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France strengthens its legal framework for the fight against counterfeiting

Xavier Buffet Delmas

Jules Fabre

08 April 2014

This new law aims at significantly strengthening the French anti-counterfeiting legal framework, in particular following the Law n°2007-1544 of 29 October 2007 on the fight against counterfeiting (implementing Directive 2004/48/CE of 29 April 2004 on the enforcement of intellectual property rights) and at harmonizing the provisions applicable to the various of intellectual property rights.

This new law encompasses, in particular, the following changes:

· Civil remedies: with regard to the allocation of damages, the Court shall now "take into account separately" (i) the negative economic consequences, (ii) the moral prejudice and (iii) the unfair profits made by the infringer (including the intellectual, material and advertising investments savings).

· Right of information: the text now explicitly allows to raise a claim based on the right of information both during proceedings on the merits and during summary proceedings, and also refers to the "alleged" infringement, which should imply that a claim based on the right of information could also be raised before the Judge in charge of the proceedings.

· Evidence: the law harmonizes infringement seizure proceedings applicable to the various intellectual property rights and, in particular, states that the court shall have the possibility to order all the measures necessary to the investigation of the case, even when no prior infringement seizure has been performed.  Contrary to what was initially proposed in the draft bill, the non-compliance with the deadline to initiate proceedings on the merits after the performance of the seizure remains the nullity of the seizure, and not the simple release of the seized materials.

· Statutes of limitation: the statutes of limitation for the actions provided for in the French Intellectual Property Code are aligned on a five years period.  Hence, the statute of limitation for initiating civil proceedings for infringement of designs, trade marks and patents is extended from three to five years.

· Infringing acts: in addition to the acts of use, detention and importation, the law extends the monopoly of the owner of any intellectual property right to exportation and transhipment

· Customs' actions: customs' actions are now extended to all intellectual property rights, including patents (which were beforehand outside the scope of domestic customs' actions).  Furthermore, the law aligns the French customs' actions with the European customs' actions as amended by the Regulation (EU) No 608/2013 of June 2013 concerning customs enforcement of intellectual property rights.  Ahead of the adoption of the currently discussed EU Trademark Package, the law extends customs' actions to goods in transit.

The new law came into force on 13 March 2014.

Xavier Buffet Delmas

Jules Fabre

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