Lexicon > Counterfeit seizureIP Lexicon
The seizure of counterfeit goods is a means of evidence that is not covered by common law and that can be applied to all acts of counterfeiting, whether they involve trademarks, copyrights, designs or patents.
The plaintiff in the action must be able to prove that he or she owns intellectual property rights in the creation that is being infringed by a third party.
This is a civil procedure provided for by the Intellectual Property Code, with specific provisions for each type of infringement.
Because of its exorbitant and derogatory nature from common law, the procedure of seizure of counterfeit is subject to strict rules.
In order to carry out seizure operations against the alleged infringer, it is essential to obtain an authorization from the competent judicial court.
Indeed, since the law n° 2008-776 of August 4, 2008 and the decree n° 2009-1204 of October 9, 2009, only ten Judicial Courts are competent to hear counterfeiting disputes.
The request for seizure must be presented by a lawyer registered at the bar of the jurisdiction of the competent judicial court.
The petition must set out the rights of the petitioner and the violation of which the petitioner believes to be the victim. In view of these elements, an order may be issued (at the applicant’s risk) by the judge in charge of the applications, which will then allow the applicant to have a bailiff intervene to seize the contested products.
The seizure report is a traditional bailiff’s act, and the bailiff will indicate its date, the identification of the applicant and the seized person as well as his name and signature.
The judge may have authorized the judicial officer to be accompanied by a computer expert.
The applicant must present the facts in a rigorous and reliable manner, otherwise he or she runs the risk of having the seizure order revoked.
Furthermore, it is essential that the judicial officer scrupulously follow the terms of the order issued.
Otherwise, the alleged infringer may try to have the seizure operations annulled. This application for annulment will be made before the Court hearing the merits of the case.
Thus, operations could be cancelled for many reasons including:
- Lack of reasonable time between the service of the order and the beginning of the seizure operations ;
- Non-compliance with the place of operations as specified in the order (e.g. operations carried out by the seizing party at an address other than that specified);
- Non-payment of the price when this was provided for in the order.
The texts provide for the obligation to file a suit on the merits before the competent Court within twenty working days or thirty-one calendar days, whichever is longer, from the day on which the operations took place.
Given the complexity of the matter and the procedural rules provided for by the law, it is recommended to call upon a lawyer specialized in intellectual property to guide you in the steps to take, the documents to look like in order to start the seizure procedure and the best strategy to adopt against the infringers to protect your interests and stop the infringement of your intellectual property rights as soon as possible.
Our team of lawyers practices in the jurisdiction of the Paris Court of Appeal.
Point of jurisprudence
When an intellectual property attorney (IPA) accompanies the judicial officer, authorized by the order, he must not go beyond the role that has been assigned to him.
Thus, the Bordeaux Court of Appeal annulled the minutes of seizure by considering that this advice is ” obviously left the role of helping the bailiff with the description assigned by the order to proceed with an interrogation of the president of the appellant company leading to the discovery of different finishes and sizes of the statuettes of the Virgin of Lourdes argued to be counterfeit.”
That consequently, “This discovery necessarily has negative consequences for the company C. as to the nature, origin, destination and extent of the alleged infringement, which is therefore detrimental to it […]” (Bordeaux Court of Appeal, November 10, 2021, n°18-06.847).
The Bouchara Law firm assists you in particular in :
- The protection and defense of your intellectual property rights before the Offices and Courts in France and abroad (opposition proceedings, nullity action, forfeiture action, unfair competition action etc.);
- The formalities of filing your creations before the Offices (INPI for French applications, EUIPOfor European Union applications etc…) including the follow-up of the registration procedure of your intellectual property titles;
- The implementation of interventions in the face of infringement acts by third parties(statements of facts, procedure of
infringement seizure) ; - In request and in defense in the context of actions in justice in counterfeiting(characterization of the infringement and the prejudice suffered, evaluation of the damages, analysis of the documents transmitted to establish the proof of the alleged facts etc.).
