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The seizure of infringing goods and trade secrets: careful not to overstep limits!

Home > Intellectual Property in France | Published 2017-01-03

Written by: Lawyers Picovschi

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You believe that one of your competitors is infringing upon your trademark, design or model, patent, work… and wish to take court action. Before taking action, it is recommended that you be prepared to support your case with solid evidence. The seizure of infringing goods is one of the best means for subsequently claiming your rights. However, pay attention to deadlines and the consequences of failure to act in the aftermath. The PICOVSCHI attorneys firm alerts you!

Seizure for infringement: definition

The Code of Intellectual Property stipulates the seizure procedure for all types of rights claimed: trademarks designs and models, patents, copyrights, software.

Seizure for infringement permits the owner of intellectual property rights who considers that he has sustained a prejudice due to a competitor’s actions to obtain evidence before prosecuting this third party for infringement before one of the nine District Courts (TGI) which entertain jurisdiction.

Seizure for infringement, a recommended prior procedure

Seizure for infringement is therefore an excellent means of putting together a solid file before suing a competitor for infringement. This procedure is referred to as an ex parte procedure, which means that the competitor suspected of infringement will not be called forth by the judge when he issues his order.

Caution: the goal is not to identify infringement, but to prove it. Thus, the complainant has the burden of identifying the information and documents which must be searched for in order to prove the disputed acts.

It is therefore essential to call upon an attorney specialized in intellectual property so that he can best prepare the request, by determining the scope of the search geographically and materially, in order to convince the judge to order a seizure for infringement.  Furthermore, as the procedure takes place solely before the District Court (and exclusively the Paris District Court when it comes to patents), representation by an attorney is mandatory.

If the judge is convinced, his order will include the appointment of a bailiff to perform the seizure operations. Concretely, the bailiff may go to the premises of the competing company in order, for example, to take photographs, samples, obtain access to certain technical, accounting and commercial documents, to seize material and/or instruments…

Be attentive to deadlines! Seizure for infringement is a preliminary procedure before filing action on the merits. Indeed, the decree of June 27, 2008 stipulates that the complainant must file suit within 31 calendar days or 20 business days following the date on which the seizure or description has occurred.  If this deadline is not met, the seizure will be annulled in full.

Defense in the case of a wrongful seizure for infringement which undermines trade secrets

As seizure for infringement is an ex parte procedure, the defendant is therefore not informed of its existence.  But what about the respect of the adversarial principle, which is fundamental to legal action? Article 17 of the Code of Civil Procedure stipulates that the respect of the adversarial principle is a factor, after the fact, offering the defendant the possibility of contesting the order rendered by the judge authorizing the seizure for infringement.

The attorney representing the defendant’s interests will then file expedited action aimed at setting aside the ex parte order if the issue is to contest the conditions under which the order was issued.

In some cases, seizure for infringement may undermine trade secrets.  In such a case, the defendant may request that the judge place the evidence considered as revealing trade secrets under seal to guarantee confidentiality.

The judge then has the possibility of appointing an expert who will be the only person authorized to examine the documents, event those which are confidential, in order to determine those which are relevant to the infringement proceedings. A defendant who considers that the seizure for infringement was wrongful may decide to seek the complainant’s civil liability.

Other elements of defense may be raised at the seizure for infringement stage or during the proceedings on the merits.  It is by calling upon the services of an attorney with experience in intellectual property that you can devise the most effective strategy.  The PICOVSCHI Attorneys firm has battled infringement for almost thirty years and will devote all its experience to your defense.

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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