By Anne-Marie Pecoraro and Rodolphe Boissau

Anne-Marie Pecoraro

Avocat associé – Attorney at law, Partner, UGGC

With 25 years of experience serving clients of all sizes and types, Anne-Marie Pecoraro has been advising and litigating on all legal aspects of intellectual property, trademarks, new technologies and the exploitation of personal data, in a wide range of sectors including industry, entertainment, media, fashion, luxury goods, licensing, audiovisual, entertainment and music.

Rodolphe Boissau

Senior Counsel, UGGC

Rodolphe is Senior Counsel at UGGC Avocats full service French law firm (merging with Turquoise IP law firm) and has over 14 years of experience in IP/TMT/Commercial law/Communication and media. He acts as counsel and litigator for domestic and foreign clients on national and international matters.

Key Summary

Until recently, copyright holders, rather than trademark owners, were the main beneficiary of legal tools created to help direct claims to internet operators acting as intermediaries, such as ISPs and search engines. However, this year, two court decisions in France have highlighted the opportunity to obtain site-blocking orders for counterfeiting websites on the basis of trademark infringement.

• Two court decisions in France highlight the opportunity to obtain site-blocking orders for counterfeiting websites on the basis of trademark infringement.
• In a court ruling issued on January 8, 2020, the judge ordered the main ISPs to implement measures to block websites infringing the trademark rights of several companies owned by the Richemont group.
• In a court ruling issued on July 15, 2020, the judge also ordered the main Internet service providers to implement measures to block websites that were infringing the trademark rights of the SAS Wedoogift.
• There is still room for improvement at the legislative level – there is a need for quicker injunctions and to ease the blocking of mirror sites.

Over the past decade, the evolution of online intellectual property infringement has led European and French legislators to successively set up legal mechanisms to face the economic and social challenges associated with intellectual property rights protection.

In particular, difficulties to identify and locate the uploader of infringing content and to obtain concrete action from hosting service providers located in foreign countries has led legislators to elaborate mechanisms allowing right holders to direct claims to other internet operators acting as intermediaries to the final user, especially Internet service providers and search engines.

The French legal provisions relating to copyright infringement mainly result from the implementation of Article 8.3 of the Directive 2001/29/EC[1] which has provided for the possibility to request intermediaries whose services are used by a third party to infringe a copyright or related right to take measures to prevent or stop these infringements.

More precisely, the transposition of the above-mentioned provision was made through Article 6-I-8° of the Law for confidence in the digital economy passed in 2014[2] and Article 10 of the Law “Creation and Internet” passed in 2009, the latter establishing a specific mechanism applicable to infringements of copyright or related rights provided for by Article L. 336-2 of the French Intellectual Property Code while the former has a broader scope and applies to any types of infringements.

However, until recently, trademark owners had not been using this tool frequently unlike copyright holders.

Nevertheless, this year, two court decisions have drawn our attention on the opportunity to encourage and obtain the blocking of trademark counterfeiting sites. They echo the remarkable work of Incopro, which has developed an unrivalled expertise in this field by implementing coordinated actions at international level, particularly in the field of scientific publishing.

• In a court ruling issued on January 8, 2020, the judge ordered the main Internet service providers to implement measures to block websites infringing the trademark rights of several companies owned by the Richemont group, on the basis of Article 6-I-8° of the Law for confidence in the digital economy.

Several companies of the Richemont group had applied to the judge in summary proceedings for the blocking of three sites offering replica watches after having tried in vain to contact the hosts of the sites in the United States.

The request was based on two legal grounds:

• On the one hand, the Article L.716-6 of the French Intellectual Property Code, which allows the service responsible for the offence of counterfeiting to be reached directly;
• On the other hand, Article 6-1-8° of the Law for confidence in the digital economy, which allows the measure to be directed against the host or Internet service provider.

According to the court, the existence of an “unlawful disturbance” was obvious when simply looking at the disputed domain names (contrefaconmontres.com, repliquefrance.com, repliquemontre.cn) that were revealing the fraudulent intent of their author.

The court received the Richemont Group’s application, ordering the Internet service providers, namely, Bouygues Telecom, Free, Orange and SFR to adopt blocking measures against the sites infringing the trademark rights in this case (see: Tribunal judiciaire de Paris, 8 janvier 2020).

• In a court ruling issued on July 15, 2020, the judge also ordered the main Internet service providers to implement measures to block websites that were infringing the trademark rights of the SAS Wedoogift, on the basis of Article 6-I-8° Law for confidence in the digital economy.

The SAS Wedoogift had indeed identified a website that had identically copied the pages of its website as well as copyrights and trademarks owned by SAS Wedoogift.

The SAS Wedoogift therefore requested the blocking of the disputed website for copyright infringement on the basis of Article L. 336-2 of the French Intellectual Property Code and for trademark infringement on the basis of Article 6-I-8° of the Law for confidence in the digital economy.

The court received the SAS Wedoogift application and ordered the Internet service providers, namely, Bouygues Telecom, Free, Orange and SFR to implement blocking measures against the sites infringing both copyrights and trademark rights, after having noted that the online maintenance of the disputed site caused an obvious unlawful disturbance to the SAS Wedoogift (see Tribunal judiciaire de Paris, 10 juillet 2020, n°20/54095).

These two court decisions are definitely in favor of trademark owners who are victims of online counterfeiting, since they are granted the possibility of applying for site blocking measures against massively counterfeiting sites.

However, there is still room for improvement at the legislative level – including the possibilities to obtain quicker injunctions and to ease the blocking of mirror sites. It is thus necessary to keep an eye on upcoming French legislative developments.

In fact, provisions to fight, more effectively, against online counterfeiting should hopefully be discussed in the French National Assembly in the next few months (e.g: new mirror sites blocking). Please note these measures may be specific to the audiovisual sector but might find future influence in trademark law.

Last but not least, on 9 December 2020, the French National Assembly has presented its public policy report on the fight against counterfeiting. Among other things, the report recommends strengthening site-blocking procedures against website selling counterfeit products[3].

Meanwhile a recent change in Google’s policy in favour of trademark owners is worth highlighting. Trademark owners are now able to request de-indexing on grounds that individual URLs linking to websites selling counterfeits are appearing in Google’s organic search results. Still, this step might not be sufficient in itself; Google agrees only to de-index individual URLs rather than entire websites, even where those websites serve no legitimate purpose. The support of Incopro and its experts to carry out de-indexing procedures is therefore critical to have entire websites removed from search results.

In any case, whether concerning site blocking or de-indexing, our law firm – which has just merged with UGGC in the summer of 2020 – will be able to advise right owners in the best possible way to protect their rights. Our IP/IT team is indeed an expert in sites blocking procedures and is at your disposal for any questions you may have.

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UGGC

Created in 1993, UGGC is a French full service law firm (which merged with ATurquoise in 2020) and has a complete range of expertise with the most specialized teams in intellectual property, data protection, technology, media and entertainment law.

The team provides innovative solutions and is especially recognized by the market in anti-piracy anti-counterfeiting action, brand protection and enforcement.

References

[1] “Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right”.  (Article 8-3 of the Directive 2001/29/EC of the European Parliament and the Council on the harmonization of certain aspects of copyright and related rights in the information society of 22 May 2001).

[2] “The judicial authority may prescribe, in summary proceedings or on application, to any person mentioned in 2 (host) or, failing that, to any person mentioned in 1 (ISP), any measures to prevent damage or to put an end to damage caused by the content of a communication service to the public online”  (Article 6 I 8° of the Law for confidence in the digital economy)

“In the event of an infringement of copyright or a related right caused by the content of a communication to the public online service, the president of the judicial court ruling according to the accelerated procedure on the merits may order, at the request of the owner of rights in protected works and objects, their successors in title, collective management bodies governed by Title II of Book III or professional defense bodies referred to in Article L.”. 331-1, any measures to prevent or stop such infringement of copyright or a related right, against any person likely to contribute to remedying it. The request may also be made by the Centre national du cinéma et de l’image animée” (Article L. 336-2 of the French Intellectual Property Code).

[3] To read all the proposals, click here: https://www.unifab.com/wp-content/uploads/2020/12/Contrefacon_Rapport_V-avec-MoDem_091220.pdf