Beware of Infringement

Companies wishing to register a trademark, a design model, a patent ... shall ensure in advance that this sign is not already owned by a third! Otherwise they risk falling into counterfeiting. But the counterfeiting is a criminal offense in France as in many other countries.

It is therefore necessary to conduct a search for earlier!

How do I know if a sign is already protected in France or abroad?

To do so, it is possible to make an initial search of databases on the sites of the registration bodies (www.inpi.fr, www.oami.eu.int). But this is only a first approach, these organizations can offer recording further research, including the local RISC (Research strategic information and competitive) the INPI. It may make prior art searches with respect to trademarks, patents, designs and this in several countries and even for a given period.

A similarity in the classes of goods and services affected by the proposed mark to see if it has similarities with existing brands will cost eg 38 € for one class and 19 € extra per class.

A quote can be given free on request to the INPI.

Do not perform this research or not to take into account these results and insist on a model file, trademark or patent protected already exposed to serious penalties for infringement.

In which case, there does counterfeiting?

Regarding patents, it is estimated that counterfeiting by reproduction when there are similarities regarding the essential features such as a description of the two patents do not allow a consumer to distinguish them (Lyon Court of Appeal on July 2 1998).

There infringement by development if the patent at issue is the development of an earlier patent reproducing its essential characteristics (Court of Appeal Nancy May 29, 1998).

Moreover, when the patents are different but they have a similar function to the same result, it is estimated that infringement by equivalents.

There are counterfeit model when a model has significant similarities with an existing model.

Trademarks can also be forged and there is a similar type.

Resumed when a pre-existing trademark to designate the same for similar products or services, there is infringement by copying and counterfeiting by imitation when the two marks are similar. It may be phonetic similarities, visual or intellectual.

There is also infringement if the unauthorized use of a trademark is made or where a mark is affixed on products not originating from the proprietor.

It is estimated that there are even substituting counterfeit when a person knowingly delivers a product or service from a different brand than the one that was requested.

So be very careful if you do not want to get into problems and to contact a professional if in doubt because the penalties are heavy. To avoid being confronted, the advice of a professional you will be very useful.

Sanctions for infringement:

Not only the infringer liable to civil and therefore the risk of paying substantial damages to the trademark holder victim.

But it can be criminally convicted.

Patent infringement and a model is punished by three years imprisonment and 300 000 € fine.

Regarding trademark infringement, Articles L.716-9 and L.716-10 of the Intellectual Property Code provide that:

"A penalty of four years' imprisonment and a 400,000 euros fine conduct by any person to sell, supply, offer for sale or lease of goods presented under an infringing mark:
a) under any customs import, export, re-export or transshipment of goods presented under an infringing mark;
b) To produce industrial goods presented under an infringing mark;
c) To give instructions or orders the commission of acts referred to in a and b.

When the offenses under this section have been committed by an organized gang, the penalty is increased to five years imprisonment and a 500,000 euros fine. "

"A penalty of three years imprisonment and a 300,000 euros fine conduct by any person:
a) have no legitimate reason, importing under any customs regime or exported goods presented under an infringing mark;
b) To offer for sale or sell goods presented under an infringing mark;
c) reproduce, imitate, use, to affix, remove or alter a mark, a collective mark or a collective certification mark in violation of the rights conferred by registration and prohibitions that result from it it;
d) knowingly deliver a product or provide a service other than that which is requested under a registered trademark.



The offense, as provided in d, is not formed when exercised by a pharmacist of the Faculty of substitution provided for in Article L. 5125-23 Code of Public Health.

When offenses under a to d have been committed by an organized gang, the penalty is increased to five years imprisonment and a 500,000 euros fine. "

French courts are competent and French law is applicable when these counterfeit goods and services are available on the French territory. Indeed, when the event or damage takes place in France, France is responsible.

Furthermore, counterfeiting is a customs offense. In France the import and export of counterfeit products are clearly prohibited. The customs officials may conduct investigations and findings and may confiscate the infringing goods. Customs officers may conduct a deduction when filing an application to intervene when such goods are suspected of being counterfeit, or a customs seizure when there clearly counterfeit.

The risks are real, if a company is interested in an intellectual property right already filed, then it must be discussed with the owner of the sign and negotiate.

How to use evidence already submitted by someone else?

It is possible to negotiate with the owner of the sign or protect a right to it and to contract. There are indeed transfer contracts and licensing agreements.

- Assignment:

It is possible to assign its rights on a model, a patent or trademark, respectively, according to articles L.511-2, L.613-8 and L.714-1 of the Intellectual Property Code. The transfer must normally be in writing and be posted on a registry to be effective against third parties. It is subject to common law contracts. It can be total or partial. It can be as expensive or free. It involves a transfer of ownership of the mark to the assignee who may then use it freely.


- Licence agreement:

It is expected that the patent and trademark can be a license or partial, exclusive or nonexclusive. The licensee may then use the trademark or patent against payment.

In addition, the patent is protected for 20 years on average, after this period, the invention enters the public domain and may be freely used. Designs for the duration of protection is 25 years, renewable once by the owner. Among brands, registration with the INPI is for 10 years but is renewable. Failing to renew or revocation if the holder of lack of genuine use of the mark for goods and services it designates for five years, the brand back into the public domain and may be re-filed.

So there are opportunities to use a legitimate intellectual property right yet been filed without becoming infringer. To advise the extra niceties, do not hesitate to contact a lawyer or intellectual property attorney.

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