Trademark infringement

Trade mark infringement is the violation of the exclusive right of the owner of a registered trade mark through the use, without authorisation and in the course of trade, of an identical or similar sign for identical or similar goods or services. It is defined in Articles L. 713-2 et seq. of the French Intellectual Property Code and gives rise to both civil and criminal liability. Infringement is not limited to slavish copying: imitation creating a likelihood of confusion is equally prohibited.

Acts constituting infringement

First, the reproduction of an identical sign for identical goods or services, which is prohibited without any need to show a likelihood of confusion. Second, the use of an identical or similar sign for identical or similar goods or services where there is a likelihood of confusion on the part of the public, including a likelihood of association. Third, the use of a sign identical or similar to a mark with a reputation, even for dissimilar goods, where it takes unfair advantage of, or is detrimental to, that reputation. Prohibited acts include affixing the sign, offering, putting on the market, importing, exporting and using the sign in advertising or business papers.

Sanctions

On the civil side, the action for trade mark infringement allows the owner to obtain an injunction subject to a periodic penalty payment, recall and destruction of the goods, publication of the judgment and damages taking account of lost profits, moral prejudice and the infringer’s profits. On the criminal side, trade mark infringement is an offence punishable by imprisonment and fines, aggravated where committed by an organised group or where the goods are dangerous to health. Customs detention makes it possible to block suspect goods at the border.

Evidence and defences

Infringement may be proved by any means, notably by saisie-contrefacon, purchase reports and customs records. The defendant may plead invalidity of the mark, revocation for lack of genuine use, exhaustion of rights for genuine goods put on the market in the European Economic Area, or acquiescence. In practice, the firm acts for claimants and defendants in such disputes as part of its intellectual property practice.