On June 27th, our Head of Trademarks and Design, Mathilde JUNAGADE, co-chaired the APRAM MEDEF Conference “Behind the screen: Infringements and other forms of abuse”, dedicated to infringement of intellectual property rights on the Internet. The event brought together industry representatives, DGCCRF officials (French Directorate General for Competition, Consumer Affairs and Fraud Control) and renowned practitionersii , who shared their experience of this fight, which has become crucial, particularly with regard to trademarks defence.
What can we take away from these discussions?
Online infringement is a constantly evolving phenomenon that adapts to the changing habits of Internet users.
The earliest forms of trademark infringement to ever appear on the web mainly consisted of cybersquatting and typosquatting. These practices involve registering, a domain name that reproduces a third party’s trademark for fraudulent and speculative purposes, sometimes with only a few typographical differences.
Today, this phenomenon is far from disappearing. In fact, it has become more sophisticated. On the one hand, it has reached an industrial scale, with pirates drawing directly from the registers of the largest offices such as the EUIPO and the USPTO, thanks to automated monitoring systems. On the other hand, trademarks copying in domain names is often combined with a website offering a lifelike online shop, that sells counterfeit goods or encourages purchases that result in the theft of the victim’s bank details rather than the delivery of any items.
Other operating modes exist which rely on:
- copying the name, logo and/or graphic charter of a commercial entity to contact the victim by sending a fraudulent email from a fake address (phishing),
- and/or the infinite possibilities for dissemination and propagation offered by the Internet. Counterfeiters’ striking power is increased exponentially by the interconnections between different social networks and platforms, marketplaces and e-commerce sites, as well as through the use of fake profiles and influencers.
There are means of combating these infringements, but they require us to rethink traditional strategies.
The tactics employed will sometimes involve favouring alternatives to legal action. Indeed, the latter may be ill-suited to the specific nature of these infringements, which are volatile and global by nature and often originate in countries where legal measures are difficult to enforce.
Over the years, better-suited tools have been added to the legislative arsenal to tackle these multifaceted and widespread infringements.
Alternative dispute resolution procedures for domain names, such as the UDRP, URS, and Syreli, make it possible to reclaim, delete, or suspend a domain name that may infringe on a trademark (and, in some cases, other IP rights, such as protected geographical indications or personality rights).
These procedures have been proven effective for over twenty years and offer undeniable advantages in terms of speed and simplicity, provided that the criteria are met (i.e. domain name identical or similar to the prior right invoked, absence of rights and legitimate interests on the part of the registrant, evidence of bad faith).
Targeting intermediaries – it is also possible to exploit other possibilities offered by the regulations. These require targeting intermediary service providers rather than the perpetrators of infringements, especially as the scope of these intermediaries’ liability has been clarified in recent years.
Platforms – the DSA Regulationiii has thus confirmed the principle of limited liability for platforms, which are broadly defined as any hosting service that stores and disseminates information to the public. at the request of a service beneficiary. This includes social networks, marketplaces and content-sharing platforms.
Among other obligations, platforms must enable users to report illegal content, including the sale of counterfeit goods (Article 16). Although a platform is not obliged to take action against such content, reporting it creates a presumption of knowledge on the part of the platform, making it liable if the illegal content is not removed quickly. If the platform fails to act, the author of the content report may also file a complaint with the platform, which is then required to issue a reasoned decision (Article 20).
Other service providers, such as internet service providers, website hosting services, registries and registrars, are also subject to a limited liability regime.
Seventeen “Very Large Online Platforms” (VLOP) and two “Very Large Search Engines” (VLOSE) (i.e. those with more than 45 million users per month) are subject to enhanced obligations, in cooperation with the relevant authorities (in particular Arcom, for digital services established in France). For example, following an investigation into the Chinese VLOP Temu, on 28 July 2025 the European Commission published preliminary findings concluding that it had failed to comply with its obligations regarding illegal products offered on its platform. This procedure could result in a period of enhanced monitoring and fines of up to 6% of its global annual turnover.
Under Article 28 of the NIS2 Directiveiv domain name registries and registrars must also collect and maintain information enabling the identification and contact of first-level domain name holders, and make this information available to the public A preliminary approach to the registrar or registry operator may be sufficient to obtain such data or to remove/block illegal content, provided they are cooperative.
The ICANN (Internet Corporation for Assigned Names and Numbers) has entered into agreements with registry operators and registrars of top-level domain names, setting out their obligations. These obligations include publishing a dedicated address on their websites for reporting abuse, describing the procedures for receiving and following up on such reports, and taking prompt and appropriate action in cases where abuse is proven. In the event of non-compliance with these contractual obligations, a complaint may be lodged with ICANN.
Alternatives based on other legal grounds may also prove effective.
Consumer law notably gives the DGCCRF extensive powers of investigation and sanction in cases of misleading commercial practices and non-compliance of products with safety standards, which are often associated with the supply of counterfeit products. Among others, it can issue injunctions to online sales platforms failing to comply with their obligations under the DSA or the Consumer Code. In particular, in cases of refusal to remove content or if it is impossible to identify the perpetrator of the offence, a digital injunctionv can be used to display a warning message on the website or application, to remove infringing content, to restrict the access to or block the disputed content. Just two years after its entry into force, at the end of 2022, 76 digital injunctions had already been issued. This powerful tool has notably enabled Wish platform to be dereferenced from search engines and app stores in France for over a year, following the repeated posting of non-compliant and dangerous products. While the platform remained accessible by typing in its URL directly, this measure significantly weakened its ability to reach the French public.
Anticipate and monitor – In conclusion, in practice, rights holders will, in most cases, be able to obtain the requested removal or suspension thanks to the regulatory and contractual measures available to them. The challenge in this fight lies more in the volume of infringements and their tendency to reappear as soon as they are removed. To address this, monitoring tools that use artificial intelligence to detect online counterfeits and request their removal promptly will be a useful supplement to the crucial monitoring of domain name registrations.
Please do not hesitate to contact us for further information.
Mathilde MECHIN JUNAGADE
Partner Lawyer
Head of the Trademark & Design
mathilde.junagade@abello-ip.com
Marie LIENS
Co-Managing Partner
Head of Litigation
marie.liens@abello-ip.com
i Nicolas Boileau, L’Art Poétique
ii Thanks to Juliette Disset, co-chair of the conference, and to Gael Mancec, Alexandra Neri, Nicolas Lambert, Tony Partisani, Juliette Savaton and Matteo Amerio for their contributions.
iii REGULATION (EU) 2022/2065 of 19 October 2022 on a Single Market for Digital Services and amending Directive 2000/31/EC
iv Directive (EU) 2022/2555 of December 14, 2022 on measures to ensure a high common level of cybersecurity across the Union, currently being transposed in France
v Introduced in Article L. 521-3-1 of the Consumer Code by the DDADDUE Law of 3 December 2020