Request 145

In the case of infringement of intellectual property rights, for example in the area of marks, designs or even of rights holders (individuals or companies) can use the seizure in order to be authorized to have a bailiff appointed who will act on a judge’s order and go to the premises of the infringing competitor to collect elements relating to this infringement.

When the action is based on facts of unfair competition, without claim of private rights, the seizure of infringement is not possible.

On the other hand, on the basis of article 145 of the Code of Civil Procedure (CPC), it will be possible, under certain conditions, to request from the President of the Commercial Court the authorization to mandate a judicial officer whose mission will be to collect elements relating to the alleged infringement.

Indeed, article 145 of the CPC provides that “If there is a legitimate reason to preserve or establish, before any trial, the proof of facts on which the solution of a dispute may depend, legally admissible measures of investigation may be ordered at the request of any interested party, on application or in summary proceedings.

Article 493 of the CPC provides that “the order on request is a provisional decision rendered without adversarial process in cases where the petitioner is justified in not calling an opposing party.”

It follows from these articles that several conditions are necessary in order to seek judicial authorization on the basis of Article 145 and to set up such investigative measures:

The existence of a legitimate reason (resumption of a creation, or of a range of products protected by a private right without prior authorization of the holder of the rights, risk of infringement of an intellectual property title resulting from a fault of a third party, risk of confusion generated in the mind of the public, commercial prejudice suffered by the injured company etc.);
The need to preserve or establish evidence on which the resolution of the dispute may depend;
The fact that the request is made prior to any legal proceedings (no action on the merits relating to this dispute must already have been brought and therefore the case must not be the subject of any ongoing proceedings).

On the one hand, these provisions are intended to prevent the evidence from being lost.

The injured party therefore has an effective legal arsenal to provide proof of the injury he or she has suffered through the statement of facts.

On the other hand, the person who will be subjected to such measures must be protected from abuse.

For this reason, it is essential to justify the need for the finding, and the need to support it in a non-adversarial manner, when an application is made to the Tribunal.

Moreover, the Commercial Courts have taken the habit, following the law on business secrecy – developments below – of ordering the sequestration of the elements collected (documents, products, etc.) in order to ensure that they do not unreasonably harm the seized party.

Then, it will be necessary to initiate a procedure for the release of the receivership.

Finally, when obtaining an order 145 or undergoing investigative measures as a result of this order, it is imperative to know that the order can be retracted if the facts have not been faithfully reported and presented to the judge in charge of the investigation.

It is therefore possible for the opposing party to contest the execution of the measure.

Thus, the findings are very regularly the subject of summary proceedings to determine whether or not the elements collected are covered by business secrecy and whether the order is an honest and truthful presentation of the parties’ situation.

Given the specificities of this procedure, it is recommended to be accompanied by a lawyer specialized in intellectual property rights litigation (in particular for the characterization of the infringement, the facts constituting unfair competition, the proof of the existence of a risk of confusion etc.).

Business Secrecy Act

Since Law No. 2018-670 of July 30, 2018 and its implementing decree No. 2018-1126 of December 11, 2018 (L. No. 2018-670, July 30, 2018 relating to the protection of business secrecy), Article R. 153-1 of the Commercial Code provides that:

“When a case is referred to him on the basis of article 145 of the Code of Civil Procedure or during an investigation ordered on this basis, the judge may order ex officio the provisional sequestration of the requested documents in order to ensure the protection of business secrecy.

In the absence of referral to the judge within one month of the notification of the decision, the provisional sequestration measure is lifted.

If an application is made to modify or revoke the order, the judge hearing the application in summary proceedings shall have jurisdiction to rule on the lifting of the sequestration.”

It is therefore interesting to see the impact of the law on business secrecy on the requests and findings 145 and how the jurisprudence interprets these provisions!

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