A counterfeit seizure is only a preliminary step in the process. combating counterfeiting. This procedure, which enables evidence to be gathered, must be followed by an action on the merits. The legislator has strictly circumscribed this obligation in order to avoid any abuse.
The obligation to appeal on the merits
Strict deadlines to be met
The Intellectual Property Code imposes specific time limits. The action on the merits must be brought within "twenty working days or thirty-one calendar days, whichever is the longer, from the day on which the entry or description "(art. R. 332-2, R. 332-3, R. 332-4, R. 343-1, R. 521-4, R. 615-3, R. 716-4 and R. 722-4 of the CPI).
This period has undergone several changes. Initially set at eight days, it was increased to fifteen days in 1969, then to the current time limits in 2008. Note this particularity: for plant breeders' rights, the time limit runs from "the date of the order" and not from the seizure (art. R. 623-50-1 of the CPI).
The calculation is made from the day of the seizure report, with the period starting the day after the operations.
Forms of action
- Issuing a summons
- A quote
- A civil party complaint
The Criminal Division of the Court of Cassation upheld the latter approach in a ruling dated 29 February 2000 (no. 99-82.048).
The summons alone is sufficient, without the need to denounce the infringement seizure, although this is common practice.
A technical point that is often overlooked: if an order authorises several seizures to be carried out on different dates, each requires a specific time limit for appealing (Com. 3 June 2003, no. 01-14.214).
Infringement seizure in the course of proceedings
Sometimes a counterfeit seizure is carried out after the action on the merits has been brought. In this case, there is no need for a new writ of summons.
The Commercial Chamber clearly established this in a judgment of 26 October 1993 (no. 91-18.049). However, a more recent ruling (Com. 26 March 2008, no. 05-19.782) specifies that, where a court has already been seised, the application for seizure of counterfeit goods must be submitted to the judge in charge of the case, in accordance with article 812, paragraph 3 of the Code of Civil Procedure.
Consequences of failure to bring an action on the merits
Nullity of the seizure
Failure to comply with the duty to act on the merits has radical consequences.
All the texts of the Intellectual Property Code are unanimous: "If the applicant fails to take civil or criminal action on the merits within a period set by regulation, the entire seizure, including the description, shall be annulled. at the request of the garnisheeThis is without prejudice to any damages that may be claimed. (art. L. 332-4, L. 521-4, L. 615-5, L. 623-27-1, L. 716-4-7, L. 722-4 of the CPI).
This nullity is applied simply by noting the absence of a writ of summons or failure to comply with the time limit. The distrainee does not have to prove the existence of a grievance (Com. 3 June 2003, no. 01-14.214).
In a recent ruling (Civ. 1re, 26 May 2011, no. 10-14.495), the Cour de cassation specified that this substantive nullity is not subject to proof of a grievance.
A special regime for databases
A hybrid system remains for databases. Article L. 343-1 of the IPC refers to articles L. 332-2 and L. 332-3. While the latter provides for invalidity in the absence of action on the merits, the former leaves open the possibility of release.
This ambiguity stems from a gap in the texts and creates an uncertain legal situation for holders of database rights.
Confidentiality of the information gathered
Protection of confidential information
A counterfeit seizure may reveal confidential information. This sensitive issue is balanced by case law.
The TRIPS Agreement (art. 39) provides that "Members shall protect undisclosed information" and sets out the criteria for trade secrecy. However, this confidentiality cannot prevent the seizure of counterfeit goods.
The tribunal de grande instance de Lyon has clearly established (TGI Lyon, ref., 24 Nov. 1988) that the bailiff may seize and describe confidential items.
Judicial preservation measures
- An agreement between the parties (Lyon, 23 Sept. 1999)
- Storage in sealed envelopes (Paris, 16 Jan. 1998)
- Involvement of an expert to sort documents (TGI Paris, 6 Dec. 1996)
Law 2018-670 of 30 July 2018 on the protection of business secrecy has clarified the situation. If this secrecy is not enforceable against the judicial authorities (C. com., art. L. 151-7), the seized item may be requested to be placed under seal.
The special case of defence secrecy
Article L. 615-10, paragraph 2 of the IPC requires the bailiff to "suspend the seizure, description and any search of the company's archives and documents, if the design or manufacturing contract includes a defence security classification".
The Court of Cassation confirmed this (Civ. 1re, 21 March 2006, no. 05-13.302): the bailiff must postpone operations if the seized party proves that he has defence confidentiality clearance.
The fate of seized assets
Preservation of evidence
The fate of seized goods varies according to the situation. Generally, the bailiff keeps the samples under seal (Com. 19 Nov. 2002, no. 00-15.203).
It is common practice to take two samples: one kept by the bailiff, the other given to the applicant. However, this must be expressly authorised by the order (TGI Évreux, 19 June 1998).
Return or destruction
If there is no evidence of counterfeiting, the goods seized may be returned, even if the price has been paid.
However, if counterfeiting is established, the goods become the property of the applicant and may be destroyed.
The evidential value of the seizure report remains essential. This authentic document is authentic until it is forged (Nancy, 12 March 1991) and can be used in any subsequent litigation, including to establish damages (TGI Paris, 30 Apr. 1997).
Sources
- Intellectual Property Code: Articles L. 332-1 to L. 332-4, L. 343-1, L. 521-4, L. 615-5, L. 623-27-1, L. 716-4-7, L. 722-4, R. 332-2, R. 332-3, R. 332-4, R. 343-1, R. 521-4, R. 615-3, R. 716-4, R. 722-4, R. 623-50-1 and L. 615-10.
- Court of Cassation, Commercial Division, 3 June 2003, No. 01-14.214
- Court of Cassation, Criminal Division, 29 February 2000, No. 99-82.048
- Court of Cassation, Commercial Division, 26 October 1993, No. 91-18.049
- Court of Cassation, Commercial Division, 26 March 2008, No. 05-19.782
- Court of Cassation, 1st Civil Division, 26 May 2011, no. 10-14.495
- Court of Cassation, 1st Civil Division, 21 March 2006, no. 05-13.302
- Tribunal de grande instance de Lyon, summary proceedings, 24 November 1988
- Law No. 2018-670 of 30 July 2018 on the protection of business secrecy
- TRIPS Agreement, Article 39
- Xavier DAVERAT, "Saisie-contrefaçon", Répertoire de procédure civile, March 2020
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