Industrial Property Law

As with other intellectual property rights, the victim of patent infringement may, because of its subsidiary nature , bring an action for unfair competition based on Article 1240 of the Civil Code against the alleged infringer, which may stand alone , or be brought cumulatively with the infringement action if it is based on a tort arising from separate facts . The plaintiff in an unfair competitio …

Unfair competition action

As with other intellectual property rights, the victim of patent infringement may, because of its subsidiary nature , bring an action for unfair competition based on Article 1240 of the Civil Code against the alleged infringer, which may stand alone , or be brought cumulatively with the infringement action if it is based on a tort arising from separate facts . The plaintiff in an unfair competition action must establish the existence of a risk of confusion in the mind of the public between the competing product and the patented invention .

Acts of unfair competition may include the importation, offer and sale of near-servile copies  or the marketing of products which are very similar in form to those manufactured and marketed by the plaintiff undertaking, and which bear wording suggesting that they are patented or certified like those of the latter, or even that they originate from it . On the other hand, it is not an act of unfair competition to copy the structural elements and rules of a game which is itself no more than the reproduction of a patent which has fallen into the public domain , or to market outfits based on a certain technology by the defendant, even if it is aware of the possibilities of developing the process jointly created with the plaintiff, the patent holder, provided that it has not been established that the technology in question uses the results of joint research .

An action for unfair competition based on Article 1240 of the Civil Code, which requires proof of fault, and an action for patent infringement, which concerns the violation of a private right, proceed from different causes and do not have the same objectives. Consequently, an infringement action brought for the first time on appeal from a judgement that ruled solely on the issue of unfair competition is inadmissible . However, the Court of Cassation has ruled that a claim for unfair competition brought before the Court of Appeal does not constitute a new, inadmissible claim within the meaning of Article 565 of the Code of Civil Procedure, as long as it pursues the same aims as the initial claim based on infringement, i.e. compensation for the harm caused by the infringement .

CA Paris, 1 March 2023, LawLex202300003168JBJ; Cass. com. 6 November 2007, LawLex200700001776JBJ, which states that the invalidity of a patent does not preclude an action for parasitic competition brought by its holder, provided that the infringement action and the action for unfair competition have distinct grounds.

CA Paris, 12 October 2001, LawLex200200000470JBJ, which upheld an action for unfair competition brought by an exclusive distributor due to the defendant's marketing of infringing products.

CA Paris, 17 March 2004, LawLex200600001207JBJ, upheld by Cass. com, 25 April 2006, LawLex200600001183JBJ.

CA Paris, 17 March 2004, LawLex200600001207JBJ, upheld by Cass. com, 25 April 2006, LawLex200600001183JBJ ; CA Paris, January 10, 2014, LawLex201400000019JBJ ; 25 October 2006, LawLex200700001452JBJ, stating that the fact of marketing spinning tops similar in shape to those of a competitor is not sufficient to reveal an intention to create confusion, since each of the products meets the characteristics claimed by patents registered by their manufacturers in distinct countries, and they include a number of differences, particularly in their packaging, which give them a distinct overall visual impression; CA Paris, 11 June 2019, LawLex201900000813JBJ, which found unfair competition in the case of lighting fixtures featuring electrical connection boxes very similar in shape to those manufactured and marketed by the plaintiff undertaking, and bearing wording suggesting that these boxes are patented or benefit from certification like those of the latter, or even that they originate from it.

CA Paris, 11 January 2014, LawLex201400000019JBJ.

CA Paris, 11 June 2019, LawLex201900000813JBJ.

CA Paris, 29 March 2016, LawLex201600000771JBJ.

Cass. com, 29 June 2010, LawLex2010000804JBJ.

CA Paris, 4 October 2013, LawLex202300005193JBJ.

Cass. com, 26 September 2018, LawLex202300005192JBJ, concerning a licensee who initially sought compensation on the basis of Article L. 615-2 of the Intellectual Property Code, then, the validity of his license agreement having been challenged, lodged a claim for damages on appeal on the basis of unfair competition. 

Industrial Property Law

416. Unfair competition action

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Les notions juridiques connexes

416. Unfair competition action

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise