La infringement seizure is a formidable weapon in the legal arsenal of intellectual property rights holders. This evidentiary procedure, which is an exception to ordinary law, makes it possible to obtain proof of an infringement even before taking action on the merits.
Rules of jurisdiction
The exclusivity of the court
Only the president of the court has the power to authorise an infringement seizure. The Commercial Chamber of the Court of Cassation clearly stated this in its ruling of 14 September 2010: no other court can order this measure.
Neither the commercial court (TGI Lyon, 20 March 1995), nor the pre-trial judge (Civ. 1re, 5 February 2014, no. 12-25.492), nor the enforcement judge have this jurisdiction. This exclusivity is explained by the evidentiary rather than conservatory nature of the proceedings.
Territorial specialisation
The 2009 reform radically altered the judicial map in intellectual property matters. For patents, utility certificates, supplementary protection certificates and topographies of semi-conductor products, only the Paris judicial court has jurisdiction (COJ, art. D. 211-6).
For trademarks, designs and geographical indications, ten courts are designated: Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Strasbourg and Fort-de-France (COJ, art. D. 211-6-1).
Non-compliance = nullity. A seizure ordered by a non-specialised court will be annulled (TGI Paris, 14 October 2016). It is crucial to know how to contest an infringement seizure in the event of non-compliance with these rules of jurisdiction or procedural defects.
Special procedures for literary and artistic property
Infringement committed via an online communication service benefits from a special regime. Article L. 336-2 of the IPC allows for summary proceedings to be brought against "any person likely to contribute to remedying the infringement", including Internet service providers.
The TGI Paris was thus able to order the blocking of Allostreaming's domain names and the dereferencing by search engines (TGI Paris, ref., 28 November 2013).
Another special feature: the law of 11 March 2014 abolished the procedure on requisition by the police commissioner, a vestige of the law of 19-24 July 1793.
Presentation of the request
For a fundamental understanding of this procedure, it is essential to master the definition and essential features of counterfeit seizures before turning to the drafting of the application.
Mandatory information and motivation
The application must be submitted by a lawyer (C. pr. civ., art. 846). It must identify precisely :
- The applicant and standing
- The intellectual property title invoked
- The legal basis for the application
- The place or places subject to seizure
- Allegedly infringing products or processes
- The measures requested
The application must be detailed. The Court of Cassation has ruled that "the precise indication of the documents relied on [...] constitutes a condition for the admissibility of the application" (Civ. 1re, 20 October 2011, no. 10-19.615).
Practical tip: the request is usually accompanied by a draft order, even if there is no legal requirement to do so.
Supporting documents required
Applicants must provide proof of their entitlement. He must produce :
- The title leaflet (patent, trademark, etc.)
- Proof of its status (title deed, licence agreement, etc.)
In patent matters: "the applicant is required not only to produce the patent on which he relies, but also to prove that this title is in force" (Com. 29 January 2008).
For trademarks, designs and models: acts modifying rights must have been entered in national or Community registers in order to be enforceable against third parties (CPI, art. L. 714-7, L. 513-3).
Additional technical information
The order must mention by name the judge who made it and bear his signature (C. pr. civ., art. 454 and 456). An illegible signature with the words "Nous, Président" (We, the President) renders the order null and void (Crim. 22 September 2009, no. 09-80.599).
However, neither the name and signature of the court clerk (Civ. 2e, 17 March 2005, no. 02-14.514), nor the executory clause, nor the indication of the means of appeal are mandatory.
Transparency required: the applicant must indicate the existence of ongoing legal proceedings against the debtor (Paris, 17 September 2019).
The judge's discretion
Linked competence for descriptive data entry
The judge must authorise a detailed description of suspected counterfeit objects if the applicant can prove his or her rights. This is a genuine right to evidence.
The Commercial Chamber has clearly stated that the judge has "the power to determine the conditions and scope of the counterfeit seizure, but not the power to refuse authorisation to carry out a seizure which has been requested in the form and with the justifications provided for by law" (Com. 22 June 1999).
In this context, the bailiff may photograph, film or photocopy items. Photocopying documents constitutes a descriptive seizure and not a real seizure (Com. 1 July 2003, no. 01-10.807).
Discretionary power for real seizure
Conversely, the judge may refuse the actual seizure if he considers that it exceeds the simple evidentiary purpose (Douai, 4 February 2002).
Jurisprudence accepts that seizure in rem should be limited to only those copies necessary for proof: "seizure in rem of an entire stock should not be possible" (Com. 4 January 1985).
The judge may also restrict the seizure of documents. Please note: the seizure of accounting documents, which used to be contested, is now expressly authorised (Civ. 1re, 11 December 2013, no. 12-14.030).
Guarantees required from the applicant
To balance this non-adversarial procedure, the judge may require the applicant to provide guarantees.
Article L. 615-5 of the IPC provides that the enforcement of measures may be subject to "the provision by the claimant of guarantees intended to ensure the possible compensation of the defendant if the infringement action is subsequently deemed unfounded or the seizure cancelled".
These guarantees can take various forms:
- Bank guarantee (Paris, 23 March 1978)
- Deposit of a sum of money
- Payment of the price of seized products (TGI Lyon, 29 August 1994)
- Sequestration of operating income (Paris, 12 December 1989)
These factors underline the importance of rigorous preparation of the application and the guarantees required, crucial steps before theexecution of the infringement seizure and the actual gathering of evidence.
Acts authorised by the order
Detailed description with or without sampling
The order authorises "detailed description, with or without taking samples" (CPI, art. L. 615-5). The bailiff must strictly comply with this order.
If the order refers to a product but excludes its manufacturing process, the bailiff cannot describe this process (TGI Paris, 8 December 2017).
The number of samples taken must be limited. The judge may specify: "a maximum of two copies of each model" (Aix-en-Provence, 12 February 1999).
Actual seizure of counterfeit products
Seizure in rem involves the physical seizure of assets. It is only possible if expressly authorised by the order (TGI Paris, 1 April 1993).
The seized goods are kept under seal by the bailiff (Com. 19 November 2002, no. 00-15.203). Delivery to the applicant must be authorised by the order (TGI Évreux, 19 June 1998).
Special feature: in copyright law, the seizure may cover income from unlawful exploitation (CPI, art. L. 332-1, 3°).
Seizure of counterfeit materials and instruments
Since 2007, "the court may order the [...] actual seizure of the equipment and instruments" used to manufacture or distribute the infringing products (CPI, art. L. 615-5).
This extension goes beyond the simple evidentiary function. It prevents further manufacturing and limits the scope of infringing acts.
Specific cases in literary and artistic property
Article L. 332-1 of the CPI lists specific measures:
- Suspension of public performances
- Suspension of all current production
- Entering operating income
- Delivery of illicit works to a third-party receiver
The measures can go as far as suspending a performance or screening. These extensive powers illustrate the severity of the legislator's approach to the counterfeiting of intellectual works.
Sources
- Intellectual Property Code, Articles L. 332-1 to L. 332-4, L. 521-4, L. 615-5, L. 623-27-1, L. 716-4-7, L. 722-4
- Code of Civil Procedure, articles 454, 456, 494 to 498, 648, 846
- Code of judicial organisation, articles D. 211-6 and D. 211-6-1
- Court of Cassation, Commercial Division, 14 September 2010
- Court of Cassation, 1st Civil Chamber, 5 February 2014, no. 12-25.492
- Court of Cassation, Commercial Chamber, 22 June 1999, no. 97-12.699
- Court of Cassation, 1st Civil Chamber, 20 October 2011, no. 10-19.615
- Court of Cassation, Commercial Chamber, 29 January 2008, no. 07-14.709
- Court of Cassation, Criminal Division, 22 September 2009, No. 09-80.599
- Court of Cassation, 2nd Civil Division, 17 March 2005, no. 02-14.514
- Court of Cassation, Commercial Division, 1 July 2003, No. 01-10.807
- Court of Cassation, 1st Civil Chamber, 11 December 2013, no. 12-14.030
- TGI Paris, 14 October 2016, no. 14/07600
- TGI Paris, ref. 28 November 2013, no. 11/60013
- TGI Paris, 8 December 2017, no. 16/00900
- TGI Paris, 1st April 1993, RDPI 1993, n°46, p. 28
- TGI Lyon, 20 March 1995, PIBD 1995, n°590, III, p. 310
- TGI Évreux, 19 June 1998, Expertises 1999. 278, n°229
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