Counterfeit seizure is a particularly intrusive evidentiary procedure. It makes it possible to obtain proof of infringement, but its non-adversarial nature can lead to abuse. What remedies are available to challenge these measures? How can you react effectively when you are targeted by this procedure, in particular with the help of a lawyer? lawyer specialising in enforcement procedures?
Actions relating to the application
Appeal by the claimant
The Code of Civil Procedure provides a first avenue of appeal for dissatisfied claimants. According to article 496, paragraph 1, "if the request is not granted, an appeal may be lodged". The time limit for lodging an appeal is fifteen days from the day on which the order is made.
This procedure applies only to applicants whose initial request for an infringement seizure is refused in whole or in part. The appeal is lodged, investigated and judged in the same way as in non-contentious matters.
Withdrawal on the initiative of the distrainee
For the seized party, the main recourse remains the summary procedure, which enables the order to be challenged on the basis of the procedural requirements of the application. Article 496, paragraph 2 of the Code of Civil Procedure allows "any person who has an interest therein" to apply to the judge who granted the application to challenge the order.
This procedure is remarkably flexible: it is not subject to any particular time limit under the ordinary law. The Court of Cassation has confirmed this in several rulings, including that of the Commercial Chamber on 7 June 1994 (no. 92-15.108).
The garnishee can ask the judge to:
- Modifying the order
- Partially or fully retract it
- Limiting the scope of measures ordered
The case law is clear: the judge hearing the application has the same powers as the person making the order (Civ. 2e, 9 July 1997, no. 95-12.580).
The special case of literary and artistic property
In the area of literary and artistic property, Article L. 332-2 of the French Intellectual Property Code provides for a specific mechanism. The distrainee may request that the seizure be released or confined within a period of "twenty working days or thirty-one calendar days".
A notable decision (Civ. 1re, 21 May 1990, no. 88-19.469) specified that this period runs from the date of the official report, without the need for notification.
Appeals concerning performance
Challenging the conditions of the bailiff's intervention
The intervention of the bailiff, essential to theexecution of the infringement seizuremust comply strictly with the terms of the order. Any excess is grounds for nullity.
Case law requires a "strict interpretation of the authorisation to carry out a counterfeit seizure" (Paris, 25 Nov. 2009, RG no. 09/02848). For example, the bailiff cannot:
- Enter more copies than expected
- Extending its mission to other products
- Interviewing the garnishee
- Taking photographs without authorisation
Similarly, a purely formal defect such as failure to identify the claimant or the absence of the bailiff's signature may result in nullity.
Forgery of the official report
The seizure report is authentic until proven otherwise. If you wish to challenge its content directly, the only way to do so is by means of the forgery registration procedure (articles 303 et seq. of the Code of Civil Procedure).
The purpose of this procedure is to call into question the probative value of the official report, particularly when it contains elements that could not be observed by the bailiff. As the Paris Court of Appeal pointed out in a ruling dated 15 January 2014 (RG no. 12/09291), only a forgery entry can call into question the integrity of the minutes.
Invalidity on grounds of form or substance
The court hearing the case on the merits may declare the seizure null and void on various grounds. This request constitutes a defence on the merits, as stated by the Court of Cassation (Com. 29 March 2011, no. 09-16.330).
As a result:
- It can be raised for the first time on appeal
- It does not have to be presented in limine litis
- It falls within the jurisdiction of the court hearing the merits of the case and not the interim relief judge.
According to the Commercial Chamber (19 January 2010, no. 08-18.732), the plea of nullity of an infringement seizure does not constitute a procedural objection.
Remedies relating to the substantive action
Nullity for lack of action
The lack ofaction on the merits within the prescribed period shall render the seizure null and void.
The texts are explicit: "if the applicant fails to lodge an appeal on the merits […] the seizure in its entirety, including the description, shall be cancelled at the applicant's request" (Articles L. 332-4, L. 521-4, L. 615-5, L. 623-27-1, L. 716-4-7 and L. 722-4 of the French Intellectual Property Code).
The time limit for taking action is "twenty working days or thirty-one calendar days, whichever is longer" from the date of seizure. Failure to comply with this time limit is severely sanctioned, without the distrainee having to demonstrate the existence of a grievance (Com. 3 June 2003, no. 01-14.214).
The Court of Cassation has ruled that a plea alleging failure to bring an action on the merits is a substantive nullity, the pronouncement of which is not subject to proof of a grievance (Civ. 1re, 26 May 2011, no. 10-14.495).
Initiation of new measures after cancellation
The cancellation of an infringement seizure does not prevent the holder of the private right from having a new measure carried out. The Commercial Chamber made this clear in its decision of 8 July 2008 (no. 07-15.075): the repetition of a cancelled seizure does not in itself constitute abuse.
Furthermore, the cancellation of an infringement seizure does not prevent the infringement action from succeeding if other evidence is produced (Paris, 10 September 2008, RG no. 07/17462).
Claim for damages
The distrainee may claim damages in the event of abuse in the exercise of the infringement seizure.
In one notable case, the Court of Cassation upheld the award of damages where the distrainor had carried out a seizure in the knowledge that he had not registered his design (Com. 10 January 1995, no. 92-17.616).
Similarly, in a case where the bailiff had revealed confidential information, the court awarded €20,000 in damages to the garnishee (TGI Paris, 7 January 2009, RG no. 08/00116).
Strategies for defending against an infringement seizure
Immediate reaction
The first reaction should be to check meticulously:
- Service of the order before the start of operations
- Respecting the reasonable period between service and commencement of operations
- Precise identification of the persons accompanying the bailiff
- Strict limitation of transactions under the terms of the Order
The minutes must state the time of service and the time of commencement of operations. By comparing them, it is possible to assess whether a "reasonable time" has been respected.
Protection of confidential information
If confidential information is at stake, the person to whom the information has been seized must do so immediately:
- Request that seized items be placed under seal
- Request the appointment of an expert to sort the documents
- If necessary, invoke Law No. 2018-670 of 30 July 2018 on the protection of business secrecy
Case law recognises that "the confidential nature of the documents seized does not mean that their examination is not subject to the adversarial principle, even if this principle must be adapted" (TGI Paris, 31 October 2000).
Challenge on the merits
If substantial flaws appear, the strategy can be targeted:
- An application for immediate withdrawal before the interim relief judge
- A challenge before the court hearing the case on the grounds that the applicant has no rights
- An action for damages in the event of gross abuse
A landmark ruling by the Court of Cassation (Civ. 1re, 25 January 2017, no. 15-25.210) invalidated a purchase report made by the trainee of the distrainor's law firm for breach of the principle of fairness in the taking of evidence.
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 114, 303, 496, 497
- Court of Cassation, Commercial Division, 8 July 2008, No. 07-15.075
- Court of Cassation, 1st Civil Chamber, 26 May 2011, no. 10-14.495
- Court of Cassation, Commercial Division, 19 January 2010, no. 08-18.732
- Court of Cassation, 1st Civil Chamber, 25 January 2017, no. 15-25.210
- Court of Cassation, 2nd Civil Division, 9 July 1997, no. 95-12.580
- Paris Court of Appeal, 25 November 2009, RG no. 09/02848
- Tribunal de grande instance de Paris, 7 January 2009, RG no. 08/00116
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