Counterfeiting lawyer in Paris

The fight against counterfeiting: a key challenge for businesses

Counterfeiting is one of the most direct attacks on a company’s rights. Whether it involves a trademark reproduced identically, a copied design, a copyrighted work exploited without authorisation or an infringed patent, the consequences are always twofold: immediate financial loss and damage to the brand’s image that can prove lasting.

Cabinet Bouchara & Avocats, specialised in intellectual property law in Paris, assists companies and brands in defending their rights against all forms of counterfeiting, both physical and digital.

Companies must fight counterfeiting in order to protect their rights and prevent third parties from infringing them. All companies need to be vigilant — those in the luxury sector of course, but more generally all those that fall victim to acts of counterfeiting. This includes, for example, companies in the fashion, cosmetics, perfume, toy, cigarette, pharmaceutical and automotive sectors, among others.

Recognised expertise in counterfeiting litigation

For more than twenty years, Cabinet Bouchara & Avocats has been assisting companies in protecting and defending their intellectual property rights. 

Ranked among the leading French firms for trademarks, designs and copyright by several leading directories, including Chambers, Legal 500, Décideurs, Managing IP and Lexology Index (formerly Who’s Who Legal), the firm is recognised by its clients for its responsiveness, commitment and pragmatism in handling both advisory and litigation matters.

Counterfeiting is one of our main areas of practice. Our lawyers act for claimants as well as defendants before the competent specialised courts, and assist French and international companies in cases that may involve several territories and several categories of rights.

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What is counterfeiting under intellectual property law?

Counterfeiting is defined by the French Intellectual Property Code as any infringement of an intellectual property right without the authorisation of its owner. It can affect various strategic assets of the company:

Trademark infringement occurs when a protected sign is reproduced, imitated or used for identical or similar goods or services without the owner’s consent. It can be committed online as well as offline.

Copyright infringement consists of reproducing, performing or distributing a protected work without the consent of its author or rightholders. It concerns graphic creations, software, professional photographs, editorial content and fashion designs alike.

Design infringement covers the reproduction or imitation of a protected shape (packaging, a product design, a specific visual) without authorisation.

Patent infringement covers the manufacture, offering, placing on the market or use of a patented invention without the patent owner’s consent.

National trademarks

We secure your national trademarks by registering them, monitoring infringements and coordinating the fight against counterfeiting with local and customs authorities for optimal protection in France.

European Union trademarks

Protect your EU trademarks by registering them and fighting counterfeiting effectively through a harmonised strategy and cross-border legal action, ensuring comprehensive protection across the European Union.

International trademarks

Our international monitoring and enforcement services protect your trademarks worldwide, fighting counterfeiting effectively.

Is your company facing an act of counterfeiting? Contact us for an initial discussion of your situation.

How does the firm assist companies facing counterfeiting?

When an infringement is identified, several courses of action may be considered. The choice of procedure depends on the nature of the rights at stake, the extent of the damage and the location of the infringer. 

Cabinet Bouchara & Avocats acts at every stage of your case:

• Analysis of the rights invoked : trademarks, designs, copyright or patents. We identify the most appropriate legal basis and verify the strength of the titles before taking any action. 
• Gathering and preserving evidence : time-stamped screenshots, test purchases, bailiff’s reports and, where relevant, we request and organise infringement seizure operations (saisie-contrefaçon).

Obtaining measures suited to the urgency

When evidence needs to be gathered quickly, the infringement seizure (saisie-contrefaçon) can be a particularly useful tool. This measure allows, with judicial authorisation, the seizure of elements likely to establish the existence, origin and extent of the infringements observed.

It is available for trademarks, copyright, designs and patents. Although the legal bases differ depending on the rights invoked, the claimant must, in each of these areas, bring proceedings on the merits within twenty working days or thirty-one calendar days, whichever is longer, from the day of the seizure or description.

Compliance with this deadline and the regularity of the operations are essential to preserve the value of the evidence gathered.

Digital counterfeiting: a growing challenge for businesses

While it is possible to act against counterfeiters described as traditional, who market counterfeit goods through conventional channels and are easily identifiable, it is also possible to act against digital infringements, which are taking an ever-greater place in our society. 

Infringements must be monitored and acted upon regularly, whether by reporting listings that infringe the company’s rights on the various platforms (Etsy, Alibaba, Amazon, Temu, etc.), monitoring hashtags in social media posts, or shutting down so-called mushroom sites that copy the architecture of the brand’s website.

Defending your rights on digital platforms

Monitoring alone is not enough: each infringement must be qualified, documented and dealt with case by case. Our lawyers assist you in implementing a coordinated strategy: takedown requests, reports to platforms, handling of fake websites and appropriate legal action where infringements persist.

Online counterfeiting raises specific challenges: digital infringements are volatile, which can make it harder to prove the infringing acts, and sellers are often based outside France. An effective strategy therefore relies on several combined levers:

• Online bailiff’s reports (constats de commissaire de justice) : to obtain solid evidence before any formal notice or legal action. 
• Notifications to platforms under the reporting procedures provided for by the European Digital Services Act (DSA).
• Summary proceedings to obtain urgent measures and the blocking of websites.
• Reporting to customs via an application for action (AFA) filed with the competent authorities, to have imports filtered.

The role of customs in the fight against counterfeiting

Customs authorities help fight counterfeiting and are quite proud — rightly so — of their annual figures. However, it is essential to be properly advised on how to make effective use of the customs services and resources dedicated to such actions. Once customs identify infringements, action must be taken within set deadlines and, where appropriate, the infringements must be brought before the courts.

Why fight counterfeiting? Because protecting your trademark and your designs means protecting the customers who trust the brand and should not be confronted with products that deceive the consumer. If the end customer buys a dupe or a copy instead of the original product, they may be disappointed if the product does not live up to their expectations, and may hold it against the brand. Counterfeits cause financial and reputational damage to the brand, which must act to preserve its rights.

What compensation can be obtained in the event of counterfeiting?

Compensation for the damage caused by counterfeiting follows precise rules, largely harmonised across the various intellectual property rights. In assessing damages, the court takes into consideration in particular: 

• the negative economic consequences of the infringement as suffered by the rightholder, including lost profits and losses incurred;
• the moral prejudice caused to the brand or the company;
• the profits made by the infringer, including savings on investments made thanks to the unlawful act.

These criteria are laid down by the French Intellectual Property Code for trademarks (Article L. 716-4-10), copyright (Article L. 331-1-3), designs (Article L. 521-7) and patents (Article L. 615-7).

As an alternative, and at the request of the injured party, the court may also award a lump sum in damages. The assessment of the damage must be prepared rigorously and based on documented evidence.

Should an infringement action be combined with an action for unfair competition and/or free-riding?

In some cases, the acts observed are not limited to the infringement of an intellectual property right. The conditions under which the products are marketed, the use of a trade name or domain name, the creation of a likelihood of confusion or certain unfair and/or parasitic practices may also cause damage to the company.

It is then necessary to examine whether an action for unfair competition and/or free-riding can supplement theinfringement action. These legal bases are not interchangeable; how they fit together must be assessed in light of the facts. Upstream legal analysis makes it possible to identify the relevant claims and build a coherent litigation strategy.

Make an appointment with a counterfeiting lawyer

Do you wish to bring an infringement action, defend your intellectual property rights or respond to a claim made against you? Contact Cabinet Bouchara & Avocats to arrange an appointment.