+ GLASS trademark in good faith, believing it was part of the franchise after receiving contractual documents and undergoing training provided by SUD GESTION. It contended that it only learned later that the franchise agreement could not proceed due to conflicts with SUD GESTION.

The Paris Court of Appeal rejected this defence, reaffirming a key principle: u nauthorized use of a sign identical or similar to a registered trademark constitutes infringement when there is a likelihood of confusion, regardless of the user’s intent . In short, bad faith or fraudulent intent is not required to establish trademark infringement under French law. The Court therefore prohibited ALPHA GLASS and ALLO VITRAGE AUTO from continuing to use the disputed trademarks and ordered them to pay damages jointly to SUD GESTION.

This ruling serves as an important reminder:

any unauthorized use of a sign that creates confusion with a registered trademark amounts to infringement, even when done in apparent good faith . It underscores the need for businesses to be vigilant about how they use third-party trademarks and reinforces the importance for trademark owners to actively monitor and protect their rights to safeguard their brand identity and market reputation.

Marco Mouchot, Trainee Lawyer

Christine Chai, Managing Partner, Attorney-at-Law

Expanded Liability for Defective Products: The Evolving Concept of the “Producer” under EU Law

Tue, 15 Jul 2025 16:02:45 GMT

The CJEU broadens the notion of ‘producer,’ exposing distributors to liability alongside manufacturers.

Liability for defective products is a legal framework designed to compensate victims for damage caused by product defects, acting as a key consumer protection mechanism against producers.

At the heart of this regime lies the concept of the producer , which is crucial in determining who bears liability. Under European Directive 85/374/EEC, any producer is liable for damages resulting from a defective product, provided the harm stems from the defect. Article 3(1) of the Directive defines the producer broadly: it includes the manufacturer of a finished product, raw material, or component part , as well as any person who presents themselves as the producer by affixing their name, trademark , or other distinguishing sign to the product.

This notion of producer was recently clarified and broadened by the Court of Justice of the European Union (CJEU) in a judgment delivered on 19 December 2024 , extending the scope of supplier responsibility under EU law.

The Case: Ford Italia SpA Before the Courts

The case involved the owner of a Ford vehicle who sued both Stracciari, the Italian dealer, and Ford Italia, the distributor, after an accident caused by the failure of the vehicle’s airbag to deploy — a failure attributed to a manufacturing defect. The vehicle in question had been produced by Ford WAG, a company established in Germany, and then supplied to Stracciari through Ford Italia, which distributes in Italy vehicles produced by Ford WAG.

Although both the court of first instance and the Bologna Court of Appeal found Ford Italia liable, the company appealed to the Italian Court of Cassation. Ford Italia argued that as a mere distributor, uninvolved in manufacturing, it should be exempt from liability — especially since the identity of the actual manufacturer was known. It further claimed that the lower courts had given an overly broad interpretation of the Directive.

The Italian Court of Cassation referred the matter to the CJEU, asking whether a distributor could be considered a producer even if it had not physically affixed its trademark to the product, particularly when the distributor’s name or trade name coincided wholly or partly with the manufacturer’s brand or another distinguishing sign.

The CJEU’s Ruling: A Broad Interpretation of “Producer”

The CJEU answered affirmatively, holding that the notion of producer under Article 3(1) is not limited to the manufacturer. It can extend to any person who presents themselves as a producer, whether explicitly (by affixing their name or brand) or implicitly, such as through the coincidence of trade names .

In this case, the Court found that the similarity between Ford Italia’s name and the Ford brand was sufficient to qualify the distributor as presenting itself as the producer, even in the absence of physical markings on the product.

Impact: Strengthened Consumer Protection and Expanded Supplier Liability

This ruling underscores the broad and consumer-protective approach of EU law. By treating distributors who share or use the producer’s brand as producers themselves, the Court eases the burden on consumers, who no longer need to precisely identify the manufacturer to claim compensation.

For distributors and suppliers, the decision serves as a warning: exploiting a shared or group brand can expose them to joint and several liability, effectively placing them on equal footing with manufacturers when it comes to defective product claims . This reinforces the need for careful brand management and greater vigilance within corporate groups.

Marco Mouchot, Trainee Lawyer

Christine Chai, Managing Partner, Attorney-at-Law

No Safe Harbor Without Action: French Supreme Court speaks

Mon, 07 Jul 2025 17:17:16 GMT

A recent French Supreme Court ruling confirms that hosting providers must act promptly on clear infringement notices to maintain their limited liability.

The liability of hosting platforms has undergone significant legislative developments in recent years. In France, it is currently governed by the Law for Confidence in the Digital Economy (LCEN) of 2004, as amended in 2016, and by the Digital Services Act (DSA) adopted on February, 14 2024. Most recently, the notion of host liability was at the heart of a dispute between the company Nintendo and Dstorage before the French Supreme Court (Cour de la cassation).

DStorage operates a hosting service through its website 1fichier.com, which allows users to freely download online content, including video games from the well-known companies Nintendo, The Pokémon Company, and GameFreak. After discovering the links to download unauthorized copies of some of its games (Super Mario Maker for 3DS, and Pokémon Sun and Pokémon Moon), Nintendo sent two notifications to DStorage, requesting the removal of the content.

The case was brought before the Paris Court of Appeal, which, in a ruling dated April 12, 2023, found that DStorage had failed, in its capacity as host, to comply with its obligation of prompt removal, following the notifications sent by Nintendo.

Dstorage claimed to be merely a storage service provider and appealed to the Court of Cassation. It contested the removal obligation, arguing that the appeal court had imposed a general monitoring duty, contrary to the requirements of Article 6-I-7 of the LCEN. It also challenged the validity of the notification, asserting that they did not identify the authors of the disputed content, failed to distinguish between the authors and the platform’s users, and did not specify the unlawful nature of the content.

In its decision on 26 February 2025, the Court of Cassation upheld the decision of the Paris Court of Appeal. It ruled that the notifications sent by Nintendo satisfied the conditions set out in the LCEN. The notifications included a precise description of the infringing content, which was clearly identified and associated with registered trademarks. The Court further stated that Nintendo was not required to demonstrate any steps taken against the content authors, as they were not identifiable, and that the removal order issued by the Court of Appeal amounted to targeted, temporary monitoring of specific content.

With this decision, the Court of Cassation reaffirmed the reduced liability regime applicable to hosting providers under Article 6-I-2 of the LCEN, which remains conditional on compliance with specific requirements, notably a prompt response following a valid notification. It reiterated that:

A notification is valid when it includes a detailed description and clear identification of the content ;
Identifying the author of the content is not required if they are not identifiable;
A host incurs liability if it fails to act promptly after receiving a valid notification .

This decision confirms that hosting providers remain protected under limited liability rules only if they act promptly upon receiving clear and specific infringement notices. As the DSA takes effect, the DStorage case sets a clear precedent: inaction in the face of valid notifications will no longer be tolerated.

Marco Mouchot, Trainee Lawyer

Christine Chai, Managing Partner, Attorney-at-Law

DeepSeek under GDPR scrutiny: The EU on High Alert

Sat, 10 May 2025 18:35:48 GMT

DeepSeek: The New AI Sensation Faces Regulatory Heat Just Days After Record-Breaking Launch

Since its launch in January 2025, DeepSeek has revolutionized the world of artificial intelligence, overshadowing ChatGPT. In just seven days, this generative AI became the most downloaded application on European smartphones. However, only a few days after its release, the AI-based application came under scrutiny from EU institutions. It is now suspected of posing a risk to European users.

Data Storage in China

The main concern centers around the storage of user data and activity in China, without clear and appropriate safeguards, as stated in DeepSeek’s privacy policy. In the absence of an adequacy decision by the European Commission, the data controller is required to implement a protection mechanism (such as standard contractual clauses or approved binding corporate rules). However, there is no indication that such measures have been implemented, making the data processing opaque. Moreover, DeepSeek has no establishment or representative in the EU. This detail is significant, as it effectively complicates the application of the GDPR, both in terms of users’ rights and potential sanctions imposed by European data protection authorities. This situation leaves European users in a vulnerable position.

This situation recalls the case of Clearview AI . This American company was fined 20 million euros by the CNIL in 2022 for non-compliant use of biometric data for facail recognition. This sanction was later increased in 2023 with a fine of 5.2 million euros, as the company had not paid the initial fine. The CEO had publicly stated that his company was not conducting any activities in Europe and believed it was not subject to the GDPR.

While the concerns regarding DeepSeek’s data storage practices are serious, they have not gone unnoticed by European regulators. As a result, several countries have begun to take action.

Deepseek in Europe’s Crosshairs

DeepSeek received its first ban in Italy a few days after its launch, following a statement by the Garante (Italian Data Protection Commission) dated January 30, 2025. DeepSeek is now no longer available on most Italian app stores, although it can still be accessed via a web browser. Beyond Italy, actions taken have been less severe. For example, the French CNIL and the Irish Data Protection Commission announced they would question DeepSeek to better understand how its system works and what risks it poses in terms of data protection. In Spain and Portugal, no official decisions have yet been made. Nonetheless, complaints have been filed by consumer associations. In Germany, several Länder data protection authorities have opened discussions in preparation for an investigation.

A Precedent: ChatGPT

This situation echoes that of ChatGPT. In 2023, the Italian authority imposed a temporary ban on the platform. An investigation revealed that OpenAI had used user data to train its system without a valid legal basis. Furthermore, it was also found that the system lacked any protective mechanisms for minors under the age of 13 against inappropriate content. ChatGPT was ultimately fined €15 million and required to conduct an information campaign for six months.

Prudent Recommendations

While awaiting the positions to be taken by the various EU Member States and the European Union itself, awareness campaigns have been conducted to reduce the risks associated with the use of DeepSeek. For instance, the Luxembourg data protection authority issued recommendations on this matter. It urges users to exercise caution by avoiding the disclosure of confidential data or refraining from installing DeepSeek on IT devices. It recommends favoring alternative solutions that comply with the GDPR and offer stronger guarantees in terms of security and respect for privacy.

Marco Mouchot, Trainee Lawyer

Christine Chai, Managing Partner, Attorney-at-Law

Aurilex Speaks on European IP Strategies at China-Europe Cross-Border IP And Compliance Seminar

Wed, 16 Apr 2025 14:24:32 GMT

Aurilex Shares Practical Insights on IP Protection, Litigation, and Compliance for Overseas Businesses Expanding into Europe

On April 16, 2025, Christine Chai, partner at Aurilex, was invited to speak at the seminar “ China–Europe Intellectual Property Protection in Practice: A Dual Perspective on Compliance and Risk Mitigation ,” jointly organized by Aurilex and Shanghai Sunhold Law Firm. The event brought together legal professionals from both Europe and China, offering in-depth analysis and practical guidance for companies navigating intellectual property (IP) protection across borders.

As the representative speaker on European IP practice, Christine Chai delivered a detailed presentation covering the legal frameworks, registration strategies, and enforcement challenges businesses typically face when entering the European market.

Navigating Dual Systems: EU-Wide vs. National IP Protections

Christine highlighted the complexity of Europe’s IP system, which combines EU-wide mechanisms (such as EUTM and EPO filings) with country-specific rules. She emphasized the importance for businesses to align their IP strategies with this dual-layered structure. “For example,” she noted, “the actual use requirement under the EU Trademark Regulation means that companies must plan not only for registration but for active, timely use in the market.”

Trade Fair Injunctions: A Real and Growing Risk

Christine also warned Chinese companies about the increasing use of emergency injunctions during trade fairs in France and other EU countries. “There have been multiple cases where exhibitors faced injunctions on-site, resulting in booth closures and seizure of displayed goods. Without preemptive IP audits, companies expose themselves to serious operational disruptions,” she explained.

The UPC: Centralization Comes with Strategy Shifts

Addressing recent developments, Christine discussed the impact of the Unified Patent Court (UPC) on enforcement strategy in Europe. While the UPC offers streamlined litigation across multiple EU member states, it also requires companies to make deliberate choices between centralized and national enforcement routes.

Joint Dialogue: Cross-Border Action Checklists

During the joint dialogue session, Christine collaborated with the Chinese legal team to provide practical compliance checklists for cross-border business activities. She advised Chinese companies to:

Conduct prior trademark and patent clearance in target EU countries;
Evaluate whether to opt in or out of the UPC system;
Prepare legal strategies in case of emergency injunctions or enforcement challenges.

Likewise, she shared insights for European companies expanding into China, particularly on navigating local IP enforcement procedures and understanding the nuances of evidence collection in cases involving trade secrets.

This seminar highlighted the increasing importance of IP compliance in cross-border business, especially as more Chinese companies “go global” and more European businesses expand into China. Aurilex remains committed to providing in-depth legal support tailored to the needs of international clients operating across jurisdictions.

Aurilex Recognized in WTR 1000: Leading Trademark Professional in 2025

Fri, 31 Jan 2025 20:35:10 GMT

Aurilex Recognized in WTR 1000: Leading Trademark Professional in 2025

We are proud to announce that Ms. Christine Chai, founder of Aurilex, has been recognized as a WTR 1000 Leading Trademark Professional 2025. This prestigious ranking, awarded by the World Trademark Review (WTR), highlights excellence in trademark law and enforcement on a global scale.

A Recognition of Expertise and Commitment

The WTR 1000 is a globally respected guide that identifies the top professionals in trademark practice, based on extensive research, peer feedback, and client testimonials. Being featured in this ranking underscores Aurilex’s dedication to protecting brands, enforcing IP rights, and delivering outstanding legal counsel in the fields of trademarks, intellectual property, and brand strategy.

Driving Innovation in Trademark Law

At Aurilex, we are committed to providing tailor-made legal solutions for businesses of all sizes, from startups to multinational corporations. Our expertise spans trademark registration, portfolio management, litigation, and enforcement strategies, ensuring that our clients' brands remain protected in a competitive global market.

A Testament to Client Trust

This recognition is a reflection of the trust our clients place in us. We are grateful to our clients, partners, and peers for their continuous support and collaboration, which makes this distinction possible.

Looking Ahead

As we step into 2025, Aurilex remains committed to excellence in intellectual property and trademark law. We will continue to navigate the evolving IP landscape and provide strategic legal guidance to safeguard and strengthen brands worldwide.

For more information on how we can assist you with your trademark and intellectual property needs, feel free to contact us.

Consistency of EU Design Views: The Importance of Visual Unity

Wed, 27 Nov 2024 21:24:52 GMT

EU design views must be consistent to be valid. A recent decision of the General Court of the EU confirms this requirement.

A design, or model, is a creative expression intended to protect the appearance of an aesthetic product. It is specifically defined as the appearance of a product or a part of a product, characterized by visual elements inherent to the product itself or its ornamentation, as stipulated in Article 3 of Regulation No 6/2002. Like trademarks, designs and models are protected under intellectual property law, provided certain conditions are met. Article 4 of the same Regulation explicitly states that protection for a Community design or model is granted only if it is new and possesses an individual character . These criteria are essential validity standards for obtaining intellectual property protection.

However, the definition of a design or model in Article 3 implicitly establishes a preliminary condition for protection. Analyzing the definition reveals that a design or model must correspond to a coherent and identifiable appearance of a single product . The consistency of views is considered as a fundamental requirement of design validity.

This principle was at the core of a case addressed by the General Court of the European Union in its judgment of October 23, 2024 [1] . The case involved the company Orgatex, holder of a Community design for floor markings, against the EUIPO and Mr. Longton, who filed a request for invalidity on the grounds that the design exhibited visual inconsistencies preventing the identification of a single product. This design contained 4 views.

The EUIPO Cancellation Division initially rejected Mr. Longton's request, finding no inconsistencies in the design. However, the Board of Appeal overturned this decision, declaring the design invalid. It determined that discrepancies between the elements in the views revealed significant differences, suggesting that several distinct products were represented. In particular, the Board of Appeal noted that the lines in views 1.2 and 1.4 had different shapes. Whereas the line was continuous in view 1.2, it was dotted in view 1.4. than those at the right-hand corners.

Ultimately, the General Court upheld the cancellation of Orgatex’s Community design due to its lack of consistency. The Court found that the visual inconsistencies between the submitted views prevented the identification of a single, coherent product. For example, view 1.1 does not show any contour lines between the framing elements. Nevertheless, those contour lines are clearly visible in view 1.2. Views 1.1 and 1.2 therefore present an insoluble inconsistency.

This failure violated the definition established in Article 3 of Regulation No 6/2002. The Court also rejected Orgatex’s argument that these inconsistencies should be interpreted in favor of the applicant. Moreover, the Court concluded that it was unnecessary to examine other validity criteria, such as novelty or individual character, since the failure to meet the consistency requirement was sufficient to invalidate the design.

This ruling is significant as it clarifies that the absence of a coherent and singular product appearance constitutes an obstacle to the validity of a design or model registration. Consequently, the decision imposes a higher level of diligence on applicants when preparing and submitting views for registration.

[1] General Court of the EU, 23 October 2024, T-25/23, Orgatex GmbH & Co.KG / EUIPO

Christine Chai, Managing Partner

Marco Mouchot Ribas, Trainee Lawyer

The General Court Clarifies Trademark Use - Can Undated Evidence Have Probative Value?

Mon, 11 Nov 2024 15:59:04 GMT

The General Court clarifies the evidence requirement for trademark use in the EU trademark law in a recent judgement.

The registration of a European trademark grants its holder an exclusive right to commercial exploitation. However, this exclusive right does not mean that the monopoly is guaranteed without condition. The trademark holder must exploit the mark, in order to maintain the trademark right. This is intended to prevent unused trademarks from crowding the trademark register and hindering other users from accessing or registering similar marks. Under the EU trademark law, the trademark holder can begin the use of the trademark as late as five years after the registration date. This is called the “ grace period ”.

For a trademark holder seeking to protect their trademark in a litigation, collecting evidence on the use of the trademark becomes crucial. Notably, the trademark holder may lose his rights if he fails to prove that the trademark has been used for five consecutive years, upon request by a third party to the Office. How to collect evidences is also an essential question for trademark holders.

In a recent judgment on July 17, 2024 [1] , the European Court of Justice clarified the evidentiary requirements in trademark law, specifically addressing the genuine use of a European trademark and the probative value of undated evidence.

The case in question involved a dispute between W.B Studio and E.Land Italy Srl over the European BELFE trademark, registered in 1998 and covering clothing and fashion accessories. W.B. Studio sought the revocation of this trademark, arguing that it had not been used for certain product categories. The EUIPO partially upheld the trademark’s validity, while W.B. Studio contended that undated photos were insufficient to demonstrate genuine use of the trademark and questioned the adequacy of other evidence, such as invoices and catalogs, in proving product commercialization.

The Court adopted a comprehensive approach to analyzing evidence of use, ruling that undated evidence could be acceptable if assessed in conjunction with other evidence to form a cumulative body of proof . In this case, the undated photographs of labels were supported by other dated documents, such as invoices containing corresponding product codes.

Another interesting question concerns the place of use. The invoices submitted by the trademark holder indicated that the goods were manufactured in Italy and exported to China. The Court clarified that a trademark holder could prove serious use of their mark even if the products bearing the mark were manufactured, stored, or handled within the EU with the intention of selling them outside the European Union .

This judgment is good news for European trademark holders, especially those who mainly export their products outside the EU. By relaxing the evidentiary requirements, the European Court facilitates trademark holders' ability to defend their rights. It expands the scope for evidence gathering and mitigates the risk of revocation on purely technical grounds.

Christine Chai, Managing Partner

Marco Mouchot Ribas, Trainee Lawyer

[1] General Court, 17/07/2024, T‑50/23, Belfe

The French Data Protection Authority (CNIL) Publishes Guidance on the Regulation of Artificial Intelligence

Wed, 14 Aug 2024 16:39:11 GMT

CNIL aims to regulate generative AI.

The EU AI Act, introduced in April 2021 and reaching a political consensus in December 2023, was published in the Official Journal of the EU on July 12, 2024. It entered into force on August 1 ^st , 2024. This regulation will serve as a foundational framework for AI development both within the EU and globally.

The French Data Protection Authority (CNIL) also takes an active role in the implementation of artificial intelligence regulation. In May 2023, the CNIL released its “AI Action Plan” and initiated significant efforts to clarify the legal framework, aiming to ensure the security of stakeholders.

In particular, the CNIL is concerned about the deployment of generative AI.

"Generative" artificial intelligence encompasses systems capable of creating various types of content, including text, computer code, images, music, audio, and videos. When these systems can execute a wide array of tasks, they are categorized as general-purpose AI systems, such as those incorporating large language models (LLMs).

These systems are typically used to enhance creativity and productivity by generating new content and analyzing or modifying existing content, such as providing summaries, corrections, or machine translations.

However, because of their probabilistic nature, these systems might generate results that are inaccurate yet still seem plausible. This represents risks for the users.

In this regard, the CNIL recommends:

Starting from a Concrete Need : Avoid deploying a generative AI system without a specific purpose; instead, ensure it meets already identified uses.

Framing Uses : Define a list of authorised and prohibited uses based on the associated risks (e.g., not providing personal data to the system, or not entrusting it with decision-making).

Acknowledging Limitations of Those Systems : Be aware of the system's limitations, particularly regarding the risks it may entail or pose to the interests and rights of individuals.

Choosing a Robust system and a Secure Deployment Mode : For example favor the use of local, secure and specialized (fine-tuned) systems. Otherwise, if using a third-party provider, determine to what extent they may reuse the data provided to the AI system, and adapt usage accordingly.

Training and Raising Awareness : Educate end-users, about both prohibited uses and the risks involved in official uses.

Implementing Appropriate Governance : Ensure compliance with the GDPR and these recommendations, in particular by involving all stakeholders from the outset (data protection officer, information systems officer, CISO, business managers, etc.) [1] .

The CNIL published the first recommendations on the development of artificial intelligence systems on 7 June 2024 [2] . The CNIL also plans to issue additional recommendations on generative AI systems in the near future.

[1] www.cnil.fr

[2] www.cnil.fr/fr/ai-how-to-sheets

Paris 2024: the Olympic Games and Intellectual Property

Fri, 26 Jul 2024 16:19:25 GMT

One hundred years ago, from May 4 to July 27, 1924, the eighth Olympiad of the modern era was held in Paris. Already at that time, the International Olympic Committee paid attention to the protection of the Olympic intellectual properties. Below is the trademark filed in 1924 for the Olympic Games in Paris.

What are “Olympic properties”?

This refers to the Olympic and Paralympic symbols, flags, mottos, anthems, identifications, designations, emblems, flames, and torches. It also encompasses any musical or audiovisual work, creation, or object commissioned in connection with the Olympic and Paralympic Games by the International Olympic Committee (IOC), the International Paralympic Committee (IPC) and other national official organizations.

All rights to these properties, along with any related rights of use, are exclusively owned by the IOC and the IPC.

How are the Olympic properties protected?

These elements are protected by copyright, registered and/or well-known trademarks, designs, and models, as well as the laws governing them, particularly concerning counterfeiting, parasitism, and unfair competition.

For example, the use of the Paris 2024 emblem or the image of the torch on the shop from an unauthorized official partner will be an “ambush marketing” and an infringement of the Olympic properties.

In French law, parasitism is a special kind of unfair competition. One specific application of parasitism involves unduly capitalizing on a major event, especially a sporting event, by exploiting the investments and efforts made by the rights holders.

There are also sector-specific regulations. For example, Article L141-5 of French Code of Sport provides that:

“I. The French National Olympic and Sports Committee is the owner of the national Olympic emblems.

It is also the custodian of:

1. The Olympic emblems, flag, motto, and symbol;

2. The Olympic anthem;

3. The logo, mascot, slogan, and posters of the Olympic Games;

4. The year of the Olympic Games ‘city + year’, in conjunction with the French Paralympic and Sports Committee;

5. The terms ‘Olympic Games’, ‘Olympism’, and ‘Olympiad’ and the acronym ‘JO’;

6. The terms ‘Olympic’, ‘Olympian’, and ‘Olympienne’, except in common parlance for normal use excluding any promotional or commercial purposes or any risk of causing confusion in the public's mind with the Olympic movement.

II. The act of registering as a trademark, reproducing, imitating, affixing, deleting, or modifying the elements and terms mentioned in paragraph 1 or their translations, without the authorization of the French National Olympic and Sports Committee, is punishable by the penalties set out in Articles L. 716-9 to L. 716-13 of the Intellectual Property Code.”

The active defense of the Olympic properties in France

The IOC and the IPC are fully engaged in the protection of Olympic property. Indeed, the rulings issued, particularly by the European Union Intellectual Property Office (EUIPO) and the French National Institute of Industrial Property (INPI), are quite comprehensive. It appears that the incorporation of the verbal sequence “OLYMP” in a trademark application frequently results in the rejection of that application by the trademark office.

Since Paris become the host city for the Olympic Games in France, the IOC has actively opposed to French trademark filings containing similar sequences to the official terms. For example, it opposed to the French trademark applications “JOSE LYMPICS”, “CLIPPERS ROUTE CHALLENGE 2024” and “MARSEILLE 2024 ACCESSOIRES” since the End of 2023. INPI supported the oppositions of the IOC and rejected the applications.

In the past, French courts have also demonstrated a favorable stance towards the IOC. During the Winter Olympics in PyeongChang in 2018, the French bank CIC used the slogan “On the road to the #PyeongChang2018 Winter Olympics!” on its social media. The Paris Tribunal ruled against the bank, rejecting its claim of a general need for communication, and decided in favor of the IOC.

As we eagerly await the thrilling events of the Paris Olympic Games, we know that the International Olympic Committee remains vigilant and proactive!

Bottle filling can infringe brands – a landmark decision in the French spirits industry

Mon, 08 Jul 2024 09:36:06 GMT

The departing question of this legal issue is as follows: does a distillery company, which only fills labeled bottles provides by a third party, infringe the trademark of others, if it turns out that the label provided by the third party is a trademark infringement?

In its "Red Bull" judgment, the European Court of Justice decided that a service provider who fills packaging supplied by a third party with a sign that is similar to a trademark is not using the sign in a way that is prohibited (ECJ, Red Bull, 15 December 2011, C‑119/10). This decisions establishes a kind of safe harbor for bottle filling companies.

However, this tolerate approach seems to be called into question by a judgment of the Judicial Tribunal of Bordeaux on 23 April 2024 (RG 22/00139).

The plaintiff is a French company which trades in wines, rums, alcohols and spirits, and buys and sells eau de vie and cognac. It is the holder of the French trademark “TRIOMPHE”.

A Chinese liquor company applied for three trademarks in France including the term “CNTRIOMPHES”. Then it mandated a distillery company, specialized in the business of distilling and production of eaux de vie, to fill the bottles provided by it with brandy. The bottles of brandy are intended to be exported exclusively to China under the CNTRIOMPHES trademarks.

The plaintiff filed opposition to the three “CNTRIOMPHES” applications. Furthermore, it considered that the distillery also infringed its trademark right by filling the bottles. It effected a judicial seizure on the premises of the distillery and sued the latter before the Tribunal of Bordeaux.

The distillery maintained that it had not used the trade marks in the course of its business, as the Chinese company that had placed the order had supplied it with all the bottles, sleeves, labels and boxes already bearing the trademarks.

Nevertheless, the tribunal decided in favor of the brand owner. According to the judge, while it's acknowledged that the company being sued did not sell the CNTRIOMPHES brandies or participate in producing their bottles, sleeves, labels, back labels, and pre-printed boxes, it cannot be denied that filling bottles marked with the disputed trademark, affixing sleeves and back labels bearing that trademark alongside its own name, and participating in the promotion of CNTRIOMPHES brandy provided the company with an indirect economic benefit. These actions are now considered as preparatory acts under the amended French trademark law (Article L. 713-3-3 of the French Intellectual Property Code as of 13 November 2019), which aims to punish trademark infringement by means of provision, thus categorizing the activities of the entity responsible for filling branded packaging with a product similar to the earlier trademark as unauthorized use of the trademark.

The reason of this judgment is perhaps that the distillery affixed its own name on the back label and participated in the advertising of CNTRIOMPHES brandy. This necessarily gave it an indirect economic advantage. In fact, it had an interest in the successful marketing of this brandy, since it in difficulty and the Chinese company was its principal client.

The penalty is severe. Even if at the time of seizure, there remained only two bottles of brandy in the warehouse of the distillery, because the orders had stopped, the tribunal ordered a total amount of damages of 400 000 euros.

It would appear that the French judge is now adopting a more protective approach for brand owners in the spirits industry, which may result in a greater burden of attention for interim service providers.

TREETS went with the wind when TREETS became M&M's...

Mon, 13 May 2024 20:33:19 GMT

Lesson from M&M's: Attention by changing the brand!

Have you ever seen the smiling peanut on the yellow M&M's wrapper? Well, did you know that this brand used to be called TREETS?

In 1986, for reasons we don't know, the Mars Group replaced the TREETS trademark with the M&M's trademark to identify chocolate and sugar-coated peanuts. Another company decided to re-use the TREETS mark and negotiated around the "Treets" sign and in particular the French TREETS marks. In addition to requesting the revocation of the French TREETS marks, the company initiated proceedings for the revocation of other TREETS marks. It also proposed the purchase of the oldest TREETS marks, particularly in France, and an undertaking "not to use the 'Treets' mark on yellow packaging". It registered international word and semi-figurative marks designating France and the European Union TREETS, under which it marketed various products, including chocolate-covered peanuts.

In 2017, at the request of the defendant company, the Mars group withdrew its French TREETS trademarks. The full disclaimers of these trademarks were entered in the French national trademark register. However, no settlement was reached in the end.

The Mars Group challenged the defendant company's TREETS marks on the grounds that they had been registered in bad faith. However, the Paris Court rejected this claim. According to the judge, it is up to the applicant for a declaration of invalidity to establish the circumstances that would lead to the conclusion that the owner of the contested mark acted in bad faith when filing the application, good faith being presumed until proven otherwise.

In the present case, the documents produced show exchanges between the parties concerning the defendant's desire to negotiate. The Mars Group was therefore aware of the defendant company's intention to use the "TREETS" sign for its own products or those of its licensees, and the strategy which it criticises is in fact nothing more than a normal commercial practice which enables a competitor to secure, without disloyalty, the availability of a sign which it wishes to use as a trade mark. The trade marks were therefore not registered in bad faith.

The judge also dismissed the unfair competition claims. In the absence of any bad faith in the registration of the marks at issue and in the absence of any marketing of the plaintiff's products in France under the sign "TREETS" for thirty years, and in view of the renunciation of the earlier French marks, no fault on the part of the defendant company was established. For the same reasons, the defendant's marketing of chocolate-covered peanuts in France under the sign "TREETS" is not such as to mislead the reasonably well-informed and reasonably attentive consumer. The claims for misleading commercial practices are therefore also dismissed.

When TREETS became M&M's and was abandoned by its former owner, he may not have known that he would lose his rights to that name in France...

(Tribunal judiciaire de Paris, 3e ch., 3e sect., 20 décembre 2023, 18/14422 (M20230254)
Mars Wrigley Confectionery France SAS, Mars Inc. et Marques c. Piasten GmbH et Lutti SAS)

Who can use the designer's name as a trademark?

Sun, 21 Apr 2024 09:35:30 GMT

After the end of collaboration, can the company still use a designer's name as a trademark ?

In the world of haute couture fashion, the designer’s name is often emblematic of the style of the garment and determines the consumer’s decision to buy. However, if the designer ceases to work with his business partner, can the latter continue to use the trademark registered under the designer’s name? A recent decision of the French Supreme Court of 28 February 2024 illustrates this question.

Jean-Charles de Castelbajac, a famous French designer, had a company under his name and owned the French trademarks JEAN-CHARLES DE CASTELBAJAC and JC de CASTELBAJAC. On 3 February 2012, due to financial difficulties, the company PMJC acquired two French trademarks “JEAN-CHARLES DE CASTELBAJAC” and “JC de CASTELBAJAC” as part of a bankruptcy procedure to acquire the designer's company. On 21 July 2011, the company entered into a service contract with the designer, in which it specifically referred to “the need to match the image of the brands and items marketed with the image of the designer”, as he had assumed the role of artistic director. At the end of the contract on 31 December 2015, the designer created the company Castelbajac Créative, through which he continued his professional and artistic activities, using his family name.

Several legal disputes arose between the parties, who attacked each other for copyright infringement and trademark infringement. On 21 June 2018, PMJC filed a lawsuit against the designer and Castelbajac Créative for alleged trademark infringement, unfair competition and parasitic behaviour. The designer, in turn, filed a counterclaim for cancellation of the two trademarks, arguing that their use had become misleading.

The Paris Court of First Instance ruled that the revocation action was admissible but dismissed the revocation claim. The Paris Court of Appeal decided that the revocation action was admissible and well-founded. The case was then appealed to the French Supreme Court.

Regarding the deceptive use of designer’s name as a ground for revocation, the Court of justice put down some guidelines in the ELIZABETH EMANUEL case on March 30, 2006. In this case, the dispute arose between a wedding dress designer in the United Kingdom and a company which had applied to register the trademark ELIZABETH EMANUEL, consisting of her surname. This trademark application followed successive transfers of the initial business.

In that case, the Court held that, although an average consumer might be tempted to buy a garment under the impression that the designer bearing the name had been involved in its creation, the company owning the trademark still guaranteed the characteristics and qualities of the garment . Consequently, the name in question, taken in isolation, was not inherently misleading as to the nature, quality or origin of the goods designated.

However, if the presentation of the mark was intended to imply the designer's ongoing involvement in the creation of the goods, this could be considered a fraudulent maneuver on the part of the applicant company. However, it wouldn't meet the criteria of deception under the Community Trade Mark Directive and therefore would not affect the validity of the mark or the possibility of its registration.

In the present Castelbajac case, the Paris Court of First Instance rejected the claim for revocation of the JC de CASTELBAJAC and JEAN-CHARLES DE CASTELBAJAC trademarks, also relying on the Elizabeth Emanuel ruling.

The Paris Court of Appeal overturned the judgment on this point and declared the partial revocation of trademark rights. It considered that the jurisprudence of the Court of Justice in no way excluded the possibility of revoking the rights to a patronymic in the event of misleading use by its proprietor .

The Court of Appeal then held that PMJC had used the JC de CASTELBAJAC and JEAN-CHARLES DE CASTELBAJAC trademarks in such a way as to mislead consumers into believing that certain products bearing those trademarks had been designed by the designer or under his artistic direction, even though the design was no longer part of their collaboration. In fact, it is clear from the documents produced at the hearing that, after the termination of the contract for services between PMJC and the designer, PMJC, in collaboration with third parties, offered for sale products bearing motifs and colors emblematic of the designer's universe. The promotional articles published on the Internet on this occasion suggested that these items were the designer’s works produced in partnership with the company.

The French Supreme Court therefore decided to refer a question to the Court of Justice for a preliminary ruling in order to ascertain whether the decision of the Paris Court of Appeal was consistent with the case-law of the Court of Justice.

Can the clothes no longer designed by Jean-Charles de Castelbajac still be called JC de CASTELBAJAC or JEAN-CHARLES DE CASTELBAJAC? Let’s wait for the response of the Court of Justice.

The new EU AI Act – The 6 Questions You Want to Know

Mon, 01 Apr 2024 14:42:53 GMT

The EU AI Act will greatly impact the AI companies coming into the European market.

The European Union has long harbored ambitions of assuming leadership in the AI industry. As a component of its digital strategy, the EU aims to enact regulations on artificial intelligence (AI) to foster optimal conditions for the advancement and utilization of this pioneering technology.

In April 2021, the European Commission proposed the first EU regulatory framework for AI. AI systems with versatile applications are assessed and categorized based on the risks they pose to users. Varying levels of risk will correspond to differing degrees of regulation.

European Parliament members have voted in favor of the draft EU AI Act on 13th March 2024. The EU AI Act is poised to come into effect in the upcoming weeks, pending final procedural and linguistic checks. The implementation of this act will carry significant weight and impact in shaping the regulation of AI within the EU and globally.

Who will be affected?

The AI Act has established precise definitions for various stakeholders in the AI landscape: providers, deployers, importers, distributors, and product manufacturers. This mandates accountability for all entities engaged in the development, deployment, importation, distribution, or manufacturing of AI models. Furthermore, the AI Act extends its jurisdiction to encompass providers and users of AI systems situated outside the EU, such as those in China, if the system's output is intended for use within the EU.

2. What are the requirements of the Act?

The EU AI Act has a risk-based approach. It mandates that general-purpose AI models, including generative AI systems like large language models (LLMs) and foundation models, comply with a classification system organized into different tiers of systematic risk:

(Source: European Commission: Shaping Europe’s digital future)

Low-risk systems like spam filters or video games are subject to minimal requirements under the law, primarily entailing transparency obligations. This kind of system should inform users that the content is AI generated.

High-risk AI systems , such as autonomous vehicles, medical devices, and critical infrastructure (such as water, gas, and electric systems), necessitate developers and users to comply with supplementary regulatory obligations, including implementing risk management measures to ensure accuracy, robustness, and accountability framework incorporating human oversight.

AI systems that have adverse impacts on safety or fundamental rights will be classified as high-risk and will be categorized into two distinct groups:

1) AI systems that are used in products falling under the EU’s product safety legislation. This includes toys, aviation, cars, medical devices and lifts.

2) AI systems falling into specific areas that will have to be registered in an EU database:

Management and operation of critical infrastructure
Education and vocational training
Employment, worker management and access to self-employment
Access to and enjoyment of essential private services and public services and benefits
Law enforcement
Migration, asylum and border control management
Assistance in legal interpretation and application of the law.

Before being introduced to the market and throughout their lifecycle, all high-risk AI systems will undergo assessment. Individuals will retain the right to lodge complaints about AI systems with designated national authorities.

Prohibited AI systems , with few exceptions, include those presenting unacceptable risks, such as social scoring, facial recognition, emotion recognition, and remote biometric identification systems in public spaces.

Certain exceptions may be permitted for law enforcement purposes. “Real-time” remote biometric identification systems will be permissible in a restricted number of severe cases. Conversely, post remote biometric identification systems, where identification is conducted after a substantial delay, will only be authorized for the prosecution of serious crimes and solely following court approval.

3. What about ChatGPT?

Generative AI models such as ChatGPT will not be categorized as high-risk but will be obligated to adhere to transparency requirements and EU copyright law. This entails:

Disclosing that the content was generated by AI.
Implementing measures to prevent the generation of illegal content.
Providing summaries of copyrighted data utilized for training purposes.

4. Deep fakes

Deep fakes are now defined under the EU AI Act as “AI-generated or manipulated image, audio, or video content that resembles existing persons, objects, places, or other entities or events and would falsely appear to a person to be authentic or truthful”.

The finalized text of the EU AI Act outlines transparency requirements for providers and deployers of specific AI systems and general-purpose AI models (GPAI) that are more stringent than earlier drafts. These obligations include transparency mandates for deployers of deep fakes, with exceptions granted in cases where the use is authorized by law for detecting, preventing, investigating, and prosecuting criminal offenses.

In instances where the content constitutes an obviously artistic work, transparency obligations are limited to disclosing the presence of generated or manipulated content in a manner that does not impede the presentation or enjoyment of the artwork.

5. What are the penalties for non-compliance?

Similar to the methodology employed under the European General Data Protection Regulation, fines for breaches of the Act will be calculated either as a percentage of the offending party’s global annual turnover in the preceding financial year or as a fixed sum, whichever is greater:

€35 million or 7% for infringements involving prohibited AI applications;
€15 million or 3% for violations of the Act's obligations; and
€7.5 million or 1.5% for the dissemination of inaccurate information.

Nevertheless, there will be proportional limits on administrative fines imposed on small and medium enterprises as well as start-ups.

6. Next steps

The agreed-upon text is anticipated to be formally adopted in April 2024. It will become fully applicable 24 months following its entry into force, thus in 2026, but certain provisions will come into effect sooner:

The prohibition of AI systems presenting unacceptable risks will take effect six months after entry into force.
Codes of practice will be enforceable nine months after entry into force.
Regulations pertaining to general-purpose AI systems, which must adhere to transparency requirements, will be applicable 12 months after entry into force.
High-risk systems will be afforded additional time to comply with the requirements, as obligations concerning them will become applicable 36 months after entry into force.

The new EU design rules are coming

Fri, 22 Mar 2024 11:44:38 GMT

The EU has adopted new rules for designs.

According to Article 3 of Regulation 6/2002, designs are delineated as the visual manifestation of an industrial or artisanal product, or a component thereof, distinguished by its lines, contours, colors, shapes, and textures. Presently, design protection can be granted if the design is deemed both novel and possessing individual character.

Under the umbrella of a “design package”, the European Commission introduced two key proposals in November 2022. These proposals mark a pivotal stride toward coherent regulations tailored to the demands of the contemporary digital landscape, aiming for increased efficiency for applicants. The first proposal involves amending the Community Design Regulation, while the second proposes a recast of the Design Directive.

In a recent vote on 12 March 2024, the European Parliament endorsed updated EU design protection rules, positioned to accommodate technological advancements and foster a sustainable economy. The approval of these updated rules, which occurred on December 5, 2023, signifies the Parliament's commitment to preparing EU design regulations for the digital age, as agreed upon with the Council.

Design protection in the digital age

In response to the emergence of novel technologies like 3D printing and artificial intelligence, EU design protection will extend beyond physical objects to encompass visualizations such as graphic representations and spatial arrangements , including animations, maps, and fonts .

While various digital works, including graphical user interfaces, logos, and animated designs, are already eligible for protection under the existing EU design system, the proposed changes seek to clarify the comprehensive scope of the design regime and its relevance in today's digital economy.

Furthermore, the amendments specify that the spatial arrangement of items can be protected, potentially encompassing layouts within establishments, such as shops. The Court of Justice of the European Union (the “CJEU”) has ruled that the representation of the layout of a retail store may, under certain conditions, be registered as a trademark (judgment of 10 July 2014, Case C‑421/13).

However, to safeguard against misuse, this protection excludes designs that replicate aspects of cultural heritage, such as artifacts or natural and cultural monuments.

The growing utilization and advancement of 3D printing underscore the importance of enhancing design rights protection. The Directive expressly clarifies the definition of illicit copying, which now encompasses activities such as creating, downloading, copying, sharing, or distributing any medium or software recording the design and model. This includes facilitating the production of a product incorporating or applying the design or model.

Consequently, once the provisions of the EU design reform package are integrated into the national laws of EU member states, the broader use of software and other mediums for registering designs and models, as well as the commercial reproduction of products via 3D printing, will be prohibited across the EU.

More freedom on the spare parts market

Furthermore, while the primary purpose of design protection is to confer exclusive rights to a product's appearance, the new regulations ensure that this exclusivity does not extend to components of complex products. This provision enables consumers to freely select between competing products for repair purposes and promotes competition in the single market for spare parts. However, manufacturers of components can still provide clear information regarding the commercial origin and identity, empowering consumers to make informed decisions about their preferred spare parts.

Consequently, reproducing protected features of a design for repairing a complex product to restore its original appearance does not constitute an infringement of a Community design. For instance, replacing a damaged car body panel would not infringe on Community design protection, as long as specific conditions are fulfilled.

To facilitate the transition to a sustainable spare parts market, EU countries that continue to protect spare parts designs must withdraw such protection within an accelerated transitional period of eight years, as opposed to ten.

Next step

Both the regulation and directive will come into force on the twentieth day following their publication in the Official Journal. The regulation will become applicable after four months, and member states will have 36 months to transpose the directive into their national systems.

Who can use the four rings ? Audi has the say

Fri, 08 Mar 2024 16:26:23 GMT

Audi successfully defends its four rings

The iconic four rings emblem of Audi holds significant trademark status in Europe, officially registered for a range of purposes spanning vehicles, spare parts, and automotive accessories. Emblematic of the brand, Audi's logo derives from this trademark.

Recently, a Polish retailer has been advertising non-original grilles tailored for older Audi models on its website, featuring a component resembling or identical in shape to the Audi trademark, specifically designed to accommodate the Audi emblem.

Audi has taken legal action against the retailer, aiming to halt the marketing of these non-original grilles bearing a sign identical or similar to the Audi trademark. This case was referred to the Court of Justice to determine whether the marketing of automotive parts, such as these grilles, constitutes "use of a sign in the course of trade" potentially undermining the functions of the Audi trademark under EU law. In addition, Audi is questioning its authority as the trademark owner to prohibit a third party from engaging in such use.

The Court rendered its decision on 25 January 2024. In the judgment, the Court has concluded that the fixing the Audi logo to the grille does indeed constitute the use of trademark in the meaning of European trademark law. The defendant company's use of the trademark in the course of trade by affixing the trademark emblem to the radiator grille and importing and selling those grilles is deemed to potentially impair one or more functions of the trademark.

Furthermore, the Court has ruled out the application of the so-called necessary reference exception, stating that the use of a sign like in this case does not serve to designate or refer to goods as those of the proprietor but rather to faithfully reproduce a product of that proprietor. Thus, it does not fall within the exception of necessary reference.

In essence, this legal saga underscores the imperative for trademark owners like Audi to rigorously defend their brand identity against unauthorized use. The Court's ruling not only reaffirms Audi's rights to protect its trademark within the European Union but also underscores the broader significance of upholding trademark protections in preserving brand integrity and consumer trust.

Aurilex at Chinese-Speaking Lawyers Convention 2023

Sun, 03 Dec 2023 20:42:50 GMT

Aurilex present at Chinese-Speaking Lawyers Convention 2023

The managing Partner of Aurilex, Ms. Christine (Yaotian) Chai, was invited by the Foreign Affaires Office of Shenzhen City, China, to participate in the first edition of Chinese-Speaking Lawyers Convention, held in Shenzhen on November 14, 2023.

近日，Aurilex（欧达）律师事务所管理合伙人柴耀田律师受深圳市政府侨务办公室邀请，出席了于2023年11月14日首次在深圳举行的世界华语律师大会。

Aurilex at AIPPI World Congress 2023

Sun, 05 Nov 2023 21:48:21 GMT

Aurilex present at the AIPPI World Congress 2023

Ms. Christine (Yaotian) Chai, managing partner of Aurilex, participated to the International Association for the Protection of Intellectual Property (AIPPI) World Congress in Istanbul on 22-25 October 2023.

The annual AIPPI World Congress is the one of the most important worldwide meetings of professionals in Intellectual Property from different countries. The AIPPI is an international organization that aims to develop and improve the worldwide intellectual property protection.

Aurilex is delighted to exchange with IP professionals from all over the world and looks forward to continuing to render a high-quality service thanks to its expertise and extensive network.

Participation of Aurilex in the EUIPO practitionner program

Fri, 06 Oct 2023 19:19:28 GMT

Aurilex present in the EUIPO education program for practitioners 2023

The head of Aurilex, Ms. Christine (Yaotian) Chai, is honored to have been selected in the 2023 Education Program of the European Office of Intellectual Property (EUIPO) for Practitioners (ETMD EP Practitioners Program).

Trainers of this program are all experienced examiners or staff of the EUIPO. Participants include selected legal practitioners from different countries of the EU. The insights and expericens provided by the this valuable program will be to the great benefit of the clients.

Unitary Patent enters into force in Europe

183:897362478 (Yaotian Chai) — Wed, 12 Jul 2023 10:24:50 GMT

Unitary Patent enters into force in Europe

On 1 June 2023, the Unified Patent Court (UPC) finally came into force after years of negotiations between Member States. The project was launched by the UPC Agreement of 19 February 2013, signed by 25 Member States, and ratified by 17 of them.

This means that the long awaited Unitary Patent in Europe could now finally offer a new alternative to patent applicants and holders, besides the traditional European patents.

Recently, the head of Aurilex, Ms. Christine(Yaotian) Chai, has been interviewd by Xinhua News on the topic of unitary patents and given useful insights into the UPC system.

For an extract of interview in Chinese, please click on the link below:

欧盟启动单一专利制度提升创新竞争力

Data Compliance in Connected Cars

Mon, 03 Apr 2023 17:45:26 GMT

Data Compliance in Connected Cars

The "2023 Smart Connected Vehicles Legal Forum" was successfully held in Beijing on March 30, 2023, organised by Beijing Intellectual Property Office and co-organised by the Smart Industry Research Center of Zhongguancun Institute, the Technology Law Research Center of Beijing University of Technology and China Intellectual Property Magazine. The article "Data Compliance and Governance of Chinese Smart Connected Vehicle Companies in Europe" of Ms. Christine (Yaotian) CHAI, head of Aurilex, was honored to be selected in the special issue of China Intellectual Property Magazine as the collection of this conference.

2023年3月30日，在北京市知识产权局的指导下，由中关村知识产权战略研究院智能产业研究中心、北京理工大学智能科技法律研究中心与《中国知识产权》杂志联合主办的“2023智能网联汽车法律论坛”在北京成功举行。Aurilex律师事务所负责人柴耀田律师所撰写的《中国智能网联汽车企业在欧洲的数据合规与治理》一文有幸入选作为会刊的《中国知识产权》杂志。

Protect your brand and intellectual property in trade and investment in Europe

Sun, 12 Jun 2022 16:47:31 GMT

Protect your brand and intellectual property in trade and investment in Europe

Recently, Ms. Christine(Yaotian) Chai , the head of Aurilex Law Firm, was invited by Shenzhen Qianhai Belt and Road Legal Service Association to hold a lecture in the form of online live conference, entitled "Brand and intellectual property protection in foreign trade and investment to Europe".

In recent years, especially under the epidemic environment, cross-border e-commerce has developed rapidly, opening another channel for a large number of enterprises to expand their turnover. EU trademark and design registration and protection has become an important legal topic in cross-border e-commerce. How to protect the achievements of enterprise intellectual property rights and avoid bad-faith registration is an issue that e-commerce enterprises should focus on.

In addition, the lecture also focused on the technology transfer in the investment and acquisition projects in Europe.

近日，欧达律师事务所负责人柴耀田律师应深圳前海一带一路法律服务联合会邀请，以线上直播的形式举行了讲座，讲座题为“对欧外贸投资中的品牌和知识产权保护”。

近年来，特别是疫情环境下，跨境电商发展迅猛，为国内大量企业扩展营业额打开了另一条渠道。欧盟商标、外观设计注册和保护成为了跨境电商中重要的法律话题。如何保护企业知识产权成果，避免恶意抢注，是电商企业应当着重注意的问题。

另外，讲座还围绕着对欧投资收购项目中的技术转移问题，进行了深入浅出的讲解。

Apply your patent, trademark or design with the EU SME fund in 2022

Tue, 01 Mar 2022 21:26:16 GMT

The EU Intellectual Property Office runs a funding scheme for IPR applications for SMEs in the EU from 10 January to 16 December 2022.

Which companies can apply?

SMEs located in the EU. The size of the business needs to meet the definition of an SME under national law.

Which IP applications are eligible for funding?

Trademark, patent, design and utility model applications in the EU or member states.

What is the amount of refund available?

EU trade marks or Member State trade marks, designs, utility models: 75% refund of application fees.
EU trade marks or Member State trade marks, designs, utility models extended outside the EU: 50% refund of extension fees.
EU or Member State patents: 50% refund of application fees.
In addition, the maximum cumulative amount of funding is €1,500 for trade marks, designs and utility models and €750 for patents.

Applications for funding must be made prior to the filing of an IPR application.