How the CJEU's landmark BSH v Electrolux ruling may allow the UPC to extend its reach to UK patents and reshape cross-border patent litigation in Europe.

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 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.

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

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

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

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

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

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