Version ordinateur

Legal Developments in the Fight Against Counterfeiting

Home > Intellectual Property in France | Published 2015-07-15

Over the past couple of years, new laws have been passed in order to strengthen the means of combatting infringement and counterfeiting. The October 29, 2007 Act complemented and reinforced the intellectual property laws of February 5, 1994, March 18, 2003, and March 9, 2004, and it shifted the April 29, 2004 European directive, which itself was largely inspired by French law. Most recently, the Act of March 11, 2014 included new provisions concerning proof of infringement, adapted to match the acts committed more frequently today, and it also expanded the damages an injured party can receive in civil court. Picovschi Lawyers is committed to combatting infringement and will discuss some of the legal aspects below.

The law of October 29, 2007: Specialized courts

This law applies to all intellectual property rights. It takes into account the snowball effect of counterfeiting in an industrialized setting, which has consequences such as job loss, loss of tax revenues, penalties on the property, etc., all of which are not only costly for companies but also for consumers.

The decree of October 9, 2009, in which the law of October 29, 2007 was applied, granted the nine high courts exclusive jurisdiction over intellectual property cases. The Court of Jurisdictional Issues affirmed this decree on May 2, 2011.

However, be careful with patents for inventions—only the court in Paris has jurisdiction for these disputes.

Before this law, commercial courts handled these cases.

The new law also expands the role and resources of customs and judicial agencies that are involved in the fight against counterfeiting and infringement.

The law introduces new means to prevent imminent infringement and injunctions to stop infringement that is occurring at the moment. The judge may award the plaintiff provisional damages if it is a fairly incontestable case of infringement, grant an injunction, or order that assets be seized if the plaintiff makes a strong case that efforts to recover damages might be unsuccessful. Generally, counterfeit products are removed from commercial channels and are destroyed, along with the materials involved in their manufacture.

In addition, a right of information has been established that obliges the authorities to provide information on the quantities and prices of the counterfeit items and the previous producers and consumers so that the entire network can be traced and dismantled. Making such information available is a major development in the fight against counterfeiting networks, with few legitimate exceptions.

Finally, another legislative advancement involves compensation and damages for victims of infringement. It takes into account the infringing party’s profits, and the proper title-holder can seek flat-rate compensation at least equal to if not greater than the amount of royalties that should have been paid. Tougher sanctions exist if the counterfeiting affected the health and safety of people and/or animals.

The law of March 11, 2014: New resources for lawyers in the fight against counterfeiting

The March 11, 2014 act has strengthened the fight against counterfeiting by providing better ways for lawyers to defend their clients.

Under the right to information, lawyers can now file for disclosure of documents in chambers, before any judgment, in order to verify evidence and justify claims for damages. Judges can also order that any document be disclosed, with no limits currently placed upon this capacity.

For requests to seize counterfeits and assets, the process is standardized for brands, software, databases, trademark law, industrial designs, and patents.

Employing the services of an intellectual property lawyer before you go to court is essential, and our lawyers will help you prepare a good strategy to defend your interests.

Rapidly changing counterfeiting techniques, paperless, instantaneous means of communication and exchanging information, and the rise of counterfeited products necessitate the introduction of new legal recourses to fight counterfeiters more effectively. Only an experienced lawyer will have the necessary know-how to employ all the different legal tools available for these cases.

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.

Add your comment