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 to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).

    (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
    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 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 (Article L.611-10 of the IPC).

    Trade secret is defined as any information that is not generally known or easily available, that is of commercial value because it is secret and that is subject to reasonable safeguards to keep it secret.

    Until now, there was no specific set of rules provided by French law to protect confidential information. Disclosure of confidential information could however be sanctioned through an action in unfair competition (extra-contractual liability), breach of a non-disclosure agreement and/or confidentiality clause (contractual liability) or in disclosure of manufacturing secrets by a director or employee (criminal liability).

    Following the EU Directive 2016/943 on the protection of undisclosed know-how and business information against their unlawful acquisition, use and disclosure (Trade Secret Directive), French law had to adopted new sets of rules transposing the directive was therefore voted by the National Assembly on June 14, 2018 and by the Senat on June 21.

    The bill confirms that, in general, trade secret protection falls within Tort law and that the misappropriation of trade secret triggers the civil liability of the infringer. The new set of rules will, however, co-exist 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 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).

    As a result, 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.

    It should be noted that the EU trademark directive 2015/2436 and regulation 2017/1001 waved the requirement of graphical representation and confirmed that different kind of sign such as taste, smell or motion could be registered as trademarks.

    ii. Unfair competition or passing off
    Unfair competition or passing off offers protection against the unauthorized used of other related rights identifying an undertaking such as unregistered trademark, company names, domain names etc. (Article 1240 of the French Civil Code).

    iii. Collective and certification trademarks
    Both collective and certification marks are recognized by 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”
    • A collective certification mark “shall be affixed to goods or services that display, in particular, with regard to their nature, properties or qualities, the characteristics detailed in the respective regulations”.

    iv. Geographical indications
    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 (Article L.721-2 of the IPC).

    (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
    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 litrerary 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.

    ii. Neighbouring rights
    Neighboring 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).

    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. Confidential information, know-how and trade secrets
    Until now, there was no specific set of rules provided by French law to protect confidential information. Disclosure of confidential information could however be sanctioned through an action in unfair competition (extra-contractual liability), breach of a non-disclosure agreement and/or confidentiality clause (contractual liability) or in disclosure of manufacturing secrets by a director or employee (criminal liability).

    Trade secret is defined as any information that is not generally known or easily available, that is of commercial value because it is secret and that is subject to reasonable safeguards to keep it secret.

    vi. 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.

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

    In this respect a new plant variety may be subjet of a tittle called “new plant variety 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 pruposes reproduction or vegetative propagation material. (Article L623-4 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).

    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 (Article L.611-2 and L.611-3section 3 of the IPC).

     

    Utility certificates

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

    Trademarks

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

    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 (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

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

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

     

    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).

     

    Trademarks

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

    Plant varieties

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

    Semiconductors

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

    Designs

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

    Copyright

    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).

    Databases

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

    Software created by an employee

    The employer (Article L.113-9 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) ;
    • Utility certificates (Article L.612-1 of the IPC);
    • Trademarks (Article L.712-1 of the IPC) ;
    • Certification marks (Article L.712-1 of the IPC);
    • Geographical indications (Article R.641-12 of the Rural Code) ;
    • Design rights (Article L.511-9 of the IPC);
    • Plant varieties certifications (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.

    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, trademarks, semiconductors and design
    Regarding national trademarks (Article L.712-14 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.

    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. Geographical indications
    For geographical indications (Article L721-3 of the IPC), 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”).

    iii. Plant varieties
    For plant varieties certifications (Article L.412-1 of the IPC), 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.

    • Regarding patents, the registration procedure takes approximately thirty-six months;
    • Regarding trademarks, 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 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. In this way, the applicant can correspond with the examiner to further explain, justify or amend the application when applicable.

    Regarding trademarks the applicant can for instance choose to limit the list of goods or services for which the trademark has been applied for.

    Regarding patents, the applicant can choose to reduce the scope of the invention.

    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

     

    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 French Polynesia option had been chosen.

     

    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 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 above?

    i. 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.

    ii. 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.

    iii. 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.

    iv. 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.

    See for:

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

    i. Patent
    As for patent assignment, patent licences must be in writing failling which of nullity (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.

    ii. 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.

    iii. 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.

    iv. 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).

  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.

    See for:

    • patents: Article L.613-9 of the IPC;
    • designs : Article L.513-3 of the IPC;
    • trademarks: Article L.714-7 of the IPC.

    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.

    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.

    See for:

    • patents: Article L.615-2 of the IPC;
    • trademarks: Article L.716-5 of the IPC;
    • designs: Article L.521-2 of the IPC.
  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 certifications (Article L.623-32-2 of the IPC) and patents (Article L.615-1 of the IPC).

    For trademarks, 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 for each of the intellectual property rights described above? 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;
      • 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.
  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.

    i. 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.

    ii. 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 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?

    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 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 sequitur of the CPC).
  23. What is required to establish infringement of each of the intellectual property rights described above? 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;
    • 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 (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 sequitur and 263 et sequitur – 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:
      • 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.

  26. 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 : 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 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 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.
  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). 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: 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:
      • is excluded from patentable subject matter (see Article L.611-11 and L.611-16 of the IPC);
      • 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.

    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.

    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 above, for example, declaratory relief or licences of right?

    i. 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.

    ii. 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 above?

    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.

    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 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).

  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.