The action for infringement of a French Design

The act of infringement is defined as being any interference brought to the rights guaranteed by the Intellectual Property Code.
Thus the act of infringement can be the imitation or the reproduction of the drawing or design or an interference with the moral right according to the copyright.
For the direct infringers (those who manufacture or order the manufacture), the unfairness is presumed. The alleged infringer has to prove his good faith. The good faith of the presumed infringer excludes the offence, consequently the penal liability, but not the civil liability which can be incurred following a neglect for example.
According to the jurisprudence, the liability of the different infringers will be holded according to their profession, their relationship with the author ... For example, a subcontractor manufacturer, to whom it is asked to reproduce the design has the duty to inquire about the existence of rights on this design, whereas as a rule his liability is not incurred if a demonstration model has been provide to him.
 

Which court?

Since November 1st, 2009, only Bordeaux, Lille, Lyon, Marseille, Nancy, Nanterre, Paris, Rennes, Starsbourg and Fort de France courts have competence for trademark matter.

Who can institute proceedings ?

* the author or his trustees (heirs, assignees, ...)

  • the author and the assigne jointly can institute an action for infringement
  • a legal entity can institute an action for infringement in the case of a collective work or of an assignment
  • in the case of an assignment of a filed design, such an assignment must be registered in the National Design Register. In the absence of such a registration, the assignee can institute an action for infringement of copyright if he has commercialized the design under his name.


* the licencee, even exclusive, has no right to sue in an action for infringement

* a co-author which wants to sue has to notify his action to the other authors under penalty of inadmissibility of his request, unless it is stipulated in the rules that each author can act by himself.

The elements of proof

It is the plaintiff's responsability to report the proof of the existence of the infringement and of the connection with the alleged infringer.

This proof can be brought by any means, and especially by :

  • advertising documents having an unquestionable date
  • an affidavit made by a bailiff (for example during an exhibition)
  • a seizure or a withholding made by the Customs Administration
  • a report made by the agents of the fraud repression or by the criminal police officers
  • a seizure-infringement.

Prescription

In criminal proceedings, the prescription is of 3 years as from the infringement facts.
In civil proceedings, the prescription is of 10 years.

In France, trials in first instance for infringement disputes concerning French  designs take place before one of the ten First Instance Courts (“Tribunaux de Grande Instance”) declared competent in Intellectual Property case according to a decree of 2010.

These Courts are the First Instance Courts of Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Strasbourg and Fort-de-France.

Generally, the choice of one of these Courts depends on the jurisdiction where the infringement has been committed or on the place of residence of the defendant.

The appeal in second instance of a decision issued by a First Instance Court has to be filed before a Court of Appeal. Several Courts of Appeal are competent in terms of Intellectual Property and the choice of one of them depends on the First Instance Court where the judgement took place.

The following table presents the repartition of these Courts contingents on the First Instance Courts.
 

First Instance Court Court of Appeal
Bordeaux Bordeaux
Lille Douai
Lyon Lyon
Marseille Aix-en-Provence
Nanterre Versailles
Nancy Nancy
Paris Paris
Rennes Rennes
Strasbourg Colmar
Fort-de-France Fort-de-France

These Courts of Appeal are also competent regarding appeals of decisions of the French Industrial Property Office (INPI).

 Lastly, a decision of a Court of Appeal can only be contested before the Supreme Court (“Cour de Cassation”) which is based in Paris.

Unfair competition in France

In France, the action for unfair competition is based on the civil aquilian responsability (Articles 1382 and 1383 of the French Civil Code).

According to the common right, the responsability of the author of the damage is involved only if the following three conditions are met:

  1. The author of the damage must have commited a fault.
  2. The victim must have suffered from a damage, which might be only moral.
  3. The causalty relation between the fault and the damage must be proved.

The acts can be considered as faulty when the author of the damage and the victim are in competition.

Parasitism

A situation of fault is also possible when the two parties are not in competition but the faulty acts of the first may inflict injury to the activities of the second, particularly to its image.

The action for unfair competition can be engaged alone, jointly with an action for infringement or as accessory action.

When engaged jointly to an action for infringement, the action for unfair competition is admissible only if distinct facts from those of the infringement exist. For example, the use of lower prices, the use of similar colors or presentation of a product in case of infringement of a trademark, the diversion of customers...

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