Last April, the Court of Appeal of Paris declared valid the seizing process performed by a bailiff consisting of, first, making an official report according to which the alleged counterfeit goods could be bought and ordered through the internet and, second, proceeding with a detailed description of the delivered allegedly infringing articles in his own office and without the seized party being informed before the infringement lawsuit was brought before the courts (Court of Appeal of Paris, Section 5, ch. 2, 26 April 2013, Core Distribution, Miral Conseil v/ Castorama France and others).
An American company, co-owner of a European patent protecting a telescopic ladder and its manufacturing methods, and its exclusive distributor in France considered that products distributed on the internet by a national network of hardware shops were infringing their patent rights.
In order to evidence the alleged infringement they called for a bailiff to buy and order online the presumed counterfeit goods. After the goods were delivered to the bailiff’s office, and duly entitled to do so by the President of the First Instance Court, the bailiff proceeded with a detailed description of the goods.
According to Article L.615-5 of the French Intellectual Property Code, “The owner of a patent […] shall further be entitled, on an order given by the President of the First Instance Court of the place of the presumed infringement, to direct any bailiffs, accompanied by experts of his own choice, to proceed with a detailed description, with or without effective seizure, of the allegedly infringing articles or processes. Such order shall be provisionally enforced. […] In that same order, the President of the Court may authorize the bailiff to carry out any enquiry required to ascertain the origin, nature and scope of the infringement.”
Before conducting such a measure, the bailiff is normally requested by law to inform the seized party of their rights and of the purpose of the seizure. But in this case, the bailiff did not because he performed his actions in his own office. And that is why the seized party heavily criticized and challenged the validity of the measures and of the resulting bailiff’s reports, claiming that they violated the adversarial principle.
The Court of Appeal however refused to cancel them owing to the specific circumstances of the case, the allegedly infringing goods not being available in traditional hardware shops but only on an online location. The Court also noted that the process implemented by the bailiff had not been intrusive for the seized party for he did not enter their premises nor was he able to seize any document related to the alleged infringement. Besides the Court observed that the seized party did not challenge the measures when the infringement action was filed and when they were consequently informed of the proceedings that had taken place.
Even if it should not be seen as a general authorization for performing seizures of presumed counterfeit goods on the internet, such decision makes it possible for owners of intellectual property rights to benefit from the specificity of the measures provided for by the French Intellectual Property Code when the allegedly infringing goods are only available online.