Every year, counterfeiting costs the French economy between 6 and 8 billion euros. To combat this scourge, intellectual property rights holders have a number of tools at their disposal. powerful procedural tool the seizure of counterfeit goods. Although little known to the general public, this procedure is one of the most effective weapons in the legal arsenal for protecting intellectual property rights.
What is a counterfeit seizure?
Legal definition
Seizure for infringement is an investigative measure carried out for evidentiary purposes, with the aim of obtaining proof of infringement. According to the Répertoire de procédure civile compiled by Xavier Daverat, it is a "precautionary measure that may be taken before or at the same time as an infringement action" (CPI, art. L. 332-1, art. L. 615-5, art. L. 716-4-7).
This procedure enables the rights holder to collect evidence of infringement through a bailiff authorised by court order. However, its implementation is subject to strict legal conditions.
Optional but effective
Seizure for infringement is not compulsory. An infringement action may be brought directly before the courts without prior recourse to this procedure (Com. 14 Dec. 2010, no. 09-72.946). However, its practicality and effectiveness make it a valuable tool.
It offers considerable scope for investigation:
- Entering private premises
- Physical apprehension of suspected assets
- Detailed description of counterfeit items
- Access to documents held by the alleged infringer
Exorbitant nature of ordinary law
Seizure for counterfeiting is an exceptional procedure. It authorises the bailiff to enter private premises, search for evidence and seize goods without prior adversarial debate (Paris, 4 Apr. 1991).
This absence of contradiction, a key element in the effectiveness of the procedure, is enshrined in the TRIPS Agreement (art. 50). On the other hand, the procedure is strictly regulated, particularly with regard to the preparation of bailiff's reports and the application of the order authorising seizure.
Case law also punishes "disguised infringement seizures" (Civ. 1re, 28 Nov. 2012, no. 11-20.531).
Proof of infringement
The diversity of means of proof
Proof of infringement can be provided by any means, as explicitly stated in several articles of the Intellectual Property Code (CPI, art. L. 332-1, art. L. 343-1, art. L. 521-4, art. L. 615-5, art. L. 716-4-7).
The most common ways to do this include
- Declarations to the bailiff (Paris, 29 Jan. 2003)
- Bailiff's reports (Crim. 6 Dec. 1993, no. 89-86.591)
- Warrant findings in a supermarket (Aix-en-Provence, 15 Dec. 2000)
- Findings at trade fairs (TGI Paris, 8 May 1973)
- Findings on the Internet
- Reports drawn up by sworn agents of rights collection and distribution companies (TGI Toulouse, 11 May 2000)
Objects and invoices (Aix-en-Provence, 19 May 2004) or certificates (Paris, 1 Oct. 1997) may also be produced.
The place of counterfeit seizures in the evidentiary arsenal
Counterfeit seizure offers considerable advantages over other means of evidence. It allows access to private premises, detailed examination of suspect products and the collection of commercial or technical documents that are often otherwise inaccessible.
The seizure and counterfeiting report has considerable evidential value, as it was drawn up by a ministerial official. Its contents are authentic until a false entry is made (Com. 4 Jan. 1984).
This evidential weight explains why, despite its optional nature, seizure remains the preferred method of establishing infringement. Its implementation requires the preparing a formal application to the judge.
Alternatives to counterfeit seizures
Alternative procedures exist, such as the in futurum investigative measures provided for in article 145 of the Code of Civil Procedure.
The plaintiff may request "on application or in summary proceedings" various evidentiary measures if there is "a legitimate reason to preserve or establish before any trial proof of facts on which the resolution of a dispute may depend".
Case law has confirmed that these measures can be applied to intellectual property (Lyon, 10 May 2011).
However, this route has one major drawback: the procedure is adversarial, which means that it loses the element of surprise inherent in counterfeit seizures.
Legislative developments in counterfeit seizures
History of the procedure
The very concept of "saisie-contrefaçon", introduced by P. Roubier, has its roots in ancient texts. The decree of 31 December 1790 and 7 January 1791 already made it possible to "request the seizure of counterfeit objects" in order to bring counterfeiters to justice.
The Act of 5 July 1844 then set up a system similar to the current saisie-contrefaçon (seizure for infringement), giving a patent owner the possibility of obtaining, by presidential order, a description and possibly a seizure of suspected infringing elements.
Laws no. 68-1 of 2 January 1968, no. 90-1052 of 2 November 1990 and no. 92-597 of 1 July 1992 have gradually modernised this system.
Recent reforms (2007 and 2014 laws)
Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights requires Member States to take measures to ensure the protection of intellectual property rights. measures for preserving evidence infringement of these rights.
Law no. 2007-1544 of 29 October 2007 on combating counterfeiting transposed this directive into French law. Decree no. 2008-624 of 27 June 2008 set out the implementation procedures.
More recently, Law 2014-315 of 11 March 2014 strengthened the system, harmonising procedures between literary and artistic property on the one hand, and industrial and commercial property on the other.
Harmonisation within intellectual property
The 2014 law standardised the rules applicable to infringement seizures by bringing those specific to literary and artistic property closer to those applicable to industrial property.
An initial harmonisation of industrial property rights was undertaken by the 2007 law, with identical articles for patents, trademarks, designs and plant variety certificates (CPI, art. L. 521-4, art. L. 615-5, art. L. 623-27-1 and art. L. 716-7).
The texts applicable to literary and artistic property were still distinct, despite a rapprochement concerning software and databases (CPI, art. 332-4 and art. 343-1). Articles L. 332-1, L. 343-1, L. 521-4, L. 615-5, L. 623-37-1 and L. 716-7 of the CPI now contain identical provisions.
The right to information and other complementary measures
The right to information
Introduced by the 2007 law, the right to information allows the plaintiff to obtain, by court order, various documents or information held by the defendant or third parties involved in the infringement (CPI, art. L. 331-1-2, art. L. 521-5, art. L. 615-5-2, art. L. 623-27-2, art. L. 716-4-9, art. L. 722-5).
Case law has clarified its scope. The Court of Cassation has endorsed a broad interpretation: "The court hearing an infringement action on the merits may order the production of information and items, of a commercial or accounting nature, likely to make it possible to determine the origin and extent of the infringement" (Com. 8 Oct. 2013, no. 12-23.349).
The 2014 Act clarified that the right to information can be exercised prior to a decision on the merits.
Investigative measures
Investigative measures may supplement or replace the seizure for infringement. According to provisions added to all the articles relating to procedure, "the court may order, of its own motion or at the request of any person having standing to bring an infringement action, all legally admissible investigative measures even if a seizure for infringement has not previously been ordered" (CPI, art. L. 716-4-8).
These provisions, which are present in all areas of intellectual property (CPI, art. L. 332-1-1, art. L. 343-1-1, art. L. 521-4-1, art. L. 615-5-1-1, art. L. 623-27-1-1 and art. L. 722-4-1), transpose the possibility of requesting the production of evidence provided for in article 142 of the Code of Civil Procedure.
Customs intervention
Customs detention is an effective complement to counterfeit seizure. The law of 11 March 2014 strengthened the customs authorities' means of action, in particular by allowing "coup d'achat" (acquisition of counterfeit goods) and access to the premises of postal service providers and express freight companies.
Such detention may operate in parallel with a counterfeit seizure. However, if the customs detention is released, the information obtained may only be used in the context of a counterfeit seizure if the latter has been the subject of a request prior to release (Com. 18 Dec. 2019, no. 18-10.272).
Sources
- Intellectual Property Code: Articles L. 332-1, L. 343-1, L. 521-4, L. 615-5, L. 716-4-7
- Répertoire de procédure civile, "Saisie-contrefaçon", Xavier DAVERAT (March 2020)
- Court of Cassation, Commercial Division, 14 December 2010, No. 09-72.946
- Paris Court of Appeal, 4 April 1991
- TRIPS Agreement of 15 December 1993, Article 50
- Court of Cassation, 1st Civil Chamber, 28 November 2012, no. 11-20.531
- Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights
- Law no. 2007-1544 of 29 October 2007 to combat counterfeiting
- Law 2014-315 of 11 March 2014 strengthening the fight against counterfeiting
- Court of Cassation, Commercial Division, 8 October 2013, no. 12-23.349
- Court of Cassation, Commercial Division, 18 December 2019, no. 18-10.272
EN 
FR