Trademark infringement action

The action for trade mark infringement allows the owner of a registered trade mark to have the unauthorised use of a sign in the course of trade sanctioned. It targets an identical or similar sign used for identical or similar goods or services. Articles L. 716-4 et seq. of the French Intellectual Property Code govern it. For the EU trade mark, the EU Trade Mark Regulation applies.

Acts covered

The law first prohibits identical reproduction for identical goods, in which case the owner need not show a likelihood of confusion. It then prohibits the use of an identical or similar sign for identical or similar goods where it creates a likelihood of confusion on the part of the public. Finally, it protects marks with a reputation, even for dissimilar goods, where the use of an identical or similar sign takes unfair advantage of, or is detrimental to, that reputation.

Procedural conditions

The owner brings the civil action before one of the specially designated courts. Only the Paris judicial court, however, hears EU trade mark cases. The action is time-barred after five years. An owner who has knowingly tolerated the use of a later registered mark for five consecutive years can no longer act against it, unless the later filing was made in bad faith. The defendant may plead invalidity of the mark or exhaustion of rights, and may also seek revocation for lack of genuine use over five years.

Evidence and remedies

To prove the infringement, the owner usually relies on saisie-contrefacon and customs detention. The court may then grant an injunction subject to a periodic penalty payment, order the recall and destruction of the goods, order publication of the judgment and award damages. Trade mark infringement is also a criminal offence.

In practice, the owner often joins a claim based on unfair competition or parasitism, for distinct acts. The firm handles such disputes, as presented on its intellectual property lawyer page.