Industrial Property Law

Directive No 2004/48 of 29 April 2004 introduced a right of information to combat counterfeiting networks. 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 networks and the identity of any third parties involved in the infringement (Ar …

Right of information

Directive No 2004/48 of 29 April 2004 introduced a right of information to combat counterfeiting networks. 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 networks and the identity of any third parties involved in the infringement (Article 8). This right was transposed into French law by Law 2007-1544 of 29 October 2007 in Article L. 716-4-9 of the Intellectual Property Code.

The production of documents or information requires a judgment by the court, upon request by a party. The court may order, if necessary subject to a penalty, the production of any documents or information held by the defendant or any person in possession of the infringing goods, who provides services used in infringing activities , who uses such services, or who has been reported by such persons as being involved in the production, manufacture or distribution of the goods or the provision of the services (Article L. 716-4-9, para. 1, IP Code). The right of information introduced by the Law of 29 October 2007 does not affect the substantive law, but constitutes a procedural provision relating to the gathering of evidence, applicable to proceedings in progress on the date of its entry into force .

While the law requires that civil proceedings be brought, which de facto excludes criminal proceedings, it does not require that the action be pending before the civil court. Since the Law of 11 March 2014, information measures may be sought from the court seized on the merits or in summary proceedings. They may also be ordered by the pre-trial judge before any judgment on the actuality of the infringement . The trial court, which is not obliged to wait for a judgment on the substantive aspects of the infringement, has sufficient powers to order the production of documents in order to obtain information on the networks, on the volume of infringing goods, on the extent of the damage, but also to corroborate the facts of the infringement . The application may be filed even if the infringement action is definitively closed after the infringement of intellectual property rights has been established .

Article L. 716-4-9 of the Intellectual Property Code does not provide a list of the information the production of which is likely to be ordered by the court, as the list contained in the last paragraph of former Article L. 716-7-1 was removed by the Law of 11 March 2014. However, it can be considered that the items on that list are still required since former article L. 716-7-1 reproduced those of Article 8 of Directive No 2004/48. The following must therefore be listed:

 - the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well  as the intended wholesalers and retailers,

- information on the quantities produced, manufactured, delivered,  received or ordered, as well as the price obtained for the goods or services in question.

Production of documents or information may be ordered provided that there is no legitimate impediment (Art. L. 716-4-9, para. 2, IP Code). The court must therefore assess the appropriateness of the measure and ensure that there is no obstacle to the production of the requested document. When the applicant merely seeks, by the generality of the application, to obtain information on competitors, in violation of business secrecy, the investigative measure does not comply with the requirements of Article 145 of the Code of Civil Procedure or with those of Article L. 716-4-8 of the Intellectual Property Code and will be rejected . The fact that the defendant is neither the host nor the operator of the internet site that was the subject of the infringing transactions does not constitute a legitimate impediment, as long as it has reported a customer file to the CNIL that is likely to contain information falling within the scope of the right of information .

The request for information must not constitute a disguised saisie-contrefaçon, which would be null and void if the relevant conditions were not met. However, the act of asking to gather and remove an identical copy of any hard disk does not constitute a measure of seizure for infringement, even if the request refers to trademarks of which the applicant is the proprietor. Similarly, an application that is not based on infringement, but on the probable existence of facts likely to incur the tort liability of an operator, and that does not call for a seizure by description or taking of a sample of allegedly infringing goods or services, does not constitute a seizure for infringement .

CA Reims, 5 May 2009, LawLex202200006615JBJ, which held that eBay was providing services used in infringing activities even though it was not in possession of the disputed items and had returned the monies received as commissions to the person who placed the objects on sale.

CA Reims, 5 May 2009, LawLex202200006615JBJ.

Cass. com. 13 December 2011, LawLex202200003606JBJ.

CA Paris, 17 February 2010, LawLex202200006614JBJ.

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

Cass. com. 7 March 2018, LawLex202200006611JBJ.

Cass. com, 22 November 2016,  LawLex201600001946JBJ: in this case, the undertaking targeted by the information measure argued that the application based on the right of information was null and void on the grounds that it constituted a disguised seizure of goods, subject to the jurisdiction of the President of the Paris Tribunal de grande instance and not the court in Bobigny.

Industrial Property Law

153. Right of information

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153. 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