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How to Combat Counterfeiting & Infringement ?

Home > Intellectual Property in France | Published 2015-07-02

Managers, have you though about the annual costs incurred because of counterfeiting schemes, which could be harming your own company? According to an investigation conducted by the OCDE (the organization of cooperation and economic development) in February 2011, counterfeiting makes up 5-9% of world trade. For French businesses, this represents a loss of 10 billion Euros annually, and the stakes are increasing. Essentially, with the globalization of trade and the development of the Internet, counterfeiting activities will only intensify. The fight against counterfeiting requires sustained and continued vigilance on everyone’s part-- businesses of all sizes must confront this issue together. The French government, conscious of the economic value of these (albeit intangible) rights: copyrights, trademarks, designs or patents, has strengthened anti-counterfeiting measures in a law passed on March 11, 2014, which offers lawyers new means to fight counterfeiting.

Infringement: Defined

Infringement is generally defined as the representation or reproduction, partial or total, of a literary piece, a title, design, model, or mark of an object protected by a patent or trademark, without the title-holder’s authorization.

Generally, the copyright, patent, or trademark owner who is a victim of infringement can begin to pursue a civil action to obtain damages. It might also be useful to file a criminal case in order to bring the forger himself to justice.

The decision to pursue a case for demeanor charges is up to the injured party, the title-holder, but it also depends on the statute of limitations. Therefore, the priority should be the lawsuit, bringing forth the civil case.

Thus, in order to guarantee his financial interests and his product’s reputation, the victim must respond quickly and choose the most appropriate route. An attorney can help define the cause, select the most appropriate action, evaluate the claim, and obtain full, satisfactory damages. Only an intellectual property lawyer can represent you and offer you the best defense before one of the nine High Courts.

Consequences of Infringement

In the case of a civil action brought before the TGI, the relevant High Court, the infringer’s liability will be retained and damages and his assets will be awarded to the victim without needing to prove criminal intent.

A court sentence could be accompanied by various limitations, such as the destruction of the means used in the criminal activity or a permanent injunction against such actions under penalty.

The second advantage of (civil) action is the possibility of introducing a parallel claim of unfair competition where there are facts distinct from those used in the primary case.

This can be particularly useful if certain evidence is not used in the first suit.

Criminal proceedings against infringement offer the possibility of more severe penalties, such as foreclosure of the infringing company or the impositions of greater customs penalties. It is worth noting that the Perben II law intensified the criminal sanctions, which include up to three years of imprisonment and/or a fine of up to 300,000 euros (where before the maximum penalties were two years and 150,000, respectively).

Nevertheless, the civil route is still preferable because it provides the most direct remedies to the victim, expediently ensuring that he or she is properly compensated for the harm suffered, which is possible because the lesser burden of proof.

Judges do appreciate and permit “abstract” imitation, acknowledging that average consumers could conceivably be confused by certain natural resemblances.

Establishing Your Case Quickly and Efficiently: Proof

Depending on the case and the particular rights violated, it could be useful to build your case on descriptive and/or physical evidence. A police citation, for example, constitutes a good piece of evidence for your case.

The law that was recently passed on March 11, 2014 to reinforce efforts to combat counterfeiting and infringement standardized the seizure process across cases involving copyrights, software, and databases to align with general intellectual property rights procedures.

Assessment of Injury

Assessing an injury is particularly important, and it also happens to be fairly difficult. Basically, direct damages—infringement of an author’s exclusive right—should obviously be retained, but there is also the matter of commercial damage, which would incorporate how the brand and its distinct character were damaged.

Therefore, commercial loss is calculated based on loss of profit as a result of infringement. However, evaluation lost profits can be a delicate process. For example, gains generated by knock-off websites are being considered more often as part of the victim’s lost profits.

Finally, legal expenses must also be compensated.

This process is left to the judge’s discretion, and the assessment depends on the facts of the case. However, it is reassuring to note that because of the fight against infringement and counterfeiting at the community and national level, judges tend to award damages close in amounts close to what was requested.

The March 11, 2014 Act also improved options for civil damages awards by giving lawyers new ways to assess and prove injury and thereby pursue higher claims. Lawyers Picovschi is intent on defending your interests and we are committed to the fight against infringement and counterfeiting.

This article is available online for public information purposes. It is updated regularly, as needed. Due to the constant evolution of the laws and the legal system, we cannot guarantee that the information in this article is still applicable. We invite you to contact us with any legal questions or concerns you have regarding this topic at +33 1 56 79 11 00. In no way can this firm be held liable for articles that contain inaccuracies or are now out of date.

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