Industrial Property Law

Any infringement of the rights of the owner of a design constitutes an infringement which engages the civil liability of the infringer, whether the design is national (Art. L. 521-1 IP Code) or European (Art. L. 515-1 and L. 522-1 IP Code) .
Under Article L. 521-2, paragraph 1 of the Intellectual Property Code, civil action for infringement is brought by the owner of the design. In effect, the reg …

Standing to bring proceedings

Any infringement of the rights of the owner of a design constitutes an infringement which engages the civil liability of the infringer, whether the design is national (Art. L. 521-1 IP Code) or European (Art. L. 515-1 and L. 522-1 IP Code) .

Under Article L. 521-2, paragraph 1 of the Intellectual Property Code, civil action for infringement is brought by the owner of the design. In effect, the registration of a design confers on its proprietor a right of ownership (Art. L. 513-2 IP Code), which entitles him or her to bring an infringement action , even if that person does not personally exploit the creation . Nevertheless, he or she must prove that he or she has standing to sue, and in particular that the design or model is registered in his or her name  by producing the original or a photocopy of the certificate of identity of the design . If the design right is cancelled , the owner is no longer entitled to bring proceedings.

The owner of a design may bring an action against acts subsequent to the publication of the registration of the title. Events occurring after filing, but prior to publication of the registration, are not subject to legal action (Art. L. 521-1, para. 1, IP Code). However, the applicant for an unregistered design may bring an infringement action where a copy of the application for registration has been notified to the alleged infringer, for events occurring after such notification (Art. L. 521-1, para. 3, IP Code).

When the title is held by more than one owner, the action is open to each of them by virtue of Article 815-2, paragraph 1, of the Civil Code, which stipulates that any co-owner may take the necessary measures to preserve the undivided property, even if such measures are not of an urgent nature. These provisions may be set out in the co-ownership regulations.

When title is transferred, the transferee is not entitled to bring an infringement action until the day on which the transfer is enforceable against third parties by registration in the National Designs Register (Art. L. 513-3 IP Code) . This registration is published in the Official Bulletin of Intellectual Property (BOPI ). In the case of a license agreement, any party to the agreement is entitled to intervene in infringement proceedings brought by the design owner or any other party, in order to obtain compensation for the harm suffered (Art. L. 521-2, para. 3, IP Code). Prior to the Law of 20 October 2007, the exclusive licensee of a design was not entitled to file an infringement action . This law, which extended the rule applicable to patents, plant varieties and trademarks to designs, introduced this option in paragraph 2 of Article L. 521-2 of the Intellectual Property Code. Unless otherwise stipulated in the license agreement, an infringement action may be brought by the licensee, provided that he or she has previously and unsuccessfully served formal notice on the owner of the design to institute proceedings. The license agreement must have been entered in the National Designs Register in accordance with Article L. 513-3 of the Intellectual Property Code. In the event of action by the owner of the design, the exclusive licensee is no longer entitled to make principal claims for compensation for infringement. Unfair competition claims may, however, be lodged . The non-exclusive licensee is not entitled to bring an action for infringement.

CA Paris, 7 April 2015, LawLex202100003278JBJ.

CA Paris, 31 March 2004, LawLex202200000973JBJ.

CA Paris, 6 July 1994, LawLex202300009117JBJ.

CA Lyon, 4 May 2005, LawLex200700000974JBJ.

CA Paris, 6 April 2005, LawLex202100003862JBJ.

CA Paris, 5 February 2014, LawLex201400000288JBJ.

CA Paris, 11 December 1998, LawLex202200004352JBJ.

Bulletin Officiel de la Propriété Industrielle.

Cass. com., 12 July 1993, LawLex200200001628JBJ.

TGI Paris, 27 September 2013, LawLex201400001204JBJ

Industrial Property Law

496. Standing to bring proceedings

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496. Standing to bring proceedings

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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