In October 2007, France adopted a very important law to fight against counterfeit products and the infringement of intellectual and industrial property rights. This law was the French transposition of 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 rules were globally acclaimed at first but it appeared in the next few months and years that some of them lacked clarity and precision while others needed improvements.
This is why the French Senate, the upper house of the French Parliament, has just adopted last November a new bill aiming at reinforcing the fight against the infringement of IP rights.
Main propositions are:
- Improving the mechanisms to award damages to the victims of infringement of IP rights by compelling the courts to distinguish clearly three types of compensation: compensation for financial losses suffered by the victim, compensation for moral damages, and a compensation which takes into consideration the profits made and the intellectual or material investments saved by the infringing party;
- Stating that the specific procedure related to the right of information can be instituted before the judgment or final sentence, even by the summary applications judge;
- Harmonizing specific procedures related to the seizure of infringing goods applicable for copyright and software matters with those applicable for industrial property rights such as patents, trademarks or industrial designs;
- Broadening the powers of bailiffs carrying out such seizures;
- Specifying that the judge can order the parties to disclose evidence related to the infringement independently of the specific procedures related to the seizure of infringing goods;
- Reinforcing the powers of French customs (especially with regard to merchandises during transshipment) (1) and adapting more precisely French procedures to European regulations (2);
- Harmonizing the limitation periods of the French Intellectual Property Code with the five-year limitation period set by civil general law (3);
- Setting a new legal obligation related to continuing education for French patent and trademark attorneys.
All these new measures tend to achieve a better and more uniform protection for IP rights and should therefore be welcome. Let’s hope that the French National Assembly, currently examining the bill, would not empty it from its significant features.
(1) France is struggling against the consequences of the NOKIA judgment (1 December 2011, Joined cases C-446/09 and C-495/09) in order to re-establish customs control for goods in transit via the European Union.
(2) Council Regulation (EC) No.1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights.
(3) At the moment, the limitation period for infringement actions related to patents, industrial designs or trademarks is three years.