Industrial Property Law

Article L. 722-6 of the Intellectual Property Code specifies the criteria that the court must take into consideration when determining the amount of damages that may be awarded to the victim of infringement. The court has two alternative methods of calculation. The first takes into account loss of earnings, non-economic loss and the profits unjustly realized by the infringer, including the economi …

Assessment of harm

Any person authorized to use the geographical indication or any organization whose purpose is to defend geographical indications may bring a civil action for infringement or intervene in proceedings initiated by another party for infringement (Art. L. 722-2 IP Code) .

See CA Paris, 7 November 2007, LawLex202200008775JBJ.

Standing to bring proceedings

The judicial court has sole jurisdiction to hear civil actions and claims relating to geographical indications, including when the actions or claims also involve a related issue of unfair competition (Art. L. 722-8 IP Code).

Competent court

Like trademark infringement, infringement of a geographical indication can be proven by any means (Art. L. 722-4, para. 1, IP Code).

The judicial courts may, at the request of the applicant in the infringement action or of their own motion, order the investigative measures provided for in Articles L. 722-4 to L. 722-5 of the Intellectual Property Code. Article L. 722-4 of the Intellectual Property Code provides for a seizure similar to the seizure for infringement (saisie-contrefaçon) under Article L. 716-4-7 of the same code. This may include a detailed description, with or without the taking of samples, or an actual seizure of the allegedly infringing products or services, as well as any related documents, even in the absence of the products or services in question (Art. L. 722-4, para. 2, IP Code). The court may also require a full description or seizure of the materials and instruments used to manufacture or distribute the allegedly infringing goods (Art. L. 722-4, para. 3, IP Code). It may make the enforcement of the measures ordered subject to the provision by the plaintiff of guarantees designed to ensure that the defendant will be compensated if the action is subsequently held to be unfounded or the seizure is cancelled (Art. L. 722-4, para. 4, IP Code). If the applicant fails to take civil or criminal action on the merits within a time-limit set by regulation, the entire seizure, including the description, may be cancelled at the request of the person seized, without the latter having to state the reasons for his request and without prejudice to any damages that may be claimed (Art. L. 722-4, para. 6, IP Code). In addition, at the applicant's request, the competent court may order the alleged infringers or certain third parties to hand over information and documents in order to determine the origin and distribution networks of the allegedly infringing products. This includes documents or information held by the defendant or by any person found in possession of allegedly infringing products or who provides services used in allegedly infringing activities or who has been reported to be involved in the production, manufacture or distribution of such products or the provision of such services (Art. L. 722-5, para. 1, IP Code). The production of documents or information may only be ordered if there is no legitimate impediment (Art. L. 722-5, para. 2, IP Code).

Finally, the competent court may, on the initiative of the applicant in the infringement action or ex officio, issue any legally permissible investigative measure (Art. L. 722-4-1 IP Code), if there is a legitimate reason, pre-trial, for the preservation or establishment of evidence of facts on which the outcome of a dispute may depend, either at the request of the parties or in interim proceedings (Art. 145, Code of Civil Procedure). Such measures include, under Articles 179 to 284 of the Code of Civil Procedure, the personal review by the judge, the personal appearance of the parties, the examination of witnesses or the investigation, and the investigative measures carried out by a technician.

Proof of infringment

Any person with standing to sue for infringement may ask the competent civil court to grant interim or precautionary measures against the alleged infringer in order to prevent imminent infringement of their rights or to prevent the continuation of alleged infringing acts. They may apply to the court for interim relief or, if the circumstances require that the measure be taken without due observance of the adversarial process, file a motion to the court for an order for urgent measures. The court may only order the measures requested if the evidence reasonably available to the applicant makes the infringement of his/her rights likely or imminent (Art. L. 722-3, para. 1, IP Code).

When interim or precautionary measures are ordered prior to any proceedings on the merits, the applicant must initiate civil or criminal action or file a complaint with the public prosecutor (Art. L. 722-3, para. 5, IP Code). Failing this, at the request of the defendant and without his having to state the reasons for his claim, the measures ordered are annulled, without prejudice to any damages that may be claimed.

The competent court may order the interim prohibition of the allegedly infringing acts, make the continuation of the acts subject to the provision of guarantees intended to ensure the possible indemnification of the applicant, or order the seizure or delivery of the goods into the hands of a third party. If the applicant demonstrates circumstances likely to jeopardize the recovery of damages, the court may order the preventive seizure of movable or immovable property, including the freezing of bank accounts and other assets, in accordance with ordinary civil law. In order to determine the assets that may be subject to seizure, it may request the production of bank, financial, accounting or commercial documents or access to relevant information (Art. L. 722-3, para. 2, IP Code). It may also grant the applicant an advance payment when the existence of his harm is not seriously contestable (Art. L. 722-3, para. 3, IP Code). All these measures may be issued, if necessary, subject to penalties for non-compliance (Art. L. 722-3, para. 1, IP Code).

The court may make the enforcement of the measures subject to the provision by the applicant of guarantees to ensure the possible indemnification of the defendant if the infringement action is subsequently ruled unfounded, or if the measures are cancelled (Art. L. 722-3, para. 4, IP Code).

Interim and precautionary measures

Article L. 722-6 of the Intellectual Property Code specifies the criteria that the court must take into consideration when determining the amount of damages that may be awarded to the victim of infringement. The court has two alternative methods of calculation. The first takes into account loss of earnings, non-economic loss and the profits unjustly realized by the infringer, including the economies of intellectual, material and promotional investments that the infringer has made as a result of the infringement (para. 1). The second provides for the fixing of a lump sum which is not exclusive of the damages for the non-economic loss caused to the injured party (paragraph 2). The courts must provide a detailed calculation for each of the heads of damage separately, and must not simply make an arbitrary or global assessment.

The applicant in the infringement action may ask the competent court to order, where the infringer is found guilty, that the products identified as infringing and the materials and implements used mainly for their creation or manufacture be recalled from the commercial channels, permanently removed from those channels, destroyed or confiscated (Art. L. 722-7, para. 1, IP Code).

At the request of the injured party, the court may order any appropriate measure of publication of the judgment against the infringer, in particular its posting or publication in full or in part in newspapers or via online public communication services that it designates, according to the terms that it stipulates (Art. L. 722-7, para. 2, IP Code). The corrective measures are ordered at the infringer's expense (Art. L. 722-7, para. 3, IP Code).

Industrial Property Law

226. Assessment of harm

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Les notions juridiques connexes

226. Assessment of harm

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Les notions juridiques connexes

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