April 2025

MAY TEA: no possible confusion with a Cyrillic trademark according to the EU General Court

By judgment of February 26th, 2025, the General Court of the European Union (GCUE) annulled the decisions of the First Board of Appeal of the EUIPO which had declared invalid four figurative “MAY TEA” trademarks filed by Schweppes International Ltd to designate tea-based drinks.

The Russian company May OOO had applied for invalidity of these trademarks, claiming that there was a likelihood of confusion with its earlier trademarks in Cyrillic characters, in particular МАЙСКИЙ ЧАЙ (meaning “May Tea” in Russian), registered in several Member States for similar products mainly in the teas and tea-based drinks sector.

Initially, the EUIPO Cancellation Division rejected these applications in November 2021, considering that there was no likelihood of confusion between the signs. This decision was subsequently overturned by the Board of Appeal, which considered that part of the Latvian public, understanding both Russian and English, would perceive the trademarks “MAY TEA” and “МАЙСКИЙ ЧАЙ” as conceptually equivalent, which would justify their invalidation despite the visual and aural differences between the signs.

The Court did not follow this reasoning. It held that the Board of Appeal had committed an error of assessment, in particular by attaching undue importance to conceptual identity alone. It emphasized that the visual and aural differences between the trademarks were significant and that the common elements – in particular the words “tea/чай”, descriptive of the goods concerned – were not sufficiently distinctive to justify a likelihood of confusion.

Consequently, the GCEU annulled the decisions of the Board of Appeal, without ruling on the other earlier trademarks relied on by May OOO, and remitted the case to the EUIPO for further examination in the light of those other rights.

Read the full judgment.
 
Case law confirms the superiority of Hermès’ exclusive rights over NFTs

In a judgment issued on February 7th, 2025, the Judicial Court of Paris upheld Hermès’ claims that Blao&Co had infringed their “Kelly” and “Birkin” handbags.

This company marketed a non-fungible token (NFT) and handbag models based on the essential features of Hermès’ models.

The Judicial Court of Paris initially acknowledged the originality and author’s rights ownership of the Hermès companies in the two bag models in question, “Kelly” and “Birkin”.

In order to establish that Blao&Co had infringed author’s rights, the Court held that an examination of the models marketed by Blao&Co showed that the original characteristics had been reproduced in their entirety. The same reasoning was applied to the model marketed as an NFT.

In addition, on the basis of the three-dimensional trademark, the Court found that the Hermès clasp had been used in the course of trade, giving rise to a likelihood of confusion on the part of the relevant public by association with the trademark.

Blao&Co was therefore ordered to pay 220,000 euros as damages for author’s rights and trademark infringement.

This French decision comes on the heels of the New York District Court’s ruling that NFTs had infringed Hermès’ trademark rights.

On January 7th, 2025, before the Judicial Court of Lyon, the originality of the Hermès silk scarf designs was also acknowledged, and the infringement was characterized by the marketing of several YM textile products reproducing them.

TJ Lyon, January 7th, 2025, No.23/03036
United States District Court Southern District of New-York, February 8th, 2023, Hermès International and Hermès Paris v. Mason Rothschild
TJ Paris, 3rd chamber, section 2, February 7th, 2025, No.22/09210
 
Assessment of fair use by the US judge in the event of copyright infringement by an artificial intelligence tool

In a decision handed down on February 11th, 2025, the US District Judge for the State of Delaware upheld the copyright infringement claims brought by Thomson Reuters, which operates a legal research platform, against Ross Intelligence, which was accused of having used the editorial content and data from its platform to feed and train its artificial intelligence tool without its authorization.

The judge first stated that these annotations, although intended for information purposes, demonstrated an effort of selection, formulation and synthesis sufficient to characterize originality protectable under copyright law.

In defense, Ross Intelligence invoked the doctrine of fair use, which allows, under certain conditions, the limited use of a work protected by copyright without the authorization of the copyright owner. The judge then analyzed the four criteria set out in this doctrine:

The judge also emphasized that the public interest in access to the law, which is not disputed, cannot justify infringing the rights of holders, who must be able to be fairly remunerated.

As a result, the fair use exception was rejected, and Ross Intelligence was held liable.

This decision sheds light on the conditions of application of the fair use doctrine in the context of the training of artificial intelligence tools, shedding useful light on the legal issues surrounding the use of protected content for algorithmic purposes.

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE, 11/02/2025, THOMSON REUTERS ENTERPRISE CENTRE GMBH and WEST PUBLISHING CORP v. ROSS INTELLIGENCE INC, n°1:20-cv613-SB
 
Nintendo v. DStorage: liability of the hosting provider in the event of failure to fulfil its obligation to remove illicit content

In this case, company Nintendo claimed that its author’s rights and trademark rights had been infringed by DStorage, which made available on the 1fichier.com platform download links leading to unauthorized copies of several video games over which Nintendo claimed author’s rights. On the basis of article 6-I-5 of the French law on confidence in the digital economy (LCDE), Nintendo notified DStorage of the presence of illicit content on its servers. In the absence of any action by DStorage, Nintendo then brought a liability action to obtain removal of the litigious content.

In a ruling rendered on April 12th, 2023, the Court of Appeal of Paris held that Nintendo’s notices precisely identified the games for which protection was claimed, and therefore gave rise to a presumption that DStorage was aware of the illicit nature of the content. The Court rejected DStorage’s defense argument that an injunction to remove content following a notice infringed the prohibition to impose a general monitoring obligation on platforms of Article 6-I-7 of the LCDE. As a result, the Court ordered DStorage to remove the disputed content and to compensate Nintendo for the damage caused.

In a decision issued on February 26th, 2025, the Court of cassation upheld the appeal ruling. It also ruled that the removal order did not contravene the prohibition of general surveillance but should be interpreted as a lawful targeted and temporary surveillance of very specific content.

It should be noted that this ruling echoes a case brought by the Lucien Barrière group against Meta in 2024. Company Barrière, which had noticed that advertisements reproducing its trademarks were being distributed on Facebook and Instagram without its consent to promote online casino games, summoned Meta for summary proceedings. In an order dated January 11th, 2024, the Judicial Court of Paris ordered the Meta group to implement enhanced filtering measures for the disputed advertisements and to retain the data.

Seized in summary proceedings for retraction, the Judicial Court of Paris, in an order dated April 24th, 2024, dismissed Meta’s application for the measures to be withdrawn. In addition, the Court emphasized that enhanced filtering of content published by advertisers did not breach the prohibition of the general obligation to monitor, adding that the platform could take targeted and temporary measures. In any event, the Court held that Meta did not prove that it was impossible to put in place effective means to prevent the dissemination of illicit advertising.

Court of Cassation, First Civil Chamber, February 26th, 2025, No.23-15.966
TJ Paris, April 24th, 2024, No.24-02349
 
Affirmation of the probative value of blockchain in intellectual property matters

In a decision dated March 20th, 2025, the Judicial Court of Marseille ruled in an unprecedented manner in favor of the validity of proof of author’s right ownership of author’s right produced by a blockchain system.
In this case, AZ FACTORY accused VALERIA MODA of committing acts of infringement by marketing clothing using the codes of clothing on which it claimed author’s rights.

In support of its demands, AZ FACTORY produced sketches whose digital fingerprint had been anchored in a blockchain system to prove its status as author’s rights owner.

Some companies indeed offer blockchain anchoring services to intellectual property rights owners, through a systematic dating of creations to enable them to provide indisputable, dated proof of rights ownership.

In the present case, the authenticity of the blockchain time-stamping produced by AZ FACTORY had been established by a bailiff, which led the Court to hold that the author’s rights ownership had been sufficiently demonstrated. The probative value of time-stamping statements, which for the first time have been submitted to the judge for assessment, is therefore retained in this judgement as regards recognition of author’s rights ownership.

The acts of author’s rights infringement were thus characterized, and VALERIA MODA was ordered by the Marseille Court to pay 10,000 euros as damages for the moral damage suffered by AZ FACTORY.

Judicial Court of Marseille, March 20th, 2025, No.23/00025
 
The fight against counterfeiting at the heart of a new law proposal (proposal No.827 of January 21st, 2025)

A law proposal aiming at modernizing the fight against counterfeiting was filed on last January 21st by Christophe Blanchet, Member of Parliament for Calvados.

It is currently being discussed by the National Assembly’s Law Commission.

This proposal contains seven articles aimed at amending certain provisions of the Intellectual Property Code, the main contributions of which are as follows:

The criminal penalties set out in article L. 716-10 of the French Intellectual Property Code (i.e. 3 years’ imprisonment and a fine of 300,000 euros) would be supplemented by an alternative penalty, namely a so-called “civil” fine, proportionate to the seriousness of the offence committed, the contributory capacity of the perpetrator and the profits derived from the infringement. However, the proposal is silent on how these different penalties are to be combined and on the practical arrangements for implementing this alternative penalty.

Article L. 716-4-7 of the French Intellectual Property Code would also be amended to give agents sworn and authorised by DGCCRF the ability to record infringements, to intervene on behalf of right holders with the competent authorities, and to provide proof of infringement.

This law proposal also seeks to strengthen the liability of intermediary service providers by introducing two new articles, L. 713-7 and L. 713-8, in the French Intellectual Property Code.

Under this proposal, in case of acts of infringement committed online marketplaces and social media, the action could be brought against them in case the owner of the accounts cannot be identified.

In addition, on an experimental basis, a jurisdictional chamber dedicated to disputes relating to e-commerce would be set up within three judicial courts.

Other provisions concern the fight against the sale of tobacco on the sly, through the introduction of excise taxation (indirect taxation levied on the sale of products), as well as extending the powers of municipal police officers to detect this offence.
 
Transfer of ownership of a patent filed in breach of a confidentiality agreement

In a judgment rendered on January 31st, 2025, the Judicial Court of Paris ruled on the ownership of a patent allegedly filed in breach of a confidentiality agreement. FUTURA MECHANICAL DESIGN PROJECT (FMDP) and its parent company F2M had sued two companies in the AIR LIQUIDE group, in order to obtain the transfer of ownership of a patent registered by one of them. This dispute arose in the context of contractual relations between these various parties, in connection with a liquid hydrogen pump project, which had led to the signing of a confidentiality agreement, followed by a pre-order and an order for studies from FMDP on this subject.

Having noted the filing by AIR LIQUIDE of a French patent relating to a “pumping device, installation and process for supplying liquid hydrogen”, followed by an international application under priority, the companies FMDP and F2M initiated an action to claim said patent, accusing AIR LIQUIDE of having exploited information belonging to them, in breach of their confidentiality agreement.

In line with established case law under Article L. 611-8 of the French Intellectual Property Code, the Court first examined whether the claimants were in possession of the technical elements subsequently used in the patent at issue, before considering whether the patent had been filed in breach of a legal or contractual obligation.

On the first point, the Court noted that AIR LIQUIDE had called upon the claimants in order to benefit from their knowledge and know-how in the field of hydrogen pumps. It then studied in detail the content of the studies carried out by FMDP for AIR LIQUIDE, as well as the reports of the meetings held in the context of those studies and deduced that the characteristics of claim 1 of the patent in dispute did indeed appear in those documents, AIR LIQUIDE having followed the progress of the operations without making any technical contribution. It deduced that FMDP was the owner of the technology covered by AIR LIQUIDE’s subsequent patent, regardless of whether or not it was patentable.

On the second point, the Court examined the content of the contractual clauses binding the parties. The confidentiality agreement included a clause prohibiting the party receiving confidential information from registering an intellectual property right based on that information. According to AIR LIQUIDE, the duration of this agreement was limited to the pre-contractual phase, so that information resulting from subsequent studies carried out by FMDP was no longer covered by the agreement, but by AIR LIQUIDE’s general terms and conditions of purchase. These provided for the transfer to AIR LIQUIDE of all the results of the study and the related intellectual property rights.

The Court rejected the application of said general terms and conditions of purchase, pointing out, in particular on the basis of Article 1119 of the French Civil Code, that their explicit acceptance by FMDP had not been demonstrated, especially as they appeared “in characters so small that they were illegible”. The Court also relied on a report of a meeting between the parties, which specifically provided for discussions on the management of the intellectual property resulting from the services in question.

It deduced that, in accordance with the applicable confidentiality agreement, FMDP had not authorized AIR LIQUIDE to disclose (by filing a patent) the elements communicated to it in the context of the study, and that AIR LIQUIDE had thus breached its contractual undertakings.

AIR LIQUIDE’s claims were therefore dismissed in their entirety by the Court, which, in addition to transferring ownership of the patent in dispute, also ordered AIR LIQUIDE to pay the plaintiffs the sum of 30,000 euros by way of damages, justified by the “forced modification of [their] strategy for defending [their] know-how and a disruption in the presentation of [their] services” resulting from AIR LIQUIDE’s conduct, F2M having been forced to file several patent applications aimed at protecting its previously confidential know-how.

AIR LIQUIDE’s counterclaim for damages arising from an alleged breach of one of its contracts with FMDP was also dismissed, as the claims in this respect arose more than 18 months after the events at issue, and even though their contractual relationship had been terminated by mutual agreement as a result of their dispute. Sanctioning a breach of the duty of loyalty incumbent on it, the Court ordered AIR LIQUIDE to pay an additional sum of 5,000 euros by way of damages, insofar as “by belatedly demanding considerable amounts on the pretext of non-performance of which it could not have been unaware of the true and legitimate cause”, it had used the contract of which it was claiming non-performance in bad faith.
Particular care must therefore be taken when contracting with an external service provider for services that may give rise to patentable inventions.
TJ Paris, 3rd Chamber – 2nd Section, January 31st, 2025, No.21/16030
 
Interpretation of the jurisdiction of the courts of the Member States by the Court of Justice of the European Union in patent infringement cases

In a case between Swedish company Electrolux and German company BSH Hausgeräte GmbH, the Court of Justice of the European Union ruled on the interpretation of the provisions of Regulation (EU) No.1215/2012 of December 12th, 2012 (Brussels I bis) concerning the jurisdiction of the courts of the Member States in matters of infringement of patents registered in several States.

In this case, BSH, owner of a European patent that has given rise to several national patents for household electrical appliances, believed that Electrolux was infringing its patents. It brought proceedings against Electrolux before the Swedish court, acting as the court of the place where the defendant is domiciled within the meaning of Article 4(1) of the Brussels I bis Regulation.

In defense, Electrolux argued that BSH’s claims were inadmissible and that the Swedish court lacked jurisdiction to rule on the infringement of patents other than the one registered in Sweden. Following Electrolux’s reasoning, the Swedish court at first instance held that it lacked jurisdiction.

On appeal by BSH, the Swedish Court of Appeal for Industrial Property and Commerce requested a preliminary ruling on the interpretation of Article 24(4) of the Brussels I bis Regulation.

As an exception to the general principle of jurisdiction of the court of the place where the defendant is domiciled, as set out in Article 4(1) of the Brussels I bis Regulation, Article 24(4) provides that in matters relating to the registration or validity of patents, only “the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place” shall have jurisdiction. It also specifies that in the case of a European patent, “the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of a European patent granted for that Member State”.

The questions referred to the CJEU mainly concerned the relationship between Articles 4(1) and 24(4) of the Brussels I bis Regulation, in order to determine whether a court of a Member State, seized as the court of the place where the defendant is domiciled, has jurisdiction to hear an action for infringement of a patent granted in another Member State, where the defendant raises, as a defense, the invalidity of that patent.

The Court first recalled that the jurisdiction rule of Article 4(1) is a rule of principle, from which Article 24(4) derogates by giving exclusive jurisdiction to the courts of the Member State in which the patent was granted to rule on disputes relating in particular to its validity. Consequently, the court seized as the court of the place where the defendant is domiciles does not have jurisdiction to declare the patent invalid.

However, this exclusive jurisdiction does not apply to patent infringement disputes. The Court infers that the court of the place where the defendant is domiciled retains jurisdiction to rule on the infringement, even if the defendant raises the invalidity of the foreign patent at issue. In other words, a counterclaim seeking invalidity of the patent relied on in an infringement action does not bring the entire dispute within the exclusive jurisdiction of the court of the place where the patent was granted.

It therefore proceeds with a strict interpretation of this exclusive jurisdiction under Article 24(4), which constitutes an exception to the general rule of jurisdiction under Article 4(1). This interpretation is justified by the need for legal certainty which should result from the foreseeability of the rules of jurisdiction, while enabling “the holder of a European patent who believes that that patent has been infringed by the same defendant in several Member States, to concentrate all of its infringement claims and to obtain overall compensation before a single forum, thus avoiding, inter alia, the risk of divergent decisions” (point 49).

Such an interpretation will inevitably lead to a split between the infringement action and the patent invalidity application, which will then be dealt with by different courts. The infringement court will then be able to stay the proceedings pending a decision on the validity of the patent in another Member State, “if it considers it justified, in particular where it takes the view that there is a reasonable, non-negligible possibility of that patent being declared invalid by the competent court of that other Member State” (point 51).

CJEU, February 25th, 2025, Case C-339/22, BSH Hausgeräte GmbH v. Electrolux