This country-specific Q&A provides an overview of Intellectual Property laws and regulations applicable in France.
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
(a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
Inventions can be protected by patent rights, provided they are duly filed, prosecuted before the French Office (“INPI”) for French patents and the European Patent Office (“EPO”) for European patents, and meet the novelty, inventive step and industrial application requirements. Patent prosecution includes a search report to check the novelty and inventive steps requirements. Since July 1st, 2020, a provisional patent application can be filed. Inventions can also be protected by utility certificates which are less expensive and may be granted without a search report.
Supplementary protection certificates may be granted to any owner of a patent having effect in France regarding some regulated products whose subject matter includes plant protection products, a human or veterinary medicine, a process for obtaining a medicine, a product required for obtaining such medicine or a process for manufacturing such product.
Trade secrets, confidential information and/or know-how can be protected according to specific provisions regarding trade secrets as well as contract and tort law
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
The following intellectual property rights and causes of action may be used to protect brands:
Trade marks and collective/certification marks, whether French, European or international, subject to prosecution before the relevant office, and distinctiveness to indicate the source of origin of goods or services.
Rights on trade names and signboards can be acquired through public use to protect brands.
Rights on company names acquired through registration at the companies registry can also be used to protect brands.
Geographical indications as well as designations of origin and traditional speciality guarantees.
Tort law, which comprises the prohibition to generate confusion as to the origin of goods and services as well as “riding on someone’s coat tails,” can generate causes of action to protect brands.
Contract law including contractual terms as well as general contract law provisions about good faith.
General consumer law provisions which prohibit consumer deception.
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
The following intellectual property rights and causes of action may be used to protect other creations, technology and proprietary interests:
Copyright, as long as creations are original works.
Neighbouring rights allocated to interpreters, audio and video producers as well as to data base producers.
Design rights, provided the design is new and has an individual character.
Semiconductor topography rights, provided they are the result of a creator’s own intellectual effort and not common.
Plant variety rights, involving new varieties or species.
Tort law, which comprises the prohibition of riding on someone’s coat tails, can generate causes of action to protect brands.
Contract law, including contractual terms as well as general contract law provisions about good faith.
General consumer law provisions which prohibits consumer deception.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents: maximum period of 20 years from the filing date subject to payment of annuities. Using priority rights and the combination of French and European patents, the patent term can be extended for almost a year.
Utility certificates: maximum period of 10 years from the filing date subject to payment of annuities. Within 18 months from the filing or from priority date, and before the publication of its application, the utility certificate may be converted in a patent, and therefore extended.
Supplementary protection certificates: SPCs may extend the patent protection for the shortest of the following terms: 5 years from the patent expiry and 15 years from the first marketing authorisation.
Trade secret: Generally there is no statutory term of protection. In practice, trade secrets remain protectable as long as the information remains secrets and many contractual provisions refer to a 5-year term.
Trademarks, collective marks and certification marks are protected in France for a 10-year term and the registration can be renewed indefinitely.
Designations of origin, geographical indications and traditional speciality guaranties: unlimited term.
Copyright and related rights: while economic rights are subject to a 70-year term after the author’s death, moral rights are perpetual.
Database producers: 15-year term from each substantial investment.
Design rights: 5-year term from the filing which can be extended in 5-year increments, up to a maximum 25-year term.
Semiconductor topography rights: 10-year term from the earliest of the following events: either its filing or its first commercial exploitation.
Plant varieties: 25-year term, and 30-year term for forest, fruit or ornamental trees, for wine grapes as well as for graiminaceae and perennial leguminous fodders, potatoes and endogamous lines used for the production of hybrid varieties
Domain name: generally, 1-year term which can be extended indefinitely.
Commercial name/corporate name: no term.
Claims based on the above-mentioned rights are generally subject to 5-year statute of limitation.
Unfair competition / parasitism and contractual claims: generally French law provides a 5-year statute of limitation.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
Patents: as a matter of principle, the first owner is the inventor. However, employers (i) own patents created in the course of employment under a commission and (ii) may own employees’ inventions linked to the employment subject to payment of a fair price.
Utility certificate: same rules as for patents.
Supplementary protection certificates: the first owner is the first applicant.
Trade secret: the holder of the information can claim trade secret protection.
Trademarks, collective, certification marks, designations of origin, geographical indications, traditional speciality guaranties, designer rights, semiconductor topography rights and domain names: the first owner is the applicant.
Unfair competition / parasitism: anybody who justifies of an interest can be the holder of a right to act on this basis.
Copyright and related rights: the first owner is the author of the work. For software only, copyrights can be hold by employer of the software was that created in the course of employment.
Plant varieties: the first owner is the plant’s breeder. However, for plant varieties created in the course of employment of under a commission, the owner is the employer.
Which of the intellectual property rights described above are registered rights?
Among rights described in section A, registered rights are rights on patents, supplementary protection certificates, trademarks, collective marks, registered design rights, semiconductor topography rights, plant varieties, geographical indications, domain names, corporate names.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Patents: an inventor, the employer who owns an invention, or his/her agent can file a patent application before the INPI (French Intellectual Property Office) for French patents; the EPO (European Patent Office) for European patent applications; and WIPO (World Intellectual Property Organization) for international patent applications. The filing is performed online.
Inventions created in France which may interest national defence must be filed in France first, so that the DGA (France’s defence procurement agency) can check whether it needs to be kept secret. Then, patent applications are published so that the relevant office shall examine the application to assess patentability and perform a search report on prior disclosures (publicly available). Third parties may file observations against the patentability or oppose to granting the patent. The patent is published once it is granted.
Utility certificate: the certificate is issued in four stages: verification of the regularity of the request, examination by the DGA, publication of the request (18 months after the request), publication of the issuance of the utility certificate.
Supplementary protection certificates: in France, to obtain an SPC, the product that is the subject of the certificate request must be protected by a basic patent in force; must have obtained a valid marketing authorization (MA), this MA being the first MA for the product; and must not have already been the subject of a certificate. These conditions being satisfied, the owner of the patent must submit a request within six months from the date of obtaining the MA or the date of grant of the patent (if the MA is granted before the grant of a patent). The request must be contain the required documentation, a copy of the first MA, the payment of the filing fee and, if the case arises, the power of attorney. If the application does not present any irregularities, it is published in the Official Bulletin of Industrial Property (BOPI). Then, if the request is regular at the administrative and technical level, and if it has not been withdrawn, the supplementary protection certificate is issued and published.
Trade, collective and certification marks: a trade mark can be filed online by any natural or legal person, or an agent before the INPI for French trademarks, the EUIPO for European trademarks and WIPO for international trademarks. In any case, the wording of the products and/or services for which the mark will be protected must be determined according to the administrative classification called “the Nice classification”. Then, the relevant office assesses absolute grounds that prevent registration (notably distinctiveness, deceptiveness and compliance with public order) and may issue a notification refusing registration or requesting amendments. The French and European trademark applications are then published so that third parties may file observations or oppose their registration. International trademarks can be opposed at the relevant national level. Registration of the trademark is published.
Design rights: a design right can be filed online by any natural or legal person who owns the design, or his/her agent before the INPI for French designs, EUIPO for Community registered designs and WIPO for international designs. The application must specify the administrative distinction known as the “Locarno classification” and contain sufficient reproductions to properly perceive the design. Then the applicant must create reproductions of its design (drawing or photography). The application is published and examined by the relevant office. Grant of the design right is also published by the relevant office.
Semiconductor topography rights: the owner or an agent can apply for registration. The application must be made within two years of the first commercial exploitation, or within 15 years from the creation of the topography, if it has not subject to commercial exploitation. In the two months preceding the expiration of the term of protection, the applicant may request either the return of the parts, or their conservation for an additional period of 10 years renewable. The request must be filed at the INPI headquarters in Paris, which will examine the request and grant a title of protection.
Plant varieties: a plant breeder or its employer (if in the course of employment), or an agent can file an application. To obtain a plant variety certificate valid in France, the applicant must submit a request to the secretariat of the National Plant Breeders’ Authority (INOV). The examination procedure takes approximately six months. Any variety which is the subject of a request is subject to a technical examination of distinction, homogeneity and stability, carried out under the responsibility of INOV. At the end of the examination procedure, INOV grants a title of protection. For European community protection, a similar procedure must be followed before the Community Plant Variety Office (CPVO) located in Angers, France.
Geographical indications: the applicant must establish the specifications and ensure the representativeness of the relevant operators. The applicant must then make an online application on the INPI website and pay the fees. The INPI then proceeds to an examination and publishes the application on its bulletin, the BOPI. When applicable, it may be necessary to respond to any comments the INPI received and modify the specifications. At the end of the procedure, if accepted, the INPI publishes its approval decision in the BOPI.
How long does the registration procedure usually take?
Patents: the average period is 30 months between the filing and the grant of the patent by the INPI.
Utility Certificate: the application is published approximatively 18 months after the filing.
Supplementary protection certificates: the issuance of a SPC lasts a few months, it is a rather fast procedure because the SPC is intended to compensate for the time necessary to obtain the marketing authorization for new drugs.
Trade, collective and certification marks: the trade mark is published in the BOPI (Official Bulletin of Industrial Property) approximately six weeks after filing. Then there is a period of two months during which the holders of prior rights can oppose to this registration. If there is no opposition during this two months period, the mark can then be registered and published at least five months after filing. European trademarks follow a similar procedure. After filing, international trademarks are subject to the relevant legislation of designated countries.
Design rights: the average period is four months between the filing and the grant of the design by the INPI. Community and international designs are subject to a similar timeframe.
Semiconductor topography rights: the procedure lasts a few months.
Plant varieties: the procedure lasts at least six months since the examination procedure takes approximately six months.
Geographical indications: the INPI notifies its decision to grant protection generally 10 to 20 months after filing. Indeed, after the filing the INPI sends within two months a request for additional information, to which the depositor has one month to respond. The publication in the Official Journal marks the start of the two-month public search. Consumers, companies, associations and other parties can communicate their opinion on the draft specifications. In parallel, the INPI consults the INAO, local authorities, consumer associations and groups of interested professionals. They also have a period of two months to present to the INPI their observations on any point of the specifications. Then the INPI sends the applicant, within two months, a summary of the comments received, as well as its recommendations and conclusions. The applicant then has two months to take into account the recommendations received and possibly amend its project. A new phase of public inquiry and consultations will then be conducted, only on the modifications made to the project. It therefore takes 10 to 20 months before approval.
Domain names: this procedure is quick and takes from a few hours to a few days, depending on the registrar.
Do third parties have the right to take part in or comment on the registration process?
As mentioned on point 5, third parties can send observations before the office and/or file oppositions to the registration of patents and trademarks.
A public search conducted before the approval of a geographical indication in order to have third parties’ opinions on the specifications.
What (if any) steps can the applicant take if registration is refused?
The applicant can appeal the decision before the judicial appeal court that has territorial jurisdiction over the case regarding French intellectual property rights and before the Board of Appeals regarding decisions from the EUIPO.
What are the current application and renewal fees for each of these intellectual property rights?
Patents: filing in France is 36 euros (and 42 euros for each supplementary claim after the 10th claim); an INPI report is 520 euros; granting of patent is 90 euros. Every year annuities, which increase with time, must be paid, from 38 euros (first year) to 800 euros (20th year). Filing at the EPO costs 260 euros for a paper filing and 125 euros online; search report for applications made after July 1st, 2005, cost 1350 euros and designation taxes for applications after April 1st, 2009, cost 610 euros. For international patents, international application 1217 euros and search report 1775 euros.
Utility certificate: taxes are requested from the depositor of the utility certificate when filing (€36 for filing in paper format, €26 for filing in electronic format) and issuance (€86). In addition, annuities must be paid to maintain the utility certificate in force. They range from €36 in the second year to €72 in the sixth year.
French trademarks, collective marks: filing is 190 euros for one class of products/services (350 euros for collective marks), plus 40 euros for each supplementary class. Renewal fee its 290 euros (450 euros for collective marks). EUTM: paper filing 1000 euros, electronic filing 850 euros, plus 50 euros for the second class, plus 150 euros for each supplementary class, paper renewal 1000 euros and electronic renewal 850 euros.
Design rights: filing is 39 euros, plus 52 euros if protection is directly sought for a period of 10 years. Each reproduction costs 23 euros for black & white reproductions and 47 euros for reproductions in colour. ECD: registration 230 euros, additional registration from 2 to 10, 115 euros, plus 50 euros for each additional registration, publication 120 euros, publication delay 40 euros.
Semiconductor topography rights: filing fee is 79 euros.
Plant varieties: granting costs 40 euros and annual fees are from 25 euros to 150 euros (ascending amount).
Geographical indications: filing fee is 350 euros.
Domain names: a domain names costs approximatively 10 to 15 euros per year. The amount can vary depending on the chosen extension.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
Failure to pay renewal fees or annuities can lead to forfeiture. However, there are grace periods to pay renewal fees and appeals against forfeiture may be available in case of due causes.
What are the requirements to assign ownership of each of the intellectual property rights described above?
According to contract law, any assignment of ownership of an intellectual property right must meet several conditions: the assignor must be the legitimate owner of the right, the assignment must have an object (for example, its object cannot be a patent that has expired, been cancelled or no granted), and the price of the assignment must be determined or determinable as well as the duration which must be determined (limited or not in time). Trademark, patent and copyright assignments must be written.
Furthermore, copyright assignments on future works are void and any copyright assignment must contain sufficiently specific wording regarding the assigned right, the field of exploitation of the assigned rights being defined as to its scope and purpose, as to place and as to duration.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Yes, in particular the assignment of registered rights must also be recorded at the relevant office. Failure to publish the assignment can lead to inadmissibility of any claims based on ownership of the intellectual property right.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
Subject to compliance with public policy rules, license agreements may contain various provisions regarding payment, exclusivity, term, territorial scope, preference rights, choice of law and jurisdiction rules…
According to contract law, the licensor must be the legitimate owner of the right, the licence must have an object (for example, its object cannot be a patent/trademark/design/copyright that has expired, been cancelled or no granted), and the price of the licence must be determined or determinable as well as the duration which must be determined (limited or not in time). A patent licence contract must be written.
As a matter of principle, the author’s remuneration in case of trade edition shall be proportional to the proceeds of the exploitation, a lump sum payment been possible only in listed cases.
Licenses can be exclusive or non-exclusive. If the license is exclusive, the licensee will only grant rights to one person. If the license is non-exclusive, then the rights holder is free to grant rights to several people.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Lack of registration of a licence agreement may prevent the licensee from initiating infringement actions and obtaining infringement damages. However, damages based on general tort law may still be obtained if the licensee joins an infringement action initiated by the owner.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Parties are free to agree on exclusive or non-exclusive licences. Statutory law provisions allow exclusive licensees of the following rights to initiate directly infringement actions: neighbouring rights related to music and video, designs, trademarks and patents.
Commercial policy rules provide that the trademark licensee must receive precontractual information prior to signing trademark license agreements that contain exclusivity provisions.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Patents: Article L615-14 of the French intellectual property code calls for punishments of three years imprisonment and a fine of 300,000 euros for infringing the rights of the owner of a patent knowingly, as defined in articles L. 613-3 to L. 613-6. When the offense has been committed by an organised criminal group or on an online public communication network, or when the facts relate to goods dangerous to the health or safety of humans or animals, the penalties are increased to seven years imprisonment and a fine of 750,000 euros.
Trademarks/collective marks: a trademark infringer is punished with a fine of 300,000 euros and three years imprisonment, or 400,000 euros and four years imprisonment, according to articles L.716-0 and L.716-10 of the French Intellectual Property Code.
Copyrights: copyright infringement is punished with a fine of 300,000 euros and three years imprisonment (Article L.335-4 of the French Intellectual Property Code).
Designs: copyright infringement is punished with a fine of 300,000 euros and three years imprisonment (Article L.521-10 of the French Intellectual Property Code).
Such sanctions can be ordered in criminal proceedings, which can be initiated by the rightholder, the public prosecutor or customs officials. From a practical point of view, such actions are relatively frequent regarding trademarks, copyrights and designs.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
Civil court proceedings (for civil liability) are other enforcement options available in France. It includes action for unfair competition and parasitism. Trademark invalidity actions before the relevant office or before the court are also available.
Custom actions are also available and can be very cost effective for rightsholders that suffer extensive counterfeit.
Alternative dispute resolution is more and more frequent. It is common practice in certain industries and has been included in French procedural law where it is provided that an amicable solution should be tried before initiating a court action and regarding case management proceedings where the judge can invite parties to attempt mediation proceedings.
What is the length and cost of such procedures?
The timeframe and fees vary depending on elements such as complexity of case, the strength of the intellectual property right, the opportunity to conduct a seizure, to instruct experts, trademark and/or patent attorneys.
Proceedings on the merits before the Paris Court (first instance only) that has exclusive jurisdiction regarding patents and EU trademarks and designs, take approximatively one to three years.
Preliminary urgent proceedings can take place during a timeframe that lasts between a couple of days and a couple of months.
For first instance proceedings, these fees range from EUR 8,000 to EUR 100,000 or more, depending on the case.
In most patent cases, there are also fees for patent experts (conseils en propriété industrielle), who will assist the lawyer and the bailiff during both the seizure and the infringement proceedings. These fees are from EUR 30,000 to EUR 150,000 or more, depending on the issues raised in the case.
There may be bailiff fees for recording evidence which start at EUR 200 and of at least EUR 1,000 for performing the seizure and EUR 200 for executing the decision (notification, seizures of accounts, etc.). The first instance legal costs range from EUR 200 to EUR 2,000.
There may be expert fees if the court appoints an expert. These fees range from EUR 10,000 to more than EUR 100,000 in cases involving complex technologies.
As a matter of principle, the losing party has to pay the other party’s legal costs and attorney fees (increasingly, French courts grant a lump sum for attorney fees close to the fees justified by produced invoices). In certain cases, the judge may not order compensation for the fees and expenses to the other party if the judge decides to take into account the losing party’s economic situation, or decides such payments would not be fair.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
Non-specialized correctional courts hear intellectual property offenses. Nine specialized judiciary courts can hear intellectual property cases excepting patent cases, SPC, topographies of semiconductor products and EU trademarks and designs, which are of the exclusive jurisdiction of the Paris judiciary court.
Rightsholders may initiate criminal action within three years and civil action within five years, the deadline starting from the rightsholder’s knowledge of the infringement.
Criminal proceedings may start with either serving a direct complaint or filing a complaint to the Public prosecutor and then reiterating the complaint to the Instructing Judge.
Current procedural law requires the plaintiff to attempt to solve the matter amicably prior to initiating any proceedings.
Judicial proceedings start with the filing of a complaint that has been served to the defendant and then filed at court. According to the Paris Bar and Paris High Court Civil Procedure Protocol signed on 11 July, 2011, for proceedings on the merits, there should be a total of four briefs, including the complaint. An argument or an element of fact not referred to in these writings cannot be taken into account by the court. The defendant is the one who responds last. The case is heard at final oral pleadings by one to three professional judges, and the ruling is issued a couple of weeks later.
Infringement trials on the merits last from a couple of hours to a couple of days in exceptional matters where each party’s lawyer presents the matter. Except in criminal cases, it is very rare to hear oral testimonies from experts or parties during the final trial. The ruling is made available a few weeks later.
The plaintiff in infringement proceedings may obtain damages calculated according to the extent of the damage suffered, the withdrawal and destruction of the infringing products, injunctions not to infringe as well as to recall infringing goods, the publication of the judgment and fees and legal costs.
Before or during proceedings on the merits, interim measures can be ordered such as injunctions not to infringe.
An appeal can be brought against a judgment of the court. For proceedings initiated since January 1st, 2020, as a matter of principle first instance decisions are enforceable even if an appeal is lodged.
What customs procedures are available to stop the import and/or export of infringing goods?
Customs proceedings are also very commonly used. EU Regulation No. 608/2013 and national law (the Customs Code) allow – for both French and EU trademarks – detention or seizure of counterfeit goods. The rightsholder and the exclusive authorised licensees can submit applications for such customs proceedings. Customs authorities can also proceed on their own initiative.
While Regulation No. 608/2013 is applied at the external borders of the EU, French legislation is applicable to commerce between Member States. If counterfeit goods are found by customs authorities, following the notice of the seizure, the right holder or person with appropriate decision-making authority has 10 days to inform the customs authorities that he or she is engaged in legal proceedings, otherwise the customs authorities would have to release the goods.
The intellectual property rights protected under the retention procedures based on Regulation (EU) 608/2013 and the Intellectual Property Code are as follows:
copyright and neighbouring rights
topographies of semiconductor products;
supplementary protection certificates, relating to medicinal products and plant protection products;
appellations of origin, geographical indications and geographical names.
Since law n°2019-486 of May 22, 2019, Customs can now make deductions from goods in transit suspected of counterfeiting, without it being necessary for the trademark owner to prove that they are intended for a State where their marketing is prohibited. In addition, it is now possible to sanction acts preparatory to counterfeiting, in particular the affixing of a sign identical or similar to a prior trademark on packaging, labels or more generally on any other medium on which the trademark can be affixed.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
According to article 750-1 of the French Civil Procedure Code, under the penalty of inadmissibility that may be ordered ex officio by the jurisdiction, plaintiffs in small disputes of less than € 5,000 for which the appeal is not possible must show the courts attempts of conciliation prior to initiating the proceedings.
Also, in practice, some intellectual property agreements require mediation attempts prior to filing a dispute before a jurisdiction.
What options are available to settle intellectual property disputes?
Parties may settle intellectual property disputes at any stage of the proceedings: before a claim is filed before the court, during the proceedings, after the proceedings and even after a ruling is held. For instance, parties may decide to withdraw the effects of a decision and consequently annul a ruling that held that an intellectual property right was invalid.
An amicable settlement may be verbal or take the form of a contract between parties.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
Firstly, plaintiffs must show the court ownership of infringed title. Certified copies from the registry regarding registered rights such as company names, trademarks, patents and registered designs should be sufficient. Unregistered rights such as author’s rights, unregistered designs, or trade names can be established producing publications, affidavits or bailiff reports.
Secondly, since parties are in charge of establishing the alleged infringement, the plaintiff must show with sufficient certainty the infringing conduct as well as the defendant(s) liability (i.e. manufacturing or selling infringing goods).
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Parties who are in charge of providing evidence of their claims may request court orders in pre-trial proceedings, during case management proceedings or more generally in proceedings on the merits to gather additional information or evidence related to the infringement.
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence?
Civil intellectual property cases are exclusively heard in France by specialized judges who may in certain matters appoint judicial experts.
The expert or experts organize meetings with the parties concerned, during which they can present their arguments. At the end of judicial expert proceedings, the expert drafts a report in which he provides answers to the questions asked by the court. The parties then have the opportunity to discuss the expert’s report as part of their submissions to the court.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
The right-holder can establish proof of the infringement with expert reports, some performed before a bailiff so that there is evidence that there has been no manipulation.
Also, the plaintiff may collect evidence in seizure proceedings conducted by bailiffs.
Seizure proceedings can be ordered by the judge, at the request of the right-holder.
Once the right-holder discloses relevant pieces of evidence such as the title and any allegedly infringing actions, seizure orders may be granted within a few hours. The Paris Civil Court of Appeal held, in a ruling dated May 26, 2017, RG 15/10204, that a seizure can be carried out without requiring proof or even the commencement of proof of an infringement.
Seizures are performed by bailiffs, who perform any judge-authorised investigation, describing or seizing allegedly infringing goods or any document linked to them. Bailiffs can be, if authorised by the court order, assisted by experts (technicians, computer specialists, accountants, etc.) other than employees of the plaintiff.
Seizure can be carried out at the very place of production of the alleged counterfeiting products and the bailiff proceeds, in accordance with the order, with the description of the alleged counterfeiting products, accompanied by a description and photographs, and if necessary, with gathering samples of these products.
For documents considered confidential or protected by trade secrets, the seized party may ask the judge to keep these documents under seal and to limit their disclosure.
The bailiff draws up a report in which all the physical evidence appears (such as photographs, photocopies, or instructions for counterfeit products or processes). A copy of the report on the basis of which the infringement action will be taken is left to the seized party.
Proceedings must be initiated within 20 working days or 31 calendar days of the seizure.
In addition, during case management proceedings, the plaintiff may file a request to the judge for an order of disclosure of information to determine the origin of the infringement, the distribution networks for the infringing products as well as the quantities and prices of these products.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
While parties in their respective briefs may dispute the other party’s evidence, and present cancellation motions that are decided either during case management proceedings or at the ruling on the merits, there is no cross-examination in France.
What defences to infringement are available?
Depending on the facts of the case, the alleged infringer can raise various defences such as challenge the court’s jurisdiction, the plaintiff’s admissibility, the plaintiff’s evidence, the validity of the intellectual property right, statute of limitation, legitimate use of the alleged infringed right because of exhaustion of rights, lack of personal liability as well as lack of infringement.
Who can challenge each of the intellectual property rights described above?
The defendant in any action regarding the alleged infringement of the intellectual property rights described in section A may challenge any of the intellectual property rights.
The legitimate owner of intellectual property rights can also bring recovery claims against the illegitimate owner to retrieve ownership.
Also, any person who can demonstrate an interest in bringing an intellectual property invalidity action may bring an intellectual property invalidation.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
During the registration process of patents and trademarks, oppositions can be filed after filing by prior-rights holders within the following deadlines:
French trademarks: within two months of the publication of the application, before the INPI.
EU trademarks: within three months of the publication of the application, before the EUIPO.
French and European patents: within nine months of the publication of granting the patent respectively before the INPI and the EPO.
For geographical indication, third parties may file observations before the INPI during the public search process which takes place within two months of the publication of the homologation request.
After registration, cancellation actions can be raised against intellectual property rights subject to registration (notably, trademarks and collective marks, patents, utility patents and supplementary protection certificates, designs, geographical indications, semiconductor topography, plant varieties). It consists in contesting a posteriori the meeting of the conditions of validity for the registration of the title.
Trademarks can also be contested after registration with a revocation action for non-use, available five years after the publication of the registration of the trademark.
For domain names, there are two main procedures to follow in case of litigation: the UDRP procedure and the “SIRELLI” procedure. These mechanisms constitute an effective solution to remedy the abusive registration and bad faith use of domain names infringing prior trademarks rights.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
See answer to question 28 above regarding opposition proceedings.
Patent invalidity actions for lack of novelty, inventive step, industrial application or patent ownership actions as well as invalidity actions against supplementary protection certificates can be filed before the Paris Judicial Court.
Challenges to EU trademarks (based on absolute – such as lack of distinctiveness – and relative grounds – such as prior rights) and design rights (based on absolute – such as technical effect – or relative grounds) can be filed before the EUIPO. Counterclaims regarding these rights can be filed before the Paris Judicial Court.
Challenges to French trademarks (based both on absolute and relative rights) are of the exclusive jurisdiction of the INPI except when based on prior copyrights, designs and rights of publicity (“droits de la personnalité”) and except for counterclaims in jurisdictional proceedings which can be brought before the competent jurisdiction where the main proceedings are brought.
Proceedings to cancel geographical indications may be brought before the main administrative court (“Conseil d’Etat”) for not meeting with the validity conditions.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
Licensing, exhaustion of rights, patent declaratory non-infringement actions or ownership disputes may limit the effect of intellectual property rights.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
Main remedies are injunctions not to infringe under penalties for each infringing conduct and/or for each day of delay, damages, the publication of the ruling and less frequently injunctions to operate product recall.
Please refer to section E. ENFORCEMENT for further details.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
Please refer to section E. ENFORCEMENT.
Has the COVID-19 pandemic caused any changes (temporary or permanent) to the protection or enforcement of intellectual property? For example, changes to deadlines, filing or evidence requirements or court processes.
Regarding legal proceedings
Calculation of deadlines
An Ordinance No. 2020-560 of May 13, 2020 extended the period of state of health emergency (initially set at May 23 and then July 10) until June 23, 2020, at midnight. The deadlines that expired between March 12, 2020, and one month after the end of the state of the health emergency have been postponed, in other words start running again for the duration of the period which was legally allowed to act, within the limit of two months.
Subject to further modification, the periods supposed to end between March 12 and June 23, 2020, will start running again on June 23, 2020, and will end on August 23, 2020, at the latest. In cases where the initial time limit was two months or more, the deadline would be this date of August 23, 2020. In cases where the deadline was less than two months, the deadline will be that once the duration of the period initially set has elapsed.
Procedural calendar of pending procedures
From March 16, 2020, all civil or commercial cases had been postponed until further notice, except litigation considered as essential (criminal hearings in particular) which did not include intellectual property litigation.
Cases that were to be examined at these hearings have been or will be referred to on a waiting list. The parties are being informed of the new dates progressively.
Ordinance No. 2020-304 of March 25, 2020, provides that in most civil cases, the courts can decide that the procedure will take place without a hearing. With the exception of certain procedures (notably summary proceedings), the parties have a period of 15 days to oppose such a decision. An order of the President of the Paris Judicial Court of May 7, 2020, specified that the summary proceedings in intellectual property matters, called for hearings scheduled between March 17 and June 1, will be judged without oral argument.
Since May 11, 2020, it is possible to file seizure petitions before the court, without a hearing (the magistrate shall contact the lawyer by post or telephone if he or she considers it necessary to have additional information).
Regarding the administrative deadlines of the INPI
The INPI closed its premises to the public until June 2, 2020. The examination, the issuance of industrial property titles by the INPI continued online.
Online services remained available for the majority of procedures: filing of patents, trademarks, designs; trademark renewal; payment of patent annuities; entry in the registers; geographical indications; etc. Thanks to the dematerialization of procedures, the INPI continues the examination and issuance of industrial property titles.
The above-mentioned rules for calculation of judicial deadlines also apply to administrative deadline before the INPI.
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