Céline Bey
Partner
Co-managing Partner (France)
UPC Representative
Guide
77
Céline Bey and Clémence Lapôtre have written the French Chapter of the ICLG Trade Marks 2021 Guide which covers 36 jurisdictions. Céline and Clémence contribution includes common issues in trade mark laws and regulations – including legislation, application, refusal, opposition and registration.
This article was first published in the ICLG - Trade Marks.
Regarding registration, the relevant trade mark authority is the National Institute of Industrial Property (Institut National de la Propriété Industrielle or INPI). The INPI is in charge of examining French trade mark applications and rules on opposition proceedings filed by the owner of prior rights. It also intervenes in the application process of international trade marks through the World Intellectual Property Organization (WIPO).
Once a trade mark has been registered, the INPI and French trade mark Courts share competence to rule on revocation and declaration of invalidity claims.
Trade mark Courts are granted exclusive jurisdiction in infringement proceedings.
With regards to French trade marks, the competent Courts are the following: Aix-en-Provence; Bordeaux; Colmar; Douai; Fort-de-France; Lyon; Nancy; Paris; Rennes; and Versailles. However, the exclusive jurisdiction of civil Courts in trade mark matters only applies provided a trade mark infringement is actually claimed (Supreme Court, October 14th, 2020, appeal No. 18–21.419).
With regards to European trade marks, Paris is the competent European Union trade mark Court.
In this respect, the Court of Justice of the European Union (CJEU) recently ruled that the owner of a European Union trade mark whose rights have been infringed by a third party using an identical sign in advertising and offers for sale, displayed electronically, may bring infringement actions before the European Union trade mark Court(s) of the Member State(s) of the consumers or traders targeted by such advertising or offers for sale, regardless of the fact that the infringer took the decision to display them in another Member State (ECJ, September 5th, 2019, C-172-18).
The applicable legislation regarding trade marks can be primarily found in the First Title of the Seventh Book of the Intellectual Property Code (IPC), as revised by Ordinance No. 2019-1169 of November 13th, 2019 and Decree No. 2019-1316 of December 9th, 2019.
Other important sources of trade mark legislation can be found in the Civil Code, the Commerce Code, the Civil Procedure Code, the Penal Code and in EU directives and regulations.
Sources of EU trade mark law notably stem from EU Regulations Nos 2017/1001, 2015/2424, 204/2009 and 2868/95, as well as from the Directive 2015/2436.
The Ordinance No. 2019-1169 of November 13th, 2019, implementing the Directive 2015/2436, recently waived the requirement of graphical representation to be registered as a trade mark. A sign only needs to be capable of being represented in the national trade mark register (Article L. 711-1 of the IPC).
Article R. 711-1 of the IPC specifies that the trade mark is represented in the national trade mark register in an appropriate form using commonly available technology, in a clear, precise, distinct, easily accessible, intelligible, durable and objective manner.
Therefore, signs such as sound, multimedia, motion and pattern can be registered as trade marks.
However, taste and smell signs cannot yet be registered as trade marks due to the absence of a relevant medium of representation.
Pursuant to Articles L. 711-2 and L. 711-3 of the IPC, a sign cannot be registered as a trade mark if:
it is contrary to public policy or its use is prohibited by law. Recently, the CJEU held that the sign "Fack Ju Göhte" designating recorded media in Class 9 and film entertainment in Class 41 was not contrary to accepted principles of morality, by emphasising that the fundamental moral values and standards to which a society adheres to is likely to change over time and vary in space (CJEU, February 27th, 2020, C-240/18P);
Pursuant to Article R. 712-3 of the IPC, the application for registration shall, in particular, include the following information and documents:
The applicant must file an online registration form including the above details (see question 2.3).
The INPI shall then review the application and, provided that the trade mark application complies with the formal requirements and absolute grounds for refusal, the application shall be published within six weeks following the filing. In case of non-compliance, the INPI will notify to the applicant the objections raised and grant a delay either to amend the application filed or reply to the INPI's observations.
Within two months following the publication of the application, any third party can file opposition or make observations:
Unless opposition is filed, the INPI shall allow the registration of the trade mark within six months following the application, publish the registration and issue the corresponding Certificate of Registration.
Various requirements need to be fulfilled depending on the type of trade mark:
In compliance with the trade mark principle of speciality, the application must precisely list the goods and services designated.
Under French trade mark law, goods and services are classified according to the Nice Classification system. This classification is divided into 45 classes: Classes 1 to 34 for goods; and classes 35 to 45 for services.
The sole mention of the class heading is, however, insufficient; the applicant must precisely mention each good or service for which trade mark protection is claimed (Paris Court of First Instance, December 13th, 2018, No. 17/05180). However, the CJEU recently held that a lack of precision in a trade mark specification is not a ground of invalidity in relation to a European trade mark or national trade mark (CJEU, January 29th, 2020, C-371/18).
Online tools for the drafting of the goods and services are available, notably, on the INPI and European Union Intellectual Property Office (EUIPO) websites.
Under French law, specific diligences to file the following trade marks may be required:
When filing or renewing a trade mark, the applicant does not need to establish any use of the sign.
However, pursuant to Article L. 714-5 of the IPC, any trade mark owner who has not put the registered trade mark into genuine use for a five-year period following the registration, without a proper reason, is exposed to revocation. The CJEU recently clarified the notion of genuine use and ruled that the use of a trade mark to guarantee the geographical origin and the characteristics of the goods attributable to such origin does not amount to a genuine use of a trade mark whose essential function is to identify the undertaking responsible for the goods at stake (CJEU, October 17th, 2019, C-514/18 P).
On its side, the Paris Court of Appeal clarified the notion of proper reasons for non-use. This notion is strictly defined as an obstacle to the exploitation of the mark that must have a direct relationship with the mark, make the use of the mark impossible or unreasonable and be independent of the will of the holder. In application of this definition, the Court held that unfair competition proceedings brought against the trade name and the signboard of a company does not qualify as a proper reason for non-use of the equivalent trade mark (Paris Court of Appeal, May 17th, 2019, No. 18/06796).
The registration of a French trade mark covers the French territory (continental France, overseas departments and New Caledonia) and, if expressly mentioned in the application form, French Polynesia. The latter option requires the payment of an additional fee.
A trade mark can be filed by any natural person or a legal person such as a civil or commercial company, an association, the government (represented by one of its Ministries) or a territorial collectivity.
The applicant must be domiciled or established in France, in a European Union Member State, or in a European Economic Area Member State. He can also be a citizen of a Paris Union Member State, a World Trade Organization Member State or a country related to France through a bilateral convention.
A trade mark can be held by one natural or legal person or, conversely, on a co-ownership basis.
According to Article L. 711-2 of the IPC, lack of distinctiveness of a sign can be rectified through use (except in cases where the sign is exclusively constituted by the shape imposed by the nature or functions of the product, is contrary to public policy, is misleading, is infringing a prior plant variety or has been registered in bad faith).
Distinctiveness can be acquired before and/or after the trade mark's registration.
To acquire distinctiveness, the trade mark must have been used as a trade mark and as registered. According to case law, to demonstrate acquired distinctiveness, the trade mark owner shall prove its long, notable, and renowned use.
In this regard, judges will notably take into account the duration and the geographic scope of the use, the importance of the use (sales figures, newsletters), the market shares held by the trade marks, press coverage, the importance of investments engaged by the owner for the promotion of the brand, and surveys establishing the percentage of consumers that, thanks to the trade mark, identify the goods and services as originating from the company at stake or the well-known character of the sign.
In this respect, the (CJEU) has stated in a recent decision that acquired distinctiveness must be established for each Member State; it is specified, however, that the evidence provided may be limited to certain Member States as soon as the said elements appear relevant to a wider area and that, taken together, they cover the entire European territory (CJEU, July 25th, 2018, C 84/17).
Provided that the INPI does not raise any observations and that no opposition proceedings are initiated or observations filed by third parties, the registration procedure usually takes six months.
The cost of a trade mark registration varies depending on the number of classes of goods or services designated.
The fees for the filing of a French trade mark before the INPI currently amount to 190 euros for one class, plus 40 euros for each additional class and 60 euros if the French Polynesia option has been chosen.
Renewal fees amount to 290 euros for one class, plus 40 euros for each additional class and 60 euros if the French Polynesia option has been chosen.
Registration can either be obtained before the INPI for French trade marks, at the European Union Intellectual Property Office (EUIPO) for European Union trade marks, and/or at the World Intellectual Property Organization (WIPO) for international trade marks, which may designate France or the European Union.
A trade mark application can be filed by the applicant itself or through a representative.
Pursuant to Article R. 712-2 of the IPC, a representative is mandatory in two situations:
Unless the representative is an Attorney-at-Law or a French Industrial Property Counsel, a Power of Attorney will be required.
If the Power of Attorney is drafted in a foreign language, a translation into French will be required.
Under French law, a Power of Attorney does not require notarisation and/or legalisation.
Priority must be claimed at the filing of the French trade mark application and within six months from the filing of the first application on which priority is based. A copy of the prior trade mark application must be submitted by the applicant within three months from the filing of the French trade mark application.
The IPC recognises both Collective and Certification marks (now named Guarantee marks).
Pursuant to Article L. 715-6 of the IPC, a Collective mark is a trade mark which may be used by any person who complies with regulations for use issued by the owner of the registration.
Following the entry into force of the Ordinance of November 13th, 2019, pursuant to Article L. 715-1 of the IPC, a Guarantee trade mark distinguishes goods or services for which the material, manufacturing or delivery process, quality or other characteristics are guaranteed by regulations for use.
According to Article L. 712-7 of the IPC, a trade mark cannot be registered if:
In the event that the INPI finds that the application does not comply with the requirements of Articles L. 711-1 to L. 711-3 of the IPC, it will notify the applicant and grant an extension of time in which to either reply or amend the application.
If the application is rejected, the INPI decision can be challenged before the competent Court of Appeal within one month from its notification (Articles R. 411-19 and R. 411-20 of the IPC). Such delay is extended by one month for residents of the French overseas territories and two months for foreigners.
An appeal against a decision of the INPI's Director General can be filed before the competent Court of Appeal of the appellant's residence. The competent Courts specialised in trade mark law are the following: Aix-en-Provence; Bordeaux; Colmar; Douai; Fort-de-France; Lyon; Nancy; Paris; Rennes; and Versailles.
An ultimate recourse against the Court of Appeal's decision can be filed before the French Supreme Court (Cour de cassation).
According to Articles L. 711-3 and L. 711-4 of the IPC, a sign cannot be registered as a trade mark if it infringes earlier rights, especially:
The applicant can either:
Should the INPI hold that the application does not comply with Article L. 711-4 of the IPC or that the opposition is well founded and reject the application, the applicant will be allowed to appeal the decision before the competent Court of Appeal within one month from its notification. Such delay is extended by one month for residents of the French overseas territories and two months for foreigners.
An appeal against a decision of the INPI's Director General can be filed before the competent Court of Appeal of the appellant's residence. The competent Courts specialised in trade mark law are the following: Aix-en-Provence; Bordeaux; Colmar; Douai; Fort-de-France; Lyon; Nancy; Paris; Rennes; and Versailles.
An ultimate recourse against the Court of Appeal's decision can be filed before the French Supreme Court.
One of the major changes resulting from the Ordinance No. 2019-1169 of November 13th, 2019 concerns the reform of the opposition procedure before the INPI against a trade mark application infringing the prior rights of a third party.
The new opposition procedure applies exclusively to trade marks filed on or after December 10th, 2019. Since that date, an opponent can claim several rights in a single opposition.
As a result, according to Article L. 712-4 of the IPC, third parties can file opposition against a trade mark application on the grounds of:
Pursuant to Article L. 712-4-1 of the IPC, opposition to an application for registration may be entered by:
All oppositions shall be filed online on the INPI's website. They can be filed before the INPI within two months from the publication of the trade mark application.
The opposition shall notably specify (Article R. 712-14 of the IPC):
The opposition is notified to the applicant, who is granted a two-month delay to submit counter-observations including proof of use of the earlier trade mark. Failing to do so enables the INPI to make a decision on the matter. In case of a response by the applicant, the opposition proceedings become a contradictory procedure. The applicant and the opponent can exchange observations for a six-month period as from the notification of the opposition. Upon these observations, the INPI will issue its decision within three months (Article R. 712-16-1 of the IPC).
Pursuant to Article L. 712-5 of the IPC, the opposition is rejected if the director of the INPI has not issued its decision within three months as from the end of the parties' observations.
The fee for filing an opposition before the INPI is 400 euros for one prior right and 150 euros for each additional prior right.
Once registration is granted, the INPI publishes the trade mark registration in the Official Bulletin of Industrial Property (BOPI) and sends the Certificate of Registration to the trade mark owner or its representative.
Pursuant to Article L. 712-1 of the IPC, trade mark rights commence at the filing date of the application.
Trade mark rights are enforceable against third parties after the publication of the application or the notification to third parties. Prior to the trade mark registration, the applicant can indeed:
Trade mark protection starts from the date of filing of the trade mark application and lasts for 10 years, renewable indefinitely (Article L. 712-1 of the IPC).
Pursuant to Articles L. 712-9 and R. 712-24 of the IPC, a trade mark is indefinitely renewable for additional terms of 10 years.
The declaration must be filed within one year before the term of the trade mark. In case of failure to renew the trade mark within such time, the owner can benefit from a six-month grace period and still renew the trade mark, for a supplementary fee of 125 euros.
Renewal fees amount to 290 euros for one class, plus 40 euros for each additional class and 60 euros if the French Polynesia option has been chosen.
Failure to pay such fees is sanctioned by the lapse of the trade mark right.
The assignment of a trade mark is enforceable against third parties if registered with the National Register of Marks. The assignment can be registered by any party by filing a specific form before the INPI together with a copy of the assignment, the relevant clauses or a confirmatory assignment signed by both parties. If the assignment has been drafted in a foreign language, a French translation must be provided.
A trade mark assignment may either concern the entire trade mark (or trade mark application) or be limited to specific goods or services (Article L. 714-1 of the IPC). However, it cannot be limited to a part of the French territory or to a part of the sign itself.
As for the trade mark assignment, in principle, a licence agreement is only enforceable against third parties if registered with the National Register of Marks. The licence can be registered by any party by filing a specific form before the INPI together with a copy of the licence agreement, the relevant clauses or a confirmatory licence signed by both parties. If the licence has been drafted in a foreign language, a French translation must be provided.
As for the assignment of a trade mark, the licence may either concern the entire trade mark (or trade mark application) or be limited to particular goods or services (Article L. 714-1 of the IPC). In contrast to assignment agreements; however, the licence may be limited to a part of the French territory or to a part of the sign itself.
The licence may either be sole, exclusive or non-exclusive. In case of a non-exclusive licence, several licensees may have the same rights under the same trade mark.
Pursuant to Article L. 716-4-2 of the IPC, except as otherwise stipulated in the licensing contract, any licensee is entitled to bring an action for infringement provided the trade mark owner gave his consent. However, the exclusive licensee is entitled to bring an action for infringement if, after notice, the owner of the trade mark does not bring the proceedings itself within a reasonable time frame.
Any licensee can intervene to join the infringement proceedings in order to obtain compensation of the prejudice suffered.
Quality control clauses are not mandatory under French trade mark law, although it is advisable for the trade mark owner to include such provisions in their licence. Such control clauses can include, for example, the prior approval of any prototype, a random check of the quality of the samples or the carrying out of audit procedures, and that non-compliance with these obligations shall be sanctioned by the termination of the licence.
A security interest is only enforceable against third parties if registered with the National Register of Marks. The security can be registered by any party by filing a specific form, together with a copy of the agreement, a copy of the licence agreement, the relevant clauses or a confirmatory agreement signed by both parties. If the agreement is written in a foreign language, a translation into French must be provided.
Among the different types of security interest existing under French law, pledging (nantissement) can be granted over intangible property such as a trade mark.
As for the assignment or the licensing of a trade mark, a pledge must be registered with the National Register of Marks by filing a specific form with the INPI, together with a copy of the contract signed by both parties. If this agreement has been drafted in a foreign language, a French translation must be provided.
Pursuant to Articles L. 714-5 and L. 714-6 of the IPC, a trade mark can be revoked:
Since April 1st, 2020, the INPI has, in principle, sole jurisdiction under the new Article L. 716-5 I of the ICP, to rule on principal claims for trade mark revocation (based on non-use or degeneration) and/or trade mark invalidity (see question 9.2 for more detail on the grounds of invalidity).
Exceptionally, civil Courts retain exclusive jurisdiction under Article L. 716-5 II of the ICP to rule on the following matters:
On July 10th, 2020, the INPI declared that it lacked jurisdiction to hear a revocation claim because the trade mark had previously been the object of infringement proceedings before the Marseille Court of First Instance (INPI, decision July 10th, 2020, DC20-0008/3319571/SGU).
Revocation may be requested by any third party.
Revocation may also be requested by way of a counterclaim in an infringement action.
In case of a revocation action for non-use, the onus of proof lies upon the owner of the trade mark. He/she can overcome such action by:
If the trade mark has become a common name in trade or liable to mislead, the owner of the trade mark can establish that he/she has objected to such use. Objections of the owner can notably result in cease-and-desist letters or writs of summons filed against third parties using the trade mark in an inappropriate manner.
The Supreme Court recently held that the owner of a trade mark revoked for non-use retains the right to claim compensation for damages suffered as a result of the use by a third party, prior to the effective date of revocation, of a similar sign for identical or similar goods/services which are confusing with this trade mark (French Supreme Court, November 4th, 2020, appeal No. 16-28.281).
The INPI Director's decision may be appealed before the competent Court of Appeal. In the event of a revocation counterclaim brought in an infringement action, the first instance decision must be appealed before the Court of Appeal competent for the entire case.
An ultimate recourse against an appeal decision can be filed before the French Supreme Court only on questions of law.
The grounds for invalidity of a trade mark are identical to the grounds for refusal of registration (whether relative or absolute grounds).
As indicated above (see question 8.2), the INPI has concurrent jurisdiction under the new Article L. 716-5 of the ICP to rule on principal claims for trade mark invalidity. More precisely, only claims based on the following grounds shall be initiated before the INPI:
However, invalidity claims based on personality rights, author's rights and designs shall be initiated before the civil Court (see question 8.2 for exclusive jurisdiction of the Court).
Pursuant to Article L. 716-2-6 of the IPC, as a principle, an invalidity claim cannot be time-barred.
As an exception, the action shall be barred if the owner of a prior right has knowingly acquiesced (i.e. has not opposed) to the use of the later registered trade mark for at least a period of five years, unless the later trade mark has been filed in bad faith (Article L. 716-2-8 of the IPC). Moreover, the action of the holder of a well-known trade mark shall be barred after five years from the registration unless the trade mark has been filed in bad faith (Article L. 716-2-7 of the IPC).
If the validity of the trade mark is challenged before the INPI, the proceedings may be commenced by any legal or natural person. Before the French Court, the proceedings shall be commenced by any concerned third party.
If the validity of the trade mark is challenged on relative grounds before the French Court, only the prior right-holder can introduce the action.
If the validity of the trade mark is challenged on absolute grounds, the trade mark owner can argue that the opponent failed to demonstrate that the trade mark is invalid. To that end, the trade mark owner can either:
If the validity of the trade mark is challenged on relative grounds, the owner of the later trade mark can argue that either:
The decision on the invalidity of a trade mark can be appealed before the competent Court of Appeal and an ultimate recourse can be filed before the French Supreme Court.
Pursuant to Article L. 716-5 of the IPC, infringement proceedings may be commenced by the owner of the prior trade mark or its exclusive licensee.
If the exclusive licensee wishes to commence the proceedings itself, he/she can only do so if:
As regards European trade marks, it should be noted, however, that the publication requirement has been abandoned by the CJEU, which held that the exclusive licensee may initiate infringement proceedings even in the absence of publication of the licence agreement.
In addition, the non-exclusive licensee can intervene in the proceedings to seek reparation of its own prejudice.
The claimant initiates proceedings by filing a writ of summons with the competent Court of First Instance from the following list of Courts: Bordeaux; Lille; Lyon; Marseille; Nanterre; Nancy; Paris; Rennes; Strasbourg; and Fort-de-France.
Before initiating a trial on the merits, the owner of the trade mark (or the exclusive licensee) should gather evidence of the infringing acts.
To that end, it may organise a seizure. As a matter of fact, pursuant to Article L. 716-7 of the IPC, the trade mark owners/ holders may request ex parte from the President of the competent Court of First Instance the authorisation to have a bailiff, possibly accompanied by the relevant expert(s) and/or police officer(s), enter the premises of the alleged infringer or third party. The bailiff will then gather evidence of the infringement and, notably, seize or describe the infringing products. He/ she may also process, collect and copy any relevant documents demonstrating the infringement and the extent of the prejudice suffered. Such measures for preserving evidence requested ex parte are strictly governed by the order issued by the judge. For example, the report of a seizure during which the bailiff's findings were extended to all the plaintiff's marks, while the order only concerned two trade marks precisely identified, is invalid (French Supreme Court, July 3rd, 2019, No. 16-28.543). The owner of the trade mark (or the exclusive licensee) may also gather evidence by means of:
Once evidence of the infringement has been gathered, the owner of the trade mark (or the exclusive licensee) shall send the infringer a formal notice (cease-and-desist letter) requesting that the infringer cease the infringing acts.
In this respect, it should be noted that, pursuant to Article 54 of the Civil Procedure Code (CPC), and unless otherwise justified by the urgency of the issue at stake, the claimant must specify in the writ of summons the actions undertaken to amicably resolve the dispute. In the absence of any attempt to reach an amicable solution, the judge may suggest the initiation of conciliation or a mediation procedure between the parties.
If amicable resolution attempts have failed, the claimant can officially commence the proceedings by filing a writ of summons before the competent Court (see question 10.1). Pursuant to Articles 54 and 56 of the CPC, the writ of summons shall indicate the Court seized, the subject matter of the litigation, the claimant's identity, the place, date and time of the hearings, the relevant facts and legal claims and the list of exhibits.
Once the proceedings have been initiated, a first procedural hearing takes place during which the pre-trial judge checks whether:
A second procedural hearing is set for the filing of the claim-ant's submissions in defence and exhibits (usually six to eight weeks from filing the writ with the Court).
A third procedural hearing is set for the filing of the defendant's submissions in defence and exhibits in reply (approximately six to eight weeks after the second procedural hearing).
The judge can schedule additional hearings to allow the parties to file supplementary submissions or close the debates and set a date for the final hearing (approximately six to eight weeks after the third procedural hearing).
A final hearing is held for pleadings, the Court's decision usually being issued between one and three months after the oral debates.
First instance proceedings on the merits, before civil Courts, usually last between 18 and 20 months. Appeal proceedings on the merits last approximately 20 months.
Trade mark owners can also opt for accelerated proceedings: accelerated proceedings on the merits at first instance usually last three to six months, whereas accelerated proceedings on the merits at the appeal stage usually last six to eight months.
Preliminary injunctions are available under French law.
Pursuant to Article L. 716-6 of the IPC, any person entitled to sue for infringement may request any measure from the Courts in order to stop the infringement or to prevent an imminent infringement.
Those measures canbe taken eitherbefore or after the commencement of proceedings on the merits of the case.
If filed before, the action on the merits must be brought within 20 business days (or 31 calendar days if longer) from the date of the interim order (Article R. 716-20 of the IPC). Failing that, the measures granted will be automatically cancelled.
When circumstances require, such measures can be ordered ex parte, especially when any delay would cause irreparable harm to the right-holder.
French judges will:
However, judges must also consider the proportionality of the measures being sought, in accordance with the Directive 2004/38/EC.
A lower threshold than the action on the merits is applied so as to provide the right-holder with rapid and effective interim measures.
Interim remedies that can be granted in this respect include:
Decisions on provisional measures may be appealed within 15 days, unless granted by the pre-trial judge.
Injunctions are also available as final remedies (see question 12.1).
There is no discovery or disclosure procedure (requiring a party to disclose information or documents) available under civil procedure rules. However, judges are vested with investigation powers and can issue an injunction requesting the production of evidence in compliance with civil procedure rules (Articles 11 and 138 of the CPC).
In addition, pursuant to Article L. 716-7-1 of the IPC, the judge can, at the request of the claimant, order the production of the documents needed to ascertain the origin of the infringing products, the distribution channels and the amount of infringing material manufactured and/or commercialised, provided there is no legitimate obstacle. In this respect, it should be noted that trade secrets can qualify as a legitimate obstacle to the communication of documents and information. In fact, the Aix-en-Provence Court of Appeal recently rescinded an order allowing the seizure of documents revealing the name of the defendant's clients on the ground that the seizure of such information would infringe trade secrets and had no sufficient link with the alleged infringement (Aix-en-Provence Court of Appeal, April 26th, 2019, No. 19/00159).
Such measure can be requested by the claimant prior to the decision on the merits through an incidental procedure, or can be granted by the Court following the finding of the infringement. In such a case, the Court may grant a provision on the damages and request from the defendant the production of any relevant document for the evaluation of the prejudice.
In civil procedure, submissions and/or evidence are presented to the Courts in writing. The content and strength of the evidence submitted are assessed by the Court, it being specified that:
French civil procedure does not provide any process for cross-examination of witnesses.
During infringement proceedings, the validity of the trade mark is often challenged as a counterclaim by the opponent. Such claim is therefore usually heard by the Court to which it is referred. As a consequence, staying the proceedings should not be necessary.
However, in case of a European Union trade mark and pursuant to Article 128 of EU Regulation 2017/1001 (former Article 100 of EU Regulation 207/2009, modified by EU Regulation 2015 2015/2424), if the validity of a European Union trade mark is first challenged before the European Office, the French Court will have to stay the proceedings pending the European Office's decision. The European Union trade mark Courts shall remain competent if the validity of the European Union trade mark is challenged as a counterclaim (Article 124 of EU Regulation 2017/1001).
Pursuant to Article L. 716-5 of the IPC, infringement proceedings shall be barred after five years from the latest infringing act.
Pursuant to Article L. 716-9 of the IPC and Article 131-38 of the Penal Code, trade mark infringers may face criminal sanctions of up to four years of imprisonment and a fine of 400,000 euros, or a fine of 2,000,000 euros when the infringer is a legal person.
Criminal prosecution of infringement can either be pursued by the right-holder or directly by the Public Prosecutor. A complaint of the victim is indeed not mandatory in order to pursue the offence of counterfeiting.
French trade mark law does not provide any provision regarding unauthorised threats of trade mark infringement actions.
However, the sending of cease-and-desist letters in excessive terms to alleged infringers can amount to a fault. Likewise, warning letters sent to distributors or other intermediaries can trigger the trade mark owner's liability on the ground of disparagement or unfair competition based on Article 1240 of the Civil Code (French Supreme Court, January 9th, 2019, No. 17/18350).
In case of infringement action, the defendant may claim that:
In case of trade mark infringement action, available defences include:
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