According to new Article L.716-5 of the French Intellectual property Code, “trademark infringement action is limited to 5 years from the day on which the holder of a right knew or should have known the last fact enabling him to exercise it”.
This Article corresponds to Article L.615-8 for patent infringement actions (see our article here) and to Article L.521-3 for infringement actions related to industrial designs.
If the five-year limitation period remains the same (since Act No. 2014-315 of March 11, 2014 increasing the limitation period from three to five years), it no longer runs from the date when the infringement occurred, but from the date the right holder has known the last fact of infringement.
The new provision clearly benefits the rights holders, for it is sometimes hard to detect and be aware of counterfeiting, especially when the infringement is of small intensity or not easy to detect. The new wording will prevent the limitation period from running when the infringement was not known.
Besides, the new wording refers as a starting point to “the last fact” of infringement. Although this will have to be interpreted by the courts, it could be understood that an action initiated within the time limit may concern all acts of infringement, regardless of the date on which they were committed. Such an action could then allow compensation over the entire duration of the infringement.
The new text entered into force on May 24, 2019 but does not allow actions to be brought for cases already time-barred on this date.
See our corresponding article related to new French regulations relating to trademarks.