Industrial Property Law

The court may issue an injunction prohibiting infringing acts, if necessary accompanied by a fine ordering the infringer to pay a fixed sum for each new act of infringement found. Once the judgment has become final, the continuation of the acts allows a new action to be brought on the merits.
Injunctions are  legal measures. They can be ordered against intermediaries, such as online service provid …

Prohibitory and corrective measures

The court may issue an injunction prohibiting infringing acts, if necessary accompanied by a fine ordering the infringer to pay a fixed sum for each new act of infringement found. Once the judgment has become final, the continuation of the acts allows a new action to be brought on the merits.

Injunctions are  legal measures. They can be ordered against intermediaries, such as online service providers whose services are used by the infringer (Directive No. 2004/48, Art. 11). An injunction  can only be ordered if the patent in question is still in force on the day of the judgment .

In the event of a civil conviction for infringement, the court may, at the behest of the injured party, order the recall or withdrawal from commercial channels, as well as the destruction or confiscation of objects found to be infringing, and of the materials and implements principally used in their creation or manufacture (Art. L. 615-7-1, para. 1, IP Code) . Prohibitory measures are ordered at the counterfeiter's expense (Art. L. 615-7-1, para. 1, IP Code). They may be taken against intermediaries whose services are used by a third party to infringe an intellectual property right (Directive No. 2004/48, Art. 11). Corrective measures must take account of the interests of third parties, in particular consumers and individuals acting in good faith (Directive No 2004/48, recital 24).

In addition to the damages to be paid to the claimant, confiscation may also be ordered . On the other hand, by virtue of the principle of full reparation of harm, a patent owner cannot, after having obtained the confiscation and delivery into his hands of the infringing machines, obtain payment of the corresponding value of two models for which he has already obtained damages . Confiscation can only be applied to objects recognized as infringing by the judgment and existing on the date of that judgment, to the exclusion of products introduced into France subsequently . It concerns only those objects which are the property of the counterfeiter on the date on which the prohibition on further counterfeiting comes into force, and, where applicable, devices or means specifically intended to enable the counterfeiting to be implemented. Consequently, the court cannot order the confiscation and delivery of the counterfeit objects or, at the very least, the payment of their equivalent value . However, the judge may decide at his or her discretion that confiscation should apply to several devices, where they cooperate closely with the networks and are specially designed and adapted for the machines in question, forming a “functional whole” .

The court must take into account the profit obtained by the patentee as a result of the confiscation when assessing the harm caused by the infringement. This obligation does not prevent it from appointing an expert to determine the amount of damages, as long as this does not prejudice the method of calculation of damages and does not prevent it from taking into account the pecuniary advantage that the return of the infringing material to the patentee might bring .

Cass. com. 17 March 2015, LawLex201500000366JBJ; 1 March 1994, LawLex202300005181JBJ.

Cass. com, 22 May 1979, LawLex202200003926JBJ.

Cass. com. 17 June 2003, LawLex202100004655JBJ.

Cass. com, 19 October 1999, LawLex202300005185JBJ.

Cass. com. 22 May 1979, LawLex202200003926JBJ.

Cass. com., 10 March 1982, LawLex202200003921JBJ. 

Cass. com, 18 December 1973, LawLex202200003925JBJ.

Cass. com, 24 January 1977, LawLex202200002754JBJ.

Industrial Property Law

414. Prohibitory and corrective measures

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

414. Prohibitory and corrective measures

Demandez un accès gratuit au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise