Constitutes an infringement, engaging the civil responsibility of its author an infringement of the rights attached to the mark, namely the violation of the prohibitions provided for in articles L. 713-2 to L. 713-3-3 and in the second paragraph of the article L. 713-4.

The facts prior to the publication of the trademark registration request cannot be considered as an infringement.

However, the facts subsequent to the notification made to the alleged infringer of a copy of the registration request may be noted and prosecuted.

Who can act

Civil action for infringement is initiated by the trademark owner or by the licensee with the consent of the owner, unless otherwise stipulated in the contract. However, the beneficiary of an exclusive right of exploitation may act for infringement if, after formal notice, the holder does not exercise this right within a reasonable time.

Any party to a license contract is admissible to intervene in the infringement proceeding brought by another party in order to obtain compensation for the damage which is specific to it.

Special cases of guarantee and collective marks; see Art. L716-4-2.

Starting point for the five-year limitation period for infringement proceedings

  • the day when the holder of a right knew or should have known the last fact allowing him to exercise it.

Inadmissibility of the infringement action

  • when, at the defendant's request, the owner of the mark cannot adduce proof that the mark has been the subject of the goods or services for which it is registered and which are invoked in support of the request, serious use during the 5 years preceding the date on which the counterfeiting request was made, under the conditions provided for in article L. 714-5; or that there were just reasons for its non-use;
  • the action was initiated in accordance with Regulation (EU) 608/2013 of June 12, 2013 by the trademark owner on the basis of the provisions of Art. L. 713-3-2 if, during the procedure to determine whether the registered mark has been infringed, the declarant or the holder of the products provides proof that the holder of the registered mark has not right to prohibit the placing on the market of products in the country of final destination,
  • the infringement action was brought by the holder of an earlier mark against a later mark, the holder of the earlier mark having tolerated for a period of 5 consecutive years the use of the later mark in knowledge of this use and for the products or services for which the use has been tolerated, unless its deposit has been made in bad faith; at the request of the holder of the later mark, the plaintiff in the action for infringement on the basis of an earlier mark not providing the evidence required, as the case may be, by article L. 716-2-3 or by article L. 716-2-4.

Conduct of the action

Anyone qualified to act as an infringement may refer the matter to the competent civil court for interim measures, in order to order, if necessary under penalty, against the alleged infringer or the intermediaries whose services he uses, any measure intended to prevent an imminent infringement to the rights conferred by the title or to prevent the pursuit of alleged acts of counterfeiting.

The competent civil court may also order any urgent measures on request when the circumstances require that these measures are not taken contradictorily, in particular when any delay would be likely to cause irreparable damage to the claimant.

Seized in summary proceedings or on request, the court may order the measures requested only if the evidence, reasonably accessible to the claimant, makes it probable that his rights have been infringed or that such infringement is imminent.

Measures that can be ordered by the court

  • prohibit the prosecution of alleged acts of counterfeiting;
  • make it subject to the constitution of guarantees intended to ensure the possible compensation of the claimant; or
  • order the seizure or delivery into the hands of a third party of products suspected of infringing the rights conferred by the title, to prevent their introduction or circulation in commercial circuits;
  • if the plaintiff justifies circumstances likely to compromise the recovery of damages, order the precautionary attachment of the movable and immovable property of the alleged infringer, including the freezing of his bank accounts and other assets, in accordance with ordinary law;
  • grant the claimant a provision when the existence of his prejudice is not seriously questionable;
  • application for interim measures or on request, subject the execution of the measures it orders to the establishment by the claimant of guarantees intended to ensure the possible compensation of the defendant if the infringement action is later found to be unfounded or the measures canceled .

When the measures taken to put an end to an infringement of rights are ordered before the initiation of an action on the merits, the plaintiff must, within a time fixed by regulatory means, either appeal by civil or penal way, or file a complaint with the public prosecutor. Failing this, at the defendant's request and without the defendant having to state his reasons, the measures ordered are canceled, without prejudice to the damages which may be claimed.

Proof of infringement: by all means

To this end, any person qualified to act in infringement is entitled to have proceeded at any place and by any bailiffs, if necessary assisted by experts designated by the claimant, by virtue of an order made on request by the court. competent civil authority, either in the detailed description, with or without taking samples, or in the actual seizure of the allegedly infringing products or services as well as any document relating thereto. The order may authorize the actual seizure of any document relating to the allegedly infringing goods and services in the absence thereof.

The court may order, for the same probative purposes, the detailed description or the actual seizure of the materials and instruments used to manufacture or distribute the products or provide the services alleged to be infringing.

It may subject the execution of the measures it orders to the establishment by the claimant of guarantees intended to ensure the possible compensation of the defendant if the action for infringement is subsequently found to be unfounded or the attachment canceled.

If the plaintiff fails to appeal to the merits, by civil or penal means, within a period fixed by regulation, the entire seizure, including the description, is canceled at the request of the seized, without the latter has to justify his request and without prejudice to the damages which may be claimed.

Measures of Art. L716-4-8

The court may order, ex officio or at the request of any person qualified to act in counterfeiting, all legally admissible investigative measures even if a seizure of counterfeiting has not been previously ordered under the conditions provided for in the article L. 716-4-7

Measures of Art. L716-4-9

If requested, the court seized on the merits or in urgent proceedings of a civil procedure provided for in this title may order, if necessary under penalty, to determine the origin and distribution networks of the alleged counterfeit products which infringe the rights of the plaintiff, the production of any documents or information held by the defendant or by any person who has been found in possession of alleged counterfeit goods or who provides services used in alleged counterfeit activities or which has been reported as involved in the production, manufacture or distribution of these products or the provision of these services.

The production of documents or information can be ordered if there is no legitimate impediment.

Fixing of damages

The jurisdiction takes into consideration distinctly: the negative economic consequences of counterfeiting, including the loss of profit and the loss suffered by the injured party; the non-pecuniary damage caused to the latter; and the profits made by the counterfeiter, including the savings in intellectual, material and promotional investments which he has derived from the infringement.

However, the court may, as an alternative and at the request of the injured party, award as damages a lump sum. This sum is greater than the amount of royalties or rights which would have been due if the infringer had requested authorization to use the right which he infringed. This sum is not exclusive of compensation for non-pecuniary damage caused to the injured party.

Other sentencing measures

In the event of a civil conviction for counterfeiting, the court may order, at the request of the injured party, that the products recognized as counterfeit products and the materials and instruments used mainly for their creation or manufacture be recalled from the commercial circuits, definitively excluded from these circuits, destroyed or confiscated for the benefit of the injured party.

The court may also order any appropriate measure of publicity of the judgment, in particular its posting or its complete publication or by extracts in the newspapers or on the online communication services to the public which it designates, according to the methods which it specifies.

The measures mentioned above are ordered at the expense of the infringer.

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.


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...