Trademark Litigation Characteristics
As France is a member state of the European Union, it is a party to the major agreements relating to intellectual property in general and trademarks in particular under Paris Convention and Madrid Agreement at international level. All infringement cases are referred first to Civil Courts of first instance which are heard by judges who are familiar with such issues. However, when referred to the French Supreme Court are heard by the Commercial Chamber at the appeal level. There is no jury - disputed issues are always decided by the judges.
Under the French trademark law, infringement proceedings must be instituted by the trademark owner. However, an exclusive licensee may also institute infringement proceedings if after notification, the trademark owner does not institute such proceedings itself. A licensee who is registered, is also entitled to participate in infringement proceedings instituted by the trademark holder in order to obtain compensation for loss it has personally sustained on the grounds of unfair competition. Infringement may be proven by any means and the parties are generally not required to provide evidence which might be deterimental to them. To help trademark holders to prove infringement, French law provides for an efficient tool called an ex parte (saisie-contrefacon - in french) procedure through which the trademark owner requests the court to isssue an order authorizing search and seizure of samples of the allegedly counterfeit items. The request is made to the president of the civil courts of first instance (tribunal de grande instance) who must issue,on the mere basis of sufficient evidence, a seizure order allowing the trademark holder or its registered licensee to appoint a bailiff to obtain evidence at the alleged infringer's premises. The president may also order seizure of the entire stock of the allegedly counterfeit products and permit the bailiff to search for any documents revealing the names of the suppliers of the items and the number of articles purchased or manufactured by the alleged infrinter. The trademark holder must file a lawsuit within 15 days of the date of the seizure, failing which the seizure will become null and void. The defendant may petition to obtain the withdrawal of the ex parte decision if it has grounds to do so.
Once the trademark owner has acquired sufficient proof of the alleged infringement, it may choose between different procedural options. The first is to choose between court litigation and alternative dispute resolution such as arbitration or mediation. These methods are available where the parties agree to use them. The WIPO notably provides such services through its Arbitration and Mediation Centre. Those methods are more suitable for disputes arising out of contract performance than for pure infringement issues. A second option is to choose between civil and criminal proceedings. In the criminal proceedings, the alleged infringer's bad faith must be proven. Practically, criminal proceedings are initiated where the infringement is blatant and counterfeit goods are seized by the customs authorities.
Usually, the plaintiff chooses to initiate civil proceedings before a civil court to initiate civil proceedings along with evidence against the infringer and file the writ with the court and the defendant may hold its brief in response up until the hearing. The remedies available against a trademark infringer are (a) a banning injunction against the infringing products, accompanied by a daily penalty to be applied if the defendant does not comply, (b) destruction or confiscation of the infringing products and the devices or means specifically intended for committing the infringement, (c) danages, (d) publication of the judgement, and (e) an order for provisional enforcement of the judgement nowithstanding the appeal.
The basic principle of compensation under French law is that the aggrieved party should be compensated in a way that restores the situation to that which would have prevailed in the absence of infringement. Such party is entitled to full compensation for its loss, but no compensation beyond its loss. As a result, punitive damages are not available under French law. Valuation of the loss is left to the court's descretion for assessment by an expert.
The French system has been recognized as efficient over the years. Its efficiency should be strengthened in the near future, as a draft bill to improve the enforcement of IP rights was presented to the Council of Ministers on February 7, 2007.
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