First legislative attempts to regulate the activity of influencers vis-à-vis French consumers

Faced with the excesses of influencers, the French legislator has been trying for several months to strengthen consumer protection. It has thus successively tabled three law proposals on November 15th, 2022, December 15th, 2022 and January 31st, 2023 aiming at regulating the practices of influencers on the internet.

For the first time, an influencer is legally defined as “any individual or legal person who, in return for payment or in exchange for an in-kind benefit, produces and disseminates content by electronic means of communication which aims at promoting goods, services or any cause whatsoever through the expression of his or her personality”. This covers all influencers, regardless of the size of their audience.

Furthermore, in view of the numerous abuses observed – several complaints for fraud and breach of confidence were recently lodged with the Public Prosecutor of Paris, in connection with the promotion of high-risk financial investments such as copy trading – the latest law proposal provides for the introduction of various measures, such as :

Third parties linked to influencers, such as their agents, brands or platforms, are also concerned:

Discussions on these three texts are still ongoing. Their adoption could thus create the first global legislative framework around the profession of influencer. To be continued…

Adidas case – the “three-stripes” trademarks : Renown, yes! Infringement, no!

In a recent decision of November 2nd, 2022, the Court of Appeal of Paris confirmed that clothing with two parallel side stripes does not constitute an infringement of the ADIDAS trademarks either on the basis of imitation or on the basis of damage to the repute.

In 2018, ADIDAS noted the marketing by companies IM Production and O W Diffusion of casual and sports clothing with two parallel stripes.

It then sued these companies before the High Court of Paris for trademark infringement and, in the alternative, for damage to the repute of the “three-stripes” trademarks.

In September 2020, the High Court ruled that IM Production and O W Diffusion had infringed ADIDAS, prior rights but only on the ground of damage to the repute of the trademarks. IM Production and O W Diffusion then appealed the judgment.

In its decision, the Court of Appeal of Paris overturned the first instance judgment. The Court held that while the three-stripe trademarks are certainly very renown, this reputation is not sufficient to grant a monopoly on affixing side stripes on clothing. The Court notes that during the years 2016/2018, there was a fashion trend consisting of “the affixing of contrasting parallel side stripes to trousers and other types of clothing”. Thus, according to the Court, “if ADIDAS participated in this trend, it is not established that the three-stripe garment alone is the origin of this trend”. The appellants also argued that prior to the ADIDAS trademarks, the vertical “braid” stripe was used on military garments, and that parallel stripes, in particular two parallel stripes on trousers, originated in military clothing.

With this decision, the judges demonstrate that the protection of a simple sign such as a motif (three parallel stripes) remains precarious. Court of Appeal of Paris, November 2nd, 2022, No.21/01480

Parody can make you “smile from within”

The Court of Appeal of Aix-en-Provence, in its decision of November 14th, 2022, recalled the outlines of the exception of parody, as defined in Article L. 122-5-4 of the Intellectual Property Code.

The dispute was between company Moulinsart, which holds the copyright on Hergé’s work “The Adventures of Tintin”, and sculptor Peppone.

In 2017, Peppone made and marketed, without the authorisation of company Moulinsart, sculptures representing the face and bust of Tintin, as well as the rocket from the albums “Destination Moon” and “Explorers on the Moon”. The works were also named in reference to the titles of Tintin’s albums.

In June 2021, Moulinsart sued the sculptor before the High Court of Marseille for infringement.

The artist argued that his sculptures fell within the exception of parody. However, the High Court rejected this argument, considering that “there was nothing to laugh or smile about”. The artist then appealed.

The Court of Appeal considered that Peppone’s sculptures reproduced Hergé’s work almost identically and that the sculptures didn’t show any humorous intention.

On the basis of the criteria identified by the CJEU (Sept. 3rd, 2014, case C-201/13, Deckmyn), the Court of Appeal of Aix-en-Provence recalled that to be qualified as a “parody”, the second work must evoke the pre-existing work, while presenting notable differences in order to avoid likelihood of confusion with the parodied work. The second work must also constitute an expression of humour. On this last condition, the Court specified that “humour is not limited to what makes people laugh, but can only make them smile, even from within”.

While this decision does not revolutionise the assessment of the conditions for the exception of parody, it does raise questions about the methods for determining the humour requirement. Court of appeal of Aix-en-Provence, November 24th, 2022; RG No.22/04302

Medicines, repackaging and exhaustion of rights

In its three judgments rendered on November 17th, 2022 (NOVARTIS C-147/20, BAYER C-204/20 and MSD C-224/20), the Court of Justice of the European Union (CJEU) clarified the scope of the prerogatives of the owner of a trademark used for a medicinal product in the event of repackaging by a third party of the medicinal product in question, following a parallel import into the European Union.

This case involved several trademark owners against various importers of medicines in Germany and Denmark. In these cases, the importers had repackaged the medicines in question in new outer packaging, on which the trademarks of the owners had been affixed or replaced by a new product name. In the latter case, the new outer packaging indicated that the medicinal product in question corresponded to the medicinal product marketed by the owner under its trademark, and that the inner blisters bore that trademark.

Challenging the right of these importers to repackage their medicines under trademark law, the trademark owners brought the dispute before the German and Danish courts, which ultimately referred several questions to the CJEU for a preliminary ruling. One of those questions was to determine whether “the proprietor of a trademark is entitled to oppose the marketing, by a parallel importer, of a medicinal product repackaged in new outer packaging to which that mark is affixed where the replacement of the anti-tampering device of the original outer packaging […] leaves visible or tangible traces of that original outer packaging having been opened”.

The Court therefore had to rule once again on the conditions under which a trademark owner may defeat the principle of exhaustion of rights in the event of repackaging of the medicine. It first recalled the conditions arising from its established case law, according to which the trademark owner may oppose the marketing under its trademark of imported and repackaged products bearing its trademark unless, in particular, such a refusal would have the effect of artificially partitioning the markets between Member States, and unless it is shown that the repackaging does not affect the original condition of the product contained in the packaging.

The Court then recalled the existence of an obligation to affix anti-tampering devices to medicinal products in order to ensure their safety and authenticity, specifying that in the event of replacement of the original anti-tampering devices, the new devices must be equivalent and must enable to ensure the identification and authenticity of the medicinal products concerned as effectively. It concluded that the possible presence of traces of opening on the packaging in question was not sufficient to consider that the replacement anti-tampering device was not equivalent. Consequently, repackaging of a medicinal product can only be considered necessary when the anti-tampering device does not meet the condition of equivalence, or when consumers in the importing State are reluctant to acquire medicinal products whose outer packaging bears visible traces of opening linked to the replacement of the anti-tampering device.

It therefore deduced that a trademark owner may oppose the marketing of its medicinal product repackaged by a parallel importer in new packaging, on which traces of the original opening remain, unless there is “no doubt that these traces of opening are attributable to the repackaging of that medicinal product by that parallel importer”, and if “those traces do not cause, on the market of the Member State of importation or on a substantial part of it, such strong resistance from a significant proportion of consumers to the medicinal products repackaged in that way that it would constitute a barrier to effective access to that market”. CJEU, C-147/20, C-204/20 and C-224/20, November 17th, 2022

Patent: provisional sequestration, sole measure which can be implemented by the Judge to ensure the protection of business secrecy in the event of an infringement seizure

In a judgment of February 1st, 2023, the Court of Cassation clarified the measures that can be implemented by the Judge authorising an infringement seizure, in order to protect the seized person’s business secrets.

This case was between two companies, LABORATOIRES VIVACY and TEOXANE, each of which holds a patent for a composition comprising a gel combining hyaluronic acid and mepivacaine. Accused of infringing VIVACY’s patent, TEOXANE defended itself by claiminf its own patent was infringed and obtained two orders for infringement seizure against LABORATOIRES VIVACY. The Judge had specified ex officio that the seizures would be made “subject to sealing in the event of breach of business secrecy”.

Company LABORATOIRES VIVACY summoned TEOXANE to revoke these two orders. The Court of Appeal, considering the Judge’s ability to ensure ex officio the protection of business secrecy, held that the Judge could validly choose the placement under seal, rather than the provisional sequestration as resulting from Article R. 615-2 of the Intellectual Property Code. This provision indeed provides for the possibility for this Judge to “order ex officio the placement under provisional sequestration of seized items”.

The Court of Cassation overturned this decision, stating that “in order to ensure the protection of the seized party’s business secrecy, the president, ruling on a request for infringement seizure infringement, can only resort, if necessary ex officio, to the special procedure of provisional sequestration”.

In other words, while the implementation of measures to protect the seized party’s business secrecy remains in principle an option for the Judge, the latter cannot choose the type of measures to be implemented, as the provisions of the Intellectual Property Code expressly refer to provisional sequestration. The Court of Cassation therefore revoked the orders at issue. Cass. Com, 1er April 2023, n°21-22.225

UPC: opening of the sunrise period as of March 1st, 2023

While France ratified it on March 14th, 2014, Germany has finally ratified the agreement on a unified patent court (UPC).

This 17th German ratification thus allows the entry into force of the UPC on June 1st, 2023, but also the opening of a transitional period of seven years (extendable for an additional seven years) during which the owner of a European patent without unitary effect, or the applicant for a European patent without unitary effect whose application has been published, will be able to register free of charge with the registry of the UPC his wish to derogate from the exclusive jurisdiction of this court (“opt-out”). In other words, any dispute on his European patent without unitary effect, or on his published European patent application without unitary effect, cannot be brought before the UPC, but will remain under the jurisdiction of the national courts. Such information will of course be publicly available on the registry of the UPC.

This transitional period is preceded by a “sunrise period”, a period of three months preceding this entry into force and the opening of the transitional period, which allows these owners or applicants, since March 1st, 2023, to express their early “opt-out” with regard to the jurisdiction of the UPC.

In the absence of an expressed opt-out, any claimant wishing to bring an action against a patent without unitary effect will be able to do so either before the UPC or before the competent national court. This option will not be available for unitary patents, which will fall under the exclusive jurisdiction of the UPC.