Directive 2004/48/EC on the enforcement of intellectual property rights

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights harmonises the civil measures, procedures and remedies available to right holders in the Member States. Transposed in France by the Law of 29 October 2007 on combating infringement, then strengthened by the Law of 11 March 2014, it profoundly reshaped the French Intellectual Property Code by extending to all rights the instruments previously specific to patents. It applies to any infringement of intellectual property rights provided for by Union or national law, without distinction between titles.

Guiding principles

The Directive requires Member States to provide measures, procedures and remedies that are fair and equitable, not unnecessarily complicated or costly, effective, proportionate and dissuasive, and applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide safeguards against their abuse. These requirements of Article 3 serve as an interpretive framework for the Court of Justice, which refers to them in reviewing national legislation and practice. The Directive provides for minimum harmonisation: Member States may provide for means more favourable to right holders, and France has done so on several points, in particular by retaining the saisie-contrefaçon, which is more powerful than the measures for preserving evidence provided for by the Directive.

Harmonised instruments

The Directive governs the standing of right holders, licensees and collective management organisations, measures for preserving evidence, the production of banking, financial or commercial documents, the right of information on the origin and distribution networks of infringing goods, provisional and protective measures, corrective measures of recall and destruction, permanent injunctions, including against intermediaries, damages, legal costs and publication of judicial decisions. Article 13 sets out the method for assessing compensation, based on the negative economic consequences, non-material damage and unfair profits, or on a lump sum calculated on the basis of royalties, from which French law derived the taking into account of the infringer’s profits.

Impact in litigation

The Directive underpins an extensive body of Court of Justice case law on the right of information, on the proportionality of injunctions addressed to intermediaries, on the concept of recoverable legal costs, which sheds light on the award of court costs and irrecoverable expenses, and on compensation for loss. National courts interpret the French Intellectual Property Code in its light, and the Unified Patent Court is also bound by it.

Key points

Directive 2004/48/EC unified across the Union the civil tools for combating infringement, from evidence to compensation, in accordance with requirements of effectiveness, proportionality and dissuasiveness. French law often goes beyond the harmonised minimum. Rely on the Directive and the Court of Justice case law in support of a request for information, an injunction against an intermediary or the quantification of damages.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. When the question arises in a real case, the right moment is almost always before proceedings are issued.

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