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designs

Modification of the limitation period for infringement proceedings

Modification of the limitation period for infringement proceedings

According to new Article L.716-5 of the French Intellectual property Code, “trademark infringement action is limited to 5 years from the day on which the holder of a right knew or should have known the last fact enabling him to exercise it”. This Article corresponds to Article L.615-8 for patent infringement actions (see our article here) and to Article L.521-3 for infringement actions related...

IP protection of pictograms

IP protection of pictograms

In our time of digital communication, the pictograms, these basic symbols conveying universally recognized and fully understood information, also intend to be used as a badge of origin. But can these simple and meaningful signs be perceived as identifying the commercial origin of the products or services offered? According to the law and case law, pictograms indicating a mode of use, or that...

Copyright protection over a portal

Copyright protection over a portal

That’s right! This is France and France is known worldwide (at least we French people like to think so) for its contributions to the arts, its intellectual creations, its original productions. Yet we are talking about copyright protection claimed over a portal, a front gate. In 2012, a portal manufacturer filed a lawsuit for copyright infringement claiming another company had a portal made based...

Law and Intellectual Property as growth boosters

Law and Intellectual Property as growth boosters

This article is the transcription of a presentation by Manuel ROCHE, Industrial property attorney and President of the International Relations Committee of the CNCPI (the French Patent and Trademark Attorneys Institute), during the international symposium “Paris, European hub for business, digital, IP and tech law” which took place the 11th of October 2018, at the Tribunal de grande instance de...

Design of a retail store may be protected by copyright in France

Design of a retail store may be protected by copyright in France

The layout of a retail store, even more if it is a flagship store or a franchise store, often created by a designer or an architect, may be protected in France by copyright if the originality of the store design is recognized by the courts. Such is the case of the franchised hair salons Shampoo, given their characteristics detailed by the Court of Appeal of Douai (April 5, 2018, Case 17/03809)....

EU / China – The battle for technology transfers

EU / China – The battle for technology transfers

Early June 2018, the European Union has initiated proceedings before the World Trade Organisation against China for failing to respect the intellectual property rights of European companies. Observing that “European companies coming to China are forced to grant ownership or usage rights of their technology to domestic Chinese entities and are deprived of the ability to freely negotiate...

3D trademark v/ Community design – The Tic Tac box case

3D trademark v/ Community design – The Tic Tac box case

The three-dimensional trademark, filed for sweets and consisting of an empty and unlabeled TIC TAC box, although considered as a weak trademark, is opposable to a Community design consisting of a full candy box, bearing figurative and verbal elements. First of all, an earlier trademark right can be opposed to a later registered Community design (RCD) as: Part of the prior art, to destroy the...

Why would you pay a licence royalty if you do not need to?

On the 26th of September of 2017, the Court of Appeals of Paris issued the final decision in the case that lead to the decision of the Court of Justice of the European Union of the 7th of July of 2016 that we commented here (Royalty for a patent: what do you really pay for?). For the Court of Justice, Competition Law did not preclude the imposition on the licensee, under a licence agreement, of...

INSCRIPTA meets businesses at Paris Chamber of Commerce

[INSCRIPTA] is proud to be an official partner of Paris Chamber of Commerce for the next International Business Meetings taking place 27 November 2017 in Paris. The event is dedicated to helping companies expand their business overseas by meeting experts on various international matters. [INSCRIPTA] will be hosting a workshop on: Intellectual Property and Online Business Keys to international...

Wrong ideas about design infringement

If there are at least 7 differences between two designs, there is no counterfeiting. Wrong! The designs are compared according to their similarities and the overall impression they produce on an informed user. If the overall impressions are the same, copying or infringement may be recognized. If they differ from each other, the first registered design is not infringed. There is thus no...

Changes of name or address must be registered with IP offices

When a company changes its name or address, it is advisable to register said changes for all its trademarks, designs and patents with the IP registers in order to update the owner's identification details for all industrial property titles. This ensures an up-to-date and uniform portfolio of IP titles, and enables the owner to initiate both administrative and judicial procedures without having...

New: e-Soleau is online

Although they do not provide any legal protection, Soleau envelopes, named after their inventor, are a low-cost way of ascertaining the date of one’s creations in France. Until now, creations were to be carefully described in two identical copies each of them respectively placed in both compartments of a Soleau envelope. Once it was sealed and registered before the INPI (French PTO) through a...

Apple v. Samsung, assessing damages

On December 6, 2016, the United States Supreme Court issued a very expected decision that should become one of the most significant rulings of the year in the intellectual property world. It is all the more important that it deals with the Apple v. Samsung case, one of the most commented cases of the decade. Surely you know that Apple sued Samsung for infringing several design patents for...

A new Director for the French Patent & Trademark Office

Mr. Romain Soubeyran is the new General Director of the French Institute for Industrial Property, the French Patent and Trademark Office. According to the official press release, he previously was director of Mines ParisTech, one of the famous French Grandes Ecoles (executive engineering and business schools). He comes after Mr. Yves Lapierre, who was in office for the past six years. Mr. Romain...

Infringement of registered Community design and sudden breach of established business relationships: limits of the exclusive jurisdiction of Civil courts

French law provides that the entire litigation for designs, trademarks and patents, including the actions and claims on a related issue of unfair competition shall be brought before specific Civil courts (articles L.522-2, L.716-3 and L.615-17 of the French Intellectual Property Code respectively). In line with recent decisions (see our article Is the Patent Court the patent license court?) the...

Brexit: what future for EU IP titles in the UK?

By referendum on 23 June 2016, the majority of British people voted to leave the European Union. Even if the exit is not to become reality before several months, the first effects relating to IP could occur very soon (1). As far as IP titles are concerned, transformation mechanisms will be defined after the United Kingdom formally notifies its decision to exit to the European Council, which...

The Brexit and the Community trademarks and designs

While the European authorities have finalized the revision of the Trademark system and while there have been significant developments in the implementation of the so-called “EU Patent Package”, the United Kingdom is considering a possible British exit from the European Union by scheduling a referendum in June 2016. If the Brexit would have no effect at all on the European patent system, which...

Relevant disclosures: US patent v. EU design

To be valid, a Community design must be new and have individual character, which means it must produce on the informed user a different overall impression from that produced by the designs already disclosed at the time of registration. The publication of a US patent in 1995, although neither marketed in Europe nor even in the US, may be regarded as the disclosure of a prior design, with respect...

New rules and deadlines before the French Patent and Trademark Office

French government has recently been decided to make relationships between administrations and their users easier. With this in mind, they created a new rule according to which failure of an administration to answer a request within a two-month period should be considered as granting this request. In France, this rule is known as “Silence vaut accord” or “Silence means agreement”. But things...

IP official fees rise in France

Governmental decree of 10 June 2015, published 13 June 2015, decided a raise in official fees payable to the French Patent and Trademark Office, INPI or National Institute for Industrial Property. On average it is a 5% increase and all IP titles are concerned even though not affected in the same way. Whereas application filing fees for patents stay the same at €36, application filing fees for...

International design system: Accessions by Japan and the United States of America

Two of the world’s biggest economies, namely the United States of America and Japan, will join the Hague system for the International Registration of Industrial Designs on May 13th, 2015. The international design system provides a variety of centralized administrative procedures to protect and manage a design in one or several member countries, among which the European Union. The international...

Long-lasting protection for games: a brainteaser

In this Christmas season, games are popular in the shops and under the tree, but also spark fierce legal debates. How to durably protect the games and prevent competitors from developing identical or similar games? When launching a new game, manufacturers obviously think to file the game’s name as a trademark. The names of successful games (which can be considered as well-known) benefit from a...

How to protect a concept?

As you may know, protecting a concept in France is not an easy task, mainly because a concept is a general notion or idea and because abstract ideas cannot be protected by copyright and even less by industrial property titles such as patents, trademarks or designs. Of course, even if a concept cannot be legally protected by itself or for itself, you can still achieve legal protection through...

IP: Judicial courts have exclusive jurisdiction

French Tribunal des conflits, arbitrating whether a case must be heard before judicial or administrative courts, has just ruled that judicial courts have exclusive jurisdiction over cases involving the liability of public entities as long as intellectual property law or intellectual property rights are concerned. A French photographer had filed a complaint against a French administrative...

Registration of a French design does not mean it is valid

According to the French Intellectual Property Code, a design shall only be protected if it is new and has individual character (Article L.511-2). But when it comes to industrial designs, the French Patent and Trademark Office (INPI) does not perform an examination on absolute or relative grounds. The office can only reject design applications that do not comply with formal requirements or...

INSCRIPTA’s interview in French magazine Informations Entreprise

[INSCRIPTA] has been interviewed by French magazine "Informations Entreprise" as part of a dossier dedicated to intellectual and industrial property and French Patent and Trademark Attorneys. Founding partners of [INSCRIPTA] Agnès DOYEN and Manuel ROCHE were given the opportunity to explain how they view their work and to remind that building a strategy for protection and defense of intellectual...

Reinforcement of customs action against counterfeiting

The new French law of 11 March 2014 reinforces the IP rights holder’s means of action against alleged infringers. In this respect, the customs often play a decisive role, since the customs detentions allow IP rights owners to block the counterfeiting goods, but also to obtain information relating to the counterfeiting networks. 1. Transhipment Transhipment of goods has been considered as an act...

French law of 11 March 2014 – Fighting against the infringement of IP rights

The new French law aims to fight against counterfeit products and the infringement of intellectual and industrial property rights. The bill, which we commented last December (1), has been approved very fast and very easily, with almost no opposition or disagreement among the members of Parliament. We decided to focus our attention on some of the main provisions of the new law which amends the...

Intellectual property rights in French Polynesia

If you own French registered trademarks, designs or patents, that were filed or renewed since 03 March 2004, you should find interesting to know that they are no longer valid in French Polynesia. One of the consequences of organic Law No.2004-192 of 27 February 2004, which proclaimed regional autonomy of French Polynesia, was that IP titles such as trademarks, designs or patents, delivered by...

Invalidity proceedings of a Community design: a strategy issue

Invalidity proceedings of a Community design filed before the OHIM can be based on absolute grounds (when the design does not fulfil the requirements of validity) or on relative grounds (in case of an infringement of prior rights). According to the Regulation on Community designs (1), the holder of prior rights thus has two possible grounds for such an action. Article 25(1)(b). Invalidation...

Fighting against the infringement of IP rights: strengthening of French Law

In October 2007, France adopted a very important law to fight against counterfeit products and the infringement of intellectual and industrial property rights. This law was the French transposition of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights. The new rules were globally acclaimed at first but it...

A copyright infringement action requires preparation

In France, copyright is granted to original works or, as the French Courts say, to works of the mind that bear the stamp of their author’s personality. But you do not just claim that a work is original. To benefit from copyright protection, you need to show how and why a specific work should be deemed original, to show what original features it bears. Otherwise, your copyright infringement...

Intellectual property rights warning

In France, the enforcement of IP rights is based on the first-to-file principle when in Common Law countries, the IP system is based on the first-to-invent or first-to-use principle. To warn the public of the existence or registration of trademarks, designs, patents or copyrights or to enforce those rights and obtain damages in case of infringement, the IP rights have to be filed and registered...

2D Trademark v/ Community design – About the informed user

The registered Community design will celebrate its 10th anniversary on April 1, 2013. These 10 years have enabled the Courts to clarify the conditions of protection of this unified title. According to the Community regulation, “the assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly...

INSCRIPTA, French and European Trademark Attorneys law firm

INSCRIPTA, French and European Trademark Attorneys law firm, is pleased to announce its official opening, after several weeks of preparation. Our firm welcomes you in Paris, France, at 10 rue d'Aumale in the ninth arrondissement. INSCRIPTA shares its offices with an Attorney at Law firm and wants to be your partner of choice for every legal aspect of your business related to intellectual and...