Written commercial agreement

Significant imbalance

Sudden termination of established relationships

Competition investigation – French law

Civil competition action

French competition law

Competition investigation – European law

European competition law

Vertical restraints

Distribution law

Liability for defective products

Consumer law

Prohibition of measures having equivalent effect

European business law

Corruption

Compliance

Economic law

Shareholders' agreements

Removal of company directors

Abuse of voting rights

Companies

Action for infringement (counterfeiting)

Rights conferred by the trademark

Patentability

Industrial property

Commercial rent review

Renewal of the commercial lease

Despecialization (change of use)

Commercial leases

Reform of contract law

Reform of the law of special contracts

Preliminary sales agreement

Obligation to deliver goods in conformity

Classification of the contract for services (contrat d'entreprise)

Effects of the agency agreement with respect to third parties

Business contracts

Ongoing contracts

Recovery claims

Court-approved transfer plan

Bankruptcy proceedings

Personal data breaches

White collar crime

Commercial law

500 Questions - Business Law

Civil infringement actions follow both the ordinary law rules of civil procedure and the special rules related to intellectual property law. The plaintiff in the infringement action must establish, in accordance with Article 31 of the Code of Civil Procedure, an interest in bringing proceedings , but also hold intellectual property rights over the subject matter of the act of infringement.

The ac …

What are the conditions for exercising a civil action for infringement?

Counterfeiting (contrefaçon) is defined as any infringement on a trademark, patent, or design that results from non-compliance with the usage prohibitions set by the Intellectual Property Code. It entails either civil liability or the liability of its perpetrator.

What is meant by counterfeiting?

The holder of a trademark may prohibit any use of a sign by a third party that would infringe on their property right (Art. L. 713-2 to L. 713-3-4 IP Code). An infringement of the holder's rights to their trademark is characterized by any use without their consent, by a third party, in the course of trade, for goods or services:

of a sign identical to the trademark and used for products or services identical to those for which the trademark is registered;

of a sign identical or similar to the trademark for products or services identical or similar to those for which the trademark is registered, if there is a likelihood of confusion in the public's mind between the sign and the trademark, including the risk of association;

of a sign identical or similar to a trademark with a reputation and used for products or services identical, similar, or dissimilar to those for which the trademark is registered, if this use of the sign, without just cause, unduly takes advantage of the distinctive character or the reputation of the trademark, or is detrimental to them.

Article L. 713-3-1 of the IP Code also provides an illustrative list of prohibited uses when they are made without the consent of the trademark owner:

the affixing of a sign on a product or its packaging (Article L. 713-3-1, 1° IP Code) ;

the offering, marketing, or holding of products under the sign, or the offering or provision of services under the sign (Article L. 713-3-1, 2° IP Code);

the import or export of products under the sign (Article L. 713-3-1, 3° IP Code) ;

the use of the sign as a trade name or company name or as part of a trade name or company name (Article L. 713-3-1, 4° IP Code), in commercial documents and advertisements (Article L. 713-3-1, 5° IP Code), or in comparative advertisements in violation of the provisions of Articles L. 122-1 to L. 122-7 of the Consumer Code (Article L. 713-3-1, 6° IP Code);

the removal or modification of a regularly affixed trademark (Article L. 713-3-1, 7°) .

These acts and practices are prohibited even if they are accompanied by words such as: “formula, way, system, imitation, type, method.” Usage in business life implies a commercial activity aimed at an economic advantage, which notably excludes usage in the private sphere. The concept of usage also refers to the use of the trademark by a third party for their own account. It is irrelevant whether they are in good faith.

The use must generate a risk of confusion or association in the public's mind. The use of the sign must indeed harm its essential function, which is to guarantee consumers the origin of the product or service. There must be a visual, auditory, or conceptual similarity likely to create a connection and an impression of analogy or lead the consumer to believe that the contested sign is a variation or adaptation of the earlier trademark. The products or services in question must also be identical or similar to those for which the trademark is registered. When the use concerns a well-known trademark, these identities or similarities are not, by exception, required to establish the harm caused by such use. It is sufficient to establish that, without confusing them, the relevant public makes a connection between the signs in question and that the user unduly benefits from it due to their parasitic behavior.

The holder of a trademark cannot, however, prohibit the use, in the course of trade, in accordance with honest practices in industrial or commercial matters:

of the surname or address of a third party natural person;

of signs or terms devoid of distinctive character or relating to the type, quality, quantity, purpose, value, geographical origin, time of production of the product or service, or other characteristics thereof;

of its trademark to designate or refer to products or services as being its own, particularly when such use is necessary to indicate the intended purpose of the product or service, especially as an ancillary or spare part;

of a trade name, a business sign, or a domain name, of local scope, when such use predates the date of the trademark registration application and is exercised within the limits of the territory where they are recognized.

Advice: Verify the existence of a prior trademark.

The exclusive right of the proprietor over their trademark, which is real and absolute, allows them to take action throughout the entire French territory against anyone who infringes upon it.

For the affixing of a sign to constitute a reproduction of the trademark, it must infringe upon its functions, particularly the guarantee of origin or quality.

CA Paris, 31 October 2008, LawLex202200000119JBJ.

When the marketing of a product bearing a trademark registered in France has taken place in a country outside the European Union, the use of the trademark in France without the authorization of its holder is prohibited.

Cass. com., 2 December 1997, LawLex200200004500JBJ.

By scraping off batch codes on marketed products, distributors commit acts of infringement, as the trademark holder can no longer ensure the functions of guarantee, authenticity, and quality of the trademark to consumers.

Cass. com., 24 November 2009, LawLex202200002457JBJ.

Which uses of the mark can the proprietor of the trademark challenge?

Any infringement on the rights of a patent owner constitutes an infringement that incurs civil liability (Art. L. 615-1 IP Code). The following are prohibited, without the consent of the patent owner:

the manufacture, offering, placing on the market, use, importation, exportation, transshipment, or possession for the aforementioned purposes of the patented product;

the use of a process that is the subject of the patent or, when the third party knows or when the circumstances make it obvious that the use of the process is prohibited without the consent of the patent owner, the offer of its use on French territory;

the offering, placing on the market, use, importation, exportation, transshipment, or possession for the aforementioned purposes of the product obtained directly by the process that is the subject of the patent.

It is also prohibited, without the consent of the patent owner, to deliver or offer to deliver, within the French territory, to any person other than those authorized to exploit the patented invention, means for implementing, within that territory, the invention relating to an essential element thereof, where the third party knows or where the circumstances make it evident that such means are suitable and intended for such implementation. These acts constitute independent acts of infringement, punishable regardless of the subsequent implementation of the invention .

The infringement occurs by the reproduction of the essential elements of the protected claim , identically or by equivalent . It is sufficient that the infringing product reproduces all the claimed characteristics . Differences in structures between the subject matter of the invention and the disputed product , characteristics not present in the patent claims , or simple additions, even improvements, to the essential characteristics of a claim , do not preclude infringement. Partial infringement may be upheld .

Certain acts do not fall under the classification of infringement, even if they are carried out without the authorization of the patent holder. Article L. 613-5 provides an exhaustive list:

acts carried out in a private capacity and for non-commercial purposes;

acts carried out on an experimental basis that relate to the subject matter of the patented invention;

the preparation of medicines made extemporaneously and per unit in pharmacies, on medical prescription, and the acts concerning the medicines thus prepared;

the studies and tests required for obtaining marketing authorization for a drug, as well as the actions necessary for their execution and obtaining the authorization;

the acts necessary to obtain the advertising visa mentioned in Article L. 5122-9 of the Public Health Code;

objects intended to be launched into outer space introduced into French territory.

Advice: Ensure that the patent is not already being exploited.

The proprietor has an exclusive right of first commercialization to reward their inventive effort, which allows them to authorize or prohibit third parties, within the territory for which the patent was granted and for the statutory term of protection, from engaging in the acts of exploitation exhaustively listed in these provisions.

Is prohibited, without the consent of the patent owner, the delivery or offer of delivery, on French territory, to a person other than those authorized to exploit the patented invention, of the means of implementing, on this territory, this invention relating to an essential element thereof, when the third party knows or when the circumstances make it obvious that these means are suitable and intended for this implementation.

CA Paris, 14 April 2015, LawLex202300001398JBJ.

“Counterfeiting” (contrefaçon) is characterized by the reproduction of the installation subject to the claim, even if the different components of the patented installation are held and used by different persons, as long as they act in concert and pursue the common objective of achieving the result promised by the invention.

CA Paris, 19 September 2012, LawLex202300005108JBJ.

A process that is analyzed as an improvement of the protected invention without having any function other than that of the patent constitutes a reproduction of the essential means of the invention.

Cass. com., 24 September 2002, LawLex202300005996JBJ.

As soon as a patent claim concerns a process that necessarily involves four successive steps, including an essential step, infringement can only be constituted if these four steps are reproduced.

Cass. com., 3 April 2012, LawLex202300005100JBJ.

A device that aims to protect the same functions as those protected by a patent, whose claims are found in its elements, is infringing in nature despite structural differences.

Cass. com., 15 July 1987, LawLex202300005097JBJ.

The device that reproduces the characteristics of the patent constitutes an infringement even if it includes a different technical element, as long as this characteristic is not among the claims of the filed patent.

Cass. com., 21 March 2000, LawLex202200003685JBJ.

The reproduction of the essential characteristics of a patent claim, with mere additions or even improvements that only constitute methods of implementing the means of the invention, characterizes patent infringement.

Cass. com., 6 November 2012, LawLex202300005184JBJ.

A partial infringement may result from the implementation of the features claimed in one of the patent claims.

Cass. com., 28 April 1987, LawLex202300005113JBJ.

What infringements of the rights conferred by the patent can justify an action for infringement?

The property right conferred on the holder of the design or model by its registration allows them to prohibit any third party from using it without their consent. Article L. 513-4 of the Intellectual Property Code provides a non-exhaustive list of acts to which the owner of the design or model may object:

the use, or possession for these purposes, of a product incorporating the design or model.

Counterfeiting may consist of the slavish or quasi-slavish reproduction of the design or model, that is, the identical reproduction of the shape of the model , even if the disputed design or model does not reproduce its size or material . It is assessed exclusively with regard to the protected characteristics based on similarities and not on differences. It is constituted when a design or model incorporates the essential characteristic elements of the protected model, and from the perspective of the informed observer, the overall visual impression of the compared models is not different . The use of a design or model may be prohibited by its holder even if done in good faith, as good faith is irrelevant in civil matters for characterizing counterfeiting .

Advice: Ensure that the owner of the design has consented to its use.

The owner's consent to the use of their design is not subject to any specific formalities, which distinguishes it from the formal consent required under copyright law by Article L. 131-3 of the Intellectual Property Code.

The manufacture of a protected design without the proprietor’s authorization constitutes an act of infringement, regardless of any subsequent use. This also applies to the manufacture of a fabric, even on a trial basis.

CA Paris, 27 October 2004, LawLex202100004671JBJ.

A purchasing center commits an act of  infringement by listing a counterfeit product, since, through its role as an intermediary between the supplier and the distributor, it offers the selected goods for sale and plays a key role in their marketing by facilitating it.

CA Montpellier, 8 March 1994, LawLex200200004921JBJ., upheld by Cass. com., 27 February 1996, LawLex200200004915JBJ.

If implicated, the importer of a design or model can only be exempted from the consequences of infringement by demonstrating that they have gathered all the information allowing them to avoid the risk of infringing a pre-existing design or model.

Cass. com., 16 June 1992, No 90-20.741, LawLex202200001843JBJ.

Counterfeiting of a model is constituted for car parts if they identically reproduce the original characteristics of the registered models without the authorization of the holders.

CA Paris, 13 March 2012, No 10/10923, LawLex202200007794JBJ.

When two jewelry models are identical in their shapes, differing only in size and material, there is counterfeiting by imitation.

CA Aix-en-Provence, 5 April 2018, LawLex202200001837JBJ.

A court of appeal cannot uphold the infringement of a wine glass design by determining based on the common visual impression produced by the stems of the models in question when it should have assessed whether the overall visual impression produced by the disputed glasses was identical to or different from that of the registered design.

Cass. com., 23 June 2021, LawLex202100004062JBJ.

Counterfeiting exists independently of any concept of good or bad faith of the counterfeiter.

Cass. 1re civ., 11 December 2001, LawLex202100002721JBJ.

What acts are prohibited regarding designs and models?

Acts of infringement constituting offenses for which the holder of a trademark right has an action for infringement before the criminal courts are listed in Articles L. 716-9 to L. 716-11 of the Intellectual Property Code, which essentially reiterate the prohibited uses referred to in Articles L. 713-2 et seq. of the same code that entitle the victim of the infringement to compensation. They require a material and intentional element.

Thus, Article L. 716-9 of the Intellectual Property Code penalizes the follwing acts if committed with the intent to sell, supply, offer for sale, or rent goods bearing a counterfeit trademark:

the importing, exporting, re-exporting, or transshipment of goods bearing a counterfeit trademark,

manufacturing goods bearing a trademark on an industrial scale.

In addition, the following acts are punishable under criminal law only: the substitution of goods or services (Art. L. 716-10, para. 1(d) IP Code), and the giving of orders for the manufacture or importation of counterfeit goods or services (Art. L. 716-9, para. 1(c) IP Code).

What are the constituent elements of the offense of trademark infringement?

Knowingly infringing patent rights, as defined in Articles L. 613-3 to L. 613-6 of the Intellectual Property Code, such as the manufacture, offering, marketing, use, importation, exportation, transshipment, or possession for the aforementioned purposes of the patented product (Article L. 613-3, a, Intellectual Property Code), incurs the criminal liability of the infringer based on Article L. 615-14 of the Intellectual Property Code.

The following are also criminal offenses:

unduly claiming the status of owner of a patent or a patent application;

breach of confidentiality of the patent application before the publication of the patent application;

violation of the rules of competence of the offices for the initial international or European filing, as well as the violation of the confidentiality rules of the invention subject to the filing;

What are the constituent elements of the offense of patent infringement?

Any intentional infringement of the rights guaranteed by the protection of designs and models gives rise to criminal liability (Art. L. 521-10 IP Code). The material element of counterfeiting lies in the same acts that incur the civil liability of the infringer, as defined in Articles L. 513-4 and L. 513-5 IP Code. 

In assessing acts of infringement, it is irrelevant whether the model remained at the design stage, provided that it was disclosed to the public to introduce a new product line, which constitutes an offer or use of the design.

CA Paris, 19 September 2012, LawLex202200001178JBJ.

What are the constituent elements of the offense of design infringement?

The intentional element of the offenses of counterfeiting generally excludes the characterization of the offense by recklessness (imprudence), negligence, or endangerment , but requires actual knowledge of the infringing nature of the disputed object. However, this intentional element may be presumed when the defendant is a professional .

While the factual circumstances  of the infringement makes the intent to commit the offense plausible, the defendant nevertheless retains in all circumstances the ability to prove their good faith, which excludes the intentional nature necessary for the classification of the offense.

Cass. crim., 24 September 2019, LawLex202200006610JBJ.

A jewelry professional, who could not have been unaware of the existence of the three models in question, knowingly infringed on the rights to the registered designs.

Cass. crim., 4 April 2018, No 16-87.414, LawLex202200001954JBJ.

What constitutes the intentional element of the offense of counterfeiting?

Proprietors of intellectual property rights who considers themselves victims of acts of infringement may, at their discretion, initiate a civil action for compensation for their damage before the judicial courts, or criminal proceedings before a criminal court.

An action before specialized judicial courts, which have exclusive jurisdiction, involves holding the infringer civilly liable; the infringer may be required to pay damages to the victim and may be ordered to destroy the infringing products.

Criminal infringement proceedings take the form of a public prosecution brought before a tribunal correctionnel initiated by the proprietor of the intellectual property rights or the public prosecutor. The civil action may be brought concurrently with the public prosecution before the same court, or separately from the public prosecution before a civil court; in the latter case, judgment on the civil action is stayed until a final decision has been rendered on the public prosecution, provided that the public prosecution has been initiated.

Article 4 of the Code of Criminal Procedure sets out the principle of the authority of res judicata in criminal matters over civil matters. This principle applies to what has been definitively, necessarily, and certainly decided by the criminal judge regarding the existence of the fact that forms the common basis of the civil and criminal action, its classification, as well as the guilt of the person to whom the fact is attributed .

Where the criminal court has found that no risk of visual confusion could be established, because the visual appearance was very different, and has acquitted the defendant, an appeal court cannot hold that the decision to acquit the defendant of the charges of possession and importation of goods bearing a counterfeit trademark is not binding on a civil court which is also hearing a claim based on the purchase and sale of those goods.

Cass. com., 8 June 2017, LawLex202200006608JBJ.

What infringement actions are available?

Civil infringement actions follow both the ordinary law rules of civil procedure and the special rules related to intellectual property law. The plaintiff in the infringement action must establish, in accordance with Article 31 of the Code of Civil Procedure, an interest in bringing proceedings , but also hold intellectual property rights over the subject matter of the act of infringement.

The action for infringement can thus be initiated by the holder of intellectual property rights. Generally, this is the owner of the trademark, patent, or design. The sign must be registered to be enforceable against a third party. Acts prior to registration are unenforceable . The action for patent infringement can be initiated based on a patent that has expired or lapsed on the day of the summons, but was in force on the date of the non-prescribed acts of infringement . In terms of designs, if acts after filing but before the publication of the registration escape prosecution (Art. L. 521-1, para. 2, IP Code), the applicant of a design not yet registered can act for infringement when a copy of the registration application has been notified to the alleged infringer, for acts after this notification (Art. L. 521-1, para. 3, IP Code). The action for infringement also belongs to the co-holder of the trademark  or co-owner of the patent, to the assignee upon registration of the assignment in the national register of trademarks , patents, or designs, to the one who prevails in their claim action and retroactively becomes the holder of the patent on the date of the application, or to the holder of a license, under certain conditions and unless otherwise stipulated in the license agreement. For patents,  an infringement action may also be based on a patent application, following publication of the application in the bulletin of patent applications (bulletin officiel de la propriété industrielle - BOPI) or service to the alleged infringer of a certified copy of that application. A court hearing an infringement action based on a patent application shall stay proceedings until the patent is granted. .

The action for infringement is time-barred after five years from the day the holder of a right knew or should have known of the last fact enabling them to exercise it. The limitation period may be interrupted by a legal action brought by a third party, even in summary proceedings (Art. 2241 Civil Code).

Civil actions and claims relating to national trademarks, other than requests for invalidity or revocation, including related issues of unfair competition, fall under the exclusive jurisdiction of the Judicial Court (Art. L. 716-5, II IP Code), with a list of territorially competent courts established by regulation. Civil actions and claims relating to patents fall under the exclusive jurisdiction of the Judicial Court of Paris (Art. L. 615-17, D. 631-2 and D. 211-6 IP Code), except for appeals against administrative acts of the Minister responsible for Industrial Property, which fall under the administrative jurisdiction (Art. L. 615-17 IP Code).

According to the principle of territorial jurisdiction under ordinary law, the claimant may choose to bring the infringement action before the court of the defendant's domicile or one of the defendants (Art. 42 of the Code of Civil Procedure), the court in the jurisdiction where acts of infringement were committed, or the court where the damage was suffered (Art. 46 of the Code of Civil Procedure). When the act of infringement is carried out on the internet, the damage is deemed to materialize, within the meaning of Article 46, at the place where the website displaying the products under an allegedly infringing trademark is accessible, even if the products cannot be ordered online from the site .

The applicant who registered the trademark on behalf of a company in formation and then decided to use it individually has such an interest as long as the company in formation is not established and has not assumed the commitments he made.

Cass. com., 14 October 2020, LawLex202000002525JBJ.

Facts prior to the publication of the trademark are not considered as infringing the rights attached to the trademark.

CA Colmar, 13 May 1994, LawLex200200001572JBJ.

The action for infringement remains admissible for non-prescribed facts prior to the date on which the forfeiture or expiration took effect, but is not admissible, due to lack of standing, concerning the subsequent period.

CA Paris, 2 March 2011, LawLex202300005194JBJ.

When, following a partial transfer, two companies are co-owners of a trademark, each for the products concerning them, the courts may recognize the standing and interest of each to protect the trademark they share.

CA Poitiers, 30 January 2001, No 0002164, LawLex200200000671JBJ.

The assignee who has not registered the assignment of a trademark with the National Trademark Register is inadmissible to act in trademark infringement.

CA Paris, 16 May 2017, No 16-03085, LawLex201700000905JBJ.

The stay of proceedings is mandatory, even if it is not requested by the parties.

Judicial Court of Paris, 11 February 2022, LawLex202200009462JBJ.

The accessibility of a website displaying products under a brand alleged to be counterfeit, within the jurisdiction of the court seized, is sufficient to justify the territorial jurisdiction of this court to hear the infringement action, even if the products cannot be ordered online on the site.

Cass. com., 23 June 2021, LawLex202200003516JBJ.

Criminal proceedings for infringement are subject to the ordinary law of criminal procedure. An action on the merits can be initiated by the holder of intellectual property rights or by the public prosecutor. The rightholder may file a criminal complaint as a civil party or, if the facts are straightforward, proceed by direct summons (Art. 389 to 392-1 and 550 to 566 Code of Criminal Procedure). Alternatively, they may file a simple complaint with the Public Prosecutor.

Criminal proceedings for counterfeiting are time-barred after six full years from the day the offense was committed (Art. 8 Code of Criminal Procedure), as are civil actions brought before a criminal court (Art. 10 Code of Criminal Procedure). However, actions for patent infringement are time-barred after five years from the day the patent holder became aware of the last fact enabling them to bring action for infringement (Article L. 615-8 Intellectual Property Code).

What are the conditions for bringing criminal proceedings for counterfeiting?

Counterfeiting constitutes a legal fact and, as such, can be proven by any means. The burden of proof lies with the plaintiff in the action, pursuant to the ordinary law of evidence, which requires each party to prove the facts necessary for the success of their claim. The courts are therefore not obliged to independently seek the reproduction of the characteristic elements of the patent . However, if the alleged counterfeiter does not contest the materiality of the counterfeiting, it is established .

In matters of patents, Article L. 615-5-1 of the Intellectual Property Code supplements the evidence mechanism for infringement by establishing a simple presumption in favor of the patent concerning a process for obtaining a product. Under this presumption, any identical product manufactured without the consent of the patent holder is presumed to have been obtained by the patented process, unless the defendant establishes the difference between the patented process and the one used.

Advice: Verify the novelty of the patented process

The presumption applies only when the product obtained by the patented process is new, or when there is a high probability that the identical product was obtained by the patented process, while the patent holder has not been able, despite reasonable efforts, to determine which process was actually used.

To establish proof of infringement, the competent court may order, at the initiative of the plaintiff in the infringement action or on its own motion, any legally permissible investigative measure (Art. L. 615-5-1-1, IP Code). These measures may be ordered if there is a legitimate reason to preserve or establish, prior to any trial, evidence of facts on which the resolution of a dispute may depend, upon request or in summary proceedings (Art. 145 of the Code of Civil Procedure). Pursuant to Articles 179 through 284 of the Code of Civil Procedure, they include personal examinations by the judge, the personal appearance of the parties, the testimony of witnesses or an investigation, and investigative measures carried out by a technical expert.

The plaintiff may also seek an amicable expert opinion or a report from a judicial commissioner. Such a report, which includes a record of purchase, must be strictly factual, exclude any opinion on the factual or legal consequences that may result, and comply with the right to a fair trial and the principle of fair presentation of evidence. Its validity is not subject to any court authorization or prior notification of the alleged infringer.

Judicial courts may also order, at the request of the plaintiff in the infringement action or ex officio, two measures specific to intellectual property litigation: the infringement seizure and the right to information.

The seizure for IP infringement procedure (saisie-contrefaçon), intended to provide the holder of the infringement action with evidence to sanction violations of their rights, may notably consist of a detailed description, with or without sampling, or an actual seizure of the allegedly infringing products or services, as well as any related documents. Any person entitled to act in infringement may thus have a counterfeit seizure carried out by any bailiff, pursuant to an order issued upon request by the civil court.

Directive No 2004/48 of 29 April 2004 established a right to information aimed at combating counterfeiting networks (Art. L. 615-5-2 Intellectual Property Code). Similar to the discovery procedure in common law systems, the applicant may request the competent judicial authorities to order the alleged infringers or certain third parties to provide specific information on the origin of the counterfeit goods or services, the distribution channels, and the identity of the third parties involved in the infringement. The production of documents or information may be ordered provided there is no legitimate impediment (Art. L. 615-5-2, para. 2, Intellectual Property Code), which the judge must assess.

It is incumbent upon the person claiming to be a victim of infringement to provide proof, without the judge being required to independently seek the reproduction of the characteristic elements of the patent.

Cass. com., 26 February 2002, LawLex202300002572JBJ.

When the respondent company does not contest the materiality of the infringement alleged against it, the infringement is established.

CA Paris, 10 January 2014, No 11-21456, LawLex201400000019JBJ.

What means of proof are available to the holder of intellectual property rights?

Any person entitled to take action for infringement may request the competent civil court to take provisional or protective measures against the alleged infringer, to prevent an imminent violation of their rights or to stop the continuation of the acts alleged to be infringing. They may proceed by way of summary proceedings, or, if circumstances require the measure to be taken without adversarial proceedings, submit a request to the judge to order urgent measures. These measures may be ordered if necessary under penalty.

The applicant must have standing to bring an action for infringement . The measure may be ordered against the alleged infringer, but also against intermediaries whose services they use .

The judge cannot in this case rule on the validity of the intellectual property right, which falls under the jurisdiction of the trial courts. He must verify, in addition to the plaintiff's standing to sue, only the existence or imminence of an infringement of the rights conferred to the plaintiff by his title. The plaintiff must establish, using reasonably accessible evidence, the likelihood of the infringement of his rights or its imminence. The infringement is likely when it is not seriously contestable .

The interim relief procedure falls under Articles 484 to 492 of the Code of Civil Procedure. Subject to the adversarial principle, it is not contingent upon prior summons on the merits of the alleged infringer. The interim decision issued by the judge, if applicable, benefits from provisional enforcement as of right. The ex parte procedure allows any person with standing to act in infringement to request the civil court to order any urgent measure to prevent an imminent infringement of their rights or to stop the continuation of acts alleged to be infringing. It is an exceptional, non-adversarial procedure governed by Article 493 and following of the Code of Civil Procedure. Like interim proceedings, it can be initiated before any action on the merits.

When provisional or protective measures are ordered before any action on the merits, the claimant must either proceed through civil or criminal channels or file a complaint with the public prosecutor. Failing this, upon the defendant's request and without the need for the defendant to justify the request, the ordered measures are annulled, without prejudice to any damages that may be claimed.

The competent court may issue a provisional injunction against the acts alleged to constitute infringement, make the continuation of such acts subject to the provision of guarantees to ensure the claimant’s potential compensation, or order the seizure or delivery of the goods to a third party. If the plaintiff demonstrates circumstances likely to jeopardize the recovery of damages, the court may order the provisional seizure of movable or immovable property, including the freezing of bank accounts and other assets, in accordance with ordinary civil law.

In addition to measures prohibiting the continuation of acts of infringement or the establishment of guarantees, the court may order the seizure or delivery into the hands of a third party of the infringing products, as well as the protective seizure of the movable and immovable property of the alleged infringer, including the freezing of their bank accounts and other assets, when the claimant demonstrates circumstances likely to jeopardize the recovery of damages.

To prevent unjustified claims and ensure the rights of the defense, the judge may require the applicant to provide guarantees to ensure possible compensation for any harm suffered by the defendant if the infringement action is subsequently deemed unfounded or the provisional measures are annulled.

Advice: Request the modification or retraction of the order.

To contest provisional or protective measures, the party against whom they are ordered must To challenge provisional or protective measures, the party against whom they are ordered must file a motion with the same court seeking to amend or revoke the ordinance.

500 Questions - Business Law

304. What are the conditions for exercising a civil action for infringement?

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