Industrial Property Law

Trademark infringement is defined as any infringement of the proprietor's trademark rights. When this infringement results from the failure to comply with the prohibitions on the use of the trademark as laid down in Articles L. 713-2 to L. 713-3-3 and in the second paragraph of Article L. 713-4 of the Intellectual Property Code (Art. L. 716-4, para. 1, IP Code), it engages the civil liability of t …

Protection of the mark

Trademark infringement is defined as any infringement of the proprietor's trademark rights. When this infringement results from the failure to comply with the prohibitions on the use of the trademark as laid down in Articles L. 713-2 to L. 713-3-3 and in the second paragraph of Article L. 713-4 of the Intellectual Property Code (Art. L. 716-4, para. 1, IP Code), it engages the civil liability of the infringer (Art. L. 716-4, para. 1, IP Code). When it results from one of the violations defined in Articles L. 716-9 to L. 716-11 of the Intellectual Property Code, the infringement of the rights conferred by the trademark constitutes on the other hand an offense incurring the criminal liability of the offender.

Trademark infringement causes significant harm to the economy, the environment and the health and safety of consumers, as it increasingly concerns medicines, food products, cosmetics and toys. According to the joint EUIPO and EUROPOL report published in March 2022 , imports of counterfeit and pirated products amounted to EUR 119 billion in 2019, or 5.8% of all products entering the EU. The damage to the reputation of producers resulting from counterfeiting is coupled with damage to competition on the market since it leads to unfair conditions of production.

Progressively, the fight against piracy has been intensified. In France, the Law of 31 December 1964, which established registration as the sole means of acquiring a trademark, allowed the proprietor to bring an infringement action before the civil or criminal courts against any third party infringing its trademark rights. Law No 91-7 of 4 January 1991, transposing Directive No 89/104 of 21 December 1988, reinforced the repressive provisions of the Law of 31 December 1964 and reaffirmed the suitability of criminal prosecution.

Directive No 2004/48 of 29 April 2004 on the enforcement of intellectual property rights realized a first harmonization of provisions on civil procedure and sanctions, with the aim of preventing the placing on the EU market of infringing goods and their illegal commercialization, without hindering legitimate trade. The implementation law (Law No 2007-1544 of 29 October 2007) introduced into French law new protective and probatory measures, interim measures to prevent imminent infringement of trademark rights or to prevent the continuation of alleged infringing acts, measures related to the assessment of damages and the publication of judgments as a further deterrent, and mechanisms for cooperation and exchanges of information between Member States. Law No 2011-267 of 14 March 2011 (LOPPSI II) reinforced the repressive tools by creating an aggravating circumstance for certain infringements when committed via an online public communication network. Law No 2014-315 of 11 March 2014 to reinforce the fight against intellectual property infringement, supplemented by Decree No 2014-1550 of 19 December 2014, amended the method of assessing damages for victims of acts of infringement, which clearly takes account of the different levels of harm, the rules of evidence for infringement and brought all the limitation periods  in the Intellectual Property Code into line with the five-year period under ordinary civil law. In order to facilitate the exercise, by the proprietor of IP rights, of a criminal prosecution following a detention by customs, a counterfeit seizure (saisie-contrefaçon) or preventive measures, it introduced the possibility for the complainant to file a simple complaint with the public prosecutor. Law No 2016-731 of 3 June 2016 significantly increased the penalties applicable. Finally, Ordinance No 2019-1169 of 13 November 2019, which transposed Directive No 2015-2436 of 16 December 2015, has modernized and improved the trademark protection system, in particular by clarifying the concept of infringement of prior trademark and by adding to the indicative list of signs capable of infringing a trademark .

The fight against this phenomenon is also ensured by customs law, both at the international and European levels. Thus, the TRIPS agreements provide, in Articles 51 et seq., for provisions relating to border enforcement measures that Member States must adopt, such as the suspension by the customs authorities of the release of goods, the right of inspection and information or remedial measures. EU law has, from the very beginning, established rules allowing Member States to prohibit the release of counterfeit goods into circulation (Reg. No 3842/86, repealed and replaced by Reg. No 3295/94). Regulation No 1383/2003, and subsequently Regulation No 608/2013, defined the conditions and procedures for intervention by the customs authorities in the event of the circulation of counterfeit goods on EU territory. The rules apply to goods which, according to EU customs legislation, are subject to customs supervision or control and establish a control of the compliance of these goods with intellectual property rights at the borders .

As a last resort against trademark infringement, an action for unfair competition can be brought by the proprietor. In effect, the subsidiary nature of an action for unfair competition allows the owner of the trademark to bring it concurrently with an action for infringement , provided that the event giving rise to the unfair competition is distinct from the act of infringement . Besides the protection of a private right, the purpose of this action is to ensure free and fair competition insofar as it allows the victim of practices contrary to the rules of trade to bring a civil liability suit against the perpetrator.

EUIPO and EUROPOL report, Intellectual Property Crime Threat Assessment 2022, March 2022.

The fight against counterfeiting is the subject of a bill aimed at modernizing the fight against intellectual property infringement, adopted by the French National Assembly and transmitted to the Senate on 25 November 2021 (Ass. nat. 4555, 12 October 2021), which provides for the collection of information, the reinforcement of the means of establishing and punishing infringements, and the involvement of intermediaries in the fight against online counterfeiting.

Law No 2014-315 of 11 March 2014 amended the Intellectual Property Code to take into account the strengthening of customs' enforcement capabilities.

Cass. com, 11 March 2003, LawLex200300001064JBJ: the specific liability action under Article L. 713-5 of the Intellectual Property Code does not prevent the action in unfair competition based on Article 1240 of the Civil Code; Cass. com.,14 December 2010, LawLex201000001472JBJ: the annulment of the registration of a design does not entail the rejection of unfair competition claims; Cass. 1st civ, 10 April 2013, LawLex201300000610JBJ; Cass. com. 29 March 2017, LawLex201700000636JB: the court may allow it without explaining the infringement action brought in a separate instance.

Cass. com, 15 September 2009, LawLex200900003110JBJ.

Industrial Property Law

142. Protection of the mark

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142. Protection of the mark

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Les décisions de justice citées dans ce paragraphe :

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