The elements of proof
The infringement proof has to be done by the demandant. It can be submitted by any means, for example :
- advertising documents with a legal date ;
- an affidavit made out by a bailiff which substantiates an offering for sale ; or
- a seizure-infringement.
What court ?
The infringement acts for a mark can be :
- prosecuted :
- sued :
only the First Instance Courts are competent for the civil proceedings relating to marks. This is also true for proceedings involving both a matter of marks and a related matter of industrial designs or unfair competition.
The jurisdiction ratione loci
either the one of the defendant. If the defendant is domiciled abroad, the demandant can choose the jurisdiction ;
- or the place of infringement (which can be different from the place where a seizure-infringement has been carried out).
If there are several defendants, the action can be entered before a court which has competency with respect to only one of them.
W ho can institute proceedings ? (Article L. 716-5)
- the owner of the mark
In the case of an assignment, it has to be recorded in the National Register of Marks to be opposable to a third party.
- the beneficiary of an exclusive right of exploitation, if he has notified the owner who does not exercise his right and unless otherwise laid down in the contract. (the licensee, exclusive or not, can always participate in the infringement proceedings instituted by the owner of the mark).
Provisional prohibition (Article L. 716-6)
In order to obtain as soon as possible the prohibition of the infringement acts, it is possible to ask for a provisional prohibition which is valid until the date of the judgment on the merits.
An action for infringement has to be instituted. The request is made to the President of the First Instance Court referred to for the case. This case must appear well-founded. The judge shall for example study the validity of the mark. The proceedings have to be instituted within a short time after the knowledge of the infringement.
When acting for infringement ?
To act for infringement, the right has to be opposable to a third party. Consequently, it has to be published or notified to the presumed counterfeiter. The assignement and licenses have to be recorded on the National Register of Marks.
Infringement proceedings shall be barred after 3 years from each act of infringement.
In the case of proceedings for infringement by a later registered mark, last paragraph of Article L. 716-5 makes provision for a 5 year toleration period. After this period, any action for infringement shall not be admissible. It seems that the 5 year period could begin on the application publication day. It is therefore important to regularly watch the mark applications, in order to avoid the foreclosure.
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