Unjustified threats in IP: a French case

Published onOctober 2017

While the UK Intellectual Property (Unjustified Threats) Act 2017 is in force since the 1st of October 2017, there exists no specific provisions in the French IP Law governing the forms of a letter containing a communication or a threat to bring infringement proceedings against someone, that would distinguish between actionable threats and permitted communications. The French common civil liability law is therefore applicable.

According to the French courts, in order to be permitted, a notice letter must be presented in such a way that it only provides information. It must be moderate, and must not contain threats of any kind.

Even if such a letter complies with those requirements, all the circumstances must be taken into account to assess whether or not this letter may have harmed the addressee who feels aggrieved.

Following a seizure of alleged infringing goods (“saise-contrefaçon”) conducted on 22 July 2011 at the X company’s headquarters, the Patent attorney of the company Y, which seized the X company’s customer files, sent a notice letter to all clients of X, giving notice of a European patent application which was about to be granted by the European Patent Office, sending a copy of the French translation of the claims, and inviting the addressee to verify that the equipment acquired from X did not infringe the patent rights “the subject of which is defined by the process and products covered by the claims of the European patent which the EPO intends to grant…”.

The terms of that letter are objective and contain moderate information. To such an extent, the letter was not not actionable as such. However, the fact (i) that it was addressed prematurely before the grant of the patent and (ii) that it was sent systematically to all the customers of X whose addresses had been obtained during the seizure, constitutes an unfair and disloyal behavior against X, the main competitor of Y, or at least a recklessness fault (judgment of the Court of first instance of Paris, 13 January 2017).

Sending cease and desist letters or formal notice may therefore have very negative implications and should be considered very carefully.

© INSCRIPTA