Industrial Property Law

The proprietor of a registered trademark or the beneficiary of an exclusive right of exploitation may submit an application to the customs authorities, together with supporting evidence of that right , with a view to detaining the allegedly infringing goods and that are circulating on French territory, originating from the latter or from another Member State (Art. L. 716-8, para. 1, IP Code). If t …

Application for detention of goods

The applicant for the detention has a maximum of ten working days, or three working days where the goods are perishable, from the notification of the detention by the customs administration, to justify having initiated one of the contentious procedures provided for in paragraph 4 of Article L. 716-8 of the Intellectual Property Code. The period of ten working days is renewable one time after a duly reasoned request to the customs administration. If the applicant fails to justify having engaged the procedure within the time-limit, the customs detention measure is automatically lifted (Art. L. 716-8, para. 4, and L. 716-8-1, para. 5, IP Code). The procedure can take different forms such as the order of a precautionary measure by a competent civil court, a civil or criminal action with the constitution of guarantees, or the filing of a complaint with the office of the public prosecutor (Procureur de la République) . The validity of the seizure ordered by the court cannot be called into question by the annulment of the detention as long as it was not based solely on the annulled measure .

A seizure for infringement  (saisie-contrefaçon) can also be used to preserve the detention measure, provided that it is actually implemented, since an order is not sufficient. A saisie-contrefaçon carried out after the automatic lifting of the detention measure must be declared null and void . In the absence of a valid seizure for infringement, the detention does not allow the goods to be handed over to the trademark owner . In the context of a referral to the civil or criminal court, the plaintiff must provide guarantees for the possible compensation of the owner of the goods if the infringement is not established. A court cannot order the release of a detention measure without investigating whether these guarantees have been provided .

The applicant may, for the purposes of instituting legal action, obtain from the customs administration the name and address of the sender, importer, consignee of the detained goods or their holder, as well as any images of the goods and information regarding quantity, origin, provenance and intended destination, by way of derogation from the professional secrecy of customs officers (Article L. 716-8, paragraph 6, IP Code).

The costs related to the detention measure or the precautionary interim measures ordered by the competent civil court are borne by the applicant (Art. L. 716-8, paragraph 5, IP Code).

During the detention, an inspection of the goods may be carried out at the request of the trademark proprietor, the beneficiary of an exclusive right of exploitation or the customs administration (Art. L. 716-8-3, para. 1, IP Code). During the control of the detained goods, the customs administration may take samples, which may be given to the proprietor of the trademark or to the beneficiary of an exclusive right of exploitation at his request, for the sole purpose of analysis and in order to facilitate the proceedings that he may have to institute through civil or criminal channels (Art. L. 716-8-3, para. 2, IP Code).

The latter measure was incorporated into Article L. 716-8, paragraph 4, of the Intellectual Property Code by the Law of 11 March 2014. See also Cass. com, 11 March 2014, LawLex202200006328JBJ.

Cass. crim., 7 April 2010, LawLex202200002470JBJ.

CA Paris, 14 October 2016, LawLex202200003953JBJ.

Cass. com, 20 September 2011, LawLex201100001527JBJ.

Cass. com, 11 March 2014, LawLex202200006328JBJ.

Conditions of implementation

Regulation No 608/2013 of 12 June 2013 and the Law of 11 March 2014 introduced a procedure for the destruction of goods in the context of detention by customs (Art. L. 716-8-4 IP Code). Once goods have been detained, they can be destroyed under the control of customs officers provided that, within ten working days from the notification of the detention, or three days in the case of perishable goods, the applicant has confirmed in writing and by detailed assessment the infringing nature of the goods and his/her consent to their destruction under his/her responsibility, and the holder of the goods consents to such destruction (Art. L. 716-8-4, I IP Code). If the holder of the goods does not expressly consent or oppose the destruction, it is presumed to be approved.

Where the holder of the goods has not confirmed in writing that he consents to the destruction and is not deemed to have given consent, the customs authorities must inform the applicant, who must, within a ten working days, or three working days in the case of perishable goods, from the detention, initiate one of the legal procedures referred to in paragraph 4 of Article L. 716-8 of the Intellectual Property Code. If the conditions for destruction are not met and if the applicant has not justified to the customs administration that he has initiated a contentious procedure, the detention measure is automatically lifted (Article L. 716-8-4, III IP Code).

Goods that constitute small consignments may be destroyed under the control of customs officers when the applicant has, in the application, requested the recourse to that procedure (Art. L. 716-8-5, I IP Code). Small consignments correspond to a postal or express courier consignment that contains three units or less or has a gross weight of less than two kilograms (Reg. No 608/2013, Article 2(19), excluding perishable goods. When notifying the applicant and the holder of the goods of the detention, the customs administration shall mention its intention to destroy or not the goods. The holder of the goods has ten working days from the notification of detention to inform the customs authorities of his/her observations. If, within this time-limit, the holder of the goods has confirmed their consent to the destruction or has remained silent, the goods may be destroyed. The customs authorities must provide the applicant, on request, with information on the actual or estimated quantity of the goods destroyed and their nature (Art. L. 716-8-5, II IP Code).

Where the declarant or holder of the goods has not confirmed consent to their destruction in writing, or where consent to their destruction is not deemed to have been given, the customs authorities immediately inform the applicant of this and provide the quantity, nature and images of the goods (Art. L. 716-8-5, III IP Code). The detention measure is automatically lifted if the applicant does not justify to the customs administration, within ten working days from receiving that information, that he has initiated the measures mentioned in the fourth paragraph of Article L. 716-8 of the Intellectual Property Code.

Destruction of merchandise

The proprietor of a registered trademark or the beneficiary of an exclusive right of exploitation may submit an application to the customs authorities, together with supporting evidence of that right , with a view to detaining the allegedly infringing goods and that are circulating on French territory, originating from the latter or from another Member State (Art. L. 716-8, para. 1, IP Code). If the application is accepted, the customs authorities immediately notify the applicant and the holder of the goods of the detention and inform the public prosecutor (Art. L. 716-8, paragraph 2, IP Code). By way of derogation from the obligation of professional secrecy of customs officials, the applicant is informed of the nature, the actual or estimated quantity and images of the goods. This information may also be disclosed prior to the implementation of the detention measure (Art. L. 716-8, para. 3, IP Code).

Failing an application for detention, the customs authorities may, as part of their inspections, automatically detain goods likely to infringe a registered trademark or an exclusive right of exploitation. They immediately notify the proprietor of the trademark or the beneficiary of the exclusive right and inform the public prosecutor (Art. L. 716-8-1, para. 2, IP Code). The proprietor is informed of the nature, actual or estimated quantity and images of the goods, by way of derogation from the professional secrecy of customs officers (Art. L. 716-8-1, para. 3, IP Code). The notified person has four working days from the notification of the detention to send an application for the detention of the goods to the customs authorities. Where this is not done, the detention measure is automatically revoked (Art. L. 716-8-1, para. 4, IP Code). This procedure does not concern perishable goods ( Art. L. 716-8-1, para. 6, IP Code).

The customs authorities may not detain goods lawfully manufactured or released for circulation in a Member State of the EU that are passing through French territory in order to be placed on the market in another Member State of the EU to be lawfully marketed there (Art. L. 716-8, para. 7, IP Code)  or that are transiting through France on their way to a State outside the EU (Art. L. 716-8, para. 8, IP Code) .

The information and documents to be included in the application are specified in Article R. 335-6 of the Intellectual Property Code.

ECJ Case C-23/99 Commission v France, Judgment of 26 September 2000, LawLex200500004918JBJ: a Member State cannot apply procedures for the detention by the customs  authorities of goods which were lawfully manufactured in a Member State  and are intended to be placed on the market of another Member State in  transit on its territory, insofar as EU transit of goods, which consists  in the transportation of goods from one Member State to another, is not  the same as their marketing.

Also see ECJ Case C-115/02 Administration des douanes et droits indirects v Rioglass SA and Transremar SL, Judgment of 23 October 2003, LawLex200500005294JBJ.

Industrial Property Law

184. Application for detention of goods

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184. Application for detention of goods

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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