How to combat copying and infrigement ?

Combating copying and infringement first requires the infringement to be characterised, and then the right route to be chosen: gathering evidence, an amicable approach, court proceedings or customs action. The order of these steps, and the way they fit together, often determines the outcome of the dispute.

Infringement, an attack on an intellectual property right

The notion of infringement

Infringement is any act that encroaches upon an intellectual property right without the owner’s consent. It may concern a trade mark, through the reproduction of a sign or logo, a patent, through the reproduction or use of a protected invention, a design, a work protected by copyright, software included, or a geographical indication. Not every copy is an infringement, however: imitating a product that is covered by no right may, where appropriate, amount to unfair competition or free riding (parasitisme).

Infringement gives rise to the infringer’s civil liability and is also a criminal offence. Often hard to detect, it diverts the value of innovation and may damage the owner’s reputation.

Before trial, evidence and amicable routes

Gathering solid evidence

No action succeeds without evidence. The owner may have a commissaire de justice (judicial officer) draw up a purchase report establishing that the disputed product is offered for sale, or an internet report prepared according to a standardised methodology. The most effective measure is often the saisie-contrefaçon (infringement seizure), authorised by the court.

The formal notice

A formal notice (mise en demeure) calls on the alleged infringer to cease the disputed acts. It opens the way to a negotiated solution, prepares for possible proceedings and shows the court that the owner has sought an amicable settlement. Sending one nevertheless calls for careful thought. Sent too early, it alerts the other side, which may make evidence disappear before a saisie-contrefaçon or take the initiative of bringing an invalidity action against the right. An overreaching letter sent to a competitor’s customers may also be held to be disparagement.

Mediation and arbitration

Alternative dispute resolution offers other outcomes, before or during trial. Mediation entrusts a neutral third party with helping the parties reach an agreement, which the court may approve so as to make it enforceable. Arbitration submits the dispute to one or more arbitrators whose award binds the parties. It requires an arbitration agreement, and the validity of an industrial property right can be decided there only as between the parties, with no invalidation binding on everyone.

The infringement action

The purposes of the action

An infringement action seeks to bring the infringement to an end and to obtain compensation for the loss suffered. It may also serve a wider strategy, by slowing down a competitor’s business or by weighing on a negotiation, licensing negotiations in particular. A business may also find itself on the defending side, sued or joined to proceedings by a third party. Depending on the seriousness of the facts and the chosen strategy, the route taken will be civil, criminal or customs proceedings.

Preparing the action

Success depends on three conditions. The first is a right that is in force and robust, since the defendant will almost always challenge its validity by way of a counterclaim for invalidity. The second and third are sufficiently characterised acts of infringement and admissible evidence. The right defendants, whether manufacturers, importers or distributors, must also be targeted and their solvency checked, failing which victory in court would have no practical effect.

The court measures available

Provisional measures

Before judgment on the merits, the owner may ask the court to prohibit, on a provisional basis, the continuation of the allegedly infringing acts, to order the seizure or delivery up of the disputed products, or to order the removal of online content. These measures are as a rule sought in summary proceedings (référé). They may be sought ex parte, without the other side being heard, where any delay would be likely to cause irreparable harm. The court checks that infringement is likely and that the measure sought is proportionate.

The saisie-contrefaçon, a decisive evidentiary measure

The saisie-contrefaçon makes it possible to establish the reality of the infringement, to measure its extent (quantities, distribution channels, profits) and to gain access to production sites, files and stock. It is authorised by order of the president of the competent court and carried out by a commissaire de justice, often assisted by an expert. It must be executed within the limits of the order, failing which it may be declared void, and must preserve trade secrets. The owner must then bring proceedings on the merits within a short time limit, failing which the seizure may be annulled.

Customs and infringement

Customs detention

Customs may detain goods suspected of infringement at the border, either on their own initiative or on an application for action filed by the right holder. The holder is then notified and, under EU law, has ten working days to bring proceedings or to consent to destruction. The goods may indeed be destroyed under a simplified procedure where their holder consents or does not object within the time limit.

Customs seizure

Where a customs offence is established, customs may seize the goods and prosecute the customs offence, punishable by fines calculated on the value of the goods. This route protects the economic public order, but it does not directly compensate the right holder, who must take action separately in order to obtain damages.

Combating infringement, common mistakes and sound practice

Common mistakes

Acting too late is the most common mistake: evidence disappears and the limitation period runs. Next come proceedings brought without serious material, when the court requires at the very least that the infringement be plausible, evidence obtained unlawfully or unfairly, whose admissibility becomes uncertain, and an incomplete identification of those responsible, when a distribution chain often involves several players.

Sound practice

Protection starts upstream, with the filing and maintenance of rights: patents, trade marks, designs. It continues with monitoring of markets, trade fairs and online platforms, with immediate documentation of any suspicious fact and with recourse to specialists, attorneys at law, patent and trade mark attorneys and commissaires de justice. Amicable solutions deserve to be assessed before any proceedings, without delaying evidentiary measures that cannot wait.

Enforcing rights to protect the value of creation

Combating copying and infringement protects the value of innovation and the fairness of competition. Court is not always the first answer. Each situation calls for a strategic analysis that sets the order of evidence, negotiation and action.