Design infringement

Design infringement is the violation of the exclusive right of the owner of a registered design. It results from making, offering, putting on the market, importing, exporting or using a product that reproduces the protected appearance without authorisation. Articles L. 513-4 et seq. and L. 521-1 et seq. of the French Intellectual Property Code govern it. Infringement requires neither slavish copying nor intent.

The test for infringement

Protection covers any design that does not produce on the informed user a different overall visual impression. The court thus compares the registered appearance and the contested product as a whole, not element by element. The informed user is a particularly attentive user who knows the products of the sector without being an expert. The court also takes the designer’s degree of freedom into account: where technical constraints or a crowded market reduce that freedom, small differences suffice to rule out infringement, whereas great freedom calls for marked differences.

Civil and criminal sanctions

The owner brings the design infringement action before the specialised courts. Only the Paris judicial court, however, hears EU design cases. The court may order an injunction subject to a periodic penalty payment, the recall and destruction of the goods and publication of the decision. It awards damages taking account of lost profits, moral prejudice and the infringer’s profits. Design infringement is also a criminal offence. Customs detention makes it possible to intercept goods at the border.

Evidence and defences

The owner proves infringement by saisie-contrefacon, purchase reports or customs records. The defendant most often seeks invalidity of the title for lack of novelty or of individual character. It may also rely on the exclusion of features dictated by technical function, or on exhaustion of rights. In practice, the owner often combines this action with copyright and unfair competition claims. The firm handles such disputes as part of its intellectual property practice.