Companies wishing to register a trademark, design model, or patent ... should ensure in advance that it is not already owned by a third party! If this crucial step is not carried out, risk of counterfeiting is exponentially higher. Counterfeiting is a criminal offense in France as in many other countries.
It is therefore necessary to conduct as much research as possible before proceeding with any business decisions!
How do I know if a trademark has already been copyrighted in France or abroad?
To do this, it is possible to conduct an initial database search on registration websites (www.inpi.fr, www.oami.eu.int). Aside from this simple approach, these organizations can also offer opportunities for further research, including the local RISC (Research strategic information and competition) and INPI. This will produce and display prior searches with respect to trademarks, patents, and designs within a specific country during a particular period of time.
Similar classifications of goods and services affected by the proposed mark are explored in order to see if similarities exist with other brands. This process will cost approximately €38 for one classification and €19 per extra grouping.
A free quote is provided after submitting a request to INPI.
Do not perform this research without taking into account these results and insist on a model file, trademark, or patent protection as this could expose you to serious penalties for copyright infringement.
What qualifies as counterfeiting?
Regarding patents, the act of counterfeiting typically includes any reproduction in which there are similarities in the fundamental features of a work so that a description of the two patents does not allow a consumer to differentiate them (Lyon Court of Appeal on July 2, 1998).
Infringement of development occurs if the patent in question is the product of an earlier patent; once again, reproducing its essential characteristics (Court of Appeal Nancy May 29, 1998).
Moreover, when the patents are indeed distinguishable but possess a similar function with the same result, it is deemed infringement by parallel.
A counterfeit model exists when a model has significant similarities to an existing model.
Trademarks can also be forged when there are analogous characteristics.
In the event that there is a pre-existing trademark and a third party attempts to produce an identical or similar product or service, an infringement of copyright or counterfeit by imitation has occurred. This may include any similarities between the fundamental traits of the objects in question; visual or mental.
Infringement also occurs if unauthorized use of a trademark is carried out or if a label is affixed on products not originating from the proprietor.
Additionally, counterfeit substitutions are common and occur when an individual knowingly delivers a product or service from a different brand than the one that was requested.
In order to avoid any problems, it is critical to proceed with utmost care and attention. If in doubt, contact a professional because the penalties for slips and blunders are severe. To avoid confrontation, seeking the advice of a professional is instrumental.
Punishment for intellectual property infringement
The infringer is liable for civil charges and therefore carries the risk of paying substantial damages to the victim of said infringement.
Infringement of intellectual property can result in criminal charges.
Patent infringement is punishable by up to three years imprisonment and a €300,000 fine.
In reference to 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 euro fine are imposed on any individual attempting to sell, supply, offer for sale or lease 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 trademark;
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 team, the penalty is increased to five years imprisonment and a 500,000 euro fine."
"A penalty of three years imprisonment and a 300,000 euro fine are imposed on any individual whom:
a) has no legitimate reason for importation under any customs regime or exported goods presented under an infringing trademark;
b) offers to sell goods presented under an infringing trademark;
c) reproduces, imitates, uses, affixes, removes or alters a trademark, a collective trademark or a collective certification trademark in violation of the rights conferred by registration and prohibitions that result from it;
d) knowingly delivers a product or provides a service other than that which is requested under a registered trademark.
The offense, as provided in (d), is not valid 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 team, the penalty is increased to five years imprisonment and a €500,000 fine.
French courts are involved and French law is applicable when these counterfeit goods and services are available on French territory. Indeed, when the event or damage takes place in France, France is the responsible party.
Furthermore, counterfeiting is a customs offense. In France, the importation or exportation of counterfeit products is clearly prohibited. Customs officials may conduct investigations and may confiscate the illegal goods. Customs officers may proffer judgment when filing an application to intervene when such goods are suspected of being counterfeit, or perform a customs seizure when the items in question are clearly and undoubtedly counterfeit.
If a business is involved in an intellectual property matter that has been filed, they must involve the owner in a discussion of the infringing trademark and negotiate a rational and timely solution.
How to use evidence already submitted by someone else: it is possible to negotiate with the owner of the label or protect a right to it and to the contract. Transfer contracts and licensing agreements and options in this scenario.
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 typically be in writing and be posted on a registry in order to be effective against third parties. It is subject to common law contracts. It can be total or partial. It can be expensive or free. This involves a transfer of ownership of the label in question to the assignee who may then use it without restriction.
It is allowable that the patent and trademark be wholly or partially licensed, exclusive or nonexclusive. The licensee may then use the trademark or patent against payment.
In addition, the patent is protected for an average of 20 years, after which period the label enters the public domain and may be freely used. Designs are protected for 25 years, renewable on one occasion by the owner. For brands, registration with the INPI is valid for 10 years but can be renewed. Failure to renew can result in a revocation of permission if the holder lacks genuine use of the trademark for the goods and services it designates for a total of five years; the brand then enters the public domain and the party must re-file for exclusive rights.
There are many opportunities to legitimately maneuver intellectual property rights without infringing on established labels, designs, trademarks etc. If you seek advice or guidance during this process, please do not hesitate to contact a lawyer or intellectual property attorney.