Industrial Property Law

Directive No 2004/48 of April 29, 2004 introduced a right to information designed to combat counterfeiting networks. Following the example of the common law discovery procedure, the applicant can ask the competent judicial authorities to order the alleged infringers or certain third parties to provide specific information on the origin of the infringing goods or services, the distribution channels …

Right of information

Directive No 2004/48 of April 29, 2004 introduced a right to information designed to combat counterfeiting networks. Following the example of the common law discovery procedure, the applicant can ask the competent judicial authorities to order the alleged infringers or certain third parties to provide specific information on the origin of the infringing goods or services, the distribution channels and the identity of the third parties involved in the infringement (Art. 8). The right to information is intended to give practical effect to the right to an effective remedy guaranteed by Article 47 of the Charter of Fundamental Rights, and to ensure the effective exercise of property rights, of which intellectual property is one . The directive was incorporated into French law by Law No 2007-1544 of 29 October 2007, into Article L. 615-5-2 of the Intellectual Property Code.

The court may order, if necessary under penalty, the production of any documents or information held by the defendant or any person in possession of the allegedly infringing products or implementing the allegedly infringing processes, or who provides services used in allegedly infringing activities, who uses such services, or who has been reported by such persons as being involved in the production, manufacture or distribution of such products (Art. L. 615-5-2 IP Code). The text does not provide a list of the information that may be ordered to be produced by the court, as the list originally included was removed by the Law of 11 March 2014 . The court itself decides which documents and information it can order to be produced, with a view to identifying the various players in counterfeiting networks . According to Directive No 2004/48, the information that may be obtained may concern the quantities produced, marketed, delivered, received or ordered, as well as the price obtained for the products or services in question (Art. 8(2)(b)). The court ruling on the infringement action may, at its sole discretion, limit the scope of the disclosure measure ordered .

The production of documents or information may be ordered provided there is no legitimate impediment (Art. L. 615-5-2, para. 2, IP Code), which is for the court to determine. Legitimate impediment covers, in particular, the preservation of privacy and professional secrecy. However, the Court of Justice has ruled that a national provision cannot authorize a bank to invoke banking secrecy in an unlimited and unconditional manner in order to refuse to provide information on the name and address of an account holder .

The implementation of the right of information presupposes that a civil action is filed with a court. Since the Law of 11 March 2014, such proceedings may be brought on the merits or in interim proceedings. However, the action need not necessarily be pending before the court. The right of information is applicable in the context of an action aimed at establishing an infringement of an intellectual property right, as well as in the context of autonomous proceedings initiated after the closure of such an action having resulted in the finding of an infringement . When the case is referred to the court on the merits, the claim must have been lodged within a reasonable period. A claim filed almost seven years after the acts complained of were committed, and concerning a mass-market product for which there is nothing in the proceedings to suggest that it was marketed after the acts complained of were committed, must be rejected .

Case C-580/13 Coty Germany GmbH, Judgment of 16 July 2015, LawLex201500000959JBJ.

Law No 2014-315 of 11 March 2014, reinforcing the fight against the infringement of intellectual property rights, OJ of 12 March 2014.

Report No 1720 by Jean-Michel Clément, made on behalf of the Law Commission, submitted on 22 January 2014, Chapter III, Art. 3.

Cass. com., 23 January 2019, LawLex202300005997JBJ, upholding the dismissal of a motion for disclosure of documents where there was no evidence of continued sales of the offending products over the period in question.

Case C-427/15 New Wave CZ, Judgment of 18 January 2017, LawLex201700000119JBJ.

CA Paris, 6 March 2015, LawLex202300005998JBJ.

Industrial Property Law

403. Right of information

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403. Right of information

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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