Qualified for the Paris bar (not registered).I have been protecting brands against cybersquatting and counterfeiting for more than 15 years. I am also specialized in arbitration of intellectual property disputes (international commercial arbitration).Currently, I am a consultant for IP Twins, a French company founded by a former industrial property attorney whose team is made up of lawyers specialized in domain name portfolio management and the fight against counterfeiting in the digital world. IP Twins is also an ICANN accredited registrar and, as such, manages corporate domain name portfolios. IP Twins has developed significant experience in the protection of online brands since 2002.Before joining IP Twins, I have held an academic position at the Hong Kong Polytechnic University.Previously, I had participated to an awareness campaign against counterfeiting in Hong Kong as a researcher within the European Union Academic Programme.Before joining the academic world, I had worked for nine years as an in-house counsel for a French domain name registrar.I conducted my Ph.D. thesis on ADR and IP (Université de Grenoble). I hold master degrees in IP/IT (Master Créations Immatérielles, Université Montpellier I) and ADR (Master Arbitrage et Commerce International, Université de Versailles). All of my academic research has focused on arbitration, mediation and other ways of resolving disputes in relation with intellectual property rights.
Presented at: Blended Learning Symposium: Teaching Beyond the Classroom— The Hong Kong Polytechni... more Presented at: Blended Learning Symposium: Teaching Beyond the Classroom— The Hong Kong Polytechnic University, Hong Kong, 19 August 2015.
Abstract: This presentation is based on a case study conducted for the purpose of obtaining the Certificate in Becoming an Online Teacher (Educational Development Center, The Hong Kong Polytechnic University). It aims to show how the legal methodology called “IRAC’ fits in the Bloom’s taxonomy, and to demonstrate the efficiency of online educational technologies (quizzes and wikis) in a blended learning environment designed for legal studies.
Presented at: the BIP Asia Forum 2014, Hong Kong, jointly organized by the HKSAR Government, Hong... more Presented at: the BIP Asia Forum 2014, Hong Kong, jointly organized by the HKSAR Government, Hong Kong Trade Development Council and Hong Kong Design Centre — Hong Kong, 5 December 2014.
Abstract: The 21th century is “the century of knowledge”. Intellectual property is essential to address global challenges. The process of internationalization dramatically gained importance since 1995 when IP was integrated into the WTO legal framework. This resulted in the harmonization of IP laws worldwide. Given this new global economic model, statistics show an increasing number of IP registrations and an increasing number of international contracts involving IP rights; and as a consequence, an increasing number of IP disputes. In the meantime, international arbitration is considered the preferred means to resolve international commercial disputes. In the context of globalization, there is a strong movement towards the harmonization of arbitration laws and practice across national boundaries. One precondition for arbitration is that the disputes submitted to the arbitrator are capable to be settled by arbitration — the issue of “arbitrability”. Most jurisdictions have now inclined to take a liberal approach to define the scope of arbitrability broadly. Some commentators described this phenomenon as “the decline of inarbitrability” or even “the death of inarbitrability”. Having observed the trend towards harmonization on IP laws, the trend towards harmonization of arbitration laws and a general trend in favor of arbitrability, a natural question to ask is whether there is also a trend of harmonization on the question of arbitrability in the realm of IP. This question is of significant practical importance, as arbitration has comparative advantages towards litigation as a forum to resolve IP disputes, given the availability of expertise, the protection of confidentiality, the neutrality of the forum, the flexibility of remedy and the global enforceability of arbitral awards.
Presented at: Domain Names and DNS: Comparative Studies, Institutional Perspectives, Recent Devel... more Presented at: Domain Names and DNS: Comparative Studies, Institutional Perspectives, Recent Developments in the DNS Governance, CUHK/CFRED Conference — Hong Kong, 14 May 2014.
Since the inception of the Internet Corporation for Assigned Names and Numbers in 1998, the landscape and the law of the domain name system (DNS) is constantly changing. The issue of public order is playing an increasing important role. This presentation focuses especially on the various dispute resolution mechanisms provided to address public orders issues due to the liberalization of the top level domains.
Presented at: Rethinking Domain Name Dispute Resolution in the Era of New gTLDs, ADNDRC conferenc... more Presented at: Rethinking Domain Name Dispute Resolution in the Era of New gTLDs, ADNDRC conference, Kuala Lumpur Regional Center for Arbitration (KLRCA) — Kuala Lumpur, 18 January 2014.
Publication: "Procédures extrajudiciaires de règlement des litiges relatifs aux noms de domaine : quelles perspectives pour l'arbitrage ?", Versailles International Business Law Review, 2013, No. 4, pp. 145-168.
Fifteen years after the UDRP was adopted, there has been an unprecedented increase of domain names resources. ICANN is in the process of liberalizing the creation of new top level domains. Furthermore, new technologies now allow the registration of internationalized domain names (IDNs). Resources will soon be almost endless and extremely varied (new TLDs + IDNs + IPV6). At the same time, one can question the effectiveness of the UDRP in achieving its goal: fighting cybersquatting. Indeed, in 70% of WIPO cases, disputed domain names are transferred to the claimant. An analysis of the UDRP case law and similar rules shows that the whole system has already evolved, thanks to the UDRP panelists (consolidation, re-filing, etc.) and the ccTLDs registries (mediation, appeal, reimbursement of legal fees, arbitration, etc.). However, good ideas are scattered like pieces of a puzzle. The whole system could be improved by i) giving Lady Justice the sword she is missing in domain names dispute resolution proceedings and ii) gathering all the good ideas together.
Presented at: the BIP Asia Forum 2014, Hong Kong, jointly organized by the HKSAR Government, Hong... more Presented at: the BIP Asia Forum 2014, Hong Kong, jointly organized by the HKSAR Government, Hong Kong Trade Development Council and Hong Kong Design Centre Hong Kong — Hong Kong, 6 December 2014.
An intellectual property marketplace is a B2B or B2C venue where IPRs owners and IPRs buyers can meet each other and establish transfer agreements, license agreements or even partnership agreements. A large number of IP marketplaces has emerged in the 2010’s. These new players invite us to analyze their various business models and their role as intermediaries. In this context, actors of the creative and culture industries need to have a better knowledge of their intellectual property rights, which is essential to understand the business opportunities but also to manage the risks associated with online activities.
Presented at: Chinese University of Hong Kong, Faculty of Law — Hong Kong, 20 November 2013.
Cou... more Presented at: Chinese University of Hong Kong, Faculty of Law — Hong Kong, 20 November 2013.
Counterfeiting is a global phenomenon and the only way to conduct a study on this topic is to adopt a comparative approach. It is impossible to ignore Chinese law (China is the main source of counterfeit goods), Hong Kong law (an increasing volume of counterfeit goods transit through Hong Kong), and EU law (final destination). Though EU law is often cited as an example, it is far from perfect, and even the very new regulation (608/2013) adopted in July 2013 has some weak points.
Presented at: Hong Kong Baptist University — Hong Kong, 2 September 2013.
The conference focuses... more Presented at: Hong Kong Baptist University — Hong Kong, 2 September 2013.
The conference focuses on the current state and future of intellectual property rights protection and enforcement in Europe and Hong Kong. It seeks to enhance effectively the collaborative working relationships between IP/brand owners, law enforcement officials, IP Departments, investigators and industry organizations in the two regions. It will feature interactive panel discussions and presentations to provide participants an opportunity to obtain insights from the participating experts on recent intellectual property rights protection and enforcement successes and challenges as well as an outlook on future IP trends in the region.
A lot of disputes arose in relation with the use of the Google AdWords service. These disputes ca... more A lot of disputes arose in relation with the use of the Google AdWords service. These disputes captured the attention of scholars, occupied the judges, while Google, trademarks owners and users of the service were holding their breath... This seminar will expose the current legal situation under European law and Hong Kong law.
Abstract: Recent statistics confirm that a vast majority of counterfeit goods destined for the Eu... more Abstract: Recent statistics confirm that a vast majority of counterfeit goods destined for the European market come from China and Hong Kong. Recent studies also show that the volume of counterfeit goods coming or transiting from Hong Kong is increasing. A few weeks after the adoption of the new EU Regulation 608/2013 “Concerning customs enforcement of intellectual property rights”, it will be interesting to put into perspective the Hong Kong current legal situation and the new European law. Speakers will share case studies they encountered as to the protection of trademarks and designs.
This presentation was first played on the 18th September 2013 at the seminar “Protecting Creativi... more This presentation was first played on the 18th September 2013 at the seminar “Protecting Creativity & Innovation: IPR for Products, Brands & Services”. This seminar took place at Baptist University of Hong Kong and was the launching event of the Creativity Students Competition 2013, organized and supported jointly by the European Union Academic Programme Hong Kong (EUAP) and the European Chamber of Commerce in Hong Kong. Entrants were invited to create a mascot, a poster, and/or a short film and were urged to be as creative as they can with the theme of intellectual property, protection for creativity and innovation. This presentation is a compilation of previous anti-counterfeiting campaigns and serve as an example for an educational purpose.
Over the past decade, the economy and the law of intellectual property has grown considerably und... more Over the past decade, the economy and the law of intellectual property has grown considerably under the influence, including the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) entered into force in 1995: the growth records of patents, trademarks, designs and models is clear, assignments and licenses are increasing and a portfolio of IPR can motivate mergers and acquisitions. There is no doubt nowadays that the intellectual property rights are key strategic assets.
In this context, intellectual property disputes are increasing and becoming more complex. Expensive and lengthy litigation, as well as the desire for confidentiality drives businessmen to search for alternative ways to resolve the disputes and protect their intellectual property rights more effectively.
Arbitration has thus become a preferred method to settle intellectual property disputes. This method of settling disputes has grown substantially in most of developed countries, particularly since the creation of the Center for Arbitration and Mediation of the World Intellectual Property Organization in 1994. Today, this center has opened an office in Singapore and other new regional centers have been created (i.e. the Japan Intellectual Property Arbitration Center or the Arab Intellectual Property Arbitration Center). The Hong Kong Arbitration Center has even adopted a very specific Semiconductor Intellectual Property Arbitration Procedure.
Now the question to ask is whether intellectual property disputes can be submitted to arbitration. No international consensus has been reached on this issue, due to the different perceptions on whether intellectual property issues fall into the public order in various jurisdictions. The paper intends to discuss the arbitrability of intellectual property disputes on a comparative basis, comparing the law and practice on this issue in certain European countries (i.e. French law, Belgian law and Swiss law) and that certain Asian countries (i.e. Chinese law and Japanese law). From there, we will see whether the conception of arbitrability in developed countries may be exported to developing countries.
Deux mille ans d’une histoire chinoise du livre, marques par une progression constante de son mar... more Deux mille ans d’une histoire chinoise du livre, marques par une progression constante de son marche, n’ontils jamais faconne une perception ou mieux, une conscience, susceptibles de faire emerger l’idee de propriete litteraire et artistique ? Le present article s’inscrit dans un debat qui vise, d’une part, a analyser la perception que pouvaient avoir les artistem les sauteurs et les editeurs de la Chine ancienne vis-a-vis de la reproduction ou de l’imitation de leurs oeuvres et, d’autre part, a s’interroger sur la possibilite de faire entendre leurs voix aupres des autorites. L’auteur conclut qu’une propriete litteraire parait avoir ete reconnue, a tout le moins, a un niveau local et sous une forme clairsemee et embryonnaire.
L'epoque contemporaine est marquee par l'expansion des modes alternatifs de reglement des... more L'epoque contemporaine est marquee par l'expansion des modes alternatifs de reglement des differends dans tous les domaines de la vie juridique. Ce mouvement s'accompagne d'une large ouverture de l'arbitrabilite et de la transigeabilite. Mais une fois que l'on a ouvert les champs de l'arbitrage et de la transaction, encore faut-il savoir quels sont les pouvoirs des acteurs des modes alternatifs et quel peut etre le contenu de la solution (sentence arbitrale ou transaction) issue du processus alternatif. Pour avancer dans cette reflexion, il importe de depasser les seules notions d'arbitrabilite et de transigeabilite. A cette fin, nous avons recours au concept d'alternativite (PARTIE PRELIMINAIRE). Ce dernier presente l'interet d'embrasser l'ensemble des questions de fonds necessaires a l'apprehension des modes alternatifs. Il est possible de le representer sous la forme d'un triple test : - l'arbitrabilite ou la transigeabi...
Deux mille ans d’une histoire chinoise du livre, marqués par une progression constante de son mar... more Deux mille ans d’une histoire chinoise du livre, marqués par une progression constante de son marché, n’ont-ils jamais façonné une perception ou mieux, une conscience, susceptibles de faire émerger l’idée de propriété littéraire et artistique ? Le présent article s’inscrit dans un débat qui vise, d’une part, à analyser la perception que pouvaient avoir les artistes, les auteurs et les éditeurs de la Chine ancienne vis-à-vis de la reproduction ou de l’imitation de leurs œuvres et, d’autre part, à s’interroger sur la possibilité de faire entendre leurs voix auprès des autorités. L’auteur conclut qu’une propriété littéraire paraît avoir été reconnue, à tout le moins, à un niveau local et sous une forme clairsemée et embryonnaire.
The International Litigation Quaterly, American Bar Association, Summer 2012.
Creation is a great engine of the economy. However, the rise of intellectual property in whateve... more Creation is a great engine of the economy. However, the rise of intellectual property in whatever society is necessarily followed by an increase of disputes. China has become a major player in this economy of intellectual property and it no longer hides its ambition to become a great nation in this field. In this context, it is important to know how to resolve disputes over intellectual property rights in the PRC. Arbitration could be an effective way. The first question to be asked is the issue of arbitrability: to what extent the Chinese legislation admits the arbitrability of intellectual property disputes? This article seeks to provide some answers to this delicate and complex issue, by focusing on the main intellectual property rights (copyright, trademark rights and patent rights) and by analyzing the situation concerning the contractual matters, the issues of infringement and those relating to the validity of intellectual property rights. The article concludes that the legislative drafting does not provide the parties with clear rules; it is important to give them access to justice through alternative routes to state courts. In short, China intends to give wings to the arbitration of intellectual property disputes but the law lacks clarity and creates walls that hinder the development of arbitration for industrial property disputes.
La Semaine Juridique, Entreprise et Affaires, N° 37, Etude 1663, pp. 41-48., Sep 9, 2011
This article discusses the impacts of the French law for simplification and improvement of law en... more This article discusses the impacts of the French law for simplification and improvement of law enacted on 17 May 2011 (the Law) on the resolution of intellectual property disputes. The authors argue that the Law has positive effects in simplifying and harmonizing intellectual property disputes: first, the Law gives an exclusive jurisdiction for intellectual property disputes to the tribunals of first instance; second, the Law expressly widens the scope of arbitrability of intellectual property disputes. The law maker has clearly attempted to harmonize the regime of arbitrability for intellectual property disputes, regardless of the subject matter (i.e., disputes concerning copyrights, patents, trademarks, geographical indications or plant varieties). As a result, civil actions and claims relating to intellectual property rights, including those addressing a related issue of unfair competition, may now be settled by arbitration as provided in articles 2059 and 2060 of the Civil Code. The authors also point out the limits of the Law.
Revue Lamy Droit des Affaires (RLDA), 2010, Vol. 55, n° 3177, pp. 65-70., Dec 15, 2010
This paper argues for the strength of the arbitration clause under French law, leaving little roo... more This paper argues for the strength of the arbitration clause under French law, leaving little room for a reluctant party to attack its validity before the judges, through the lens of a decision by the Douai Court of Appeal on 17 September 2009. This remarkable decision reaffirmed clearly all the solutions adopted by the Cour de cassation on the following issues: i) there is an implicit consent to the arbitration clause ii) the prevalence of an arbitration clause over a clause conferring jurisdiction on civil courts; iii) the jurisdiction of the arbitral tribunal to rule on claims prior to the opening of bankruptcy, and iv) the jurisdiction of the arbitral tribunal to rule on tort disputes.
Revue Lamy Droit de l’Immatériel (RLDI), 2010, Vol. 62, n° 2056, pp. 68-72., Jul 15, 2010
"Domaining” is a domain name speculation, which results in the registration or the acquisition of... more "Domaining” is a domain name speculation, which results in the registration or the acquisition of domain names. Those domain names can reproduce or imitate a trademark or a celebrity name; they also can reproduce a generic word or even have no particular meaning. But they all must generate some value since the purpose of the “domainer” is to earn money, either by selling them or by connecting them to some “parking” web pages that are able to generate commercial links. This paper discusses the business model of the web companies that offer such services, and analyzes the risks and liabilities of the various actors in the business of domaining and parking websites.
Revue Lamy Droit de l’Immatériel (RLDI), 2010, Vol. 65, n° 2130, pp. 18-24, Jul 15, 2010
This paper examines why the French Constitutional Court has declared that the domain names legal ... more This paper examines why the French Constitutional Court has declared that the domain names legal framework did not comply with the provisions of the Constitution. Upon a close examination of the domain names legal framework, the author agrees with the conclusion of the Court and argues that the strong and abusive protection of intellectual property rights may prevent third parties to exercise some fundamental rights such as freedom of enterprise and freedom of speech
Petites Affiches, No. 192, pp. 27-29, Sep 25, 2007
This paper discusses the solutions adopted by the French Supreme Court (Cour de cassation) in two... more This paper discusses the solutions adopted by the French Supreme Court (Cour de cassation) in two decisions concerning the same case. The author agrees with the Supreme Court’s analysis, and highlights the rational adopted by the Cour de cassation from the following aspects: i) the lack of enforceability per se of an arbitration award rendered under the auspices of the International Court of Arbitration of the International Chamber of Commerce, despite some contractual provisions in its rules; ii) if it is true that the criminal proceedings take precedence over civil proceedings, the party who invokes this principle shall explain what would be the consequences of the criminal proceedings over the civil proceedings; and iii) the Lugano Convention of 16 September 1988 “on jurisdiction and the enforcement of judgments in civil and commercial matters” does not apply to judicial decisions concerning the field of arbitration.
Presented at: Blended Learning Symposium: Teaching Beyond the Classroom— The Hong Kong Polytechni... more Presented at: Blended Learning Symposium: Teaching Beyond the Classroom— The Hong Kong Polytechnic University, Hong Kong, 19 August 2015.
Abstract: This presentation is based on a case study conducted for the purpose of obtaining the Certificate in Becoming an Online Teacher (Educational Development Center, The Hong Kong Polytechnic University). It aims to show how the legal methodology called “IRAC’ fits in the Bloom’s taxonomy, and to demonstrate the efficiency of online educational technologies (quizzes and wikis) in a blended learning environment designed for legal studies.
Presented at: the BIP Asia Forum 2014, Hong Kong, jointly organized by the HKSAR Government, Hong... more Presented at: the BIP Asia Forum 2014, Hong Kong, jointly organized by the HKSAR Government, Hong Kong Trade Development Council and Hong Kong Design Centre — Hong Kong, 5 December 2014.
Abstract: The 21th century is “the century of knowledge”. Intellectual property is essential to address global challenges. The process of internationalization dramatically gained importance since 1995 when IP was integrated into the WTO legal framework. This resulted in the harmonization of IP laws worldwide. Given this new global economic model, statistics show an increasing number of IP registrations and an increasing number of international contracts involving IP rights; and as a consequence, an increasing number of IP disputes. In the meantime, international arbitration is considered the preferred means to resolve international commercial disputes. In the context of globalization, there is a strong movement towards the harmonization of arbitration laws and practice across national boundaries. One precondition for arbitration is that the disputes submitted to the arbitrator are capable to be settled by arbitration — the issue of “arbitrability”. Most jurisdictions have now inclined to take a liberal approach to define the scope of arbitrability broadly. Some commentators described this phenomenon as “the decline of inarbitrability” or even “the death of inarbitrability”. Having observed the trend towards harmonization on IP laws, the trend towards harmonization of arbitration laws and a general trend in favor of arbitrability, a natural question to ask is whether there is also a trend of harmonization on the question of arbitrability in the realm of IP. This question is of significant practical importance, as arbitration has comparative advantages towards litigation as a forum to resolve IP disputes, given the availability of expertise, the protection of confidentiality, the neutrality of the forum, the flexibility of remedy and the global enforceability of arbitral awards.
Presented at: Domain Names and DNS: Comparative Studies, Institutional Perspectives, Recent Devel... more Presented at: Domain Names and DNS: Comparative Studies, Institutional Perspectives, Recent Developments in the DNS Governance, CUHK/CFRED Conference — Hong Kong, 14 May 2014.
Since the inception of the Internet Corporation for Assigned Names and Numbers in 1998, the landscape and the law of the domain name system (DNS) is constantly changing. The issue of public order is playing an increasing important role. This presentation focuses especially on the various dispute resolution mechanisms provided to address public orders issues due to the liberalization of the top level domains.
Presented at: Rethinking Domain Name Dispute Resolution in the Era of New gTLDs, ADNDRC conferenc... more Presented at: Rethinking Domain Name Dispute Resolution in the Era of New gTLDs, ADNDRC conference, Kuala Lumpur Regional Center for Arbitration (KLRCA) — Kuala Lumpur, 18 January 2014.
Publication: "Procédures extrajudiciaires de règlement des litiges relatifs aux noms de domaine : quelles perspectives pour l'arbitrage ?", Versailles International Business Law Review, 2013, No. 4, pp. 145-168.
Fifteen years after the UDRP was adopted, there has been an unprecedented increase of domain names resources. ICANN is in the process of liberalizing the creation of new top level domains. Furthermore, new technologies now allow the registration of internationalized domain names (IDNs). Resources will soon be almost endless and extremely varied (new TLDs + IDNs + IPV6). At the same time, one can question the effectiveness of the UDRP in achieving its goal: fighting cybersquatting. Indeed, in 70% of WIPO cases, disputed domain names are transferred to the claimant. An analysis of the UDRP case law and similar rules shows that the whole system has already evolved, thanks to the UDRP panelists (consolidation, re-filing, etc.) and the ccTLDs registries (mediation, appeal, reimbursement of legal fees, arbitration, etc.). However, good ideas are scattered like pieces of a puzzle. The whole system could be improved by i) giving Lady Justice the sword she is missing in domain names dispute resolution proceedings and ii) gathering all the good ideas together.
Presented at: the BIP Asia Forum 2014, Hong Kong, jointly organized by the HKSAR Government, Hong... more Presented at: the BIP Asia Forum 2014, Hong Kong, jointly organized by the HKSAR Government, Hong Kong Trade Development Council and Hong Kong Design Centre Hong Kong — Hong Kong, 6 December 2014.
An intellectual property marketplace is a B2B or B2C venue where IPRs owners and IPRs buyers can meet each other and establish transfer agreements, license agreements or even partnership agreements. A large number of IP marketplaces has emerged in the 2010’s. These new players invite us to analyze their various business models and their role as intermediaries. In this context, actors of the creative and culture industries need to have a better knowledge of their intellectual property rights, which is essential to understand the business opportunities but also to manage the risks associated with online activities.
Presented at: Chinese University of Hong Kong, Faculty of Law — Hong Kong, 20 November 2013.
Cou... more Presented at: Chinese University of Hong Kong, Faculty of Law — Hong Kong, 20 November 2013.
Counterfeiting is a global phenomenon and the only way to conduct a study on this topic is to adopt a comparative approach. It is impossible to ignore Chinese law (China is the main source of counterfeit goods), Hong Kong law (an increasing volume of counterfeit goods transit through Hong Kong), and EU law (final destination). Though EU law is often cited as an example, it is far from perfect, and even the very new regulation (608/2013) adopted in July 2013 has some weak points.
Presented at: Hong Kong Baptist University — Hong Kong, 2 September 2013.
The conference focuses... more Presented at: Hong Kong Baptist University — Hong Kong, 2 September 2013.
The conference focuses on the current state and future of intellectual property rights protection and enforcement in Europe and Hong Kong. It seeks to enhance effectively the collaborative working relationships between IP/brand owners, law enforcement officials, IP Departments, investigators and industry organizations in the two regions. It will feature interactive panel discussions and presentations to provide participants an opportunity to obtain insights from the participating experts on recent intellectual property rights protection and enforcement successes and challenges as well as an outlook on future IP trends in the region.
A lot of disputes arose in relation with the use of the Google AdWords service. These disputes ca... more A lot of disputes arose in relation with the use of the Google AdWords service. These disputes captured the attention of scholars, occupied the judges, while Google, trademarks owners and users of the service were holding their breath... This seminar will expose the current legal situation under European law and Hong Kong law.
Abstract: Recent statistics confirm that a vast majority of counterfeit goods destined for the Eu... more Abstract: Recent statistics confirm that a vast majority of counterfeit goods destined for the European market come from China and Hong Kong. Recent studies also show that the volume of counterfeit goods coming or transiting from Hong Kong is increasing. A few weeks after the adoption of the new EU Regulation 608/2013 “Concerning customs enforcement of intellectual property rights”, it will be interesting to put into perspective the Hong Kong current legal situation and the new European law. Speakers will share case studies they encountered as to the protection of trademarks and designs.
This presentation was first played on the 18th September 2013 at the seminar “Protecting Creativi... more This presentation was first played on the 18th September 2013 at the seminar “Protecting Creativity & Innovation: IPR for Products, Brands & Services”. This seminar took place at Baptist University of Hong Kong and was the launching event of the Creativity Students Competition 2013, organized and supported jointly by the European Union Academic Programme Hong Kong (EUAP) and the European Chamber of Commerce in Hong Kong. Entrants were invited to create a mascot, a poster, and/or a short film and were urged to be as creative as they can with the theme of intellectual property, protection for creativity and innovation. This presentation is a compilation of previous anti-counterfeiting campaigns and serve as an example for an educational purpose.
Over the past decade, the economy and the law of intellectual property has grown considerably und... more Over the past decade, the economy and the law of intellectual property has grown considerably under the influence, including the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) entered into force in 1995: the growth records of patents, trademarks, designs and models is clear, assignments and licenses are increasing and a portfolio of IPR can motivate mergers and acquisitions. There is no doubt nowadays that the intellectual property rights are key strategic assets.
In this context, intellectual property disputes are increasing and becoming more complex. Expensive and lengthy litigation, as well as the desire for confidentiality drives businessmen to search for alternative ways to resolve the disputes and protect their intellectual property rights more effectively.
Arbitration has thus become a preferred method to settle intellectual property disputes. This method of settling disputes has grown substantially in most of developed countries, particularly since the creation of the Center for Arbitration and Mediation of the World Intellectual Property Organization in 1994. Today, this center has opened an office in Singapore and other new regional centers have been created (i.e. the Japan Intellectual Property Arbitration Center or the Arab Intellectual Property Arbitration Center). The Hong Kong Arbitration Center has even adopted a very specific Semiconductor Intellectual Property Arbitration Procedure.
Now the question to ask is whether intellectual property disputes can be submitted to arbitration. No international consensus has been reached on this issue, due to the different perceptions on whether intellectual property issues fall into the public order in various jurisdictions. The paper intends to discuss the arbitrability of intellectual property disputes on a comparative basis, comparing the law and practice on this issue in certain European countries (i.e. French law, Belgian law and Swiss law) and that certain Asian countries (i.e. Chinese law and Japanese law). From there, we will see whether the conception of arbitrability in developed countries may be exported to developing countries.
Deux mille ans d’une histoire chinoise du livre, marques par une progression constante de son mar... more Deux mille ans d’une histoire chinoise du livre, marques par une progression constante de son marche, n’ontils jamais faconne une perception ou mieux, une conscience, susceptibles de faire emerger l’idee de propriete litteraire et artistique ? Le present article s’inscrit dans un debat qui vise, d’une part, a analyser la perception que pouvaient avoir les artistem les sauteurs et les editeurs de la Chine ancienne vis-a-vis de la reproduction ou de l’imitation de leurs oeuvres et, d’autre part, a s’interroger sur la possibilite de faire entendre leurs voix aupres des autorites. L’auteur conclut qu’une propriete litteraire parait avoir ete reconnue, a tout le moins, a un niveau local et sous une forme clairsemee et embryonnaire.
L'epoque contemporaine est marquee par l'expansion des modes alternatifs de reglement des... more L'epoque contemporaine est marquee par l'expansion des modes alternatifs de reglement des differends dans tous les domaines de la vie juridique. Ce mouvement s'accompagne d'une large ouverture de l'arbitrabilite et de la transigeabilite. Mais une fois que l'on a ouvert les champs de l'arbitrage et de la transaction, encore faut-il savoir quels sont les pouvoirs des acteurs des modes alternatifs et quel peut etre le contenu de la solution (sentence arbitrale ou transaction) issue du processus alternatif. Pour avancer dans cette reflexion, il importe de depasser les seules notions d'arbitrabilite et de transigeabilite. A cette fin, nous avons recours au concept d'alternativite (PARTIE PRELIMINAIRE). Ce dernier presente l'interet d'embrasser l'ensemble des questions de fonds necessaires a l'apprehension des modes alternatifs. Il est possible de le representer sous la forme d'un triple test : - l'arbitrabilite ou la transigeabi...
Deux mille ans d’une histoire chinoise du livre, marqués par une progression constante de son mar... more Deux mille ans d’une histoire chinoise du livre, marqués par une progression constante de son marché, n’ont-ils jamais façonné une perception ou mieux, une conscience, susceptibles de faire émerger l’idée de propriété littéraire et artistique ? Le présent article s’inscrit dans un débat qui vise, d’une part, à analyser la perception que pouvaient avoir les artistes, les auteurs et les éditeurs de la Chine ancienne vis-à-vis de la reproduction ou de l’imitation de leurs œuvres et, d’autre part, à s’interroger sur la possibilité de faire entendre leurs voix auprès des autorités. L’auteur conclut qu’une propriété littéraire paraît avoir été reconnue, à tout le moins, à un niveau local et sous une forme clairsemée et embryonnaire.
The International Litigation Quaterly, American Bar Association, Summer 2012.
Creation is a great engine of the economy. However, the rise of intellectual property in whateve... more Creation is a great engine of the economy. However, the rise of intellectual property in whatever society is necessarily followed by an increase of disputes. China has become a major player in this economy of intellectual property and it no longer hides its ambition to become a great nation in this field. In this context, it is important to know how to resolve disputes over intellectual property rights in the PRC. Arbitration could be an effective way. The first question to be asked is the issue of arbitrability: to what extent the Chinese legislation admits the arbitrability of intellectual property disputes? This article seeks to provide some answers to this delicate and complex issue, by focusing on the main intellectual property rights (copyright, trademark rights and patent rights) and by analyzing the situation concerning the contractual matters, the issues of infringement and those relating to the validity of intellectual property rights. The article concludes that the legislative drafting does not provide the parties with clear rules; it is important to give them access to justice through alternative routes to state courts. In short, China intends to give wings to the arbitration of intellectual property disputes but the law lacks clarity and creates walls that hinder the development of arbitration for industrial property disputes.
La Semaine Juridique, Entreprise et Affaires, N° 37, Etude 1663, pp. 41-48., Sep 9, 2011
This article discusses the impacts of the French law for simplification and improvement of law en... more This article discusses the impacts of the French law for simplification and improvement of law enacted on 17 May 2011 (the Law) on the resolution of intellectual property disputes. The authors argue that the Law has positive effects in simplifying and harmonizing intellectual property disputes: first, the Law gives an exclusive jurisdiction for intellectual property disputes to the tribunals of first instance; second, the Law expressly widens the scope of arbitrability of intellectual property disputes. The law maker has clearly attempted to harmonize the regime of arbitrability for intellectual property disputes, regardless of the subject matter (i.e., disputes concerning copyrights, patents, trademarks, geographical indications or plant varieties). As a result, civil actions and claims relating to intellectual property rights, including those addressing a related issue of unfair competition, may now be settled by arbitration as provided in articles 2059 and 2060 of the Civil Code. The authors also point out the limits of the Law.
Revue Lamy Droit des Affaires (RLDA), 2010, Vol. 55, n° 3177, pp. 65-70., Dec 15, 2010
This paper argues for the strength of the arbitration clause under French law, leaving little roo... more This paper argues for the strength of the arbitration clause under French law, leaving little room for a reluctant party to attack its validity before the judges, through the lens of a decision by the Douai Court of Appeal on 17 September 2009. This remarkable decision reaffirmed clearly all the solutions adopted by the Cour de cassation on the following issues: i) there is an implicit consent to the arbitration clause ii) the prevalence of an arbitration clause over a clause conferring jurisdiction on civil courts; iii) the jurisdiction of the arbitral tribunal to rule on claims prior to the opening of bankruptcy, and iv) the jurisdiction of the arbitral tribunal to rule on tort disputes.
Revue Lamy Droit de l’Immatériel (RLDI), 2010, Vol. 62, n° 2056, pp. 68-72., Jul 15, 2010
"Domaining” is a domain name speculation, which results in the registration or the acquisition of... more "Domaining” is a domain name speculation, which results in the registration or the acquisition of domain names. Those domain names can reproduce or imitate a trademark or a celebrity name; they also can reproduce a generic word or even have no particular meaning. But they all must generate some value since the purpose of the “domainer” is to earn money, either by selling them or by connecting them to some “parking” web pages that are able to generate commercial links. This paper discusses the business model of the web companies that offer such services, and analyzes the risks and liabilities of the various actors in the business of domaining and parking websites.
Revue Lamy Droit de l’Immatériel (RLDI), 2010, Vol. 65, n° 2130, pp. 18-24, Jul 15, 2010
This paper examines why the French Constitutional Court has declared that the domain names legal ... more This paper examines why the French Constitutional Court has declared that the domain names legal framework did not comply with the provisions of the Constitution. Upon a close examination of the domain names legal framework, the author agrees with the conclusion of the Court and argues that the strong and abusive protection of intellectual property rights may prevent third parties to exercise some fundamental rights such as freedom of enterprise and freedom of speech
Petites Affiches, No. 192, pp. 27-29, Sep 25, 2007
This paper discusses the solutions adopted by the French Supreme Court (Cour de cassation) in two... more This paper discusses the solutions adopted by the French Supreme Court (Cour de cassation) in two decisions concerning the same case. The author agrees with the Supreme Court’s analysis, and highlights the rational adopted by the Cour de cassation from the following aspects: i) the lack of enforceability per se of an arbitration award rendered under the auspices of the International Court of Arbitration of the International Chamber of Commerce, despite some contractual provisions in its rules; ii) if it is true that the criminal proceedings take precedence over civil proceedings, the party who invokes this principle shall explain what would be the consequences of the criminal proceedings over the civil proceedings; and iii) the Lugano Convention of 16 September 1988 “on jurisdiction and the enforcement of judgments in civil and commercial matters” does not apply to judicial decisions concerning the field of arbitration.
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Abstract: This presentation is based on a case study conducted for the purpose of obtaining the Certificate in Becoming an Online Teacher (Educational Development Center, The Hong Kong Polytechnic University). It aims to show how the legal methodology called “IRAC’ fits in the Bloom’s taxonomy, and to demonstrate the efficiency of online educational technologies (quizzes and wikis) in a blended learning environment designed for legal studies.
Abstract: The 21th century is “the century of knowledge”. Intellectual property is essential to address global challenges. The process of internationalization dramatically gained importance since 1995 when IP was integrated into the WTO legal framework. This resulted in the harmonization of IP laws worldwide. Given this new global economic model, statistics show an increasing number of IP registrations and an increasing number of international contracts involving IP rights; and as a consequence, an increasing number of IP disputes.
In the meantime, international arbitration is considered the preferred means to resolve international commercial disputes. In the context of globalization, there is a strong movement towards the harmonization of arbitration laws and practice across national boundaries. One precondition for arbitration is that the disputes submitted to the arbitrator are capable to be settled by arbitration — the issue of “arbitrability”. Most jurisdictions have now inclined to take a liberal approach to define the scope of arbitrability broadly. Some commentators described this phenomenon as “the decline of inarbitrability” or even “the death of inarbitrability”.
Having observed the trend towards harmonization on IP laws, the trend towards harmonization of arbitration laws and a general trend in favor of arbitrability, a natural question to ask is whether there is also a trend of harmonization on the question of arbitrability in the realm of IP. This question is of significant practical importance, as arbitration has comparative advantages towards litigation as a forum to resolve IP disputes, given the availability of expertise, the protection of confidentiality, the neutrality of the forum, the flexibility of remedy and the global enforceability of arbitral awards.
Since the inception of the Internet Corporation for Assigned Names and Numbers in 1998, the landscape and the law of the domain name system (DNS) is constantly changing. The issue of public order is playing an increasing important role. This presentation focuses especially on the various dispute resolution mechanisms provided to address public orders issues due to the liberalization of the top level domains.
Publication: "Procédures extrajudiciaires de règlement des litiges relatifs aux noms de domaine : quelles perspectives pour l'arbitrage ?", Versailles International Business Law Review, 2013, No. 4, pp. 145-168.
Fifteen years after the UDRP was adopted, there has been an unprecedented increase of domain names resources. ICANN is in the process of liberalizing the creation of new top level domains. Furthermore, new technologies now allow the registration of internationalized domain names (IDNs). Resources will soon be almost endless and extremely varied (new TLDs + IDNs + IPV6). At the same time, one can question the effectiveness of the UDRP in achieving its goal: fighting cybersquatting. Indeed, in 70% of WIPO cases, disputed domain names are transferred to the claimant. An analysis of the UDRP case law and similar rules shows that the whole system has already evolved, thanks to the UDRP panelists (consolidation, re-filing, etc.) and the ccTLDs registries (mediation, appeal, reimbursement of legal fees, arbitration, etc.). However, good ideas are scattered like pieces of a puzzle. The whole system could be improved by i) giving Lady Justice the sword she is missing in domain names dispute resolution proceedings and ii) gathering all the good ideas together.
An intellectual property marketplace is a B2B or B2C venue where IPRs owners and IPRs buyers can meet each other and establish transfer agreements, license agreements or even partnership agreements. A large number of IP marketplaces has emerged in the 2010’s. These new players invite us to analyze their various business models and their role as intermediaries. In this context, actors of the creative and culture industries need to have a better knowledge of their intellectual property rights, which is essential to understand the business opportunities but also to manage the risks associated with online activities.
Counterfeiting is a global phenomenon and the only way to conduct a study on this topic is to adopt a comparative approach. It is impossible to ignore Chinese law (China is the main source of counterfeit goods), Hong Kong law (an increasing volume of counterfeit goods transit through Hong Kong), and EU law (final destination). Though EU law is often cited as an example, it is far from perfect, and even the very new regulation (608/2013) adopted in July 2013 has some weak points.
The conference focuses on the current state and future of intellectual property rights protection and enforcement in Europe and Hong Kong. It seeks to enhance effectively the collaborative working relationships between IP/brand owners, law enforcement officials, IP Departments, investigators and industry organizations in the two regions. It will feature interactive panel discussions and presentations to provide participants an opportunity to obtain insights from the participating experts on recent intellectual property rights protection and enforcement successes and challenges as well as an outlook on future IP trends in the region.
In this context, intellectual property disputes are increasing and becoming more complex. Expensive and lengthy litigation, as well as the desire for confidentiality drives businessmen to search for alternative ways to resolve the disputes and protect their intellectual property rights more effectively.
Arbitration has thus become a preferred method to settle intellectual property disputes. This method of settling disputes has grown substantially in most of developed countries, particularly since the creation of the Center for Arbitration and Mediation of the World Intellectual Property Organization in 1994. Today, this center has opened an office in Singapore and other new regional centers have been created (i.e. the Japan Intellectual Property Arbitration Center or the Arab Intellectual Property Arbitration Center). The Hong Kong Arbitration Center has even adopted a very specific Semiconductor Intellectual Property Arbitration Procedure.
Now the question to ask is whether intellectual property disputes can be submitted to arbitration. No international consensus has been reached on this issue, due to the different perceptions on whether intellectual property issues fall into the public order in various jurisdictions. The paper intends to discuss the arbitrability of intellectual property disputes on a comparative basis, comparing the law and practice on this issue in certain European countries (i.e. French law, Belgian law and Swiss law) and that certain Asian countries (i.e. Chinese law and Japanese law). From there, we will see whether the conception of arbitrability in developed countries may be exported to developing countries.
Abstract: This presentation is based on a case study conducted for the purpose of obtaining the Certificate in Becoming an Online Teacher (Educational Development Center, The Hong Kong Polytechnic University). It aims to show how the legal methodology called “IRAC’ fits in the Bloom’s taxonomy, and to demonstrate the efficiency of online educational technologies (quizzes and wikis) in a blended learning environment designed for legal studies.
Abstract: The 21th century is “the century of knowledge”. Intellectual property is essential to address global challenges. The process of internationalization dramatically gained importance since 1995 when IP was integrated into the WTO legal framework. This resulted in the harmonization of IP laws worldwide. Given this new global economic model, statistics show an increasing number of IP registrations and an increasing number of international contracts involving IP rights; and as a consequence, an increasing number of IP disputes.
In the meantime, international arbitration is considered the preferred means to resolve international commercial disputes. In the context of globalization, there is a strong movement towards the harmonization of arbitration laws and practice across national boundaries. One precondition for arbitration is that the disputes submitted to the arbitrator are capable to be settled by arbitration — the issue of “arbitrability”. Most jurisdictions have now inclined to take a liberal approach to define the scope of arbitrability broadly. Some commentators described this phenomenon as “the decline of inarbitrability” or even “the death of inarbitrability”.
Having observed the trend towards harmonization on IP laws, the trend towards harmonization of arbitration laws and a general trend in favor of arbitrability, a natural question to ask is whether there is also a trend of harmonization on the question of arbitrability in the realm of IP. This question is of significant practical importance, as arbitration has comparative advantages towards litigation as a forum to resolve IP disputes, given the availability of expertise, the protection of confidentiality, the neutrality of the forum, the flexibility of remedy and the global enforceability of arbitral awards.
Since the inception of the Internet Corporation for Assigned Names and Numbers in 1998, the landscape and the law of the domain name system (DNS) is constantly changing. The issue of public order is playing an increasing important role. This presentation focuses especially on the various dispute resolution mechanisms provided to address public orders issues due to the liberalization of the top level domains.
Publication: "Procédures extrajudiciaires de règlement des litiges relatifs aux noms de domaine : quelles perspectives pour l'arbitrage ?", Versailles International Business Law Review, 2013, No. 4, pp. 145-168.
Fifteen years after the UDRP was adopted, there has been an unprecedented increase of domain names resources. ICANN is in the process of liberalizing the creation of new top level domains. Furthermore, new technologies now allow the registration of internationalized domain names (IDNs). Resources will soon be almost endless and extremely varied (new TLDs + IDNs + IPV6). At the same time, one can question the effectiveness of the UDRP in achieving its goal: fighting cybersquatting. Indeed, in 70% of WIPO cases, disputed domain names are transferred to the claimant. An analysis of the UDRP case law and similar rules shows that the whole system has already evolved, thanks to the UDRP panelists (consolidation, re-filing, etc.) and the ccTLDs registries (mediation, appeal, reimbursement of legal fees, arbitration, etc.). However, good ideas are scattered like pieces of a puzzle. The whole system could be improved by i) giving Lady Justice the sword she is missing in domain names dispute resolution proceedings and ii) gathering all the good ideas together.
An intellectual property marketplace is a B2B or B2C venue where IPRs owners and IPRs buyers can meet each other and establish transfer agreements, license agreements or even partnership agreements. A large number of IP marketplaces has emerged in the 2010’s. These new players invite us to analyze their various business models and their role as intermediaries. In this context, actors of the creative and culture industries need to have a better knowledge of their intellectual property rights, which is essential to understand the business opportunities but also to manage the risks associated with online activities.
Counterfeiting is a global phenomenon and the only way to conduct a study on this topic is to adopt a comparative approach. It is impossible to ignore Chinese law (China is the main source of counterfeit goods), Hong Kong law (an increasing volume of counterfeit goods transit through Hong Kong), and EU law (final destination). Though EU law is often cited as an example, it is far from perfect, and even the very new regulation (608/2013) adopted in July 2013 has some weak points.
The conference focuses on the current state and future of intellectual property rights protection and enforcement in Europe and Hong Kong. It seeks to enhance effectively the collaborative working relationships between IP/brand owners, law enforcement officials, IP Departments, investigators and industry organizations in the two regions. It will feature interactive panel discussions and presentations to provide participants an opportunity to obtain insights from the participating experts on recent intellectual property rights protection and enforcement successes and challenges as well as an outlook on future IP trends in the region.
In this context, intellectual property disputes are increasing and becoming more complex. Expensive and lengthy litigation, as well as the desire for confidentiality drives businessmen to search for alternative ways to resolve the disputes and protect their intellectual property rights more effectively.
Arbitration has thus become a preferred method to settle intellectual property disputes. This method of settling disputes has grown substantially in most of developed countries, particularly since the creation of the Center for Arbitration and Mediation of the World Intellectual Property Organization in 1994. Today, this center has opened an office in Singapore and other new regional centers have been created (i.e. the Japan Intellectual Property Arbitration Center or the Arab Intellectual Property Arbitration Center). The Hong Kong Arbitration Center has even adopted a very specific Semiconductor Intellectual Property Arbitration Procedure.
Now the question to ask is whether intellectual property disputes can be submitted to arbitration. No international consensus has been reached on this issue, due to the different perceptions on whether intellectual property issues fall into the public order in various jurisdictions. The paper intends to discuss the arbitrability of intellectual property disputes on a comparative basis, comparing the law and practice on this issue in certain European countries (i.e. French law, Belgian law and Swiss law) and that certain Asian countries (i.e. Chinese law and Japanese law). From there, we will see whether the conception of arbitrability in developed countries may be exported to developing countries.