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Amendments regarding infringement action for French trademarks and designs

August - 2008
1) Absence of recordal in the French Register of trademarks or designsArticles L. 513-3 and L. 714-7 of the French Intellectual Property Code establish the principle that any transmission or modification of rights concerning a trademark or a design, such an assignment or license, must be recorded in the French Register of trademarks or designs for being opposable to third persons. The Modernisation of the Economy Act on the 4th of august 2008 now foresees that a licensee can intervene in an action for infringement engaged by the rights holder, even in the absence of recordal of his licence, in order to obtain relief of his own prejudice. The recordal of the license is still required if the infringement action is brought by the licensee and not by the rightholder. Furthermore, the unrecorded acts are opposables to third persons who have acquired rights with knowledge of the unrecorded act. 2) Exclusive competences of First Instance Courts named “Tribunal de Grande Instance”The Modernisation of the Economy Act dated 04/08/2008 also clarifies the competences of courts in trademarks and designs. Now, all civil actions and claims relating to any of these rights in France are exclusively the comptence of “Tribunal de Grande Instance”.