French law of 11 March 2014 – Fighting against the infringement of IP rights

Published onMarch 2014

The new French law aims to fight against counterfeit products and the infringement of intellectual and industrial property rights.

The bill, which we commented last December (1), has been approved very fast and very easily, with almost no opposition or disagreement among the members of Parliament.

We decided to focus our attention on some of the main provisions of the new law which amends the French Intellectual Property Code (2).

Improving the damages awarded to the victims of the infringement

From now on the courts will be compelled to clearly separate three types of compensation in case of infringement of IP rights (copyright, industrial designs, patents, new variety certificates, trademarks or geographical indications):

  • Compensation for damaging financial consequences of the infringement, which must include lost profits and financial or commercial losses incurred by the victim,
  • Compensation for moral damages suffered by the owner of IP rights,
  • And a compensation which takes into consideration the profits made by the infringing party, including the intellectual, promotional or material investments saved by the infringing party.

Obviously, these new provisions aim to increase the amount of damages awarded to the owners of IP rights. Separating each type of compensation when drafting their ruling will lead the courts to a better appraisal of the damage and loss suffered by the victims and should mathematically encourage them to grant more substantial financial penalties.

This should also mean that owners of IP rights and their lawyers will have to make significant efforts in order to assess more accurately the damage they or their clients genuinely suffer and provide corresponding proper evidence.

It must also be recalled that the plaintiff may ask the courts to receive a flat sum instead of a compensation calculated as detailed above. Such sum shall be higher than what the IP right holder would have received in case of a negotiated license and it is not exclusive of a compensation for moral damages.

Improving the mechanisms to evidence the infringement

The new measures relating to the evidence of the infringement of IP rights may be divided in three categories.

Right of information

The right of information now can be instituted even before the courts have decided if the IP rights were or were not infringed, at the stage of interim measures.

It must be recalled that the right of information enables the courts to order the production of any documents or information held by the defendant (or by any person involved in the infringement) that could help determine the origin and distribution networks of the allegedly infringing products or services.

Seizure and confiscation

The new law harmonizes specific procedures related to the seizure and confiscation of infringing or counterfeit goods applicable for copyright and software matters with those already applicable for industrial property titles such as patents, trademarks or industrial designs.

If the complainant fails to file a legal action shortly after performing the seizure and/or confiscation, such seizure and/or confiscation may be cancelled at the request of the seized party and the initial complainant may be sued for damages.

Additional evidence

New provisions are also inserted in the French Intellectual Property Code, explicitly allowing judges to order any additional ex-officio investigative measures that would be necessary to help them reach a decision as regards the infringement of any intellectual property rights.

Harmonizing the limitation periods of the French Intellectual Property Code

French general law provides that civil actions must be brought within a five-year limitation period. However, the limitation period for infringement actions related to patents, industrial designs or trademarks was set to three years.

From now on, the five-year limitation rule applies to all IP rights, either in connection with infringement actions or with claims of ownership.

What you need to remember

With the law dated 29 October 2007, France took a major step in the fight against counterfeit products and the infringement of intellectual and industrial property rights and put its legislation in harmony with Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.

The new law of 11 March 2014 is another strong message to the IP community, clearly placing France as one of the most advanced country as regards the protection for IP rights.

You are welcome to contact us should you need further information.

© INSCRIPTA

(1) See our article about the version of the text as adopted by the French Senate on November 20, 2013.

(2) Many of new measures aim to reinforce the powers of French customs especially with regard to merchandises during transshipment and adapting more precisely French procedures to European regulations. Considering the importance of such measures, we decided to address them in a separate article.