Industrial Property Law

Article L. 716-10, paragraph 1, a) of the Intellectual Property Code sanctions the act of possessing without legitimate reason, importing or exporting goods bearing an infringing trademark. Contrary to Article L. 716-9, paragraph 1, a) of the Intellectual Property Code, the offense is punishable regardless of any intention on the part of the infringer to sell, supply, offer for sale or lease the i …

Possession/Import/Export of goods bearing an infringing mark

Article L. 716-10, paragraph 1, a) of the Intellectual Property Code sanctions the act of possessing without legitimate reason, importing or exporting goods bearing an infringing trademark. Contrary to Article L. 716-9, paragraph 1, a) of the Intellectual Property Code, the offense is punishable regardless of any intention on the part of the infringer to sell, supply, offer for sale or lease the infringing goods. It is constituted even if the goods circulate within the customs territory of the EU, as the principle of freedom of movement of goods in the EU Member States does not apply to counterfeit goods .

The alleged infringer can be exempted from liability if he/she is able to show that he/she had a legitimate reason for possessing the goods bearing the infringing trademark. Holding the goods for the purpose of shipping them to relatives or friends is not considered a legitimate reason . Initially, the Court of Cassation accepted that holding goods for export to a third country where the goods would be lawfully marketed constituted such a reason . In a decision of 17 January 2018, the Court reversed its position, noting that this exception was not provided for in the European harmonization directives, in particular Directive No 89/104 of 21 December 1988 .

A conviction for possession without legitimate reason of goods bearing an infringing trademark cannot be combined with a conviction for offering for sale or selling such goods, by virtue of the ne bis in idem principle . On the other hand, a finding of infringement by possession, import or export of goods bearing an infringing trademark may be combined with importing prohibited goods without proper declaration, which is the subject of a customs procedure, provided that the two classifications result from the implementation of a system combining criminal and customs proceedings and actions, allowing the courts to sanction the same offense in both respects, in a predictable and proportionate manner, and that the total amount of any fines that may be imposed does not exceed the highest amount of one of the penalties incurred . In this case, the ne bis in idem principle is respected because the offenses involve the protection of different interests, the interests of the rightholder of the trademark for the criminal proceedings, and the economic and tax interests of the State for the customs proceedings .

Cass. crim. 26 January 2005, LawLex202200002568JBJ.

Cass. crim. 30 March 1994, LawLex202200002622JBJ.

Cass. com. 10 July 2007, LawLex200700001101JBJ.

Cass. crim., 17 January 2018, LawLex201800000136JBJ.

Cass. crim., 5 January 2021, LawLex202200002607JBJ.

Cass. crim., 17 January 2018, LawLex202200002595JBJ.

Cass. crim. of 17 June 2015, LawLex202200002596JBJ.

Industrial Property Law

170. Possession/Import/Export of goods bearing an infringing mark

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

170. Possession/Import/Export 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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au contenu exclusif Livv – juristes d’entreprise