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Luxury brand counterfeiting: how to defend yourself?

Home > Intellectual Property in France | Updated 2015-06-30 | Published 2014-12-03

In France, brands are subject to filing with the INPI (National Institute of Intellectual Property). A brand is defined as any sign or mark capable of graphic representation that serves to distinguish the goods and services of companies.

The rights conferred by the registration of a mark

Registering a trademark, design, or brand with the INPI confers intellectual property rights to the applicant. The company that registered the mark can then oppose any reproduction, use or imitation for goods or services identical to those laid out in its registration. Such actions are considered infringement if they have been carried out without the consent of the owner of the trademark.

However, registration is not the only way to maintain rights as the owner of a brand.

A luxury brand is not registered: are there still rights?

The registration of a trademark confers rights to its holder for a period of ten years, and it is renewable. However, many luxury brands no longer receive royalties and do not maintain the title of industrial property because of the sheer reputation of their brand.

Indeed, trademark brands such as IBM, Elle, Coca-Cola, etc. are widely known by the general public. Their reputation is assessed according to the originality of the brand, the scope of its commercial and territorial distribution, and its advertising efforts.

A company’s reputation can sometimes make their brand unavailable even in a different commercial domain (a judge can, however, specify certain exceptions). Thus, in this case, it is not necessary to register the mark in order to possess certain rights to it.

The reproduction or imitation of these marks for similar (or even different) goods and services can result in civil action if the trademark holder perceives that these reproductions are invalid or constitute unjustified exploitation of the mark. In this situation, it is necessary to confer with an intellectual property lawyer to develop a defensive strategy.

What recourses are available if you are accused of infringement or counterfeiting?

Your lawyer could propose an amicable resolution. It is also possible to negotiate a settlement with the other party before any substantive proceedings (this is still possible even after the trial begins). If the other party accepts the settlement, it may be advantageous for both parties to enter into a trademark license agreement, where the brand owner authorizes another party to make use of the trademark. In addition to the negotiations to enter into such a contract, the intellectual property lawyer will also discuss and examine each of the clauses, including the statements of duration, location, objective, etc.

Hiring an attorney does not necessarily mean you have to go to court. Settlement negotiations and other attempts at informal resolutions are well established and respected means of reaching an agreement that is in the best interest of all parties.

If no settlement can be reached, your IP lawyer can pursue other defensive legal actions. In the case of a famous mark that, as a consequence, could not be registered, it is important to verify whether the population affected by the exploitation of products or services with the mark recognizes it. In addition, the likelihood of confusion between multiple brands must be noted. In light of the judgment of the Paris Court of Appeals on October 14, 2014 between "" and a real estate agent, we can see that the more well-known the brand is, the smaller the risk of confusion.

Picovschi Lawyers are very experienced in trademark law. Together, we can develop the most suitable strategy for you and your goals in any trademark or copyright infringement situation.

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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