Industrial Property Law

Article L. 716-10, paragraph 1, b) of the Intellectual Property Code prohibits the offering for sale or selling of goods under an infringing trademark. It is an offense for an undertaking to knowingly and without authorization resell and repackage healthcare products using counterfeit packaging, leaflets, labels and barcodes  or to offer products bearing a specific trademark to its customers witho …

Offer for sale or sale of goods bearing an infringing mark

Article L. 716-10, paragraph 1, b) of the Intellectual Property Code prohibits the offering for sale or selling of goods under an infringing trademark. It is an offense for an undertaking to knowingly and without authorization resell and repackage healthcare products using counterfeit packaging, leaflets, labels and barcodes  or to offer products bearing a specific trademark to its customers without the authorization of the proprietor of that trademark, even if the proprietors of the trademarks in question belong to the same economic group and have common legal and commercial structures .

Under the principle of exhaustion of rights provided for in Article L. 713-4 of the Intellectual Property Code, the marketing of products authentically bearing the trademark by a non-authorized distributor does not in itself constitute an infringement if the first release of those goods into the market in France was done with the consent of the trademark proprietor and if they were duly acquired by the reseller in question . On the other hand, the infringement is constituted if the unauthorized distributor, by reselling the products, damages the image of the trademark . These remedies, laid down by two Court of Cassation rulings of 23 March 2010, put an end to the hesitations of the Court of Cassation's Commercial Chamber, which had at times upheld , and at others ruled out  the liability of the unauthorized distributor for trademark infringement due to the possession or marketing of genuine products. The Commercial Chamber thus aligns its position with that of the Criminal Chamber  according to which the aim of the offense is not to penalize purchasers and resellers of products offered in a selective distribution channel . This is in line with the case law of the Court of Justice, which considers that it is up to the national court to assess, where necessary, in the light of the circumstances of each individual case, whether the subsequent marketing of the products damages the reputation of the trademark, in particular with regard to the recipients of the resale or the specific marketing conditions of the products .

Defendants in a criminal infringement action have argued that the general and absolute scope of the first three paragraphs of Article L. 716-10, which penalize the holding, without legitimate reason, and the offer for sale of goods presented under an infringing trademark, was likely to infringe the constitutional principle of freedom of expression and communication of ideas and opinions resulting from Article 11 of the Declaration of the Rights of Man and of the Citizen (Déclaration des droits de l’Homme et du citoyen), because it did not comply with the principle that offenses and penalties must be defined by law. The Court of Cassation considered this question of constitutionality to be without substance and stated that the limited offenses contained in Article L. 716-10 precluded any possibility of infringement of freedom of expression .

Cass. crim., 19 March 2008, LawLex201200001743JBJ.

Cass. crim, 18 April 1988, LawLex202200002645JBJ.

Cass. com, 23 March 2010, LawLex201000000375JBJ.

Cass. com. 23 March 2010, LawLex201000000376JBJ.

Cass. com., 23 February 1993, LawLex200200005977J.

Cass. com, 13 December 1988, LawLex202200002646JBJ; Cass. com, 21 March 1989, LawLex202200002534JBJ.

Cass. crim, 16 November 1992, LawLex202200002532JBJ.

Cass. crim, 24 February 1987, LawLex200200005703JBJ; Cass crim, 5 October 1987, LawLex202200006719JB; Cass crim, 16 November 1992, LawLex202200002532JBJ.

ECJ Case C-59/08 Copad SA v Christian Dior couture SA, Gladel andSociété industrielle lingerie, Judgment of 23 April 2009, LawLex201000000965JBJ.

Cass. crim., 3 December 2019, LawLex202200006609JBJ.

Industrial Property Law

171. Offer for sale or sale of goods bearing an infringing mark

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171. Offer for sale or sale of goods bearing an infringing mark

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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