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Discovering that a competitor is imitating or copying the look of your product, which you have spent time designing and which you have taken care to protect with a design or modelCopying is often an unpleasant and damaging experience for your business. Copying can turn off your customers, devalue your image and wipe out your efforts at innovation and investment. Faced with such a situation, remaining passive is not an option. Fortunately, French law offers you an arsenal of legal tools to react, stop the infringement of your rights and obtain compensation for the damage suffered.
Infringement proceedings are the main way of defending your monopoly, but they are not the only way. There are other procedures, in particular for taking urgent action or gathering the necessary evidence before a trial on the merits. Understanding these different remedies, their conditions and their objectives, will enable you to choose the most appropriate strategy for effectively protecting your intangible assets. This article presents the main means of action available to you in France to defend your registered designs.
Infringement proceedings: the main route
An infringement action is the fundamental legal action that enables the holder of a design right to have the infringement of its operating monopoly recognised and penalised.
Who can take legal action?
The right to bring an infringement action belongs in the first instance to the owner the registered design, as recorded in the National Designs Register (RNDM). If the right has been sold (assigned), it is the new owner (assignee) who can take action, provided that the assignment has been registered in the RNDM so that it can be used against third parties (article L. 513-3 of the CPI).
Le exclusive licensee (the person who has obtained an authorisation to exploit the design with a guarantee of exclusivity in a given territory) also has a right to take action, but in a subsidiary manner. Article L. 521-2 of the IPC specifies that he can only do so if, after having given formal notice to the owner of the design to act, the latter fails to do so. However, the licence agreement may provide for different arrangements.
As for the single licence holder (non-exclusive), it cannot itself bring an infringement action. However, he may intervene in proceedings brought by the owner to claim compensation for its own loss (for example, loss of turnover due to counterfeiting).
When and where to act?
Infringement proceedings may be instituted as soon as the acts in question have been committed, but they may only be brought before the court ifafter publication registration of your design in the Bulletin Officiel de la Propriété Industrielle (BOPI). Before this publication, you can only take action if you can prove the bad faith of the alleged infringer (i.e. he knew of your as yet unpublished filing), as provided for in article L. 521-1 of the CPI.
Beware of time limits: civil action for infringement is time-barred by five years from the day on which the holder of the right knew or should have known of the last fact of infringement enabling it to bring its action (article L. 521-3 CPI). Criminal proceedings, on the other hand, are time-barred after six years. It is therefore important not to delay in taking action once an infringement has been discovered.
As regards the competent court, all civil actions relating to designs (infringement, invalidity, etc.) fall within the jurisdiction of the exclusive competence a limited number of courts of law designated by decree. At present, these are the courts of Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Strasbourg and Fort-de-France (article L. 521-3-1 CPI). So you can't take your case to just any court. The choice will generally depend on the defendant's domicile or the place where the acts of infringement were committed.
How do you prove counterfeiting?
This is the heart of the action. To win your case, you will have to show the court that the product or appearance used by the defendant infringes your registered design. Proof generally involves two steps:
- Proving your rights: You must prove that you are the owner of the right being invoked (by producing the certificate of registration).registration) and that this right is in force (filing published, extension fees paid, etc.).
- Proving attainment : You must show that the defendant's product reproduces the features protected by your registration. As we saw in the previous articleprotection covers not only identical reproduction, but also any appearance that "does not produce a different overall visual impression on the informed observer". (article L. 513-5 CPI). The comparison is therefore made between your design as registered and the allegedly infringing product, from the point of view of this informed user of the sector. You need to identify the similarities in the essential elements that give your design its distinctive character.
Proof can be provided by any means: comparison of products, catalogues, advertisements, testimonials, bailiff's reports, etc. But a specific tool is often very useful for establishing the facts: seizure of counterfeit goods.
Obtaining evidence: counterfeit seizure
Proving counterfeiting can be difficult, especially if the acts take place at the competitor's premises or if you lack information about the extent of the copying (quantities manufactured, distribution channels, etc.). Seizure for infringement is a procedure specific to intellectual property law, designed to help you gather this evidence even before you take legal action on the merits.
What is it?
Under Article L. 521-4 of the IPC, seizure of an infringing product allows you, after obtaining the company's permission, to seize the product.authorisation from the president of the judicial court (seised on application, i.e. without the adversary being notified), to appoint a bailiff to go to the premises of the alleged infringer (or any person holding infringing products: distributor, importer, etc.). The bailiff may then, depending on what the judge has authorised :
- Describe a detailed description of the allegedly infringing objects or processes.
- Carry out a real seizureThis means taking samples of the disputed products.
In the case of designs, actual seizure is generally limited to a few copies used as evidence, unlike in the case of copyright, where it can sometimes involve the entire stock.
Purpose and usefulness
The main objective is to constitute indisputable proof the existence and extent of the infringement. The report drawn up by the bailiff, together with the descriptions and any samples seized, will be a key part of your case at the trial on the merits. It may also reveal information about the origin of the products, quantities, suppliers, etc.
Conditions and risks
Counterfeit seizure is an intrusive measure, carried out without prior adversarial debate. It is therefore strictly regulated:
- Judicial authorisation required: You must submit a reasoned application to the president of the court, proving your rights (produce the registration certificate) and providing evidence that makes the infringement likely.
- Strict time limits for bringing an action on the merits : Once the seizure has been made, you have a very short period of time (twenty working days or thirty-one calendar days, whichever is longer) in which to summon the person from whom the seizure was made to appear before the court with jurisdiction over the merits of the case (infringement). If you fail to comply with this time limit, the seizure is null and void. automatically zero and can no longer be used as evidence.
- Seizure at your own risk: If the seizure ultimately proves to be unjustified (because the infringement is not recognised by the court, or because your own title is cancelled) or if it is carried out improperly, you may be ordered to compensate the person seized for the loss suffered. The judge may also require you to provide security before authorising the seizure.
Despite these constraints, infringement seizures remain an often decisive tool in the strategy for defending design rights.
Taking urgent action: temporary bans
Sometimes, counterfeiting causes immediate and significant damage, and waiting for the outcome of a trial on the merits (which can take months or even years) is not an option. This is the case, for example, if a competitor is preparing to launch a massive copy of your flagship product just before a major trade show. In such urgent situations, you can ask the judge to order interim measures.
When should it be used?
Article L. 521-6 of the Intellectual Property Code allows any person with standing to bring an infringement action to refer the matter to the presiding judge of the court hearing the case. referral (emergency procedure), to request any measure aimed at prevent imminent harm his rights or put a temporary stop to an attack that has already begun.
The procedure and possible measures
This is a fast-track procedure in which the judge makes a provisional decision after hearing both parties (except in exceptional circumstances justifying an order on application). To obtain these measures, you must provide evidence that likely the infringement of your rights. The judge does not have to rule on the substance of the dispute at this stage, but will assess whether the urgency and likelihood of the infringement justify immediate action.
If the judge deems the application to be well-founded, he or she may order, often subject to on-call duty (financial penalty per day of delay) :
- L'provisional prohibition prosecute acts of alleged counterfeiting (prohibition on manufacturing, selling, importing, etc.).
- La temporary seizure suspected counterfeit products to prevent them from entering or circulating in commercial channels.
- The creation of guarantees by the defendant to ensure that the claimant is compensated.
These measures are provisional and will have to be confirmed (or overturned) by the judgment on the merits. As in the case of seizure for counterfeiting, if you obtain provisional measures before going to court, you must do so within a strict time limit, failing which the measures will be annulled. The judge may also ask you to provide a guarantee to compensate the defendant if the measures prove to be unjustified.
Other useful tools
In addition to infringement proceedings, seizures and summary proceedings, there are other mechanisms that can help you defend your rights.
Customs detention
If you suspect that counterfeit products are likely to be imported into France (or exported), you can file a request for assistance with French (and/or European) customs services via EU Regulation 608/2013). On the basis of this request, if Customs intercept suspicious goods matching the description provided, they can remember and inform you of this (article L. 521-14 CPI).
You then have a short period (usually 10 working days) in which to take legal action (civil or criminal) and obtain a decision ordering the seizure or prohibition. Failing this, the withholding is lifted. This is a highly effective tool for blocking the flow of counterfeit goods across borders.
The right to information
Sometimes you know that a product is counterfeit, but you lack information about the extent of the network: who is the original manufacturer? Who are the distributors? What quantities have been sold? Article L. 521-5 of the IPC establishes a right to information.
At your request, the judge hearing the infringement action (on the merits or in summary proceedings) may order the defendantor even to third parties involved in the network (suppliers, carriers, distributors, etc.) who have relevant information, from provide documents or information on :
- The origin and distribution networks of counterfeit products.
- Quantities produced, marketed, received or ordered.
- The price obtained for these products.
This is an invaluable means of legal investigation to better determine the extent of the infringement and assess your loss.
Penalties for counterfeiting
If the court recognises the infringement, it will impose penalties on the person responsible. These penalties may be civil and/or criminal.
Civil penalties
Their main purpose is to put an end to the infringement and to repair the damage suffered by the right holder:
- Ban to prosecute acts of counterfeiting, often under penalty.
- Reminder commercial channels, or even destruction counterfeit products and the materials used in their manufacture.
- Forfeiture products to the benefit of the holder (sometimes).
- Allocation of damages to compensate for the entire loss. Article L. 521-7 of the CPI specifies that the judge must take into account separately :
- The negative economic consequences (the loss of income for the policyholder, the loss incurred).
- Le moral damage (damage to image, trivialisation of creation, etc.).
- The profits made by the infringer (including investment savings).
- Alternatively, the judge may award lump sum which cannot be less than the royalties that would have been payable if a licence had been granted.
- Publication of the judgment (at the infringer's expense), as an additional remedy and deterrent.
Criminal penalties
If the infringement has been committed intentionally ("knowingly"), it also constitutes a criminal offence (article L. 521-10 CPI). The penalties are severe:
- Up to three years' imprisonment.
- Up to 300,000 fine (amounts quintupled for legal entities).
These penalties can be lined in the event of a repeat offence or if the acts are committed by an organised gang. Other complementary penalties may be added, such as the temporary or permanent closure of the counterfeiter's establishment. The criminal route is often more dissuasive, but requires proof of the counterfeiter's guilty intent.
Sources
- Intellectual Property Code (CPI), Title II of Book V (Articles L. 521-1 to L. 521-14).
- Code of Civil Procedure (for rules of jurisdiction and procedure).
- Penal Code (for certain additional penalties).
- Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 on the enforcement by customs authorities of intellectual property rights.
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