Following the November ’15 terror attacks in Paris, the French Trademark Office (“INPI”) received and subsequently
rejected numerous attempts of registration of the signs “Pray For Paris” and “Je Suis Paris” (“I am Paris”).
The refusals were justified on the ground that “these signs consisted in terms which may not be monopolized by an
economic actor due to their use and perception by the collectivity”.

This position differed from the one expressed after the January 7, 2015 attacks against Charlie Hebdo, where the attempts to register “Je Suis Charlie” (“I Am Charlie”) had been refused on public order grounds. Further to Articles L711-1 and L711-3 of the French Intellectual Property Code, a sign has to be distinctive, available and lawful to be registered. The INPI Director’s decision dated November 20, 2015 retained the unlawfulness of the applied signs, considering their perception by the public.

From a European point of view, such refusal could also be admitted on the ground of Article 7.1.f of the Community
Trademark Regulation. However, if the French decision appears politically appropriate, its basis may be seen as legally weak. Indeed, the words themselves are not unlawful, while their relations to terrorist attacks, and the intent to market on such events, could be interpreted as an offense to public order.

The INPI based its interpretation on the very nature of the trademark, which is “to distinguish goods and services”
without confusion as to their origins, as per Article L711-1 of the French Intellectual Property Code.

In the meantime, “Pray For Paris” and “#PrayForParis” have been respectively registered in the UK in 2013 (and
consequently without pre-existing relation to the November ’15 events) and applied for in Germany the day following the event.

It remains to be seen if a common European position emerges from the tragedy.

First publication: K&L Gates Trademark and Unfair Competition Bulletin, 01/2016 with Audrey Decima

On October 6 2015, the Commercial Division of the French Supreme Court (“Cour de Cassation”) confirmed the refusal of Paris Court of Appeal to register the “Ice Watch” trade mark. This decision follows the 2008 co-existence agreement concluded between the respective owners of the “Swatch” trademark and the “Ice Watch” business

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On October 6, 2015, the European Court of Justice (“ECJ”) ruled in the “Schrems”case that the U.S.-EU Safe Harbor framework on the transfer of personal data from Europe to the United States, was invalid.

Prima Biomed Ltd. (ASX:PRR) entered into an agreement to acquire Immutep, S.A. for $28 million in cash, shares and warrants on October 2, 2014. Acquisition funding of the total consideration of up to approximately $28 million will be funded with up to $18 million in cash, partly based on the achievement of key milestones, the issue of Prima ordinary shares totaling approximately $3 million and based on a VWAP calculation and the issue of 200 million warrants equating to a consideration value of approximately $7 million. In order to fund the acquisition and provide ongoing working capital, Prima Biomed has secured an investment agreement with Bergen Global Opportunity Fund, LP managed by Bergen Asset Management for up to $37.4 million. Immutep’s founder and Scientific and Medical Director, Frederic Triebel will join Prima as its Chief Scientific Officer, along with his scientific team, to oversee the LAG-3 development program and to advise on the ongoing development of CVac. The deal is subject to approval of Prima Biomed Ltd. shareholders. As of November 14, 2014, the transaction was approved by shareholders of Prima Biomed Ltd.

Adam Holdsworth from ProActive Capital, Matthew Gregorowski from Citadel Communications and Axel Muhlhaus from edicto GmbH acted as the public relation advisors in this transaction. Jean-Patrice Labautière, François Lan, Alexandre Brossier, Claude-Etienne Armingaud, Ariane Samson-Divisia, Julie Bouchard, Bertrand Dussert and Glenn Hughes of K&L Gates acted as legal advisors to Prima Biomed Ltd. Pascale Gallien and Vincent Maufront of Heenan Paris acted as legal advisors for shareholders of Immutep.

Prima Biomed Ltd. (ASX:PRR) completed the acquisition of Immutep, S.A. for $25 million in cash, shares and warrants on December 17, 2014. Prima made upfront cash payment of $10.8 million with the remaining cash component of $7.2 million partly payable on the achievement of a predetermined milestone and partly payable after 12 months subject to the satisfaction of warranty retention arrangements. The total consideration paid by Prima for the acquisition is estimated to be approximately $25 million as opposed to the previously $28 million. The difference is attributable to the reduction in value of the warrants based on the Black Scholes option pricing model using updated market data.

The French law no.2014-344 on consumer protection, named “Hamon Act” (for the name of the Ministry in charge of this reform) and dated March 17, 2014, creates a new industrial property right: the “Geographical Indications protecting Industrial Products and Crafts” (or “Indications Géographiques protégeant les Produits Industriels et Artisanaux”, herein, “IGPIA”). Until now, the protection of geographical indications was reserved, both at French and European level, to agrofood products, leaving aside the industrial and handicrafts products, whose quality is related to a specific know-how linked to their geographical origin. The IGPIAs cover well-known products, such as Quimper pottery, Limoges porcelain, Basque linen or Calais lace. Nine new provisions have been added to the French Intellectual Property Code (IPC), in order to clarify the implementation mechanisms for the management and the protection of IGPIAs.

La loi n°2014-344 relative à la consommation, dite « Loi Hamon » du 17 mars 2014, vient de créer un nouveau de droit de propriété industrielle : les « Indications Géographiques protégeant les Produits Industriels et Artisanaux » (IGPIA). Jusqu’ici la protection des indications géographiques n’était réservée, tant au niveau français qu’européen, qu’aux produits agroalimentaires, laissant de côté la qualité des produits industriels et artisanaux, issue d’un savoir-faire lié à leur origine géographique. Les IGPIA visent des produits reconnus tels que la faïence de Quimper, la porcelaine de Limoges, le linge basque ou encore la dentelle de Calais. Ce sont ainsi neuf dispositions qui ont été ajoutées au Code de la Propriété Intellectuelle (CPI), afin de préciser les mécanismes de mise en œuvre de la gestion et de la protection des IGPIA.

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The earlier is the owner of the French and Community semi-figurative trademark “vente-privee.com”, underlined with a pink line drawn in diagonal, enriched by two pink butterflies.

The latter is the owner of the French trademark “showroomprive.com” and expected the registration of a community semi-figurative trademark “showroomprive.com” enhanced with some stylized and coloured elements.

However, on August 1, 2012, the Office for the Harmonisation of the Internal Market (herein, “OHIM“) refused such application for “SHOWROOMPRIVE.COM” on the ground that the trademark was not distinctive enough and, much to the contrary, was descriptive for the targeted goods and services.

At the same time, on September 5, 2012, Showroomprive.com assigned before the Paris first instance Court, its competitor, Vente-privee.com, in order to invalidate the “vente-privee.com” trademark for lack of distinctiveness. This trademark had been registered since October 14, 2004 without any complains from ShowroomPrive.com or any other third party.

The first instance Court welcomed Showroomprive.com’s request and decided that “the terms ‘venteprivee.com’ was, at the time of the application date, descriptive of the company’s business activity for every consumer wishing to buy online discounted products; and thus such use was necessary to designate its private sales activity.” In addition, the Paris Court highlighted that the trademark had not acquired any “distinctiveness through its use, thus enabling the term to take ownership of generic names, when such names must remain available for all the economic actors from a given sector.

Meanwhile, on December 6t, 2013, in another law suit, Vente-privee.com assigned the owner of similar domain names (namely vente-priveee.com, ventprivee.com, venteprives.com) on the basis of its cybersquatting activities. The French first instance Court highlighted that the semi-figurative “vente-privée.com” trademark had to be considered as a well-known trademark. Indeed, in this case, the Court decided that the “vente-privée.com” trademark had a strong reputation due to the fact that a significant part of the relevant public made a connection between the trademark and its associated goods and services.

In conclusion, the decision concerning the semi-figurative trademark should not affect the word trademark “SHOWROOMPRIVE.COM” registered in 2007 by the OHIM. Nevertheless, we can legally wonder about the consequences in case of further contestation regarding a word mark and a close watch should be kept on any follow up evolution.

First published in K&L Gates Trade marks and unfair competition Bulletin no. 1/2014 (PDF) in collaboration with Alexandra Bernard.

Big data.” For nearly a year, marketers and CRM specialists have been more than fond of this new expression to the point of devoting several special editions of their publications to the topic.

If this neologism tends to scare the general public by its phonetic and philosophical proximity with its Orwellian bigger brother, the concept only pursues the developments initiated in the 90s through “data mining.” At that time, groups of data seemingly lacking causal or correlative relationships were subjected to mathematical analysis in the hope of discovering links between aggregated individual behaviors.

While some findings were limited to stating the obvious (such as the increased sales of appetizer upon promoting aperitif drinks), these new mathematical models allowed marketing teams to quantify the actual impact of promotions within the realm of distribution.

Other findings, however, were able to uncover less obvious ties, such as a correlation between the purchase of beer and of diapers for children by male shoppers.

These new steps in consumerism were however limited by the then-existing technology: the power of computers at the time, the introduction of data into the system and the processing time made the analysis relevant solely as a background strategy and for the emergence of certain statistical behavioral typologies, but does not allow any analytical granularity, or a real-time view. In addition, costs associated with material and human resources necessary for such analyzes prevented its access to a large crowd of users.

Nearly twenty years later, while technology has evolved in accordance with Moore’s Law, the consecration of Big Data has mainly be possible thanks to a double behavioral factors from the subjects / objects of the data analysis. Indeed, the raw material of big data remains the individuals. But those individuals have not only moved their habits to a digital world, facilitating the capture of data, but also opened up to the sharing their data in this paperless world.

It would seem that this created a data paradox: people have never advertised so freely their private life and personal data and, at the same time, the proposed revision of the EU regulatory framework for the processing personal data has seen a rarely-encountered level of lobbying. And so, today, a consumer association puts the main players of the social networking sphere on the grill, demanding that they explain their abstract contractual relationships with their users. And at the same time, the same users do not seem ready to give up the online sharing of their individual moments.

In our opinion, this view is not as paradoxical as it seems. It is instead the result of the confidence that these same users in how their lives are used for other purposes than just sharing with a selected group of recipients. After all, if the service is free, the money must be found elsewhere. The aphorism goes on to state that the user should then be the product, but it could also be that the user is consciously aware of its own value in this exchange.

When the exchange appears as too unbalanced, the consumer will not hesitate to revise to the economy of this contract and leave the relationship, bringing along his value.

Trust is therefore the core engine of data analysis.

This statement may seem conclusive. However, looking at the legal and regulatory obligations bearing on those in charge of data processing, it seems clear that such obligations mainly includes good conduct and transparency undertakings, with both individuals and the regulator. For instance, the core requirements set forth by the French Data Protection Authority (CNIL, Commission Nationale de l’Informatique et des Libertés) reside primarily in disclosure requirements for individuals and reporting to a publicly accessible register maintained by the regulator.

And this is probably where the issue lies with regards to Big Data. The data sets have reached extravagant sizes and the service providers and experts are bragging loudly about their ability to assist in the navigation on these oceans of bits. If their capacity to create real value in these dizzying well, it should not be forgotten that their expertise comes from data-hungry mathematical and algorithmic models. The temptation remains to feed these models in order to increase the service providers’ relevance from the data collected on behalf of their client.

When the flow of data becomes less transparent, without the knowledge of individuals or of such service providers’ customers, the implosion of the whole system is to be expected soon.

Without questioning the actual benefits of Big Data for all CRM actors, including the customers themselves (more than happy to receive offers truly relevant to their personal interests), the chain of trust must be maintained all along in order not to break the fragile ecosystem. The best policy must reside in a rational and coordinated approach by the classical actors of a new issue, and ensure that the multiplication of “Chief Data Officers” in multiple actors do not come at the expense of “Chief Privacy Officers”, acting as a legal safeguard against marketing sirens.

Indeed, a point of no return could be reached when Big Data, surpassing Big Brother, will not even need to analyze the present behavior to predict the future. And that point of no return has been reached last year by Target.