France: Intellectual Property (3rd edition)

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This country-specific Q&A provides an overview to intellectual property laws and regulations that may occur in France.

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/practice-areas/intellectual-property-third-edition/

  1. What different types of intellectual property rights exist in your jurisdiction to protect: (a) Inventions; (b) Brands; (c) Other creations, technology and proprietary interests

    (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);

    i. Patents

    Under French law, inventions are protected by patents, supplementary protection certificates and utility certificates (Article 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.

    Patentability conditions are cumulative, the invention has to:

    • be new (Article L.611-11 IPC);

    An invention is new if it is not part of the state of the art defined as "everything made available to the public before the date of filing of the patent application". Novelty is destroyed only if the invention is found as a whole in a single prior art reference, contrary to a combination of several references.

    • involve an inventive step (Article L.611-14 IPC);

    An invention involves inventiveness if, having regard to the state of art, it is not obvious to a person skilled in the art.

    • be susceptible of industrial application (Article L.611-15 IPC).

    An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.

    In addition, the development at stake should not be excluded from patentable subject matter (Article L.611-10 of the IPC).

    The patent is granted for a period of protection of twenty years from the date of the application (Article L.611-2 IPC).

    ii. Utility certificates

    A utility certificate is granted under the same conditions than a patent, meaning, the invention has to be new, involve an inventive step and be susceptible of industrial application. However, contrary to patents, there will be no research report or substantive review before the French Office of Intellectual Property (INPI).

    The utility certificate grants a monopoly of exploitation over an invention but for a maximum period of six years instead of twenty years (Article L.611-2 IPC).

    It should be noted that the Bill of Law PACTE (Action Plan for Business Growth and Transformation) - which should come into force in the coming months - will extend the protection period of utility certificates from six years to ten years from the application date and allow the conversion of the utility certificate into a patent application.

    iii. Supplementary protection certificates

    A supplementary protection certificate is a title covering pharmaceutical and plant products that are themselves under the protection of a valid patent.

    This certificate aims to extend the protection period of these products taking into account the time required to obtain a marketing authorisation.

    To this end, the supplementary protection certificate takes effect at the expiry of the patent for a period up to seven years from the lapse of the patent or seventeen years from the grant of the marketing authorisation (Article L. 611-2 IPC).

    The patent holder has to apply for the certificate within a delay of six months:

    • from the date of issuance of the marketing authorisation (if the patent was delivered before the marketing authorisation); or

    • from the date of grant of the patent was delivered (if the marketing authorisation was delivered before the patent).

    iv. Trade secrets, confidential information and know-how
    The Directive EU 2016/943 on the protection of undisclosed know-how and business information has been implemented into French law by the law n°2018-670 of July 30th 2018.
    Trade secrets are now defined in French law on the basis of three cumulative criteria (Article L.151-1 of the Code of Commerce).

    To qualify for protection the information must:

    • not be generally known or easily accessible to the relevant business sector, in itself, or in the exact configuration and assembly of its components; and

    • be of commercial value, actual or potential, because of its secret nature; and

    • be subject to reasonable protection measures by its holder to keep it secret.

    In case of infringement, the holder of a trade secret can request to the court interim measures such as (Article L.152-3 of the Code of Commerce):

    • an injunction to prevent or to forbid the use or the disclosure of the trade secrets;

    • an injunction to forbid the production, the sale, the marketing or the use of products resulting significantly from the infringement or the import, export or storage of such products for these purposes;

    • the total or partial destruction of any document, object, material, substance or digital file containing the trade secret concerned or from which it may be deduced or, if appropriate, order their total or partial delivery to the applicant;

    • the recall from commercial channels or the permanent withdrawal from such channels of products resulting from the infringement;

    • the modification of the products resulting from the infringement;

    • the destruction or the confiscation of the products resulting from the infringement.

    It should be noted that, under certain conditions, the court can grant a financial compensation instead of the said interim measures (Article L.152-5 of the Code of Commerce).

    For the assessment of damages on the merit, the court will take into account, distinctly:

     the negative economic consequences suffered by the injured party, including lost profits and any losses incurred;

     the moral prejudice incurred by the rights holder from the infringement;

     the unfair profits earned by the infringing party, including the investment savings regarding to the intellectual, material or promotion work.

    Alternatively, the court may at the request of the injured party, award a lump sum as damages, taking into account in particular the rights that would have been due if the infringer had requested authorisation to use the trade secret in question.

    The new set of rules co-exists with existing French legislation protecting manufacturing secrets, defined by case-law as "any manufacturing process offering a practical or commercial interest, implemented by a manufacturer and kept secret to its competitors" protected by the IPC (Article L.621-1) and the Labor Code (Article L.1227-1) which criminally sanction the actual or threatened disclosure of a manufacturing secret by any director or employee. Equally, existing criminal offences set out in the French Criminal Code will be maintained, such as theft, robbery and handling stolen goods (relevant in circumstances where documents containing the information have been stolen), fraud and breach of professional duties of secrecy.

    (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);

    i. Trademarks

    Pursuant to the actual French Law, any sign capable of being graphically represented and distinguishing the goods or services of an undertaking from those of another can be registered as a trademark (Article L.711-1 of the IPC).

    Such a sign may be constituted by:

    • denomination in all forms, such as: words, combinations of words, surnames and geographical names, pseudonyms, letters, numerals, abbreviations;

    • audible signs such as: sounds, musical phrases;

    • figurative signs such as: devices, labels, logos, shapes, combinations or shades of colour.

    However, in view of the implementation of EU trade mark directive 2015/2436, the Bill of Law PACTE should introduce major changes into French trade mark law, in particular:

    • the French government will be authorized to legislate by way of decree to approximate the laws of the Member States relating to the trademarks. The major developments to be expected in this respect include:

    o the removal of the graphical representation requirement (therefore, different kind of sign such as taste, smell or motion could be registered as trademarks);

    o the extent of absolute grounds for refusal for three-dimensional trademarks: until now, it was stated that a three-dimensional trade mark could only be registered if the sign was not exclusively constituted by the shape imposed by the nature or functions of the product. The Directive now also excludes the following signs from registration:

    ‐ signs which consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result; and

    ‐ signs which consist exclusively of the shape, or another characteristic, which gives substantial value to the goods.

    These changes are expected to be implemented into FrenchLaw by the end of July 2019.

    ii. Collective and certification marks

    Both collective and certification marks are recognized under French law. Pursuant to Article L.715-1 of the IPC:

    • a collective mark is a trademark which “may be used by any person who complies with regulations for use issued by the owner of the registration”. Once the collective mark application is filed and published by the INPI, the filing of the regulation for use will follow;

    • a certification mark “is affixed to goods or services that complies, in particular, with regard to their nature, properties or qualities, with the characteristics detailed in the concerned regulations”. The regulation for use is filed together with the certification mark application and edited by a legal person in charge of the certification.

    iii. Unfair competition or passing off

    Unfair competition or passing off aim to protect against the unauthorized use of other related rights identifying an undertaking such as unregistered trademark, company names and domain names.

    Pursuant to case-law, the reproduction or the imitation of a party’s distinctive signs or proprietary elements, other than a trademark, amounts to unfair competition if it is likely to create a risk of confusion in the minds of customers, it being specified in this respect that the risk of confusion is assessed according to the same principles than for trademark infringement.

    Unfair competition or passing off are sanctioned by the French courts on the ground of Article 1240 of the French Civil Code. In that respect, as for the civil liability action, a fault (i.e. the creation of a likelihood of confusion for the public), a damage and a causal link between the two have to be proved in order to have a successful action.

    In regards to the relation between infringement action and unfair competition or passing off action, one does not exclude the other. However, the French Supreme Court frequently recalls that damages resulting from unfair competition can be granted only if the action based on unfair competition is supported by different facts from the action for infringement.

    The purpose is to avoid double compensation upon the same facts (French Supreme Court, 14 November 2018, No P 17-12.454).

    iv. Designations of origin, geographical indications and traditional speciality guarantees

    • designations of origin 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 (Article L.721-1 IPC, Article L.115-1 of the French Consumer Code and Article L.641-5 of the Rural and Sea Fishing Code). Designations of origin are intended for the protection of food and agriculture products, unlike the geographical indications. The designations of origin application is filed together with the specifications for which the product will have to comply.

    • geographical indications, which are specific to France, protect handmade or industrial products such as Limoges porcelain (Article L.721-2 IPC). The geographical indication application is filed together with the specifications for which the product will have to comply.

    • traditional specialty guarantee refers to a product whose specific qualities are linked to a composition, manufacturing or processing methods based on a tradition, without however, necessarily having any link with its geographical origin. Traditional speciality guarantees are intended for the protection of food and agriculture products (Articles R. 641-1 to R. 641-10 of the Rural and Sea Fishing Code). The traditional specialty guarantee application is filed together with the specifications for which the product will have to comply.

    (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights).

    i. Copyright

    Copyright protects original works of the mind, regardless of their kind, form of expression, merit or purpose, from the mere act of creation (Article L.111-1 and L.112-1 of the ICP). No registration is therefore required.

    Copyright covers many different categories such as literary writings, dramatic, musical, artistic, choreographic, graphical and photographic work but also lectures, pleading, software etc. provided that there are original and concretely formed. In this respect, ideas and concepts are not granted any protection by copyright.

    Originality is not defined by the IPC, however, French courts consider that a work is original if it reflects the personality of its author and determine whether a work is original on a case-by-case basis.

    Under the French copyright law, there are two types of rights:

    • patrimonial rights, which protect the economic interests of the author, are (Article L.122-1 IPC et seq.):

    o the right of representation;

    o the right of reproduction.

    • moral rights, which protect the non-economic interests of the author, are (Article L.121-1 IPC et seq.):

    o the right of disclosure;

    o the right of paternity;

    o the right of integrity;

    o the right of withdrawal.

    ii. Neighbouring rights

    Neighbouring rights protect:

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

    The EU directive on copyright in the Digital Single Market, adopted on March 26th 2019, introduces protection of press publications for online uses and provides that: “Member States shall provide that the authors of the works incorporated in a press publication receive an appropriate share of the revenues that press publishers receive for the use of their press publications by information society service providers.”

    Such protection of press publication has a limitation period of two years starting from the first day of January following the year of publication of the press publication.

    One exemption remains, this protection does not apply to private or non-commercial uses of press publications carried out by individual users.

    The Member states have to comply with the Directive by March 26th 2021.

    iii. Databases

    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 (Article L.341-1 of the IPC).

    iv. Design rights

    Design rights protect the appearance of the whole or part of an industrial or handcraft product, resulting from its features, colours, shape, texture or materials provided that it is new and has individual character (Article L.511-1 and L.511-2 of the IPC). Functional forms and designs contrary to public policy or morality are excluded from protection.

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

    v. .Semiconductor right

    Semiconductor rights protect uncommon topographies reflecting an intellectual effort (Article L.622-1 of the IPC). Such uncommon topographies shall neither have been commercially exploited anywhere more than two years before its filing, nor fixed or encoded when it was not been exploited more than fifteen years before it has been fixed or encoded.

    vi. Plant variety rights

    Plant variety rights protect new, distinct, stable and sufficiently uniform plant breeding (ArticleL623-1 of the IPC).

    In this respect a new plant variety may be granted a certificate which shall confer on its owner an exclusive right to produce, reproduce, package for their reproduction or vegetative propagation, offer, sell or commercialize in any form, export, import or used for any of these purposes reproduction or vegetative propagation material. (Article L.623-4 of the IPC).

  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) (Article L.611-2 of the IPC).

    Supplementary protection certificates

    Protection for pharmaceutical products or plant protection products, provided they are under a valid patent, can benefit from an extended protection period of 7 years after the expiry of the patent or 17 years from the grant of the marketing authorisation (Article L.611-2 and L.611-3 of the IPC).

    Utility certificates

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

    As mentioned at Section 1 (a) ii, the Bill of law PACTE is expected to extend the protection period from 6 years to 10 years.

    Trademarks

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

    Collective and certification marks

    For collective marks, as long as the producer complies with the rules governing use established by the holder of the collective registered mark (Article L.715-1 IPC).

    For certification marks, as long as the product fulfils the qualities, attributes and characteristics of the certification mark as provided by the regulation governing use (Article L.715-2 IPC).

    Designations of origin, geographical indications and traditional specialty guarantees

    As long as the producer complies with the relevant specifications of the protected location (Article L.641-5 of the Rural and Sea Fishing Code, Article L.721-2 IPC and Article L.641-12 of the Rural and Sea Fishing Code).

    Designs

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

    Semiconductors

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

    Plant varieties

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

    Copyright

    (including software)

    70 years post-mortem auctoris (Article L.123-1 of the IPC).

    Neighbouring 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 (Article L.211-4 of the IPC).

    As mentioned above, a press publication is protected for a period of two years starting from the first day of January of the year following the publication of the press publication (Section 1 (c) ii).

    Databases

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

  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 (Article L.611-6 of the IPC).

    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 (Article L.611-7 section 1 of the IPC).

    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 (Article L.611-7 section 2 of the IPC).

    Supplementary protection certificates

    The right holder of the patent (Article L.611-3 of the IPC).

    Utility certificates

    The same conditions than for patent apply (Article L.611-2 of the IPC).

    Trademarks

    The applicant (Article L.712-1 of the IPC).

    Collective and certification marks

    The applicant (Article L.715-2 IPC).

    Designations of origin, Geographical indications and traditional specialty guarantee

    Defence organizations, on behalf of all their members, usually the producers.

    Designations of origin, geographical indications and traditional specialty guarantees are signs that are not subject to private appropriation by a particular user to the detriment of others. In other words, any productor who complies with the specifications in the registered regulation is entitled to use it.

    It is a collective right to the benefit of any producer complying with the specifications of the regulation (Article L.642-3 of the Rural and Sea Fishing Code, Article L.721-5 IPC and Article 23 of the EU Regulation 1151/2012).

    Designs

    The creator or his successor in title (Article L.511-9 of the IPC).

    Semiconductors

    The creator or his successor in title (Article L.622-3 of the IPC).

    Plant varieties

    The applicant (Article L.623-4 of the IPC).

    Copyright

    (including software)

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

    However, in the case of a software created by an employee, the work belongs to the employer (Article L.113-9 of the IPC).

    Neighbouring rights

    The performer of the work (Article L.212-1 of the IPC)

    The phonogram producer (Article L.213-1 of the IPC)

    The videogram producer (Article L.215-1 of the IPC)

    Audiovisual communications companies (Article L.216-1 of the IPC)

    Databases

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

  4. Which of the intellectual property rights described above are registered rights?

    Under French law, registered intellectual property rights are:

    • patents (Article L.612-1 of the IPC);
    • supplementary protection certificates (Article L. 612-1 of the IPC);
    • utility certificates (Article L.612-1 of the IPC);
    • trademarks (Article L.712-1 of the IPC);
    • collective marks (Article L.712-1 of the IPC);
    • certification marks (Article L.712-1 of the IPC);
    • designations of origin (Article L.641-6 of the Rural and Sea Fishing Code);
    • geographical indications (Article L.721-3 of the IPC) ;
    • traditional specialty guarantees (Article L. 641-12 of the Rural and Sea Fishing Code);
    • design rights (Article L.511-9 of the IPC);
    • plant varieties certificates (Article L. 623-4 of the IPC);
    • semiconductor rights (Article L.622-1 of the IPC).

    On the other hand, copyright, neighboring rights and database rights are automatically granted, without any registration requirement, provided that the conditions of protection are met.

    However, it should be noted that for software and databases, the Agency for Programs Protection maintains a register for any digital creations.

    In addition, all cinematographic works intended for release in theatres in France must be registered in the Registry of Cinema and Audiovisual (RCA), regardless of the duration of the films, their nature or their origin (Article L.122-1 of the Film and Moving Image Code). The RCA is managed by the National Film and Moving Image Center (CNC) (Article L.111-1 of the Film and Moving Image Code).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?

    Intellectual property rights can be filed by any natural person or a legal person such as a civil or commercial company, with or without a representative.

    i. Patents (including supplementary protection certificates and utility certificates), trademarks, collective marks, certification marks, semiconductors and design
    Regarding national trademarks (Article L.712-14 of the IPC), collective marks (Article L.715-2 of the IPC), patents (Article L.612-23 of the IPC), semiconductors (Article L.622-4 of the IPC) and designs (Article L.512-1 of the IPC), the application for registration is made before the French Office by filling a paper or an online form.

    For certification marks (Article L. 715-2 of the IPC), only a legal person that is neither the manufacturer, nor the importer nor the seller of the products can apply for registration to ensure that it can exercise an objective and impartial control over the use of the mark.
    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.

    ii. Designations of origin, geographical indications and traditional specialty guarantees

    For designations of origin (Article L.641-6 of the Rural and Sea Fishing Code) or traditional specialty guarantees (Article R.641-12 of the Rural and Sea Fishing Code), the defense organization must file an application form with the National Institute of Origin and Quality (Institut de National de l’Origine et de la Qualité “INAO”).

    For geographical indications, the defense organization must file an application form with the INPI (Article L.721-3 of the IPC),

    iii. Plant varieties

    For plant varieties certificates (Article L.412-1 of the IPC), the applicant must file an application form with 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.

    • Regarding patents, the registration procedure takes approximately thirty-six months;

    • Regarding supplementary protection certificates, the registration procedure takes
    approximately between one or two months;

    • Regarding utility certificates the registration procedure takes approximately eighteen months;

    • Regarding trademarks, the registration procedure takes approximately six months absent of any opposition proceedings;

    • Regarding collective and certification marks, the registration procedure takes approximately six months absent of any opposition proceedings;

    • Regarding design rights, the registration procedure usually takes approximately four 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, whether by giving written comments or by filing an opposition against the intellectual property rights.

    For:

    • patents: from the publication of the patent application, any third party can submit written comments on the patentability of the invention to the INPI (Article L.612-13 of the IPC). It should be also noted that the Bill of Law PACTE introduces an opposition procedure against registered patents before the French Office (see question 28).
    • utility certificates: from the publication of the utility certificate application, any third party can submit to the INPI written comments on the patentability of the invention (Article L.612-13 of the IPC);
    • trademarks: any third party can submit to the INPI written comments on the trademark within a delay of 2 months from the publication of the trademark application (Article L.712-3) and within the same delay, only the right holder, the INAO, the exclusive licensee, a territorial collectivity or a defense organization for geographical indications can file an opposition against the trademark (L.712-4 of the IPC);
    • collective and certification marks: any third party can submit to the INPI written comments on the trademark within a delay of 2 months from the publication of the trademark application (Article L.712-3) and within the same delay, only the right holder, the INAO, the exclusive licensee, a territorial collectivity or a defense organization for geographical indications can file an opposition against the trademark (L.712-4 and L.715-2 of the IPC);
    • geographical indications: Before the INPI grants the geographical indication, the INPI has to seek the opinions from the territorial collectivities, the professionals of the concerned industry and from the director of the INAO. Absent of any answer within two months, their opinion is presumed favourable to the grant of the geographical indication (Article L.721-3 of the IPC);
    • designations of origin and traditional specialty guarantees: during a two months opposition period, any third party can submit to the INAO a written and motivated opposition (Article R.641-13 of the Rural and Sea Fishing Code);
    • plant varieties: the Committee for Protection of Plant Varieties can seek opinions from experts before the grant of the certificate (Article L.623-12 of the IPC) although there is no opposition period nor the possibility for third parties to submit written comments;
    • semiconductors (Article L.622-4 and L.622-6 of the IPC), supplementary protection certificates (Article 10 of the EU Regulation N°469/2009) and designs (L.512-4 of the IPC): the INPI, after a formal examination, publish the application and the semiconductors rights take effect on the day of the application was filed. There is no opposition period nor the possibility for third parties to submit written comments.
  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. In this respect, the applicant can exchange with the examiner to further explain, justify or amend the application when applicable.

    For:

    • patents: the applicant can choose to waive or amend one or several claims in order to reduce the scope of the invention and abandon contested elements (L.613-24 of the IPC). Also, as a patent application shall relate to one invention only or to a group of inventions relating to the same inventive step, the INPI can request the applicant to divide the application, failing this, the application will be rejected (Article L.612-4 of the IPC). In addition, in regards of the search report, the applicant shall give its observations upon request of the INPI, failing this, the application will be rejected (Article L.612-14 of the IPC);

    • utility certificates: As for the patent application, the applicant can choose to waive or amend one or several claims in order to reduce the scope of the invention and abandon contested elements At the INPI request, the applicant can also be required to divide the application and file divisional applications (Article L.611-2 of the IPC) ;

    • trademarks: the applicant can choose to limit the list of goods or services for which the trademark has been applied for by giving up the contested goods and services (Article R.714-1 of the IPC);

    • collective and certification marks: the applicant can choose to limit the list of goods or services for which the mark has been applied for the contested goods and services or, especially for the certification mark, amend the regulation governing use (R.712-11 of the IPC);

    • geographical indications: After the conduct of a public inquiry and consultation related to the application for the geographical indication, the INPI shall prepare observations to be transmitted to the applicant. The applicant shall have two months from their receipt to submit comments or to give notice to the INPI,of its intention to amend the application (Article R.721-5 of the IPC);

    • designations of origin and traditional specialty guarantees: the applicant can modify the specifications of production of the products (Article R.641-13 of the Rural and Sea Fishing Code);

    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 (Article R.411-19 and R. 411-20 of the IPC).

  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

    300 euros if the application is extended to French Polynesia

    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

    60 euros if the application is extended to French Polynesia

    Renewal fees are identical

    However, it should be noted that it is expected that the INPI from now on exclusively provides a fee per class. However, the new fees have been established yet.

    Collective and certification marks

    For the collective and the certification mark, the same fees as a trademark apply.

    For the collective mark, additional fees apply for the examination of the regulation governing use. Fees of 27 euros will apply for a regular review and 79 euros will apply for an express review.

    Designations of origin, geographical indications or traditional specialty guarantees

    Applications fees amount to 350 euros for geographical indications.

    Plant varieties

    Application fees amount to 100 euros

    Examination fees amount between 900 to 1200 euros, depending on the plant variety applied for

    Grant fees amount to 40 euros

    Annual fees amount to 40 euros (first year), 55 euros (second year), 75 euros (third year), 100 euros (fourth year), 125 euros (fifth year) and 150 euros (sixth year and over).

    Designs

    Application fees amount to 39 euros + reproduction fees

    Renewal fees amount to 52 euros

    60 euros if the application is extended to French Polynesia

    Semiconductors

    Application fees amount to 79 euros

    60 euros if the application is extended to French Polynesia

  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 renewed 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 section A?

    Patent

    A patent can only be assigned in writing. It can be assigned either in whole or in part (IPC Article L613-8).The parties can also decide to set a reduced/limited term to the assignment.

    Supplementary protection certificates

    The assignment of supplementary protection certificates must meet the same conditions as for patents (Article L.611-2 of the IPC).

    Utility certificates

    The assignment of utility certificates must meet the same conditions as for patents (Article L.611-2 of the IPC).

    Plant varieties

    The assignment of plant varieties certificates must meet the same conditions as for patents (Article L.623-24 of the IPC).

    Trademark

    As for patents, a trademark can only be assigned in writing. It may either concern the entire trademark or be limited to specific goods or services. Such limitation cannot, however, concern a part of the French territory or a part of the sign itself (Article L.714-1 of the IPC). The parties can also decide to set a limited term to the assignment.

    Collective and certification marks

    The assignment of collective marks meets the same conditions same as for trademarks (Article L.715-2 of the IPC).

    However, assignment of certification marks is not possible. Only the transmission of the certification mark to a second legal person is allowed if the initial legal person has been dissolved (Article L.715-2 §4 of the IPC).

    Designs

    A writing is not mandatory to assign a design though it is required to be enforceable against third parties (Article R.512-15 of the IPC). As for patents and trademarks, a design can be assign either in whole or in part, for a limited term. Such limitation cannot concern a part of the French territory.

    Semiconductors

    The assignment of semiconductors rights must meet the same conditions as for patents (Article L.622-7 of the IPC).

    Copyright

    A copyright work can be assigned either in whole or in part. However, only patrimonial rights attached to copyright work may be assigned at the exclusion of moral rights which are non-transferable (Article L121-1 of the IPC).

    Since the law of 7, July 2016 “on freedom of creation, architecture and heritage" a written assignment is required (Article L131-2 of the IPC) . In the past, a written assignment was only required for publishing agreements, performance agreements and audio.
    Pursuant to case-law, these provisions should apply only to the original author and natural person.

    Making a written agreement is however highly recommended as it is has always been required to define precisely the assigned rights in terms of scope and purpose, territory and duration (Article L.131-3 of the IPC).

  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, an assignment is only enforceable against third-parties if it is registered with the French Office. The assignment can be registered by any party to the agreement by filling a specific form before the French Office together with a copy of the assignment, the relevant clauses or a confirmatory assignment signed by both party. If the assignment has been drafted in a foreign language, a French translation must be provided.

    For:

    • patents: see Article L.613-9 of the IPC;
    • supplementary protection certificates: see Article L.611-2 of the IPC;
    • utility certificates: see Article L.611-2 of the IPC;
    • plant varieties: see Article L.623-14 of the IPC;
    • designs: see Article L.513-3 of the IPC;
    • trademarks: see Article L.714-7 of the IPC;
    • collective marks: see Article L.714-7 of the IPC;
    • semiconductors: see Article L.622-7 of the IPC;
    • copyrights: no registration of the assignment is required.

  13. What are the requirements to licence a third party to use each of the intellectual property rights described in section A?

    Patent

    As for patent assignment, patent licences must be in writing, failing which, the patent licences is null (Article L.613-8 of the IPC). It may be sole, exclusive or non-exclusive. The parties can also decide to set a limited term to the agreement.

    Supplementary protection certificates

    The licensing of supplementary protection certificates must meet the same conditions as for patents (Article L.611-2 of the IPC).

    Utility certificates

    The licensing of utility certificates must meet the same conditions as for patents (Article L.611-2 of the IPC).

    Plant varieties

    The licensing of plant varieties certificates must meet the same conditions as for patents (Article L.623-24 of the IPC).

    Trademark

    Contrary to patent a written licence agreement is not mandatory although it may be required for considerations of evidence.

    Different types of trademark license exist under French law.

    A trademark license may either concern the entire trademark or be limited to specific goods or services. It may be sole, exclusive or non-exclusive and apply for a reduced/limited term.

    Designs

    A design may be licensed either in whole or in part, for a limited term. A design license does not require a written document, although it may be recommended for considerations of evidence.

    Copyright

    A copyright work can be licensed either in whole or in part. However, only patrimonial rights attached to copyright work may be licensed to the exclusion of moral rights which are non-transferable (Article L121-1 of the IPC). The license can be sole, exclusive or non-exclusive and can apply for a reduced/limited term.

    As for assignment, a written agreement is highly recommended considering the importance of mandatory clauses and to define precisely the assigned rights in terms of scope and purpose, territory and duration (Article L.131-3 of the IPC).

    Semiconductors

    The licensing of semiconductors rights must meet the same conditions as for patents (Article L.622-7 of the IPC).

  14. 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?

    Under French law, registration is not required for the validity of licence agreements.

    However, enforcement of rights against third-parties is subject to registration. Indeed, a licence, whether exclusive or non-exclusive, may only give rights against third parties or against a later transaction concerning the same rights once registered.

    In this way, as for assignment, the license shall be registered with the French Office by filling a specific form together with a copy of the license agreement, the relevant clauses or a confirmatory license signed by both party. If the license has been drafted in a foreign language, a French translation must be provided.

    If the licence is not registered, the licensee (exclusive or non-exclusive) may join the infringement action initiated by the owner of the IPR in order to obtain compensation for his own prejudice.

    For:

    • patents: see Article L.613-9 of the IPC;
    • supplementary protection certificates: see Article L.611-2 of the IPC;
    • utility certificates: see Article L.611-2 of the IPC;
    • plant varieties : see Article L.623-14 of the IPC;
    • designs : see Article L.513-3 of the IPC;
    • trademarks: see Article L.714-7 of the IPC;
    • collective marks: see Article L.714-7 of the IPC;
    • semiconductors: see Article L.622-7 of the IPC
    • copyrights: no registration of the licence is required.

    It should be noted however that the Trademark European Directive together with recent case-law from the European Court of Justice tend to widen the conditions of the licensee’s action.

  15. 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. However, exclusive licensees must be registered to the National Registry in order to bring an infringement action.

    Non-exclusive licensee cannot introduce infringement actions but may join the infringement proceedings initiated by the owner of the IPR in order to obtain compensation of the prejudice suffered.

    For:

    • patents: see Article L.615-2 of the IPC;
    • trademarks, collective and certification marks: see Article L.716-5 of the IPC;
    • designs: see Article L.521-2 of the IPC;
    • semiconductors: see Article L.622-7 of the IPC.

    Moreover unregistered licensees, either non-exclusive or exclusive, can join the infringement proceedings initiated by the owner to seek reparation for their own prejudice.

    For:

    • patents : see Article L.613-9 of the IPC ;
    • trademarks, collective and certification marks: see Article L.714-7 of the IPC;
    • designs : see Article L.513-3 of the IPC;
    • semiconductors: see Article L.622-7 of the IPC.

    Regarding trademarks, the European Trade Mark Directive, together with recent case law from the Court of Justice of the European Union, tend to widen the conditions of the licensee’s action and not to require the prior licence registration to authorize the licensee to bring infringement claims (CJUE, February 4th, 2016, C-163/15 and CJUE, June 21st, 2016, C-419/15).

  16. 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 three years of imprisonment and a fine of 300, 000 euros for copyright (Article L.335-2-1 of the IPC), neighbouring rights (Article L.335-4 of the IPC), designs (Article L521-10 of the IPC), plant varieties certificates (Article L.623-32-2 of the IPC), patents (Article L.615-1 of the IPC), supplementary protection certificates (Article L.615-1 of the IPC), utility certificates (Article L.615-1 of the IPC) and semiconductors (Article L.615-1 of the IPC).

    For trademarks, collective and certification marks, the sanction is up to four years of imprisonment and a fine of 400,000 euros (Article L.716-9 of the IPC).

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

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

    Criminal prosecution of infringement can either be pursued by the right holder or directly by the public prosecutor.

  17. What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in section A? 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;
      It should be noted that, the Bill of law PACTE has specified the limitation period of five years to initiate action starts, not from the day the infringement occurred, but from the day on which the right holder knew or should have known the act of infringement; Invalidity action for patents, trademarks, designs and plant varieties certificates;

    Pursuant to the Bill of law PACTE, the nullity action will no longer be subject to a limitation period.

    Declaration of non-infringement for patents (see question 30).

    • Administrative proceedings:

    Trademark opposition proceedings. Opposition decisions can be appealed before Paris Court of Appeal within one month of the notification of the decision of the INPI (Article R.411-20 of the IPC);

    Regarding trademark revocation or invalidation proceedings, pursuant to article 45 of the Directive 2015/2436, proceedings will no longer be the exclusive competence of French Courts.

    By January 2023, Member States shall provide for an efficient and expeditious administrative procedure before their offices for invalidation or revocation of a trademark.

    Regarding patent, pursuant to the Bill of law PACTE, opposition proceedings before the French Office should be introduced.

  18. 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 eighteen- twenty-four months. Appeal proceedings on the merits last approximatively twenty-four months.

    IPR owners can also opt for accelerated proceedings: First instance accelerated proceedings on the merits usually last three-six months, whereas appeal accelerated proceedings on the merits usually last six - eight months.

  19. 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.

    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 certificates related matters: Marseille, Bordeaux, Strasbourg, Lille, Limoges, Lyon, Nancy, Paris, Rennes, Toulouse.
    ii. Proceedings

    Proceedings are initiated with a 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 eight weeks after the first procedural hearing).

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

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

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

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

    Customs procedures for seizing or preventing the importation and/or exportation of infringing goods are governed by the French Intellectual Property Code. In this respect there is two courses of detention procedures.

    First of all, the detention may be carried out by the customs administration at the written request of the IPR owner or its exclusive licensees by filling a specific form before the Customs.

    Customs shall then withhold in the course of its inspections any goods allegedly infringing proprietary rights.

    Once the customs has retained the suspicious infringing products, a notification is immediately sent to the applicant (IPR owner), the holder of the suspicious products and the Prosecutor.
    Following this notification and within a delay of three to ten working days (depending the nature of the goods) from the receipt of the notification, the applicant must either:

    • request the destruction of the goods in application of the simplified destruction procedure;
    • justify to customs one of the following measures have been initiated: filing a complaint with the public prosecutor; initiating an action before the civil or the criminal courts; requesting before the competent court seizure.

    The withholding measure is automatically lifted if the IPR owner fails to establish that such measures have been taken. However, at the request duly motivated of the applicant, customs may extend the time limit for ten days.

    Second, the detention may also be carried out by the customs administration themselves in the absence of any written request from the owner. In such case, the customs immediately notifies the IPR owner. Following this notification and within 4 working days from its receipt, the IPR owner must file a written request for intervention and follow the same requirements as above mentioned.

  21. 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 article 56 of the French Civil Proceedings Code (CPC), 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.

  22. 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 seq. of the 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 (Article 127 et seq. of the CPC);

    • provide an arbitration clause, either inserted in the agreement before any dispute or in a separate agreement once the dispute has arisen. However, it should be noted that if the dispute concerns the validity of the right, invalidity pronounced by the arbitrators shall have effect only between the parties (Article L.331-1 IPC, Article L.521-3-1 IPC, Article L.615-17 IPC, Article L.623-31 IPC, Article L.716-4 IPC, Article 2059 and 2060 CPC).

  23. What is required to establish infringement of each of the intellectual property rights described in section A? 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 Article 9 of the CC.

    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;

    • neighbouring rights, 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;

    • collective and certification marks, that the litigious sign is identical or similar to the prior mark, 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;

    • supplementary protection certificates, that the litigious product reproduces or has been manufactured following a process that reproduces the patent’s claims;

    • utility certificates, that the litigious product reproduces or has been manufactured following a process that reproduces the utility certificates claims;

    • plant varieties, that the plant varieties are being produced offer to sell, marketed, imported or exported or that material for the reproduction of the plant varieties is hold or used to that end;

    • semiconductors, that the protected semiconductors are reproduced or commercially exploited or detained, used, shipped, exported or imported for this purpose.

    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 (Article L.332-1 and 4 of the IPC); Design (Article L.521-4 of the IPC); Patent (Article L.615-5 of the IPC); Plant varieties (Article L.623-27-1 of the IPC); Trademarks (Article L.716-7 of the IPC);

    • customs withholding: IPRs holders may request from customs to hold allegedly counterfeiting goods (see. Copyright (Article L.335-10 of the IPC), Design (Article L.521-14 of the IPC); Patents (Article L.614-32 of the IPC); Plant varieties (Article L623-36 of the IPC); Trademarks (Article L.716-8 of the IPC); Geographical indications (Article L.722-9 of the IPC);

    • expert reports either appointed by the judge or amicably requested from a party;

    • investigation reports survey or witness statements;

    • bailiff reports.

  24. 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?

    (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 articles L. 521-4-1, L.615-5-1-1, L.716-7-1-A of the IPC, 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 seq. and 263 et seq. – of the 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 (Article 11 and 138 of the CPC).

    In addition, pursuant to the Article L.331-1-2, L. 521-5, L.615-5-2, L.716-7-1 of the IPC, the judge can, at the request of a party, order the production of the documents needed to ascertain the origin of the infringing goods, the distribution channels and the amount of infringing manufactured and/or commercialized.

  25. 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?

    In civil procedure, submissions and/or evidence are presented to the Courts in writing. 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:
      o a stronger probative value will be granted to a judicial expertise compared to an amicable one.
      o 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.

  26. What defences to infringement are available?

    In case of infringement action, available defences include:

    Procedural defences:

    o 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.

    o 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 : pursuant to prior case law from the Supreme Court, the holder of such goods benefited from a “legitimate reason” and, thus, infringement should be ruled out in this situation. However, in a recent decision ( January 17, 2018, n°15-29.276), the French Supreme Court overturned its jurisprudence, as the EU Directive did not provide such exception to infringement. As a result, the Supreme Court held that, the trademark being affixed in France, the Court of Appeal had rightfully found that, although the goods were intended to be exported to China, infringement was characterised in the present case.

    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 supplementary protection certificates, 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 utility certificates, 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 plant varieties, specific defences notably include:

    • acts performed privately for non-professional or non-commercial purposes;
    • acts performed on an experimental basis;
    • acts done for the purpose of breeding a new variety or acts referred to this new variety;
    • acts concerning his variety or a variety essentially derived from his variety, or a variety which is not clearly distinguishable from it, when material of that variety or material derived from it has been sold or marketed in any form whatsoever by the owner or with his consent.

    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 collective and certification marks, the same defences as for trademarks apply.

    As regards designs, specific defences notably include:

    • acts done in a private capacity and for non-commercial purposes;
    • acts performed for experimental purposes;
    • acts of reproduction for illustrative or educational purposes, if such acts mention the registration and name of the right holder, are in accordance with fair commercial practices and do not prejudice the normal exploitation of the design.

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

    As regards semiconductors, specific defences notably include:

    • reproduction for evaluation, analysis or teaching purposes;
    • the creation, on the basis of such analysis or evaluation, of a different semiconductors eligible for protection under the IPC;
    • the acquisition in good faith of the protected semiconductor. However, the acquirer is liable for a fair compensation if he intends to continue the commercial exploitation of the product acquired.
  27. Who can challenge each of the intellectual property rights described above?

    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.
  28. 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 (Article R. 612-63 of the IPR).
    • 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:According to the current state of law, tThe 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: Article L. 611-8, Design: ArticleL.511.10, Trademark: Article L.712-6 of the IPC).

  29. 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).

    i. Patent

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

    • the invention:

    o is excluded from patentable subject matter (see Article L.611-11 and L.611-16 of the IPC);
    o is not novel;
    o does not involve an inventive step;
    o 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.

    ii. Trademark

    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 the article L.711-4 of the IPC.

    It should be noted that, pursuant to the Bill of law PACTE, nullity and revocation proceedings against French trademarks should be introduced before the French Office by January 14, 2023 and, regarding French patents, an opposition procedure before the French Office should be created.

    iii. Designs

    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.

    iv. Copyright

    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.

  30. Are there any other methods to remove or limit the effect of any of the intellectual property rights described in section A, for example, declaratory relief or licences of right?

    Patent

    As regards patents, pursuant to the article L.615-9 of the IPC, 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 the article L.613-11 of the IPC, 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.

    Trademark

    As regards trademark, pursuant to the article L714-5 of the IPC, 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.

  31. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in section A?

    Pursuant to the articles L. 331-1-1 (copyright), L. 521-6 (design), L.615-3 (patents) and L.716-6 of the IPC, a right owner can apply, at a preliminary stage, either ex parte or inter partes, for measures to prevent imminent infringement or to stop infringement against the alleged infringer or any intermediary whose services are being used by the infringer.

    Interim remedies includes in this respect:

    • • interlocutory injunction to cease the allegedly infringing acts, eventually under a recurring penalty payment;
    • • a financial provision to the benefit of the applicant if the existence of the damage is not seriously questionable;
    • When an interim action is welcomed, French judges tend to sanction the infringer severely.
      In this regards, the following financial provision have been recently granted, relating to

    • • trademarks:

      o 30 069,72 euros (Court of appeal of Paris, March 13th 2019, RG 18/20092);
      o 150 000 euros (Court of first instance of Paris, October 11th 2018, RG 17/11217)

    • • patents:

      o 2 901 779 euros granted to the first claimant and 1 460 889 euros granted to the second claimant, for a total of 4 362 668 euros -Court of first instance of Paris, March 7th 2019, RG 17/14664);

      o 5 846 628 euros granted to the first claimant and 7 308 285 euros granted to the second claimant, for a total of 13 154 913 euros (Court of first instance of Paris, June 7th 2018, RG 16/15196)

    • • the lodging of guarantee to ensure the right holder’s compensation;
    • • the seizure of the litigious goods or their withdrawal from distribution channels.
      The interim action may be filed either before or after the action on the merits.

    If filed before any action on the merits, the action on the merits must be brought within 20 business days (or 31 calendar days if longer) from the date of the Court Order. Failing that, the remedies granted will be automatically cancelled.

    Decisions on interim remedies may be appealed within 15 days, unless granted by the pre-trial judge.

    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 confiscation of the infringing products for the right holder’s benefit;
    • • the publication of the Court decision.

    Concerning legal entities, under articles L.335-5 (copyright), L.521-10 (designs), and L.716-11-1 (trademarks) of the IPC, 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).

    Just like for the interim measures, French judges tend to sanction the infringer more severely by the grant of higher damages, it being specified that French trade mark law was amended in 2014 to implement the IPR Enforcement Directive and allow for better compensation of the right-holder and ensure the grant of corrective measures including injunction for recall from the channels of commerce.

    For instance, the following damages have been awarded, in relation to trademarks and designs:

    • • 460 000 euros (Court of Appeal of Paris, September 11th, 2018, RG 17/01589)
    • • 300 000 euros (Court of first instance of Paris, January 18th 2019, RG 16/12207)
  32. 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.