Counterfeit

Infringement is defined as the reproduction, imitation or use of an intellectual property asset without the consent of the rights holder (and therefore in violation of a private right).

In which cases is the counterfeit constituted?

• In terms of trademarks, infringement is defined in article 713-2 of the Intellectual Property Code as the use by a third party of a sign identical or similar to the trademark of the injured owner, likely to create a risk of confusion in the mind of the consumer;

• In terms of designs, infringement is defined in article 521-1 of the Intellectual Property Code as any manufacture, offer, placing on the market, import, export, transshipment, use, or possession for these purposes, of a product incorporating the design without the authorization of the owner of the rights;

• In terms of copyright, infringement is defined by the article 335-3 of the Intellectual Property Code as “[…] any reproduction, representation or dissemination, by whatever means, of a work of the mind in violation of the author’s rights, as defined and regulated by law.”

The fight against all forms of counterfeiting, especially on the Internet, has become a social issue.

Moreover, on November 25, 2021, the National Assembly unanimously adopted, on first reading, with amendments, the anti-counterfeiting bill.

Indeed, the consequences of counterfeiting are of such magnitude for the companies affected that it is necessary to have effective means of fighting it and dissuasive sanctions for counterfeiters.

For companies, the sale of counterfeit products, often offered at a lower price, leads to a loss of market share and causes significant damage to the image of the counterfeit trademark.

Indeed, consumers have less confidence in the trademark (although a guarantee of a certain quality), see it become commonplace, and tend to move away from it.

Regardless of these issues of value and image, we must not forget the risk for the consumer of buying products that will prove to be dangerous.

Indeed, many counterfeits concern medicines and toys.

However, very often, the consumer does not know that he is in the presence of a counterfeit when he makes his purchase.

It is therefore up to him to be extremely careful and attentive.

The infringement action is brought by way of a writ of summons before the Court of Justice in order to obtain, in particular, the award of damages as compensation for the prejudice suffered as a result of the unauthorized use of the intellectual property title.

The judge can also order provisional or conservatory measures to stop the infringement.

Infringement of intellectual property rights is punishable by law.

Other infringements exist outside of counterfeiting and are sanctioned by other means, in particular in terms of unfair competition.

Point of jurisprudence

The mere filing of a trademark is not an act of infringement since such filing cannot be considered as use in the course of business (Cass. com., Oct. 13, 2021, n°19-20.504 and n°19-20.959):

“The Court of Cassation has previously interpreted Articles L. 713-2, L. 713-3 and L. 716-1 of the Intellectual Property Code in their wording prior to that resulting from Ordinance No. 2019-1169 of November 13, 2019, as meaning that the filing of an infringing sign as a trademark alone constitutes an act of infringement, irrespective of its exploitation […].

However, this interpretation should be reconsidered in light of the case law of the Court of Justice of the European Union (CJEU).

This court holds that the owner of a registered trademark can only prohibit the use by a third party of a sign similar to his trademark if such use takes place in the course of trade, is made without the consent of the trademark owner, and is made for goods or services identical or similar to those for which the trademark has been registered and, because of the existence of a likelihood of confusion in the mind of the public, undermines or is likely to undermine the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services (CJEU, 3 March 2016, aff. C-179/15, Daimler, pts 26 and 27: JurisData no. 2016-004664, and case law cited).

However, the application for registration of a sign as a trademark, even when it is granted, does not characterize use for goods or services, within the meaning of the case law of the CJEU, in the absence of any marketing of goods or services under the sign. Similarly, in such a case, no likelihood of confusion in the mind of the public and, consequently, no infringement of the essential function of indication of origin of the mark, are likely to occur.”

Update on Customs’ means of action

French customs are committed to ensuring the conformity of goods to current standards and also assist intellectual property rights holders in their efforts to protect themselves against counterfeiting.

Thus, the applicant has the possibility to request a customs detention of the suspected counterfeit products as well as the communication of information on the importer and the consignee/consignee of the products.

In France, 1491 requests for intervention were registered in 2021.

In 2021, more than 9 million counterfeit products were withdrawn from the market by French customs, including approximately 1.7 million body care products and 1.6 million games, toys and sports items (source).

Update on trademark strategy

While a trademark can be registered in a country at any stage of the owner’s business development, it is recommended to have a medium/long term vision in order to register a trademark in strategic countries, in particular those where counterfeiting is particularly present, such as China.

Unless bad faith on the part of the third party applicant is demonstrated, a late filing in that country could be refused by the examiner on the grounds that there is an identical or similar earlier trademark filed or registered in that territory.

Indeed, unlike the French Trademark Office or the European Union Trademark Office, the Chinese Trademark Office carries out a verification of prior rights during the examination of the trademark application.

The Bouchara firm assists you in particular in :

• Protection and defense of your intellectual property rights;
• Monitoring your intellectual property rights;
• The procedure for reporting on e-commerce platforms;
• Searching for counterfeits on the Internet;
• The use of a bailiff for the establishment of reports ;
• Conducting litigation procedures in the field of intellectual property rights (seizure of goods, infringement proceedings).