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65 publications

PACTE brings major changes in French IP Law

By Henri BOURGEOIS and Jérôme COLLIN, French & European Patent Attorneys
BourgeoisCollin_Article.jpg The PACTE law is a set of new French laws implementing the economic reform decided by the French government. PACTE includes several provisions on intellectual property, which result in major changes for patents and trademarks.
Published on: 30th Nov 2020

Protection of your trademarks against the domain names registrations under the porn industry extensions.

By Nicolas Demilly, French & European Trademark and Design Attorney
Demilly_search.jpg REGIMBEAU is at your disposal to support you in the registration of these blocks as well as in the management and the defense of your domain names. Do not hesitate to contact us on this matter.
Published on: 17th Nov 2020

Brexit will become a reality on January 1st, 2021

By Evelyne ROUX, Partner.
ROUX_SEARCH_2013.jpg On January 1st, 2021, the transition period which followed the UK’s decision to leave the EU will end, a priori without any further extension. When deciding your budget, in particular for renewals, remember the measures that will need to be taken to anticipate the effects of BREXIT and the consequences for your intellectual property rights.
Published on: 22th Sept 2020

Implementation of the E.U. "Trademark reform package" in France: the French TM Office now competent to invalidate or revoke Trademark registrations

By Carole ADJADJ, French & European Trademark and Design Attorney.
v3783-Carole ADJADJ.jpg As of April 1, 2020, requests for invalidity or revocation of trademarks which had been brought before the judicial courts prior to this date, now fall within the purview of the INPI and become administrative and purely electronic procedures.
Published on: 21th April 2020

PACTE law and trademarks. Ready - On your mark - Go!

By Evelyne ROUX, Partner.
ROUX_SEARCH_2013.jpg – Law no. 2019-486 of May 22, 2019 relating to business growth and transformation, known as the “PACTE Law,” has finally kept its promises regarding the provisions relating to trademark law. Ordinance No. 2019-1169 of November 13, 2019, implementing decree N°2019-1316, the order relating to fees of the same day, and two INPI decisions Nos. 2019-157/158 will significantly modify French trademark law, while also bringing it into conformity with European law.
Published on: 4th Feb 2020

BREXIT but no panic! You will have still time to make a decision!

By Evelyne ROUX, Partner.
ROUX_SEARCH_2013.jpg After years of discussions and political battles, the UK leaves the EU on February 1, 2020. However this departure will not have any immediate impact on EU trade marks or designs. A transitional period until at least December 31, 2020 has been fixed during which all the EU rules will still be applied to the UK without any amendments. All EU rights (trademarks and designs) will continue to have effect in the UK, and all proceedings before the EUIPO will continue as before.
Published on: 1st Feb 2020

Trademarks: 1 registration for 104 member states and 120 territories: Canada will join the International Trademark System.

From its creation, or at the latest from the start of negotiations with foreign partners, overseas Trademark protection must be considered. it is now the turn of Samoa to join the international trademark system as of 17th June 2019. Given its wide geographical coverage and simplicity, this system is becoming more and more adapted to worldwide business development strategies.
Published on: 3rd May 2019

Anti-counterfeiting fight : a strengthened and more focused customs strategy

By Anne CHANTELOUP, Intellectual Property Attorney.
CHANTELOUP_SEARCH.jpg On October 1st, the Ministry of Justice and the Director of Criminal Affairs and Pardons sent a document presenting the new strategy of the Directorate General of Customs and Excise (DGCE) in the fight against counterfeiting to judicial authorities.
Published on: 6th March 2019

Trademarks and use: a commentary on the Big Mac case

By Evelyne ROUX, Partner, and Caroline HUGUET-BRAUN, French and European Trademark and Design Attorney.
HUGUETROUX.PNG Everyone is talking about it, but what actually happened? Has the fast food giant, McDonald’s International Property Company Ltd. (“McDonald’s”), really lost its rights to the BIG MAC trademark?
Published on: 26th Feb 2019

Trademarks and ecology: a German VerpackG law on packaging

By Anne CHANTELOUP, Intellectual Property Attorney.
CHANTELOUP_SEARCH.jpg If you launch a new packaged product in Germany, this German packaging law (known as “VerpackG”) – which came into force on January 1st – may apply to you. It ensures the transposition of the European Directive 2015/720 of April 29, 2015 into German law, amending a previous directive to reduce the consumption of lightweight plastic bags.
Published on: 26th Feb 2019

What impact will a BREXIT without a withdrawal agreement as of March 30, 2019, have on your IP assets, in particular patents, trademarks & designs, domain names?

By Christian TEXIER, Frédérique FAIVRE PETIT, Sylvain THIVILLIER, Evelyne ROUX, Partners, Cécile PUECH, Senior Associate and Anne CHANTELOUP, Intellectual Property Lawyer.
CTFFPEVR.PNG UK MPs overwhelmingly rejected the negotiated exit agreement of the EU by 432 votes against 202 on Tuesday January 15, 2019.
Published on: 21th Jan 2019

Non-traditional trademarks, marketing is a powerful ally!

By Martine BLOCH-WEILL, Partner
v3588-Martine BLOCH WEILL.jpg While it is customary for legal teams to file trademarks to ensure the durability of marketing efforts and investments when launching and commercializing new products and services, lawyers, do not forget that marketing is also your ally! And it has not finished being proven.
Published on: 29th Oct 2018

URDP procedure: do not relinquish action against a disputed domain name registered for several years!

By Anne CHANTELOUP, Intellectual Property Attorney
CHANTELOUP_SEARCH.jpg On June 20th, the WIPO Arbitration and Mediation Center issued a decision in a UDRP proceeding initiated by REGIMBEAU against a 21-year-old domain name. The sole dispute resolution expert recognized the infringement of prior rights - in this case of trademarks and a domain name - and ruled in favor of the transfer of the disputed domain name to the complainant.
Published on: 28th Sept 2018

Industrial designs: prior disclosure: the non-relevance of the place of disclosure. Invalidity of the "Crocs" registered community design for lack of novely.

By Anne CHANTELOUP, Intellectual Property Attorney.
CHANTELOUP_SEARCH.jpg On March 14th, the General Court of the European Union issued a momentous decision to invalidate the registered community design relating to the famous “Crocs” clogs due to its premature disclosure to the public. This is a dark period for the Crocs company, after invalidation decisions of the design in the USA and of the three-dimensional trademark in the Dominican Republic.
Published on: 28th Sept 2018

Brexit - Trademarks & Designs: an automatic transfer without official taxes for trademarks and designs of the European Union

By Evelyne ROUX, Partner, and Anne CHANTELOUP, Intellectual Property Lawyer.
ROUX_SEARCH_2013.jpg Good news for trademark and design right holders in the heart of summer. It doesn’t come from the EU Commission, nor from the UK Government, but from the United Kingdom Intellectual Property Office (UKIPO).
Published on: 24th Aug 2018

The assessment of the protection of a design with a technical function: an issue now settled by the Court of Justice of the European Union

By Anne CHANTELOUP, Intellectual Property Lawyer
CHANTELOUP_SEARCH.jpg The Court of Justice of the European Union has just issued an interesting and expected decision regarding the exclusion of functional forms by design law and the non-determinative nature of the existence of alternative designs (CJEU, 2nd Chamber, 8 March 2018, Aff C-395/16)
Published on: 25th April 2018

Elimination of the graphical representation requirement of your trademarks: Can’t find an available trademark? Be creative! Any sign can be registered... In theory

by Evelyne ROUX, Partner
ROUX_SEARCH_2013.jpg On October 1, 2017, one of the provisions of the European trademark system reform will become applicable, namely the elimination of the graphical representation requirement of a trademark.
Published on: 17th Oct 2017

Draft French standard (NF X50-276) to facilitate the electronic exchange of data relating to intellectual property rights is subject to a public enquiry

By Marc LEVIEILS, Partner
Levieils_search.jpg Under AFNOR’s authority and in the framework of the Innovation Management Commission , the Working Group CN INNOV GT5 (moderated by Marc LEVIEILS) has prepared a draft French Standard (NF X50-276) to facilitate the electronic exchange of data relating to intellectual property rights.
Published on: 6th Sept 2017

Recordation of Change of Legal Name for Trademarks: Minor Change / Major Risk

by Jérôme BRAQUEHAIS, Head of the Recordal Department
v2062-Jérôme BRAQUEHAIS.jpg An 8 September 2016 ruling of the Court of Justice of the European Union (CJEU) has disrupted the French legal framework relating to recordals in the trademark register.
Published on: 2nd Feb 2017

First Remarks as to the Implications on Intellectual Property Following the BREXIT vote of 24 June

This morning, Friday 24 June 2016, the British referendum result in favour of BREXIT was announced, meaning the United Kingdom has voted to leave of the European Union. What will be the initial consequences in the intellectual property field?
Published on: 24th Jun 2016

Infringement and Medical Products

by Pierre BOUGEARD, French and European Trademark and Design Attorney
P.BOUGEARD.jpg Intended to combat the infringment of medical products and to protect public health, the Medicrime Convention entered into force on 1 January 2016.
Published on: 11th May 2016

Cigarillo Packaging: Environmental Awareness goes up in Smoke!

by Martine BLOCH-WEILL, partner
v3588-Martine BLOCH WEILL.jpg The French National Anti-Smoking Committee (Comité National contre le tabagisme - CNCT) considered that the cigarillo packaging marketed by the Brazilian Dannemann Society did not comply with the provisions of the Evin Law since it constituted an unlawful advertising of tobacco.
Published on: 11th May 2016

On your European (Trade)marks! Do you have Something to Declare?

by Isabelle THILL, Partner
THILL_SEARCH_2013.jpg SPECIFICATION OF GOODS AND SERVICES FOR YOUR TRADEMARKS: the President of the OHIM has just released a statement regarding the modalities of application for Article 28 (8) of the amended regulation on the European Union Trademark.
Published on: 24th Feb 2016

European Trademark Reform: What does it mean for You!

We’ve been waiting a long time and at last it’s nearly here! On 15 December 2015 the European Trademark reform was approved by the European Parliament and should enter into force in Spring 2016.
Published on: 14th Jan 2016

European and French Customs Retainer Procedures

By Evelyne ROUX, Partner and Carole ADJADJ, French and European Trademark and Design Attorney
ROUX ADJADJ.JPG It is worthless to say that infringement is ever increasing. A battle is engaged, involving all the stakeholders, to stop counterfeited and pirated goods, and to fight against infringement. Customs, as well as Legal procedures and resources are being continually improved.
Published on: 15th Dec 2015

Advertising and Alcohol: The Supreme Court Acknowledges that the Impression of Pleasure is Allowed!

by Martine BLOCH-WEILL, Partner
v3588-Martine BLOCH WEILL.jpg We informed you last year of the judgment of the Versailles Court of Appeal (Ch 3, 3 April 2014 ANPAA/CIVB) which claimed that appearing “grumpy” was not imposed by the EVIN Law (see article). Hearing this case again the Supreme Court made a new judgement on 1st July 2015, at the end of which it reviews the strict position issued in its first judgement of 23rd February 2012.
Published on: 11th Dec 2015

Crocodiles are Allowed to eat up Caimans According to the General Court

by Martine BLOCH-WEILL, Partner
v3588-Martine BLOCH WEILL.jpg On 30 September 2015 the General Court of the European Union passed judgement (T-364-13) in a case that, since 2007, has been opposing the Lacoste Company, with its famous crocodile logo against the Polish society Eugenia Mocek and Jadwiga Wenta KAJMAN Firma Handlow-Uslugowo-Produkcyijna, who filed a Community trademark covering, notably, clothing, bags, and footwear, as well as property rental services or furniture.
Published on: 23th Oct 2015

China: Beware of Fraudulent Trademark and Domain Name Filings

By Esther DUPAIN, French and European Trademark Attorney
v3710-Esther DUPAIN.jpg We have noted, over a number of years that cases of fraudulent trademark filings in China are becoming more and more frequent. Some fields are more affected than others, with food and wine brands being especially targeted, including AOC’s, IGP’s...
Published on: 8th Oct 2015

Advertising and Alcohol: Trial Judges Declare There is No Need to Get Cranky!

by Martine BLOCH-WEILL, Partner
v3588-Martine BLOCH WEILL.jpg The Versailles Court of Appeal (Ch 3, 3 April 2014 ANPAA/CIVB) upon referral after appeal (Cass, 1st civ, 23 February 2012) rejected the strict interpretation made by the Supreme Court as to the provisions in the Evin Law relating to advertising requirements for alcoholic beverages.
Published on: 30th Jul 2015

Nobody Puts the URS in a Corner

by Nicolas DEMILLY, French and European Trademark and Design Attorney
v3640-Nicolas DEMILLY.jpg The URS (Uniform Rapid Suspension (System)) procedure is a new alternative dispute resolution procedure for domain names that has been established by ICANN in conjunction with the launch of new domain name extensions.
Published on: 24th Jun 2015

Geographical Indications for Industrial and Handmade Products and Local Authorities: Opposition Proceedings before the INPI!

by Jean-Charles NICOLLET, French and European Trademark & Design Attorney
0851-J-C.NICOLLET.jpg On 3 June 2015 the official journal published the decree on geographical indications for industrial and handmade products.
Published on: 15th Jun 2015

“HOME-MADE” Seal of Approval: Does the legislators cooking lack finesse?

By Martine BLOCH-WEILL, Partner
v3588-Martine BLOCH WEILL.jpg Since 15th July a new seal of approval has been appearing on restaurant menus representing a saucepan with a roof for a lid aims to indicate to consumers that the dish he is about to order and sample has been cooked entirely on-site from crude or traditional kitchen products.
Published on: 5th Sept 2014

Trademarks & Tobacco : Plain Packaging

By Evelyne ROUX, Partner
Of course, everyone wants to stay healthy as long as possible and, preferably without having to make any particular effort! It is probably based on this thinking that France would like to introduce the European legislation in France.
Published on: 11th Aug 2014

The Traps of General Class Headings for your Trademarks

By Julie BRUN, French and European Trademark and Design Attorney
v3621-Julie BRUN.jpg Following the IP TRANSLATOR decision of 19 June 2012 by the ECJ, that we have already detailed, a decision by the Benelux office has been rendered applying these principles.
Published on: 8th Jul 2014

Are Your Industrial Property Rights Protected in French Polynesia?

By Christian TEXIER, Partner and Nicolas DEMILLY, French and European Trademark and Design Attorney
TEXIER DEMILLY.JPG The organic law no. 2004-192 of 27 February 2004 laying down the autonomous status of French Polynesia transferred the authority in all Industrial Property matters to this territory.
Published on: 7th Jul 2014

The Highlights of 3D Printers and Intellectual Property

by Caroline HUGUET-BRAUN, French and European Trademark and Design Attorney
0743-C.HUGUET.jpg The missing piece of your favourite puzzle, a priceless jewel, a spare part to replace… All of these products can technically be manufactured by 3D printers.
Published on: 10th Jun 2014

Trademarks and Labelling: the autonomous approaches that are worth utilising!

By Martine BLOCH-WEILL, Partner
v3588-Martine BLOCH WEILL.jpg The HERO company, which is the owner of French trademarks, had an action brought against it in the courts by a competitor who considered that these trademarks were null...
Published on: 28th March 2014

Acts of Trademark Infringement may also Constitute Acts of Unfair Competition!

by Nicolas DEMILLY, French and European Trademark and Design Attorney
v3640-Nicolas DEMILLY.jpg It is commonly accepted that the acts of infringement may not also constitute acts of unfair competition or parasitism.
Published on: 27th March 2014

Wine Labelling and Image Rights

by Jean-Charles NICOLLET, French and European Trademark & Design Attorney
0851-J-C.NICOLLET.jpg The use of the image of a competitor’s castle on wine labels may constitute an act of unfair competition that could cause remarkable problems for the castle owner.
Published on: 11th Feb 2014

AOC and PGI: A new example of protection

By Jean-Charles NICOLLET, French and European Trademark Attorney
0851-J-C.NICOLLET.jpg Calvados AOC (Protected Denomination of Origin – PDO) also enjoys protection at a community level through a Protected Geographical Indication (PGI).
Published on: 20th Jan 2014

When can a Trademark help the Marketing People stay Creative despite the constraints of Health and Nutritional claims?

By Martine BLOCH-WEILL, Partner
v3588-Martine BLOCH WEILL.jpg National and Community rules governing the communication on food products are becoming increasingly stricter.
Published on: 28th Nov 2013

Counterfeiting & Trademarks, Customs : Summer Evolutions in France, Europe and China

By Evelyne ROUX, Partner
ROUX_SEARCH_2013.jpg There have been many failed attempts at creating International treaties to fight against counterfeiting, such as ACTA, European jurisprudence seems to have opened the door for counterfeiters by prohibiting...
Published on: 17th Oct 2013

List of Goods and Services: General Class Headings, Trap or Temptation?

By Julei BRUN, French and European Trademark and Design Attorney
v3621-Julie BRUN.jpg The national Intellectual Property offices of the European Union and the OHIM have published a common communication relating to the interpretation of the IP TRANSLATOR decision.
Published on: 9th Sept 2013

Advertising and Alcohol: Facebook and Alcohol are not "Best Friends"

By Jean-Charles NICOLLET, French and European Trademark and design Attorney
0851-J-C.NICOLLET.jpg The Supreme Court approved the 3 July 2013 decision by the Paris Appeal Court, that Articles L.3323-2 et seq. of the Public Health Code, which restrict the advertising of alcoholic products, were applicable to Social Networks.
Published on: 23th Aug 2013

Community Trademarks : Which countries need to be exploited in order for its use to be considered serious ?

By Evelyne ROUX, Partner
Registering a trademark is not sufficient to make it a valid right, five years on from registration it must still actively be in use.
Published on: 1st Jul 2013

Combining design and trademark rights to defend design creations

By Evelyne ROUX, Partner
ROUX_SEARCH_2013.jpg Using different combinations of IP rights can be a good way to protect designs. However, deciding which rights to use can be confusing. One strategy entails blending design rights and trademark rights, depending on how the design is to be marketed
Published on: 14th Jun 2013

French and community trademarks opposition proceedings

By Caroline WEHNER and Evelyne ROUX, Partner, Head of the Trademarks & Designs Department
ROUX_SEARCH_2013.jpg Practical Guide to French and community trademarks opposition proceedings
Published on: 3rd Sept 2012

Trademarks and the internet - a new system of protection: The “Trademark Clearinghouse”

By Nicolas DEMILLY, IP Attorney
Published on: 19th Jun 2012

Mediation for community trademarks and designs

By Evelyne ROUX, Partner
ROUX_SEARCH_2013.jpg Nearly 2,500 OHIM decisions are the subject of appeals to the Boards of Appeal, and they are rarely resolved in less than 18 to 24 months.
Published on: 20th Feb 2012

French, Community Trademarks and Overseas France

By Jean-Charles NICOLLET, IP Lawyer
0851-J-C.NICOLLET.jpg France has a number of overseas islands and territories. These are the Overseas Departments and Territories (DROM) and the Overseas Collectivities (COM).
Published on: 6th Feb 2012

Trademarks & Wines: Are your expectations clear?

By Chloé BRAYNE, IP Lawyer, Contract Department, Cabinet REGIMBEAU
The wine industry is one which is particularly complex, given that the exploitant of a trademark is not necessarily the owner of this right, but may be a wine cooperative or even a wine wholesaler.
Published on: 15th Nov 2011

Trademarks & Wines : French wines exports are booming : are your wines adequately protected ?

By Jean-Charles NICOLLET, IP Lawyer and Evelyne ROUX, Partner, Head of Trademarks & Designs Department
French wine is part of our heritage and is a reliable export asset for our country.
Published on: 8th Nov 2011

Geographical Indications : A unique register for wines and spirits ?

By Nicolas DEMILLY, European and French Trademark Attorney, and Evelyne ROUX, Partner, Cabinet REGIMBEAU
Since 1997, the negotiators of the WTO in the field of IP have been focused upon the preparation of a draft of a unique text establishing a multilateral system of notification and registration of geographical indications relating to wines and spirits.
Published on: 29th March 2011

Three-dimensional trademark against design? Who wins?

ByAymeric VIENNE, Senior Counsel, European and French Patent and Trademark Attorney, Cabinet REGIMBEAU
It could be advantageous to combine the protections, and to protect one’s creations by means of a three-dimensional trademark as well.
Published on: 18th March 2011

A new conflict between a subsequent design and an earlier trademark- Judgment T-513/09 of 16 December 2010

By Aymeric VIENNE, European and French Patent & Trademark Attorney - Cabinet REGIMBEAU
The decision brings out some now well-established definitions, but also some gaps in relation to certain questions of law in the area of designs.
Published on: 6th Jan 2011

Financial valuation of a brand: Contribution of the new ISO standard

By Marc LEVIEILS, Trademark Attorney, Partner - Cabinet REGIMBEAU
M.Levieils 65x65.jpg How can one measure a product’s innovative strength, a team’s creativity, knowledge of a market, or customer reputation ?
Published on: 10th Dec 2010

Trade marks and Designs: Score draw? In what circumstances can a trade mark invalidate a later design?

By Aymeric VIENNE - French and European Patent Attorney - Cabinet REGIMBEAU
On 12 May 2010, the General Court of the EC handed down a judgment in case no. T 148/08, between the Chinese company Beifa Group, on one side, and the OHIM and the well-known German company Schwan-Stabilo Schwanhaüßer, on the other.
Published on: 11th Jun 2010

Protection of shapes: Patents? Designs and copyright? Trademarks?

By Aymeric Vienne, European and French Patent Attorney and Evelyne Roux, Partner - Cabinet REGIMBAU
ROUX_SEARCH_2013.jpg While it is true that the law of designs naturally springs to mind where protection of the shape of a product is concerned, is it possible to protect the shape of your products using patent or trademark law?
Published on: 19th May 2010

Dilution of Trade Marks

By Evelyne ROUX, Head of the Legal Department and Julien-Alexandre DUBOIS, IP Lawyer
ROUX_SEARCH_2013.jpg Behind the sinister term “dilution”, borrowed from chemists’ terminology, lurks a legal reality which, although little known to the public, is actually an everyday occurrence affecting a large number of commercial trademarks.
Published on: 4th April 2010

Designs / 3D Trademarks: Friends or Foes ?

By Malaurie Pantalacci, French and European Trademark Attorney
Therefore it seems that both a design and a 3D trademark are suitable to protect the shape of a product. Does this imply they are competitors, or that either one or the other should be selected, or on the contrary that they can be complementary...
Published on: 17th Nov 2009

The liability of advertisement sites and commercial link suppliers, Google AdWords system and negative keywords...

By Esther DUPAIN, French Trademark Attorney and Jean PEREIRA, Lawyer
v3710-Esther DUPAIN.jpg Internet is sometimes the "bête noire" of intellectual property right holders who see it as a lawless area and are concerned by the globalisation of infringement requiring an exponential budget for very few results.
Published on: 28th Aug 2009

The securitization of Trade Marks

By Evelyne Roux, Head of the Legal Department and Camille Dupuch, IP Lawyer
ROUX_SEARCH_2013.jpg The securitization of non-physical assets is an idea that is very much in vogue these days, particularly in the United States and in the United Kingdom, where it has already taken place several times.
Published on: 1st Jul 2009

Evidence of Use as recognized under French, Community and US Law

By Esther Dupain, IP Lawyer and Evelyne ROUX, Head of the Legal Department, Cabinet REGIMBEAU
Whether for giving proof of one’s right or for obtaining registration of a trademark, it is always necessary to be able to present evidence of use of one’s trademark. Different purposes, but a final necessity… owners, to your archives!
Published on: 15th Jul 2008

.fr domain names : two new procedures

By Olivier PRATS, IP Lawyer, Cabinet REGIMBEAU
O.PRATS.jpg Which company or business entity never had problems related to cyber– or typo–squatted brands, company names or trade names?
Published on: 1st Jan 2008

The ransom of success : when a trademark becomes the product name

O.PRATS.jpg The ransom of success : when a trademark becomes the product name you risk losing all your trademark rights. Among the different situations of the loss of trademark rights in France, revocation by degeneration is probably the one that requires the most active interventions by the owner in order to be avoided.
Published on: 2nd May 2007