The legal action for infringement is the one specifically open to the holders of intellectual property rights in case of infringement of the latter.
It is based on each part of the Intellectual Property Code, which is respectively dedicated to each type of private right, and includes a civil and a criminal component.
This action is usually brought in a court proceeding with mandatory representation and therefore requires the intervention of a lawyer.
It is recommended in this context to seek the advice of a lawyer specialized in intellectual property due to the complexity of the matter (characterization of the fault, evaluation of the prejudice, etc.).
Civil action for infringement
This is an action brought directly by the owner of intellectual property rights or, where applicable, by the exclusive licensee, before the civil courts.
It allows to obtain, in particular, measures of prohibition of the acts constituting infringement, as well as damages to compensate for the prejudice suffered by the victim.
The limitation period of the civil action for infringement is 5 years from the day when the owner of the right knew or should have known the last fact allowing him to exercise it.
In matters of counterfeiting, the law provides for exclusive jurisdiction as follows:
- In matters of infringement of French trademarks, copyrights and designs, the following Courts, which are listed in Table VI annexed to the Code of Judicial Organization, have exclusive jurisdiction:
- In matters of counterfeiting of trademarks and designs of the European Union, the ‘Tribunal judiciaire’ is exclusively competent.
Consequently, infringement cases are examined exclusively by specialized judges who have extensive expertise in intellectual property matters.
In addition, several types of actions are possible:
The summary proceedings
This is an emergency legal procedure allowing to obtain provisional measures (expertise, bailiff’s report etc…) in a very short time.
This procedure is normally very short. It can last, depending on the case, a few hours (in the case of the so-called “hour-to-hour” summary procedure), a few days, or even a few weeks.
The main conditions for the admissibility of this action are :
- The criterion of urgency, which is assessed by the judge in a sovereign manner;
- The requested measure must not be seriously contested or must be justified by the existence of a dispute between the parties;
- As an exception to this last point, even in the presence of a serious dispute, the summary judgment judge may prescribe conservatory measures or measures of restoration to prevent imminent damage or to put an end to a manifestly illicit disturbance.
While this procedure allows for a relatively quick decision, it has a limitation in that the decision rendered (the summary order) does not have the authority of res judicata.
The fixed date procedure
This is a procedure on the merits of the case, the instruction of which is shortened by the suppression of the pre-trial phase.
It usually lasts between 1 and 2 months.
It has the advantage of being able to obtain a decision on the merits of the case, and therefore with the authority of res judicata, within a shorter period of time than the traditional action on the merits.
In order to be able to file a writ of summons “on a fixed date”, the plaintiff in the infringement action must first seek the authorization of the judge on a motion.
For this purpose, the following conditions must be met:
- Provide proof of urgency, which will be assessed by the judge;
- The case must be ready for trial.
If these conditions are met and the judge authorizes a fixed date summons, the date and time of the hearing are immediately set and must be indicated on the summons.
The “classic” procedure on the merits
at the end of which a decision will be rendered with the authority of res judicata in the main proceedings.
The average duration of a classic infringement action before the civil courts in the first instance is 1.5 to 2 years.
In the case of trademark infringement, it is up to the plaintiff to demonstrate the existence of a risk of confusion in the mind of the public between the signs, which is assessed by the judges in a global manner: with regard to the signs and the product(s) and/or service(s ) in question.
In the case of copyright, the applicant will have to show that the original work of the third party has been copied without his authorization. He will have to prove the ownership of his copyright on the work and characterize its originality.
Criminal action for infringement
Counterfeiting is an offence punishable by :
- A prison sentence of up to three years and 7 years when the offence is committed in an organized gang;
- A fine of up to 300,000 euros and up to 750,000 euros when the offence is committed in an organized gang.
In addition to these sanctions, it is possible for a rights holder who is a civil party to a criminal action to receive damages as compensation for his or her loss.
The statute of limitations for criminal infringement proceedings is 6 years from the day the infringement was committed.
In criminal infringement proceedings, jurisdiction is much broader than in civil matters.
Indeed, for many years, all criminal courts had jurisdiction over counterfeiting.
However, since the entry into force of Decree no. 2021-1103 of August 2021, i.e. since September1, 2021, in the jurisdiction of certain Courts of Appeal only, specialized jurisdictions have been assigned to certain courts.
In practice, the criminal route is considerably less used by intellectual property rights holders than the civil route. There are several reasons for this finding:
- Criminal proceedings tend to be longer than civil proceedings;
- The courts are less, or not at all for some, specialized in intellectual property matters compared to civil courts which are exclusively competent in intellectual property matters;
- Convictions and compensation for IP owners tend to be lower in criminal courts.
Update on the Trademark Referral
Article L.716-4-6 of the Intellectual Property Code expressly provides for the possibility of resorting to summary proceedings in cases of trademark infringement:
“Any person with standing to sue for infringement may apply to the competent civil court for an interim injunction to order, if necessary under penalty, against the alleged infringer or the intermediaries whose services he uses, any measure intended to prevent imminent infringement of the rights conferred by the title or to prevent the continuation of acts alleged to be infringing. The competent civil court may also order any urgent measures upon request when circumstances require that such measures not be taken adversely, in particular when any delay would be likely to cause irreparable harm to the plaintiff. The court may order the measures requested only if the evidence, reasonably available to the plaintiff, makes it likely that the plaintiff’s rights are being infringed or that such infringement is imminent.
The court may prohibit the continuation of the allegedly infringing acts, make it conditional on the provision of guarantees to ensure the possible compensation of the plaintiff or order the seizure or delivery into the hands of a third party of the products suspected of infringing the rights conferred by the title, in order to prevent their introduction or circulation in the commercial circuits. If the claimant proves circumstances likely to jeopardize the recovery of damages, the court may order the precautionary seizure of the movable and immovable property of the alleged infringer, including the freezing of his bank accounts and other assets, in accordance with the general law. In order to determine the assets that may be subject to seizure, it may order the communication of banking, financial, accounting or commercial documents or access to relevant information.
It may also award the claimant an advance payment when the existence of his or her loss is not seriously disputed.
When a case is brought before the court in summary proceedings or on application, the court may make the execution of the measures it orders subject to the provision by the plaintiff of guarantees intended to ensure the possible indemnification of the defendant if the infringement action is subsequently judged to be unfounded or the measures cancelled.
When the measures taken to stop an infringement are ordered before an action on the merits is taken, the plaintiff must, within a time limit set by regulation, either take civil or criminal action or file a complaint with the public prosecutor. Failing this, at the request of the defendant and without his having to state the reasons for his request, the measures ordered shall be annulled, without prejudice to any damages that may be claimed. ”
The Bouchara Law firm assists you in particular in :
- The protection and defense of your intellectual property assets and distinctive signs;
- Prior art search prior to any trademark registration;
- The formalities of filing your trademarks before the Offices(INPI, EUIPO etc…) and the follow-up of the registration procedure, including in particular the drafting of the wording of the classes of product(s) and/or service(s ) and the analysis of the distinctive character of the registered sign;
- Monitoring your intellectual property rights;
- The realization of statements of facts by bailiffs (statement of facts on the Internet, statement of purchase in order to establish the proof of the alleged facts etc…);
- The request for an expert if necessary (especially for the evaluation of the damage);
- Setting up and conducting litigation procedures in the field of intellectual property(seizure of infringement, infringement action, etc.).