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Civil litigation

i Forums

Civil actions and applications related to trademarks, including those with issue of unfair competition, shall be brought exclusively before the specialised courts of first instance, which currently are Bordeaux, Fort-de-France, Lille, Lyons, Marseilles, Nanterre, Nancy, Paris, Rennes and Strasbourg.

Litigation based on unfair competition law shall be brought before commercial courts only if both parties are merchants, and before civil courts if one of them is not a merchant.

ii Pre-action conduct

Since 2015, it has been mandatory to prove that an attempt has been made to reach an amicable solution before beginning a proceeding, or to justify due cause for not fulfilling this obligation.

Under French law and practice, several alternative dispute resolution methods are often used. Many cases are settled before any legal action starts and the settlement may prohibit subsequent legal proceedings. Mediation is another kind of alternative dispute resolution. More and more courts are nominating mediators during commercial law proceedings. Arbitration proceedings are also regularly used, since Paris has several arbitration courts.

However, it is not possible to obtain the revocation of a trademark (or the nullity of any intellectual property right for that matter) through these alternative methods. The decisions rendered are only enforceable inter partes, as opposed to judicial decisions, which are enforceable erga omnes. Nonetheless, these procedures may ensure confidentiality as well as an outcome that may be applicable around the world.

Should an amicable outcome not be possible, the party that wishes to initiate proceedings needs to gather all evidence to show its rights and how they are harmed. To do so, the plaintiff may seek to initiate seizure proceedings, which are available to a party after a judge issues a court order specifying the date, place and type of seizure (either a mere description or the judge can also allow the seizure of samples, devices involved in the infringing process, or any documentation pertaining to the infringing activity). A bailiff conducts the seizure; he or she can be assisted by experts (in software, a trademark and patent attorney, a locksmith, etc.) who cannot, under any circumstances, dictate any part of the report at risk of seeing the entire procedure cancelled (the courts are extremely strict on that point). Proceedings must be initiated within 20 working days or 31 calendar days of the seizure.

iii Causes of actionTrademark infringement

Trademark infringement is the most common cause of action. It involves opposing trademark rights to undertakings that use the protected sign for identical or similar goods or services. It is required to establish likelihood of confusion when the signs, goods or services are not identical.

Unfair competition law

Unfair competition regulated by civil liability provisions is often used either as an additional claim or as a subsidiary claim. It can cover many types of conduct, notably disparagement, which means spreading pejorative and malicious information about a person, a company or a competitor’s products. Unfair competition law also prohibits generating confusion in customers’ minds between companies or their products. This is the behaviour by which an economic agent interferes in the activity of another to profit, without spending anything, from its efforts, investments and know-how. Most case law in the digital arena, notably on domain names and the look and feel of web pages, is based on these general civil law rules.

Family or corporate names

Disputes related to conflict between trademarks and family names or surnames are common. They can be based on trademark law to oppose the registration of trademarks that may harm family or corporate names, as well as on civil liability or rights of personality. In practice, many court cases involve contract law. In the famous Bordas case, the Supreme Court ruled that inalienability and imprescriptibility of a patronymic name are not obstacles to the conclusion of an agreement related to the use of the patronymic name as a trade name. The Ducasse case gave additional details. The Supreme Court ruled that the consent given by a partner, whose name is well known, to the insertion of his or her surname in the denomination of a company that has an activity in the same area, would not, without his or her agreement and in the absence of renunciation to his or her property rights, allow the company to register this surname as a trademark to designate the same goods or services. More recently, the Supreme Court held that an individual agreement to use a name was a contract performed successively. Therefore, even if the agreement did not include any term, that term is not qualified as a perpetual contract. Hence, it constitutes a contract of an undetermined period that each party can terminate at any time, with fair notice.

iv Conduct of proceedings

A plaintiff can request the communication of pieces of evidence related to any alleged infringement from the delegate of the President of the Paris Court before legal proceedings are initiated (notably with seizure proceedings) or, once proceedings are pending, by presenting a petition to the judge in charge of the case management. It enables the right holder to take the full measure of the extent of the infringement, both in terms of the network (producers, distributors and all involved parties in between) and the quantities concerned (of goods, benefits made, etc.). The time frame for gathering such evidence varies from half a day to a couple of months. Moreover, the owner of a trademark can request customs seizures and follow up with civil or criminal law proceedings.

Judicial proceedings start with the filing of a complaint that has been served to the defendant and then filed at court. According to the Paris Bar and Paris High Court Civil Procedure Protocol signed on 11 July 2011, for proceedings on the merits, there should be a total of four briefs, including the complaint. An argument or an element of fact not referred to in these writings cannot be taken into account by the court. The defendant is the one who responds last. The case is heard at final oral pleadings by one to three professional judges, and the ruling is issued a couple of weeks later.

First instance disputes related to trademark proceedings, such as infringement, dilution, invalidity or unfair competition claims, last nine to 12 months.

An appeal can be lodged within the shortest of the following deadlines: one month after the notification of the ruling for French residents (two months for persons located in France but outside metropolitan France and three months for foreign residents); or two years after the date of the ruling.

Urgent proceedings and interlocutory proceedings may take a couple of days or weeks. They start with a written complaint served to the defendant and then filed at court. Urgent proceedings are, by nature, oral, but parties often file briefs ahead of the oral pleadings to support their final oral argument. The deadline to appeal against interlocutory proceedings is either two years after the ruling or 15 days after notification of the ruling for French residents; one month and 15 days for persons located in France but outside Metropolitan France; and two months and 15 days for foreign residents.

Appellate proceedings take between one and two years.

The losing party can be ordered to pay the other party’s court fees and all other costs.

In any of these proceedings representation by a lawyer is mandatory; however, proceedings before the commercial court (which may have jurisdiction in cases about company names or trade names not involving trademark law) do not require representation by a lawyer.

v Remedies

In civil proceedings, courts may order several remedies for infringement, often granted with the benefit of immediate execution and therefore enforceable even if appellate proceedings are filed. The most usual are financial compensation or a prohibition order. Courts may also grant the confiscation or destruction of counterfeiting goods and their means of production, the publication of the judgment and, more generally, the award of damages based on the negative economic consequences of counterfeiting, including losses incurred and lost profits, moral damage, and the profit made by the counterfeiter. However, the injured party can request a lump sum as damages that exceeds the amount of the royalties or fees that would have been paid if the infringer had applied for authorisation to use the infringed right. This lump sum is not exclusive of compensation for the moral damage caused to the injured party.

Other enforcement proceedings

In practice, most cases are heard before civil courts. However, trademark infringement proceedings may be initiated by the owner, the public prosecutor or the customs authorities since trademark infringement is also a criminal law tort. In particular, the IPC provides that trademark infringement shall be punished by a prison term ranging from three to five years (depending on the type of conduct) and by fines ranging from €300,000 to €500,000. A trademark infringement case is heard before the general criminal law court after an investigation by customs, the police or a judge. These proceedings may be a very helpful deterrent and enable the trademark owner to find infringement networks. However, the case may take a couple of years longer and the allocated damages and legal fees may be considerably lower.

Customs proceedings are also very commonly used. EU Regulation No. 608/2013 and national law (the Customs Code) allow – for both French and EU trademarks – detention or seizure of counterfeit goods. The right holder and the exclusive authorised licensees can submit applications for such customs proceedings. Customs authorities can also proceed on their own initiative.

While Regulation No. 608/2013 is applied at the external borders of the EU, French legislation is applicable to commerce between Member States. If counterfeit goods are found by customs authorities, following the notice of the seizure, the right holder or person with appropriate decision-making authority has 10 days to inform the customs authorities that he or she is engaged in legal proceedings, otherwise the customs authorities would have to release the goods.