Warranty against eviction (garantie d’éviction)

The warranty against eviction is the obligation of the seller and, by extension, of the assignor or licensor of an intellectual property right to secure the acquirer’s quiet enjoyment of what has been transferred. It is governed by Articles 1626 et seq. of the Civil Code for sales and applies to the assignment of patents, trade marks, designs and copyright, and to licence agreements by application of the rules on leases. It comprises a warranty against the transferor’s own acts and a warranty against third-party claims.

Warranty against the transferor’s own acts

The assignor may not itself disturb the acquirer’s enjoyment of the right transferred. It is barred from exploiting the assigned right, from filing a competing sign or title that creates confusion, or from challenging the validity of what it has assigned. The Court of Cassation holds that the assignor of a patent cannot bring an invalidity action against it, since that action would amount to eviction by its own act. Article 1628 of the Civil Code makes this warranty a matter of public policy, so an exclusion clause has no effect. The same solution extends to licence agreements, in which the licensor undertakes to refrain from any act that would deprive the licensee of the benefit of the agreed exploitation.

Warranty against third-party claims

The assignor warrants the acquirer against legal disturbance by third parties who claim ownership of the title, rely on an earlier right or bring infringement proceedings against exploitation of the assigned right. This warranty may be extended, limited or excluded by contract, except where the assignor acted in bad faith knowing of the cause of eviction. In principle it does not cover invalidity of the title for an intrinsic defect, such as lack of novelty of a patent or the descriptive character of a trade mark, a question that falls rather under the warranty against latent defects or mistake and that practice addresses through specific representations and warranties. An evicted acquirer is entitled to restitution of the price and to damages, depending on whether the eviction is total or partial.

Application in intellectual property contracts

Patent assignment agreements and trade mark assignments organise the warranty through representations on title, the absence of undisclosed licences or pledges, the absence of pending litigation and the proper payment of renewal fees or renewals. They require the assignor to join the proceedings if a third party brings an action and include an indemnity clause capped in time and amount. In a licence, the warranty is coupled with an obligation to maintain the title, since its lapse or abandonment by the licensor deprives the licensee of the subject matter of the agreement. An entitlement action brought by a third party is the clearest case of eviction.

Key points

The assignor of an intellectual property right must refrain from disturbing the acquirer and cannot challenge what it has assigned, this warranty against its own acts being a matter of public policy. The warranty against third parties may be adjusted by contract and does not cover intrinsic invalidity of the title. Provide for precise representations and warranties on title and validity, and check the status of the title in the register before signing.

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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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