What is this procedure for entering a competitor's premises to search for evidence of counterfeiting? Counterfeit seizure is a powerful and sometimes little-known procedural tool. Its implementation requires perfect mastery of its conditions, which may require the expertise of a lawyer specialising in enforcement procedures. It is the investigative tool of choice in intellectual property disputes, offering right holders the opportunity to establish proof of infringement.
1. The basis for an action for seizure of infringing goods
For a fundamental understanding of this procedureIt is essential to know how it is based. Counterfeit seizure is based on the right to evidence. The president of the court hearing the case may not refuse to issue an order authorising this procedure, provided that the application is for a description of the items suspected of being counterfeit.
A genuine right to evidence
Counterfeit seizure is based on the right to evidence. The president of the court to which the case is referred may not refuse to issue an order authorising this procedure, provided that the application contains a description of the items suspected of being counterfeit.
As the case law emphasises, the judge has "the power to set the conditions and scope of the seizure for counterfeiting, but not the power to refuse authorisation to carry it out which has been requested of him in the forms and with the justifications provided for by law" (Com. 22 June 1999, no. 97-12.699).
This non-adversarial procedure creates a surprise effect. The garnishee is not notified of his commitment, thus guaranteeing the effectiveness of the measure.
Strict operating conditions
The Paris Court of Appeal was able to require "a minimum number of documents" to justify such a request (CA Paris, 28 Jan 2014, RG no. 13/08128). However, this position runs counter to the raison d'être of this procedure, the very purpose of which is to gather evidence.
Recent case law confirms that it is not logical to require proof of infringement, since the purpose of the seizure is to obtain such proof (CA Paris, 16 May 2017 and 26 May 2017). Non-compliance with these strict conditions may, however, give rise to a right to contesting a counterfeit seizure by the garnishee.
2. Industrial property
Invocable titles
The title on which the claim is based determines the scope of the infringement seizure. During a procedure, it is impossible to target counterfeit products relating to other titles of the seizing party (CA Paris, 23 Sept. 1998).
The following are concerned:
- French or European patents
- Utility certificates
- Supplementary protection certificates
- French, Community or international trademarks
- Designs registered in France or abroad
- Geographical indications
- Plant variety certificates
- Topographies of semiconductor products
A foreign title may serve as a basis, pursuant to Article 31 of the Regulation of 22 December 2000 or Article 24 of the Brussels and Lugano Conventions.
Temporal validity of the title
The title must be in force at the time of the request.
"The applicant is required not only to produce the patent on which it relies, but also to show that this title is in force" (Com. 29 Jan. 2008).
In the case of an expired title, the Commercial Chamber ruled that an infringement seizure was not possible (Com. 14 Dec. 2010, no. 09-72.946).
Unpublished title applications
Where patent applications have not been published, an infringement seizure may still be carried out and the alleged infringer notified (TGI Paris, 28 June 1983 for patents; CA Colmar, 13 May 1994 for trademarks).
3. Literary and artistic property
No registration
Unlike industrial property, copyright does not require registration. The work is protected by the mere fact of its creation: "The author of a work of the mind enjoys, by the mere fact of its creation, an exclusive intangible property right in that work which is enforceable against all" (CPI, art. L. 111-1).
The author benefits from a presumption of authorship, belonging "to the person or persons under whose name the work is disclosed" (CPI, art. L. 113-1).
The condition of originality
A work is protected if it is original. Case law defines originality as the legal expression of the personal nature of the creation.
The evolution of this concept, particularly with digital creations, has led to software being considered as "a personalised effort going beyond the simple implementation of an automatic and constraining logic" (Cass. ass. plén., 7 March 1986, no. 83-10.477).
Rights that can be invoked
Infringement proceedings may be instituted:
- Economic rights (reproduction, representation)
- Moral rights
Prior to the Act of 11 March 2014, the application to artistic forgeries was debated. The Court of Cassation accepted the use of saisie-contrefaçon for a painting falsely signed at an auction (Civ. 1re, 18 July 2000, no. 98-15.851).
Once the conditions of eligibility for infringement seizure have been established, it is necessary to explore the essential procedural aspectsincluding jurisdictional rules and application requirements.
4. Parties to the seizure
The gripping
The claimant must have capacity and standing to sue. The rules are strict, with the result that the seizure is null and void (CPC, art. 118).
It must:
- Have the capacity to take legal action
- Prove that you are entitled to bring an infringement action
- Produce the intellectual property title relied on
If there is more than one claimant, it is sufficient for one of them to provide proof of title (CA Paris, 3 Apr. 2002).
The various holders of the right of action
May act:
- The title holder
- The co-owner (with notification to the others)
- The exclusive licensee (after formal notice from the licensee)
- The non-exclusive licensee (with the owner's consent)
- The creator of designs and models (moral rights)
Le saisi
It can be seized:
- The alleged counterfeiter
- A third party holding the suspect products
- A customer, supplier, carrier
- A person governed by public law
Seizures can be carried out at any useful location: offices, factories, warehouses, storage facilities, shops, trade fairs, exhibitions, or even at the seizor's own premises.
It may take place without the distrainee being present. The seized person's statements may be entered in the bailiff's report, but there is no obligation to do so.
Sources
- Intellectual Property Code: articles L.111-1, L.113-1, 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 114, 118
- Court of Cassation, Commercial Division, 22 June 1999, No. 97-12.699
- Court of Cassation, Commercial Division, 29 January 2008, Bulletin civil IV, No. 18
- Court of Cassation, Commercial Division, 14 December 2010, No. 09-72.946
- Court of Cassation, Full Court, 7 March 1986, no. 83-10.477
- Court of Cassation, 1st Civil Division, 18 July 2000, No. 98-15.851
- Paris Court of Appeal, 28 January 2014, RG no. 13/08128
- Paris Court of Appeal, 16 May 2017, RG no. 15/15766
- Paris Court of Appeal, 26 May 2017, RG no. 15/10201
- Tribunal de grande instance de Paris, 28 June 1983, PIBD 1983, No. 336
- Colmar Court of Appeal, 13 May 1994, Ann. propr. ind. 1995
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