France: Intellectual Property

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This country-specific Q&A provides an overview to intellectual property law in France.

It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.

This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/

  1. What different types of intellectual property rights exist in this jurisdiction to protect?

    (a) Inventions (e.g. patents, supplementary protection certificates, rights in confidential information and/or know-how);
    Under French law, inventions are protected by patents, supplementary protection certificates and utility certificates (art L.611-1 and L.611-2 of the French Intellectual Property Code “IPC”).

    Patent rights are granted for inventions of either products or processes in any fields of technology provided that they are new, involve an inventive step and are susceptible of industrial application. In addition, the development at stake should not be excluded from patentable subject matter (IPC art. L.611-10).

    Inventions and relating know-how can also be protected as confidential information. The holder must justify that the know-how (i.) is secret, (ii.) is commercially valuable, and (iii.) has been subject to reasonable measures to protect its confidentiality.

    Unauthorized disclosure by third party can be sanctioned by tort law, civil law (breach of a NDA or confidentiality clause) or criminal law (violation of a manufacturing secret).

    It should be further noted that the EU directive, to be implemented in French law by June 2018, will provide a coherent legal framework, with a high level of protection.

    (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);
    Any sign capable of distinguishing the goods of one undertaking from those of another can be protected by a trademark (IPC art. L.711-1 and L.713-5).

    Unfair competition or passing off can sanction the unauthorized use by a third party of an unregistered brand or any other distinctive element identifying an undertaking.

    Collective trademarks protect signs which may be used by any person complying with a set of rules set out by the holder of the registration (IPC art. L.715-1).

    Geographical indications protect the denomination of a region and designate products originating from it, their quality or characteristics being attributable to natural and human factors specific to the said location (IPC art. L.721-2).

    (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in confidential information and/or know-how).
    Copyright protects original works of the mind, regardless of their kind, form of expression, merit or purpose, from the mere act of creation (ICP art. L.111-1 and L.112-1).

    Neighboring rights protect:

    • performers (IPC art L.212-1);
    • phonogram producers (IPC art. L213-1);
    • videogram producers (IPC art. L.215-1);
    • audiovisual communication companies (IPC art. L.216-1).

    Databases are defined as collections of works and data arranged in a methodical way and individually accessible. They can be protected either through copyright or through a sui generis right. Qualification for sui generis protection requires substantial investments in the constitution, verification or presentation of the database (IPC art. L.341-1).

    Design rights protect the appearance of the whole or part of an industrial or handcraft product provided that it is new and has individual character (IPC art. L.511-1 and L.511-2).

    Functional forms and designs contrary to public policy or morality are excluded from registration.

    In France, design can be protected through national or European registration, it being specified that European law also provides with unregistered design rights.

    Semiconductor rights protect topographies reflecting an intellectual effort and uncommon (IPC art. L.622-1).

    Plant variety right protect new, distinct, stable and sufficiently uniform plant breeding (ICP art.L623-1).

  2. 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

    20 years from the filing date before the French Office (Institut National de la Propriété Industrielle or INPI) (IPC art. L.611-2).

    Protection for pharmaceutical patents can be extended by supplementary protection certificates for a period up to 7 years after the expiry of the patent or 17 years from the grant of the marketing authorization (IPC art. L.611-2 and L.611-3section 3).

    Utility certificates

    6 years from the filing (IPC art. L.611-2 section 2).

    Trademarks

    10 years from the filing and indefinitely renewable (IPC art. L.712-1).

    Geographical indications

    As long as the producer complies with the relevant specifications of the protected location.

    Designs

    5 years from the filing and renewable for periods of 5 years up to 25 years (IPC art. L.513-1).

    Semiconductors

    10 years from the filing (IPC art. L.622-6).

    Plant varieties

    25 years from the grant of the certificate or 30 years for specific plants such as trees, vines or potatoes (IPC art. L.623-13).

    Copyright

    70 years after the author’s death (IPC art. L.123-1).

    Neighboring rights

    50 years from the 1st of January of the calendar year which follows:

    • the interpretation of the work for performers;
    • the first fixing of the sound or video recording for producers;
    • the first communication to the public of the program, for audiovisual communication companies (IPC art. L.211-4).

    Databases

    15 years from the 1st of January of the calendar year following the completion of the production of the database (IPC art. L.342-5).

  3. 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

    The inventor or his successor in title (IPC art. L.611-6).

    However, if the invention is made by an employee in connection with his employment contract involving an inventive mission, the right to the patent belongs to the employer (IPC art. L.611-7 section 1).

    The invention made by an employee in connection with his employment contract without inventive mission can be assigned to the employer should the invention falls within the employer field of activity or if the employee used technical means and knowledge provided by the employee.

    For any other invention, the right to the patent belongs to the employee (IPC art. L.611-7 section 2).

    Trademarks

    The applicant (IPC art. L.712-1).

    Plant varieties

    The applicant (IPC art. L.623-4).

    Semiconductors

    The creator or his successor in title (IPC art. L.622-3).

    Designs

    The creator or his successor in title (IPC art. L.511-9).

    Copyright

    The author of the work who is deemed to be the person under whose name the work has been disclosed (IPC art. L.113-1).

    Databases

    The producer of the database (IPC art. L.342-1).

    Software created by an employee

    The employer (IPC art. L.113-9).

  4. Which of the intellectual property rights described in questions 1-3 are registered?

    Registered intellectual property rights (IPR) are:

    • Patents (IPC art. L.612-1) ;
    • Utility certificates (IPC art. L.612-1);
    • Trademarks (IPC art. L.712-1) ;
    • Certification marks (IPC art. L.712-1);
    • Geographical indications (Rural Code art. R.641-12) ;
    • Design rights (IPC art. L.511-9);
    • Plant varieties certifications (IPC art L. 623-4);
    • Semiconductor rights (IPC art. L.622-1).

    Copyright, neighboring rights and database rights are automatically granted, should the conditions of protection be met, without any registration requirement.

    Design can be protected although unregistered but for a shorter period of time.

  5. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

    Registered IPR may be filed by individuals or legal entities, with or without a representative.

    Concerning national trademarks (IPC art. L.712-14), patents (IPC art. L.612-23), semiconductors (IPC art. L.622-4) and designs (IPC art. L.512-1), the application for registration is made before the French Office by filling a paper or an online form.

    If the protection is also required outside France, the applicant may file an application:

    • before the Word Intellectual Property Organization (WIPO) to obtain registered rights on an international basis;
    • before the EUIPO or the European Patent Office, to obtain registered rights throughout Europe.

    For geographical indications (IPC art. L721-3), the applicant must file a paper application form and send it to the National Institute of Origin and Quality (Institut de National de l’Origine et de la Qualité “INAO”).

    For plant varieties certifications (IPC art. L.412-1), the applicant must file a paper application form and send it to the French institution for plant varieties certifications (Instance Nationale des Obtentions Végétales “INOV”).

  6. How long does the registration procedure usually take?

    The length of the registration procedure varies depending on the right at stake.

    For patents, registration takes approximately 36 months.

    For trademarks, registration procedure takes approximately 6 months, absent of any opposition proceedings.

    For design rights, registration procedure takes approximately 4 months.

  7. Do third parties have the right to take part in or comment on the registration process?

    In France, third parties can intervene in the registration process of patents and trademarks exclusively (see question 28).

  8. What (if any) steps can the applicant take if registration is refused?

    First, during the examination, the applicant can reply or proceed to the amendments requested by the examiner for the registration of the rights.

    Second, should the application be rejected, the refusal to registered a patent, a design or a trademark, can be challenge before the competent Court of appeal within one month from the notification (IPC art. R.411-19 and R. 411-20).

  9. What are the current application and renewal fees for each of these intellectual property rights?

    Patents

    Application fees amount to 36 euros

    Search report fees amount to 520 euros

    Grant fees amount to 90 euros

    Additional claim fees amount to 42 euros per claim after the tenth claim

    Increasing renewal fees from 38 euros to 790 euros

    Supplementary protection certificates

    Annual fees amount to 940 euros

    Utility certificates

    Application fees amount to 36 euros

    Grant fees amount to 90 euros

    Additional claim fees amount to 42 euros for each claim after the tenth claim

    Trademarks

    Applications fees amount to 250 euros for 3 classes (210 euros for online applications) + 42 euros for each additional class.

    Renewal fees are identical

    Designs

    Application fees amount to 39 euros + reproduction fees

    Renewal fees amount to 52 euros

    Semiconductors

    Application fees amount to 79 euros

  10. 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 any renewal fees is sanctioned by the lapse of the right. However, right holders can benefit from a grace period (of 6 months from the due date) during which the right can be renew subject to the payment of a late renewal fee.

  11. What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3?

    Patent (ICP art. L.613-8) and trademark (ICP art. L.714-1) assignments must be in writing to be valid.

    A writing is not mandatory to assign a design although it is required to be enforceable against third parties (IPC art. R.512-15).

    For copyright, only publishing agreements, performance agreements and audio-visual production agreement (IPC art. L.131-2) must be in writing.

    However, the IPC art. L.131-3 requires to define precisely the assigned rights in terms of scope and purpose, territory and duration, making a written agreement highly recommended, it being specified that, pursuant case-law, these provisions apply only to the original author and natural person.

  12. 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?

    In France, registering an assignment is not mandatory. However, enforcement of rights against third-parties is subject to the registration of the assignment.

    See for:

    • patents: IPC art. L.613-9
    • designs: ICP art. L.513-3
    • trademarks: ICP art. L.714-7
  13. What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?

    Patent licences must be in writing on pain of nullity (ICP art. L.613-8).

    Trademark and design licences need not to be in writing although a written document may be required for considerations of evidence.

    Regarding copyright a written licence is recommended considering the importance of mandatory clauses.

  14. 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?

    Except as otherwise stipulated in the licensing contract, exclusive licensees are entitled to bring an action for infringement if, after notice, the owner of the IPR does not bring the proceedings.

    Non-exclusive licensee may join the infringement action initiated by the owner of the IPR in order to obtain compensation for his own prejudice.

    See for:

    • patents: IPC art. L.615-2;
    • trademarks: IPC art. L.716-5;
    • designs: IPC art. L.521-2.
  15. Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?

    Infringers may face criminal sanctions up to 3 years of imprisonment and a fine of 300, 000 euros for copyright (IPC art. L.335-2-1), neighbouring rights (IPC art. L.335-4), designs (IPC art. L521-10), plant varieties certifications (IPC art. L.623-32-2) and patents (IPC art. L.615-1).

    For trademarks, the sanction is 4 years of imprisonment and a fine of 400,000 euros (IPC art. L.716-9).

    For manufacturing secrets, the sanction is 2 years of imprisonment and a fine of 30,000 euros (IPC art. L.621-1 and Labour Code art. L.1227-1).

    For legal entities, the fine is equal to five times the amount set for individuals (Criminal Code art. 131-38) and the sanctions mentioned in article 131-39 of Criminal Code such as dissolution or closure shall apply.

  16. What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

    Other options available in French jurisdictions for IPRs enforcement are:

    Civil court proceedings:

    • Infringement action;
    • Invalidity action for patents and trademarks;
    • Declaration of non-infringement for patents (see question 30).

    Administrative proceedings:

    • Trademark opposition proceedings. Opposition decisions can be appealed before Paris Court of Appeal;
    • Pursuant to article 45 of the Trademark directive, administrative procedure before the French Office for the revocation or declaration of invalidity of a trademark should be created.
  17. What is the length and cost of such procedures?

    For civil proceedings, costs are estimated to few hundred euros.

    • First instance proceedings on the merits before civil courts usually last between 18-24 months.
    • Appeal proceedings on the merits last approximatively 24 months.

    IPR owners can also opt for accelerated proceedings.

    • First instance accelerated proceedings on the merits usually last 3-6 months.
    • Appeal: accelerated proceedings on the merits usually last 6-8 months.
  18. 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.

    a) Jurisdictions
    In accordance with the Judicial Organization Code and the IPC:

    • Paris Court of First Instance has exclusive jurisdiction over patent-related matters;
    • the following Courts of First Instance have exclusive jurisdiction in relation to copyright and neighbouring rights, design, trademarks and geographical indications: Bordeaux, Lille, Lyon, Marseille, Nanterre , Nancy, Paris, Rennes, Strasbourg, Fort-de-France;
    • the following Courts of First Instance have exclusive jurisdiction over plant varieties certifications related matters: Marseille, Bordeaux, Strasbourg, Lille, Limoges, Lyon, Nancy, Paris, Rennes, Toulouse.

    b) Proceedings
    Proceedings are initiated with the writ of summons being served by a bailiff to the defendant.

    A first procedural hearing takes place during which the pre-trial judge checks whether:

    • the defendant has appointed a lawyer, and
    • the claimant has provided the defendant’s attorney with his exhibits (usually 8 weeks after the first procedural hearing).

    A second procedural hearing is set for the filing of defendant’s submissions in defence and exhibits (usually 6-8 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 (approximatively 6-8 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 (approximatively 6-8 weeks after the third procedural hearing).

    A final hearing is held for pleadings, the Court’s decision being usually issued between 1 to 3 months after the oral debates.

    Appeals must be filed with the Court of Appeal within 1 month from the notification of the first instance decision. Foreign companies are granted an additional 2 months delay.

  19. How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?

    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?
    There is no technical judge in the French judicial system, although IP litigation is handled by specialized courts with exclusive jurisdiction.

    Should the technicality of the issue require it, the court can decide to appoint an expert in the concerned field.

    Pursuant to IPC articles L. 521-4-1, L.615-5-1-1, L.716-7-1-A, investigation measures can be ordered either, at the request of one party or on the court’s own initiative, resulting in the appointment of an expert (Articles 143 et sequitur and 263 et sequitur – French Civil Proceedings Code (CPC)).

    In such a case, the court order will define the scope of the expert assessment and the parties will be required to cooperate with the designated expert.

    In addition, each party can also choose to file amicable expert reports drafted at its requests.

    b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
    There is no discovery or disclosure procedure (requiring from a party to disclose information or documents) available under civil procedure rules.

    However, judges are vested with investigation powers and can issue injunction requesting the production of evidence in compliance with civil proceedings rules (CPC articles 11 and 138).

    In addition, pursuant to the IPC articles L.331-1-2, L. 521-5, L.615-5-2, L.716-7-1, the judge can, at the request of a party, order the production of the documents needed to ascertain the origin and the distribution channels of the infringing products.

  20. 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?

    The content and strength of evidence submitted by parties are freely assessed by the court, it being specified that:

    • the parties can freely discuss the probative value of an exhibit or the conclusions drawn from evidence.
    • the probative value can vary according to the type of evidence. For instance:

      - a stronger probative value will be granted to a judicial expertise compared to an amicable one.
      - a bailiff report is deemed to be valid unless an allegation of forgery is made.

    French civil procedure does not provide any process of cross-examination of witnesses.

  21. What customs procedures are available to stop the import and/or export of infringing goods?

    Pursuant to the IPC, customs may, at the written request of the IPR owner, withhold in the course of its inspections any goods allegedly infringing proprietary rights. The IPR owner, the holder of the sized goods and the Prosecutor are immediately informed of the withholding measure.

    The withholding measure is automatically lifted if the IPR owner fails, within 3 or 10 days (depending on the nature of the goods) to establish that precautionary measures have been taken, proceedings initiated or a complaint filed.

  22. 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.

    Pursuant to the CPC article 56, unless otherwise justified by the urgency or 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 to the parties to initiate a conciliation or mediation procedure.

  23. What options are available to settle intellectual property disputes in your jurisdiction?

    Pursuant to civil proceedings rules, parties willing to settle a dispute in Intellectual Property can:

    • enter into a private settlement agreement providing that the parties withdraw their action and waive any claim in relation with the disputed facts (Articles 2044 et sequitur – French Civil Code (CC));
    • initiate a mediation or conciliation procedure involving the assistance of a third party and, optionally, the recognition by the judge of the agreement then reached by the parties (CPC Articles 127 et sequitur).
  24. What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?

    Unless otherwise provided by the IPC, the burden of proof to establish infringement rests with the claimant pursuant to CC article 9.

    Under French law, the general principle is that infringement should be assessed in relation to overall similarities and not to differences.

    Therefore, the claimant should establish, regarding:

    • copyright, that the counterfeiting work reproduces the original features of the prior work;
    • design, that the counterfeiting design or model produces the same visual impression that the prior design or model;
    • trademark, that the litigious sign is identical or similar to the prior trademark, designates identical or similar products or services and creates a likelihood of confusion for the consumer;
    • patent, that the litigious product reproduces or has been manufactured following a process that reproduces the patent’s claims.

    Pursuant to French procedure rules, infringement can be established by any means.

    However, the following means are usually preferred to establish the existence and the extent of the alleged infringement:

    • seizure: IPRs holders may request ex parte the authorization from the president of the Court of first instance to have a bailiff, possibly accompanied by the relevant expert(s) and/or police officer(s), enter the alleged infringer or a third party’s premises, to gather evidence of the infringement and, notably, seize or describe the infringing products or process, collect and copy any relevant documents demonstrating the infringement and the extent of the prejudice suffered (see. Copyright (IPC art. L.332-1 and 4); Design (L.521-4); Patent (L.615-5); Plant varieties (L.623-27-1); Trademarks (art. L.716-7);
    • customs withholding: IPRs holders may request from customs to hold allegedly counterfeiting goods (see. Copyright (IPC art. L.335-10), Design (L.521-14); Patents (L.614-32); Plant varieties (L623-36); Trademarks (L.716-8); Geographical indications (L.722-9);
    • expert reports either appointed by the judge or amicably requested from a party;
    • investigation reports survey or witness statements;
    • bailiff reports.
  25. What defences to infringement are available?

    In case of infringement action, available defences include:

    - Procedural defences:
    Procedural defences are defined as “any mean aiming to have the procedure declared irregular, extinguished or stayed” and include:

    • the lack of jurisdiction of the court seized;
    • the exception of lis pendens and related cases;
    • the stay of the proceedings;
    • irregularities affecting the validity of the writ of summons.

    Defence of non-admissibility defined as any mean seeking to have the plaintiff claim’s declared inadmissible, without entering into the merits of the case, for lack of a right of action, such as a not being the proper party, lack of interest, statute of limitations, fixed time-limit or res judicata.

    - Invalidity of the IPR at stake;

    - Invalidity of the seizure;

    - Exhaustion of rights;

    - Lawful customs transit;

    As regards patents, specific defences notably include:

    • private non-commercial use;
    • experimental use;
    • acts, studies and tests required for the filing an application for a marketing authorization or the grant of advertising visa;
    • acts performed to create, discover or develop new plant varieties;
    • personal prior use.

    As regards trademarks, specific defences include:

    • the existence of a prior right (company name, business name, sign board);
    • the preclusion due to acquiescence of the litigious use;
    • the revocation for non-use of the trademark;
    • the trademark has become generic or misleading;
    • the absence of use of the litigious sign in the course of trade and/or as a trademark;
    • the use of the litigious sign as a necessary reference or a geographical indication;
    • the use in good faith of its own name.

    As regards copyright, specific defences include the exceptions listed in IPC article L. 122-5 in particular:

    • private performance or copy;
    • analysis or brief quotation;
    • press review, news or public speech, public searches;
    • parody;
    • accessory reproduction of a building or a sculpture.
  26. Who can challenge each of the intellectual property rights described in questions 1-3?

    The validity of registered IPR can be challenged:

    • by way of action by the public prosecutor who may act ex officio as well as any third party with a legitimate interest, especially, the owner of a prior rights or the operator willing to conduct its activity without any threat of infringement
    • in case of infringement proceedings, by way of defence by the alleged infringer.
  27. 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)?

    The validity of IPRs can be challenged either during the registration process or during their subsistence depending on the type of the rights concerned.

    During the registration process:

    • Copyright:
      Since copyright protection arises from the mere creation without any prior registration requirement, there is no opposition procedure organized under France law.
    • Design and model:
      There is no opposition procedure organized before the French Office.
    • Patent:
      During the registration process of a French patent, third parties can submit observations within three months from the date of publication of the preliminary search report relating to a patent application (IPC article R. 612-63). However there is no opposition procedure before the French Office.
    • Trademark:
      During the registration process of a French trademark, the holder of prior rights can oppose to the registration of trademark within two months from the publication of the application. In addition, any third party can submit observations before the French Office.

    Following the grant of the right:

    • Copyright:
      The originality of the work allegedly protected by copyright can be discussed before the Court in case of infringement action.
    • Design, patent and trademark:
      The validity of the right can be challenged before the French Courts either by way of a legal action or by way of a means of defence (see question 27).

    Finally, it should be noted that ownership of registered rights can also be challenged on the grounds that the application has been fraudulently filed by an unauthorised party) within five years from the grant of the right (except when bad faith is also established) (see. Patent: IPC article L. 611-8, Design: article L.511.10, Trademark: article L.712-6).

  28. 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?

    The existence of copyright or the validity of a French design, patent or trademark can be challenged either by an independent action or through a counterclaim before the competent jurisdiction (see question 19).

    As regards copyright, the claimant will have to demonstrate that the work lacks originality usually by establishing that the work’s main features are common in the concerned field by producing documents showing prior similar works.

    Regarding design, the claimant will have to prove that the design at stake is not novel, lacks individual character, infringes public policy or moral principles or that its appearance is dictated by the technical function performed or to allow its mechanical association.

    Pursuant to IPC article L.613-25, a patent can be declared invalid on the ground that:

    - the invention:

    • is excluded from patentable subject matter (see IPC article L.611-11 and L.611-16);
    • is not novel;
    • does not involve an inventive step;
    • is not capable of industrial application;

    - the patent does not disclose the invention in a manner sufficiently clear and complete;

    - the subject-matter of the patent extends beyond the content of the application.

    A trademark can be invalidated on the grounds that the registered sign in relation with the products and or services designated:

    - is not capable of graphical representation (please note however that the EU directive and regulation have abandoned this requirement) or lacks distinctive character;

    - is excluded by the Paris Convention, contrary to public policy or moral principles or deceptive;

    - infringes prior rights listed in IPC article L.711-4.

  29. Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?

    As regards patents, pursuant to IPC article L.615-9, a declaration of non-infringement can be introduced by any operator providing evidence, at least, of the performance of serious preparatory acts for industrial exploitation; such a declaration invites the patent holder to state whether the patent could be infringed.

    If the right owner fails to answer or in case of disagreement between the parties, the claimant will be entitled to bring an action before Paris Court of First Instance.

    In addition, pursuant to IPC article L.613-11, if a patent remains unexploited after the expiry of a three year period after the grant, any person will be free to ask to be granted a compulsory license on the patent.

    As regards trademark, pursuant to IPC article L714-5, it should be noted that an operator willing to secure its use of a distinctive sign can also consider initiating revocation proceedings against owners who have not put into genuine use their registered trademark(s) in relation with the designated products and services.

  30. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?

    Pursuant to IPC articles L. 331-1-1 (copyright), L. 521-6 (design), L.615-3 (patents) and L.716-6, a right owner can apply, at a preliminary stage, either ex parte or inter partes, for measure to prevent imminent infringement or to stop infringement.

    Interim remedies includes in this respect:

    • interlocutory injunction to cease the allegedly infringing acts, eventually under a penalty;
    • the lodging of guarantee to ensure the rightholder’s compensation;
    • the seizure of the litigious goods or their withdrawal from distribution channels.

    Should a claimant succeed in its infringement action, available final remedies would include:

    • the issuance of a permanent injunction to cease the infringing acts;
    • the grant of damages;
    • the seizure or destruction of infringing goods;
    • the withdrawal of the infringing products from distribution channels;
    • the publication of the Court decision.

    Concerning legal entities, under IPC articles L.335-5 (copyright), L.521-10 (designs), and L.716-11-1 (trademarks), the court may also order the total or partial closure of the infringing organisation, either permanently or temporarily.

    It should be noted that infringers can also face criminal sanctions (see question 16).

  31. 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?

    Costs attached to IP proceedings usually include the lawyers’ fees as well as the cost of the diligence of technical experts or design, patent or trademark attorneys and bailiffs.

    Their amount can vary depending on the technicality of the case, the strategy elected and the arguments raised in defence.

    Pursuant to French procedure rules, the Court may condemn the unsuccessful party to pay the adverse party’s legal costs.