France
How to litigate successfully in IP
matters before the French civil courts
JF Bretonnière and Cécile Cailac
Baker & McKenzie
France has developed a mature and sophisticated system of IP rights protection. There are a number of options available to deal with infringing goods and impose civil measures against IP rights infringers.
IP rights holders can institute civil proceedings or seek pre-trial remedies such as an interim injunction or a descriptive or physical seizure order. These proceedings can allow the rights holder to receive damages, ensure the destruction of the infringing goods and publication of the judgment in newspapers or professional magazines, and/or obtain an injunction, as well as legal costs and expenses.
Legal grounds for an infringement action
Before instituting any civil litigation in France, it is necessary to analyse the IP rights on which the litigation will be based. The IP rights owner must prove its ownership of the rights to the court, and prove that those rights are valid in France in accordance with the principle of territoriality of IP rights.
The French IP system is a ‘first to file’ system, meaning that:
• only registered trademarks, designs and patents designating France can be used as the basis for French litigation; and
• the IP rights owner must register its rights with the French Industrial Property Office (INPI) or the Office for Harmonisation of the Internal Market (OHIM) (for Community trademarks and designs).
Therefore, before instituting civil litigation, the claimant must verify that the IP rights have been duly registered (for patents, trademarks and designs) and renewed if necessary (trademarks and designs), and that the registered owner of the infringed IP rights is the party instigating the litigation.
Furthermore, if the IP rights have been assigned, the claimant must verify that this assignment has been duly recorded with the INPI or the OHIM before filing an action; otherwise, the action will be automatically rejected.
Regarding copyright, it is possible to base a civil litigation on an unregistered copyright or design. Under French law, the author of a work enjoys exclusive property rights in that work by the mere fact of its creation. The only requirement for protection of a work of authorship under French copyright law is that the work be original. An unregistered French design can also be protected by copyright law if it is original.
Furthermore, pursuant to the EC Community Design Regulation (6/2002), an unregistered Community design can be protected if it is new and has individual character.
In addition, as is the case for unregistered trade dress in the United States, the overall commercial image or appearance of a product (including its size, shape and colour) may be protected under French unfair competition rules to the extent that the wrongful act can be distinguished from trademark or design infringement.
In France, the concept of unfair competition has been developed by case law to sanction unfair competitive behaviour contrary to common practice in commerce. It is further based on the law of tort under Article 1382 of the Civil Code. The unfair competition law primarily covers torts that cause an economic injury to a business through a deceptive or wrongful business practice.
To be characterised as unfair competition, an act must be distinguished from other specific acts prohibited by law (eg, patent or trademark infringement), but the two actions are not incompatible if distinct facts exist. In certain conditions, legal action against an act of unfair competition can also afford protection to those that cannot assert IP rights under a patent, design, trademark or copyright.
Parties to the lawsuit
Under French law, only the IP rights owner and/or the exclusive licensee may file an IP rights infringement action.
An exclusive licensee can initiate an IP rights infringement action if, after formal notice, the trademark owner does not initiate legal action, provided that the licence agreement does not provide otherwise and has been registered with the INPI.
A non-exclusive licensee is entitled to participate in the infringement proceedings initiated by the IP rights owner in order to obtain remedy on the basis of unfair competition law for the prejudice it has suffered. Therefore, although the IP rights owner or exclusive licensee should file the legal action, non-exclusive licensees should participate in the legal action in order to obtain remedy for the damage suffered.
Jurisdiction
Only the court that has jurisdiction can render a decision on the merits of a case. Therefore, before initiating legal proceedings the claimant must ensure that the action is brought before the correct court
Trademark infringement
Civil proceedings relating to trademarks are exclusively heard by a high court, as are any proceedings involving both a trademark matter and a related matter concerning copyright, industrial designs or unfair competition.
Patent infringement
All patent infringement cases fall within the jurisdiction of one of the 10 specialised high courts (Bordeaux, Lille, Limoges, Lyon, Marseille, Nancy, Paris, Rennes, Strasbourg, Toulouse).
Other IP rights infringements or unfair competition
With respect to copyright and design infringement or acts of unfair competition, all cases are under the jurisdiction of the high courts or the commercial courts, depending on the status of the defendant.
Regarding geographical jurisdiction, the court with jurisdiction is the court of the place either where the defendant is domiciled or where the infringement took place or the damage was suffered.
Collecting evidence
Before initiating any infringement action, and also once a civil action is initiated, it is necessary to collect evidence of the infringement, and in particular to obtain information about the quantities of suspected infringing goods, by:
• asking a bailiff to draft an affidavit regarding the sale of the infringing products;
• carrying out an infringement seizure; or
• having recourse to a judicial expert.
Bailiff affidavit
To prove that the suspected infringing goods correspond to those sold by the defendant, it is recommended to request an affidavit from a bailiff stating that the suspected infringing goods were bought from a specific shop. In practice, a person accompanied by the bailiff will buy the suspected infringing product in the presence of the bailiff, who stands outside the shop (as he is not authorised to enter into the shop to draft the affidavit). The bailiff, having reviewed the sales receipt, will certify that the goods were bought in that specific shop.
Infringement seizures
The IP rights owner can request the president of the court to authorise the bailiff to proceed with an infringement seizure. The president’s authorisation can be issued within a few days and will enable the IP rights owner to obtain information on the origin of the products and the quantities sold. The court with jurisdiction is the court of the place where the infringement seizure is carried out.
French law provides for two different types of seizure: effective seizure (saisie réelle) and descriptive seizure (saisie descriptive).
An effective seizure order authorises the bailiff to seize a stock of suspected infringing products in whole or in part. Such authorisation may be subject to the prior deposit of security with the court. Furthermore, because such effective seizure may damage the seller’s business, the seller will be entitled to claim damages in the event that the suspected products are found not to infringe the IP rights.
After having recourse to this seizure, the claimant must act quickly since its writ of summons must be filed at the court within 15 days (for trademark or patent infringement) or 30 days (for copyright infringement) of the date of the seizure; otherwise, the seizure will be declared null and void.
A descriptive seizure order authorises a bailiff to go to the seller’s premises to collect evidence of the infringement (eg, by taking photographs of the suspected infringing products or buying samples).
In recent years the French courts have decided that the infringement action for descriptive seizure should not have the same time limits as effective seizure. Therefore, it is recommended in all cases to conduct both descriptive and effective seizures.
Technical experts
The courts may also commission technical experts to provide them with advice. Experts can be useful to analyse the infringing character of the goods in, f or example, cases of patent infringement, as well as to evaluate the importance of the infringement. Where judges have difficulty evaluating the exact amount of the damage suffered by the claimant, economic experts can provide them with an economic scheme evaluating both actual and future damages caused by the infringing acts.
Proceedings to stop infringement
Customs watch
Both French and EC law provide for an effective way to fight IP rights infringement through customs watch. This is a preventive procedure that allows an IP rights owner to stop infringing goods from being illicitly imported into France. The procedure allows the Customs Authority to withhold and potentially seize goods that infringe IP rights. The IP rights owner then has the option to institute legal proceedings.
To ensure that the Customs Authority stops infringing goods, the IP rights owner should complete and submit a customs intervention file.
French law permits customs intervention only in cases of trademark infringement. The Intellectual Property Code provides that the Customs Authority may, at the written request of the owner of the registered trademark or the beneficiary of an exclusive right of exploitation, withhold during inspection any goods claimed by the owner or beneficiary to bear a mark that infringes the trademark for which it has obtained registration or with regards to which it enjoys an exclusive right of use.
The public prosecutor, the plaintiff (ie, the trademark owner) and the person importing the goods shall be informed without delay by the Customs Authority that the goods have been withheld.
Once informed of the seizure, the trademark owner has 10 working days to take action against the infringer. It can either:
• carry out an infringement seizure after being authorised to do so by the president of the High Court, and subsequently introduce a legal action if it chooses to; or
• directly institute civil or criminal proceedings and provide the required security to cover possible liability in the event that the infringement is not subsequently recognised.
The withholding of goods will be automatically lifted in the event that the plaintiff fails, within 10 working days of the seizure of the goods, to provide evidence to the Customs Authority that it has commenced an infringement action. The IP rights owner must thus act very quickly.
Since trademark infringement is a customs offence, the Customs Authority may, under certain conditions, prosecute trademark infringers itself as well as seizing and destroying infringing goods based on the violation of customs regulations.
However, since patent, copyright and design infringements do not constitute customs offences, after withholding the goods the Customs Authority cannot act based on the violation of customs regulations. Therefore, it is up to the IP rights owner to take appropriate action against the infringer. Customs watch can nevertheless be an effective way of stopping illicit infringing imports, at least to a certain extent.
The system instituted under EC law with respect to customs intervention is generally very close to that provided for by the French legislation described above. A European Community regulation of 2003, which is directly enforceable in France, includes patent, copyright, designs and other IP rights in the customs watch. Therefore, it is now possible to request that the French Customs Authority stop the importation of goods that infringe any IP rights protected in France by filing a customs intervention file.
Pre-trial/interim injunction
It is possible to obtain an interim injunction to stop infringing acts. An interim injunction is an order requiring the infringer not to engage in certain actions.
For patents, designs and copyright, an interim injunction may be granted by the president of the court in all urgent cases if no serious objection is raised. Even where confronted with serious objections, the president may, at any time, order interim injuction measures.
A specific interim injunction is available for trademark infringement. The trademark owner can ask the court to stop the infringing acts subject to the requirement that the action before the court be lodged soon after the claimant becomes aware of the infringement. Usually, the French courts consider that a maximum of six months’ delay is acceptable when requesting an injunction. A decision on the merits can be rendered quickly. Therefore, it is recommended that the claimant file an action within the six-month deadline.
Infringement lawsuit
Following the service of a writ for infringement and unfair competition, several procedural hearings will take place before the competent court in order for the parties to exchange briefs and evidence.
Once all the arguments have been exchanged and evidence filed, the case is heard by the court and a decision is rendered. An infringement action takes approximately 12 to 18 months at first instance.
Costs and fees
The French Civil Procedure Code allows the judge to order the losing party to pay the court costs and attorneys’ fees of the other party. However, this rule is not compulsory. In practice, in about 80 per cent of cases the losing party is ordered to pay the court costs and attorneys’ fees.
The sum awarded is at the sole discretion of the judge and is generally lower than the costs actually incurred by the IP rights owner.
Damages
Under French law the IP rights owner, the victim of infringement, should be indemnified according to the general civil liability rules, which provide that the victim should be restored to the situation it would have been in had the infringement never happened. Therefore, the remedies awarded by the courts should compensate or indemnify the IP rights owner only for damages suffered, and cannot exceed the damages suffered. The French courts cannot allocate punitive damages.
In applying the general rules of civil liability, the evaluation of damages is based on the losses suffered and the profits of which the IP owner has been deprived. The assessment of damages for IP rights infringements depends on the evidence presented to the judge by the claimant and the scope of the infringement.
In cases of IP rights infringement, damages are calculated using:
• the identified drop in sales volume;
• damages (ie, for lost opportunities which would have been generated but for the infringer’s activities); and
• injury to the reputation and goodwill of the IP rights.
The IP rights owner has the burden of proof in civil cases involving IP rights violations. It must show sufficient evidence of damages by furnishing documents, for example account documents showing the loss suffered or advertising investments.
Another factor considered in the award of damages is the value of royalties that would have been paid to the patent owner by the infringer.
The amount of damages awarded by the high courts and appeal courts is usually less than €15,000. However, more recently the French courts have awarded much higher damages if the damage suffered is significant and the case is well evidenced by the IP rights owner.
For instance, in litigation concerning the infringement of copyright in the film The Fifth Element in an advertisement, on September 8 2004 the Paris Court of Appeal granted the copyright holders €750,000 for copyright infringement and €1 million for parasitism, as well as €1 million to Luc Besson, the film director, for moral damage – a total of €2.75 million.
For the purposes of comparison, in this case the Paris High Court granted only €300,000 for parasitism; on appeal these damages were multiplied by a factor of nine – a major increase.
