Trade Mark Litigation

France

Gide Loyrette Nouel Grégoire Triet, Arnaud Michel, Emmanuel Larere and Tougane Loumeau

1. Sources of Law

1.1 What are the principal sources of law and regulation relating to trade marks and trade mark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties).

As France is party to several international or regional treaties and agreements, French trade mark law sources are both national and supranational.

National sources
French intellectual property law is mostly contained in the French Intellectual Property Code (IPC) which was created by the Loi (Statute) of 1 July 1992. Trade marks are covered by Title I of Book VII of the IPC (the legislative part being contained in articles L 711-1 et seq and the regulatory part being contained in articles R 711-1 et seq).
The IPC provisions relating to trade marks stem from the codification of the Loi of 4 January 1991 and Décret of 30 January 1992 on trade marks and their subsequent amendments.

European Community sources
As a member state to the European Union, French trade mark law has to take into account all the Community instruments relating to trade marks as interpreted, as the case may be, by the Community courts, ie:

EC Directive 89/104 of 21 December 1988 to Approximate the Laws of the Member States Relating to Trade Marks, implemented by the Loi of 4 January 1991 (codified in the IPC);
EC Regulation 40/94 of 20 December 1993 on the Community Trade Mark;
EC Directive 2004/48 of 29 April 2004 on the enforcement of intellectual property rights; and
EC Regulations 1383/2003 of 22 July 2003 and 1891/2004 of 21 October 2004 to reinforce Customs’ intervention.

International sources
On the international level, France is a party to the major agreements relating to intellectual property in general and to trade marks in particular, such as:

The Paris Union Convention of 20 March 1883;
The Madrid Agreement Concerning the International Registration of Marks of 14 April 1891;
The Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
The Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks of 12 June 1973;
The Madrid Protocol Relating to the Madrid Agreement of 28 June 1989;
The TRIPS annex to the Marrakech agreement of 15 April 1994; and
The Trade Mark Law Treaty (TLT) of 27 October 1994.

1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?

France has adopted a monist approach as regards the relationship between international and internal law.
Thus, article 55 of the French Constitution provides that ‘Treaties or agreements duly ratified or approved shall, upon publication, prevail over Acts of Parliament, subject, in regard to each agreement or treaty, to its application by the other party’.
It results from article 55, that international and EC law (primary and secondary legislation) take precedence over French Lois. However, French case law considers that such ‘conventional’ law may not take precedence over the French Constitution or over legislation which is taken in direct application of the Constitution.
As regards more specifically EC law, the French Conseil Constitutionnel (Constitutional Council) fine-tuned this principle by ruling that only a specific, express and contrary provision of the Constitution might prevent the implementation in France of a Community Directive.

Role of case law in French trade mark law
Trade mark case law comes principally from judiciary courts (as opposed to administrative or constitutional courts).
Judiciary case law may be considered as a kind of law source since its role is to clarify written law, to adapt it to factual circumstances, to rule upon contradictory aspects of the law or even to fill gaps in the law.
However, judiciary case law solutions may always be superseded by a loi.

2. Court and Administrative System

2.1 Can third parties oppose/request cancellation of a national or supranational (eg Benelux, Madrid Agreement and Protocol, Community Trade Marks) trade mark application/registration in your country? If so, on what grounds? Please briefly describe the opposition/cancellation procedure(s).

2.1.1 Opposition proceedings

Article L 712-4 of the CPI provides that during a period of two months following publication of the trade mark application, an opposition to such application may be filed by:

the owner of a mark that has been registered or applied for at an earlier date or which enjoys an earlier priority date; or
by the owner of an earlier well-known mark; or
by the exclusive licensee unless there is provision to the contrary in the licence agreement.

The opposition must be filed before the Institut National de la Propriété Industrielle (French Trade mark Office) through a written document containing identification elements concerning the opponent, his rights and the opposed application. It must also contain the opponent’s submissions on why the application should be rejected and payment of the fees. The opposition may be filed directly by the opponent or by his counsel.
The opposition is notified to the applicant, who is afforded a period of time to submit counter submissions. When each party has submitted observations, the opposition examiner issues a draft decision which becomes final if the parties do not contest it. If the draft is contested, a final decision is rendered by the INPI with reference to the parties’ latest observations.
At the beginning of the opposition proceedings, the applicant may request the opponent to provide evidence that the rights on which the opposition is grounded are not at risk of being revoked for lack of use.
The opposition proceedings may be stayed when:

the opposition is based on a trade mark application;
the trade mark on which the opposition is based is subject to an action for cancellation, revocation or claim of ownership; or
when both parties request such suspension (which should not exceed six months).

2.1.2 Cancellation proceedings

Any person who has a legitimate interest may request cancellation of a trade mark on the basis of absolute grounds of invalidity.
Only owners of prior rights may request cancellation of a trade mark on the basis of relative grounds of invalidity.
A cancellation action must be filed before a court.

2.2 In which courts are trade marks enforced? Are they specialised trade marks courts? If not, what level of expertise can a trade mark holder expect from the courts?

Article L 716-3 of the IPC grants exclusive jurisdiction in trade mark related matters to the Tribunaux de Grande Instance (courts of first instance) and the corresponding Cours d’appel (courts of appeal). These courts also have jurisdiction for registered design issues and unfair competition issues related to a trade mark infringement action.
In these courts, judges have no technical background or expertise. However, they are familiar with trade mark issues. Thus, in Paris, the Third Chamber of the Tribunal de Grande Instance before which all civil trade mark infringement cases are heard is specialised in intellectual property matters. At the appeal level, the cases are heard before the Fourth Chamber of the Cour d’appel, which is also specialised. In the most prominent other Tribunaux de Grande Instance and Cours d’appel, the case is also likely to be heard by judges who are familiar with trade mark issues. In the Cour de Cassation (the French Supreme Court in the judiciary order, which rules upon the decisions of the courts of appeal, on points of law), trade mark cases are heard by the Commercial Chamber.

2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?

French courts, although they may be influenced by decisions of foreign courts, are not bound by them and take care to assert their independence any time a litigator tries to bring forward such a foreign case.
They are, however, willing to apply EC case law as they are bound to construe French law in the light of EC law.
In the judiciary order, the case law of the higher courts is not binding on the lower courts (except when the case has already gone twice before the Cour de Cassation). However, lower courts tend to conform to the jurisprudence of the Cour de Cassation.

2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or national or supranational government agency shall they be brought (eg the national Trade Mark Office or the OHIM in Alicante)?

Invalidity actions directed at a French trade mark (or the French part of an international trade mark) may be brought only before the Tribunaux de Grande Instance. There does not exist any administrative invalidity procedure before the French Trade Mark Office.
An invalidity action may be introduced directly as a main claim. However, it is more often introduced by means of a counterclaim as a defence in an infringement action. In this case, the invalidity and the infringement actions are examined in the same proceedings, the court dealing first with the validity issue. The infringement issue is only examined if the invalidity claim has been rejected.
For Community Trade Marks, the invalidity procedure is contained in the Community Trade Mark Regulation.

2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?

Before the Tribunal de Grande Instance ruling on the merits, the Court of Appeal and the Cour de Cassation, the parties are not authorised to defend themselves. They must be represented and assisted by legal attorneys, who alone have the right to argue cases before these courts.
It is advisable to hire an attorney whose field of expertise covers trade mark law. Besides these specialised attorneys, the parties may have to be represented by a secondary attorney who has authority to represent parties before a given court. For example, before the Tribunaux de Grande Instance, only attorneys who are members of the Bar of such Tribunal, have the right to represent parties before this Tribunal. In certain non-Parisian local Bars, it is difficult to find an attorney specialised in trade mark matters. Therefore, the trade mark owner will usually hire two attorneys: the trade mark law specialist who is in charge of the case, who drafts the legal papers and who will argue the case; and a member of the local bar who merely represents the plaintiff in court for procedural matters and transmits to the Court the papers prepared by the trade mark specialist. The same principles apply before the Cour d’appel. The trade mark owner will be assisted by a trade mark law specialist and will be represented by an avoué (attorney specialised in appellate proceedings).
Before the Cour de Cassation, all parties must be represented by an avocat au conseil (attorney specialised in proceedings before the Cour de Cassation). Their role is more active than that of the local attorneys or avoués and they work in close collaboration with the specialised attorney.
In the criminal court, neither the representation nor the assistance of an attorney is compulsory. However, given the specificities of trade mark law, it would be unadvisable not to get assistance from a specialist.
Before the INPI (for instance, in opposition proceedings), representation is not compulsory. However, when the parties are represented, they may choose their representative only from a specific list of professions including attorneys and trade mark agents.

2.6 What is the language of the proceedings? Is there a choice of language?

The language of the proceedings is French.

3. Substantive Law

3.1 To what extent are unregistered trade marks protected under your country’s laws?

French law does not protect unregistered trade marks, to the exception of well-known marks as defined by article 6 bis of the Paris Union Convention.

3.2 How is trade mark infringement assessed? Does protection extend to translations or to conceptually identical but graphically different trade marks?

Classically, trade mark infringement arises either, when:

a mark is reproduced for identical products or services; or
a mark is reproduced for similar products or services and likelihood of confusion results from it; or
a mark is imitated for identical or similar products or services and likelihood of confusion results from it.

The concept of ‘reproduction’ covers the use of a strictly identical trade mark or when differences are so slight as to be imperceptible for the consumer of average attention.
The concept of ‘imitation’ includes visual, phonetic and conceptual similarity. Assessment of trade mark infringement means comparing similarities rather than differences.
The likelihood of confusion must be assessed globally taking into account all factors relevant to the circumstances of the case.

3.3 Are there other causes of action for trade marks (eg dilution)?

According to article L 713-2-b) of the IPC, the deletion or modification of a duly affixed trade mark constitutes trade mark infringement.
According to article L 713-5 of the IPC, any person who uses a mark enjoying repute for goods or services that are not similar to those designated in the registration shall be liable under civil law if such use is likely to cause a prejudice to the owner of the mark or if such use constitutes unjustified exploitation of the mark.
Transfer of the property of a mark may be claimed if the trade mark was registered fraudulently by a person who had no right over the trade mark.
Remedies may be obtained on general civil liability grounds if a trade mark is damaged as a result of acts which are not listed in the IPC (eg damage to the trade mark image).

3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?

Well established case law considers that the use of a mark in relation to identical or similar products or services, for whatever reason and in whatever manner, constitutes trade mark infringement.
Therefore, under French law, a trade mark may be enforced against any type of distinctive sign, such as a company name, a trade name, a sign board, a domain name etc.
The Céline judgment, rendered on 11 September 2007 by the ECJ (C-17/06) will have an impact on French case law as the European Court has ruled that use of a mark as a company or trade name does not constitute per se trade mark infringement in the sense of article 5(1) and 5(2) of the EC directive on trade mark law, unless such use results in the creation of a link between the trade mark and the third party’s products.
However, similar results could be obtained on the ground of general civil liability law.

3.5 On what grounds can a trade mark be invalidated?

A trade mark may be invalidated on absolute grounds of invalidity, such as:

if the mark is not a sign capable of being registered as a trade mark;
if the mark lacks distinctive character;
if registration of the sign as a trade mark is prohibited by reason of its being excluded by article 6 ter of the Paris Union Convention (notably flags), of its being contrary to public order or decency and of its being deceptive for the public.

A trade mark may also be invalidated on relative grounds of invalidity, ie if it infringes prior rights, such as:

a prior trade mark;
a company name, if there is a likelihood of confusion;
a trade name or a signboard known in entire France if there is a likelihood of confusion;
a protected designation of origin;
a copyright;
a prior registered design or model;
a personal right, such as the name or the image of a person; or
the name, image or renown of a geographical entity.

A trade mark may be revoked if after registration, it becomes generic or deceptive.

3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?

A trade mark may be revoked if the owner has, without good reason, not genuinely used it, for an uninterrupted period of five years.
Very recently, the ECJ ruled that each member state has to decide what the point of departure of the five year period is, according to its own procedural laws. French case law considers that this period starts from the publication date of the registration of the trade mark.
Revocation for lack of use may only be decided by a court. If the owner starts running the trade mark after the expiration of the five year period, such exploitation will prevent the revocation of the mark, unless it was started less than three months before the launching of the revocation action, while the owner was aware that such a revocation action was likely to happen.
Genuine use means that the mark must be used as a trade mark (and not as a trade name for instance). There is no requirement of a minimum level of use: the assessment is conducted on a case-by-case basis. The mark is considered to be genuinely used if it is used by a third party with the consent of the owner. It is also considered to be genuinely used if the sign used is slightly different from the registered mark.
The trade mark is revoked only for the products and services for which genuine use has not been proven. The owner may avoid revocation if he proves that he had good reason not to run the mark. These obstacles must not originate from the trade mark owner.

3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?

For his defence, the alleged infringer may put forward the invalidity of the trade mark and/or the absence of reproduction or imitation of the mark or of likelihood of confusion.
He may also put forward the defence that he has used the trade mark for products which were put on the market in the European Economic Area by the owner or with his consent (European exhaustion of rights principle).
The alleged infringer may also bring forward a series of defences listed in article L 713-6 of the IPC: (i) use as a company name, trade name or signboard when such use is either prior to the trade mark registration or is made by a third party acting in good faith and using his own family name; (ii) necessary reference to indicate the destination of a product or service, notably as accessory or spare part, provided there is no confusion as to its origin.

3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?

As regards trade mark right and antitrust rules, French case law is in line with EC case law and regulations.
French law considers that the enforcement of a trade mark may not be considered as violating competition law for the mere reason that the trade mark owner enjoys a monopoly. However, competition law may prohibit certain types of trade mark right enforcement which may amount to an abuse of dominant position.
For instance, there has long been a divergence between the Commercial and the Criminal Chambers of the Supreme Court as regards selective distribution networks. Whereas the Commercial Chamber tends to consider that the owner of a trade mark may enforce his trade mark rights against a third party who markets marked goods outside a legal selective network, the Criminal court tends to consider that such third party does not infringe the trade mark.

3.9 Can a court only partially invalidate a trade mark?

A court may invalidate a trade mark in part. In this case, invalidation is pronounced only for certain products and services.

3.10 Is it possible to amend a registered trade mark during a lawsuit?

The owner of a trade mark may relinquish it at any time for all or part of the designated products or services. However, he cannot modify the mark or add new products or services.
It results from this that the trade mark owner may amend the trade mark during a lawsuit. However, such amendment may only consist in the relinquishment of products or services. The alleged infringer may not be adversely affected by such modification.
Such relinquishment shall be effected in writing with the National Institute of Industrial Property and shall take effect on the day of its publication.

3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder, or for some other reason (eg expiry of time limit)?

The grounds on which an otherwise valid trade mark can be deemed unenforceable are:

exhaustion of rights inside the European Economic Area (Art. L 713-4 of the IPC);
valid defence of the alleged infringer (see above question 3.6);
statute of limitation (three years starting from the date of the infringement); and
tolerance (the owner of a prior right is barred from claiming cancellation of a subsequent trade mark if the latter was registered in good faith and he has tolerated the use of it for at least five years).

3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?

A trade mark holder may not bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts.
However, the French Supreme Court recently ruled in a copyright related matter that if the copyright infringement has failed on the ground that the claimant has no proprietary right, he may bring a subsidiary claim based on unfair competition for the same set of claims.

4. Parties to Litigation

4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?

Article L 716-5 of the IPC provides that infringement proceedings shall be instituted by the owner of the trade mark.
However, the exclusive licensee may, except as otherwise stipulated in the licensing contract, institute infringement proceedings if, after notice, the owner of the trade mark does not institute such proceedings himself.
Any licensee is entitled to take part in the infringement proceedings instituted by the trade mark owner in order to obtain compensation for the loss he has personally sustained (on the ground of unfair competition).
Case law generally considers that the licensee needs to be registered to sue, but this rule has become less clear recently.
Each joint owner may initiate infringement proceedings for his own benefit, but he must notify the other joint owners under penalty of the action to be held inadmissible.

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?

French trade mark law does not contain any provision relating to declaratory judgments on non-infringement.

4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?

It results from articles L 716-9 and L 716-10 of the IPC that the persons who may be sued for infringement are those, save consent by the trade mark owner:

importing, exporting, re-exporting or transporting goods bearing a counterfeited trade mark;
producing industrially goods bearing a counterfeited trade mark; and
giving instructions for the committing of the offences described above;
with the view to sell, supply, offer for sale or rent goods bearing a counterfeited trade mark. And those:
detaining unduly, importing, exporting, offering for sale or selling goods bearing a counterfeited trade mark;
reproducing, imitating, using, affixing, suppressing or altering a trade mark in violation of the rights conferred by the mark; and
knowingly supplying a product or service other than the one requested under a registered trade mark.

The trade mark owner may sue all or any of the alleged infringers, be they individuals or corporations. The company directors may only be sued if they have committed a personal fault which may be separated from their functions.

4.4 Is it possible to add or subtract parties during litigation?

It is possible to add parties during a litigation provided there is a sufficient link between the action brought against the added party and the initial action.
It is also possible to subtract parties, but the party whose subtraction is envisaged must give his consent if he has already filed a brief in answer to the claim.

5. Enforcement Options

5.1 What options are open to a trade mark holder when seeking to enforce its rights in your country?

When seeking to enforce his rights, the trade mark holder may either try to stop the infringement by direct negotiations and an amicable settlement agreement, or go to court or, if the defendant agrees, refer the case to arbitration or mediation.

5.2 Are criminal proceedings available? If so, what are the sanctions?

Trade mark infringement being both a criminal and civil offence, trade marks may be enforced either in criminal or civil courts under articles L 716-9 to L 716-14 of the IPC.
Criminal actions are brought before the Tribunal correctionnel (Criminal court). The alleged infringer’s bad faith must be proven. In practice, criminal proceedings are only initiated when the infringement is blatant and the case clear cut. Trade marks holders use this track when they want to set a public example.
The sanctions are up to four years of imprisonment and a €400,000 fine. The penalty is raised to five years of imprisonment and a €500,000 fine if the infringement was committed by an organised gang. In the event of repetition of the infringement, or if the offender is or has been contractually bound to the aggrieved party, the penalties involved shall be doubled.
The court may order the closing down of the entity which has served to commit the infringement.
The guilty parties may in addition be deprived, for a period not exceeding five years, of the right to elect and be elected to commercial courts, chambers of commerce and industry and professional chambers and to join conciliation boards.

5.3 Are border measures available?

French trade mark law provides for border measures with proceedings allowing a trade mark owner to apply to Customs for them to seize goods bearing signs infringing his trade mark.

5.4 To what extent are courts willing to grant cross-border or extra-territorial injunctions?

There is little French case law concerning cross-border injunctions, but it shows that French courts are not adverse to granting cross-border or extraterritorial injunctions.

5.4.1 French decisions having issued cross-border injunctions

The Paris Commercial court has granted a preliminary injunction authorising a seizure in Italy in a registered design infringement case. The defendants were Italian and French and the alleged infringement had taken place both in Italy and France.
The following year, the Paris Court of Appeal ruled on a software infringement case which had taken place in Spain, even though no infringement had taken place in France. The French court held the French defendants liable on the ground of the Spanish copyright law of 1879.
In 1999, the Paris Tribunal de Grande Instance issued an injunction aimed at preventing French and British publishers from publishing Asterix books in the United Kingdom.
To the best of our knowledge, there is no similar decision relating to trade mark infringement.

5.4.2 Enforcement in France of cross-border foreign injunctions

French courts enforce foreign cross-border injunctions relating to patents.
Moreover, the Paris President of the Tribunal de Grande Instance rejected an action aimed at preventing the effect of a foreign cross-border injunction in France. The defendant, against whom a cross-border injunction had been issued by the court of The Hague in relation to certain products, had petitioned the Paris court in order to obtain an authorisation to keep on marketing such products in France. When dismissing the action, the French court stressed that said action had been launched exclusively in order to prevent the effect of a foreign court’s decision and that they were not entitled to rule on whether such foreign court’s jurisdiction was justified or whether its injunction was well-grounded.
This case law shows that a French court would probably not be opposed to enforcing cross-border injunctions in a trade mark-related matter.

5.4.3 Prospective thinking on the French approach to cross-border injunctions in trade mark-related matters

It is likely that, should they be called upon to grant cross-border injunctions in trade mark infringement cases, French courts would apply the rules set up by the European Court of Justice in the Fiona Shevill case and would only grant extraterritorial measures if their jurisdiction was grounded on the defendant’s domicile. The Cour de Cassation has indeed already applied the Fiona Shevill rules in a copyright infringement case.

5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?

In a decision which has attracted much professional attention, the Paris Tribunal de Grande Instance refused to stay the proceedings in a ‘torpedo’ patent related case. The solution might be transposed to trade marks.
In this case, the German and Italian defendants had launched an invalidity action and a declaratory action on non-infringement in Italy, immediately after the patent holder had initiated saisie-contrefaçon proceedings in France.
When the patent holder filed for infringement in Britain, Germany and France, the defendants claimed that the proceedings should be stayed until the end of the Italian proceedings.
The Paris Court grounded its refusal to stay the proceedings on the consideration that ‘the writ of summons delivered by the defendants before the Court of Milan shows that they made use of the European civil proceedings rules, in order to block the infringement action launched against them in France, by launching in Italy, a declaratory action on non-infringement of the Italian part of the European patent. (…). It cannot be seriously denied that such use of the European civil proceedings system constitutes a fraud, since the principal aim of such system is to avoid the issue of contradictory decisions by the courts of two contracting states in identical or connected matters, and not to enable a party to wilfully block a legal action for several years even if it serves its personal interests’. (free translation)
It is unlikely that such position may still be sustained in the light of the recent ECJ rulings on interpretation of the Brussels Convention in the Gasser/Misat and Turner/Grovit cases.
The former judgment ruled that a court in a contracting state may not grant a refusal to stay proceedings, on the grounds that the duration of proceedings before the court first seized are supposedly excessive. The second one condemned the English practice of ‘anti-suit injunctions’ (ie injunctions by which a court prohibits a party from commencing or continuing legal proceedings before a court of another contracting state), ‘even where that party is acting in bad faith with a view to frustrating the existing proceedings’.

5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes? How widespread are ADR methods and in which sectors? If arbitration is available to assess invalidity, will your Trade Mark Office recognise and execute an arbitral award declaring a trade mark invalid?

Alternative dispute resolution methods such as arbitration or mediation are available provided the parties agree to use them. These methods are not widespread as regards trade mark related matters but there is much talk in France at the moment for encouraging them.
Alternative dispute resolution may not rule on the validity of the trade mark, which may only be decided by a court.

6. Procedure in Civil Courts

6.1 What is the format of trade mark infringement proceedings?

The procedure in a civil trade mark infringement case is as follows:

6.1.1 Commencement of proceedings

When the plaintiff chooses to initiate civil proceedings, he must serve a writ of summons on the alleged infringer and file the writ with the Tribunal de Grande Instance for entry on the case list.

6.1.2 Conduct of proceedings

Once the writ of summons has been referred to the Court, the parties exchange their claims, arguments and lists of supporting documents under the supervision of one judge of the Court who is in charge of setting the calendar and determining certain incidental procedural matters (Juge de la mise en état). According to Decree 2005/1678 of 28 December 2005 on civil proceedings, which came into force on 1 March 2006, the judge should set the date of the closure of the debates and the date of the oral hearing at the beginning of the proceedings.

6.2 Are disputed issues decided by a judge or a jury?

There is no jury in civil proceedings. Disputed issues are always decided by judges.

6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses? To what extent is survey evidence used (eg to support acquired distinctiveness, likelihood of confusion)? What is its relevance in proceedings (eg party allegation, evidence)? Who decides which consumers are questioned in the survey (eg the court, court expert)? What level of cost should one expect to incur to carry out a survey? Are these costs recoverable from the losing party?

In civil cases, the evidence which is produced usually consists of documents and, when necessary, affidavits.
French judges do not put much faith in documents emanating only from one party without any objective elements to corroborate them. This is why witnesses and private experts are rarely heard in court and why depositions and affidavits are much less abundantly submitted than in certain other countries.
Courts rarely appoint experts except for the valuation of the damages. The expert’s report, though not binding on the judge, generally has great weight.

Survey evidence
Survey evidence is admitted when certain facts must be proven such as the perception of the trade mark by the public (for instance, to prove reputation or to prove a likelihood of confusion).
Generally these surveys are initiated by the parties themselves and carried out by independent survey institutes which are paid by the party who orders the survey. The costs will depend on the extent of the survey.
The courts will be all the more willing to accept survey evidence if the survey seems impartial.

6.4 Is evidence obtained for criminal proceedings admissible in civil proceedings, and vice versa?

Evidence obtained in criminal proceedings may be used in civil proceedings and vice versa.

6.5 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?

Pre-trial discovery does not exist in France.
Under article 9 of the Code of Civil Proceedings (CCP), each party must provide evidence of the facts necessary for the success of their claims. Articles 15 and 132 of the CCP provide that the parties must exchange their evidence within a reasonable period of time before the hearing of the case. A party is supposed to spontaneously supply his evidence. The parties are not required to provide evidence which might be detrimental to them. If a party withholds a document, the judge may, at the request of the other party, order its production if he considers that such evidence is relevant to the ruling of the case (article 133 of the CCP). Third parties may also be ordered to produce any relevant documents. Failure to produce the documents may result in a penalty fine. However, it should be emphasised that if a party fails to request information from a third party, the judge cannot, as a rule, order the production of documents. Therefore, the judge will rule on the basis of the available information.
There exists, besides, a mechanism called ‘saisie-contrefaçon’ which enables the trade mark holder to gather evidence of the infringement (see below question 8.3).

6.6 What level of proof is required for establishing infringement or invalidity?

There is no specific level of proof required for establishing infringement or validity. Infringement may be proven by any means.

6.7 How long do trade mark infringement proceedings typically last? Is it possible to expedite this process?

Proceedings in the Tribunal de Grande Instance, from the date of the writ of summons to the oral hearing, last generally for nine months to one year, depending, however, on the complexity of the facts and the number of cases pending before the court.
If the matter requires urgency, it is possible to expedite this process by using a procedure with a set date which will last from two to five months. However, the plaintiff will have to communicate all his evidence at the beginning of the proceedings and the defendant may hold his brief in response up to the hearing.

6.8 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?

The defendant may delay the proceedings by petitioning the judge for the postponement of the dates set by the procedural calendar. However, this may become difficult given the provisions of new Decree 2005/1678 on civil proceedings (see above question 6.1).
The defendant may try to raise incidental claims which will delay the examination of the case on the merits.
The defendant may try to use European civil proceedings rules (such as torpedoes). The success of such tactics may not be predicted (see above question 5.5).
To counter delaying tactics, the plaintiff may show that the defendant is acting in bad faith and ask the judge to refuse postponement of the calendar and to maintain the initial closure date. He may also petition for the dismissal of the request to stay the proceedings.

7. Final Remedies

7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?

The remedies available against a trade mark infringer are:

banning injunction against the infringing products, accompanied by an astreinte (daily penalty to be applied if the defendant does not comply with the banning injunction);
destruction or confiscation, in favour of the petitioner, of the infringing products and the devices or means specifically intended for committing the infringement;
monetary remedies (damages);
publication of the judgment; or
order for the provisional enforcement of the judgment notwithstanding the appeal.

7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?

The final banning injunction normally applies only to the defendant.
However, depending on how such injunction is drafted, it may have the effect of obliging the defendant to recall the products that are still on the market, which may have an impact on the infringer’s supplier or customers, even though they were not party to the lawsuit. If such a measure is ordered and the judgment may still be reversed, the defendant may try to request that the trade mark owner be ordered to post security pending the final judgment.

7.3 What monetary remedies are available against a trade mark infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?

7.3.1 Who is awarded monetary remedies?

The trade mark owner (or the exclusive licensee acting in the place of the trade mark owner) is awarded damages. If the action is brought only by one of the joint owners of a trade mark, he is compensated in proportion to his property rights.
The licensee whose licence has been duly registered with the French Trade Mark Register may ask for damages in order to compensate his own injury which results from the commercial loss and the unfair use by the infringer of its promotional investments.

7.3.2 Valuation of monetary remedies

The basic principle of compensation under French law is that the aggrieved party should be compensated such as to be replaced in the situation where he would have been placed without the infringement. Such party is entitled to full compensation for his loss, but no compensation beyond his loss.
As a result, punitive damages are not available under French law. The infringer will not have to give back to the trade mark holder the profits he made through the infringement, if these profits are higher than the actual loss.
Valuation of the loss is entirely left to the courts’ discretion. The courts may appoint an expert to assess the damages or may grant a lump sum when the case does not justify the expense of an expert.
French law considers that damages should compensate for the loss actually suffered by the plaintiff and the profits he has been deprived of.

Loss suffered
The loss of the advantages attached to the monopoly
Under article L 713-1, the right in a trade mark is a property right. Therefore, any violation of the trade mark causes injury to the owner, even if the infringement has not resulted in any commercial loss (for instance if the infringing products have not been marketed).
It must be noted that because an ordinary licensee is not in a monopolistic position, he cannot claim for compensation of the loss of the advantages attached to the monopoly.

Depreciation of the value of the trade mark
Infringement may cause depreciation in the image of the product if the infringing product is of lower quality.

Loss sustained as a result of competition from the infringer
Infringement may lead the trade mark owner to sustain loss in order not to be evicted from the market: this includes situations where the trade mark holder is forced, in order to remain competitive, to lower the price of his goods, to increase his advertising costs or to lower the rate of the licence fees.

Lost profits
Lost profits are constituted by the profits the trade mark holder would have made if the trade mark had not been infringed. Assessment is not easy to do, which is why courts often appoint experts. In any case, the result will depend on whether the trade mark is exploited or not.

If the trade mark is not exploited
Lost profits correspond to the royalty fees the trade mark owner may have obtained in consideration for granting a licence to the infringer.
The indemnity fee is fixed on the basis of the owner’s own business practices and/or general practice in the relevant business sector. It is applied to the revenues generated by the sales of the infringing goods.

If the trade mark is exploited
Sometimes, the rate of the plaintiff’s sales decreased at the same time and in the same proportion as the infringer’s rose, which is very convenient to assess the amount of lost sales. However, cases are rarely as clear-cut as this in real life. This is why assessment methods have been devised.
Assessment implies the taking into account of three criteria: the amount of the infringement, the lost sales rate and the lost profit rate per unit.

The amount of the infringement
The ‘amount of the infringement’ notion refers to the amount of infringing goods sold by the infringer on the relevant territory. Because of prescription rules, the court may not take into account the sales dating back to more than three years before the action was launched.
The assessment will take into account that the trade mark may not constitute the essential part of the value of the infringing product.

The lost sales rate
The court then estimates the proportion of lost sales which may be ascribed to the infringement. This is aimed at taking into account the eventuality that, even though infringement had not occurred, the plaintiff might not have sold as many marked products as the infringer. This could be the case for instance if the infringer has better production or market penetration capacity than the plaintiff.

The lost profit rate per unit
The lost profit rate per unit corresponds to the plaintiff’s profit margin rate on each of the marked products. The lost profits are assessed by applying the lost profit rate per unit on the plaintiff’s lost sales.
If the trade mark is exploited by a licensee, this loss profits assessment method only applies to the licensee’s lost profits. Lost profits for the trade mark owner correspond to the royalty fees he may have obtained from his licensee if the latter’s profits had not been reduced by the infringement.

8. Preliminary relief

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?

Preliminary relief is available under the form of a mechanism called ‘référé-interdiction’ governed by article L 716-6 of the IPC. This mechanism is independent from the general interim relief system which is contained in the CCP. A preliminary relief action launched in a trade mark infringement case has to be introduced in compliance with article L 716-6 of the IPC. Any other procedure would be held as null and void.
Article L 716-6 imposes three conditions in order to obtain preliminary relief: (i) the preliminary filing of a lawsuit on the merits of the case; (ii) initiated shortly after the trade mark holder became aware of the infringement; and (iii) which appears serious.
The courts have had occasion to rule that these criteria are necessary but sufficient to obtain preliminary relief. Therefore, criteria belonging to general preliminary relief proceedings, (such as urgency or the fact that the patentee is not likely to suffer irreparable damage unless urgent relief is granted) are not applicable to the specific trade mark interim relief procedure.

8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?

There are no ex parte preliminary injunction proceedings under French law.
However, ‘saisie-contrefaçon’ may constitute a type of ex parte relief when the judge orders the actual seizure of the infringing goods (see below question 8.3).

8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?

Saisie-contrefaçon is an ex parte procedure described in article L 716-7 of the IPC, by which the trade mark owner requests the court to issue an order authorising a search and seizure of a few samples of the allegedly counterfeiting items or devices.
The request is made by the trade mark owner or its exclusive licensee through an attorney to the President of the Tribunal de Grande Instance.
The President is obliged to issue, either immediately or shortly afterwards, on the mere basis of sufficient evidence of the validity of the trade mark, an order of seizure (ordonnance) allowing the trade mark holder to appoint a bailiff to obtain evidence at the alleged infringer’s premises.
Usually, the trade mark holder is only authorised to have two samples of the counterfeiting products seized, the bailiff writing a full description of the products in his statement (saisie descriptive). However, the judge may also order a seizure of the entire stock of the allegedly counterfeiting products (saisie réelle). The President may also 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 infringer (invoices, order forms or bills of lading, either on paper or from computer hard drives…). The bailiff may be assisted by a person skilled in the domain covered by the trade mark. Such person may not be an employee of the patent holder but he may be the latter’s trade mark agent. The bailiff must remain strictly within the scope of the President’s order and not seize documents which are not related to the allegedly infringing products, on pain of invalidation of the saisie.
It should be noted that certain judges, especially in Paris, are reluctant to authorise the seizure of the entire stock of goods since this may amount to confiscation. A plaintiff seeking seizure of the entire stock may be required to post security to compensate any damage suffered by the defendant if it subsequently appears that the seized products are not infringing.

8.4 Can the defendant put the validity of a trade mark at issue in preliminary injunction proceedings?

The defendant may put the validity of the trade mark in issue in ‘référé-interdiction’ proceedings.
He will generally do so, in order to show that the action fails to meet the likelihood of success criterion. If the judge considers that there is a serious risk of the trade mark being invalidated, he will not grant the preliminary injunction.

8.5 What is the format of preliminary injunction proceedings?

The President of the Tribunal de Grande Instance has jurisdiction.
The procedure is initiated by serving a writ of summons on the defendant.
The President has the power to (i) enjoin the defendant under penalty from engaging in or continuing the allegedly infringing acts; or (ii) subject the continuation of such acts to a monetary deposit by the defendant, in order to compensate the plaintiff’s loss if the infringement action succeeds.
Moreover, the trade mark owner may be authorised to seize the entire stock of goods by an order in summary proceedings even though he has been denied an ex parte order to do so. The defendant may also be ordered to recall the allegedly infringing products.

8.6 To what extent are documents, affidavits, witnesses, survey evidence, and/or (court-appointed or private) experts used in preliminary injunction proceedings?

The evidence usually consists of documents and, when necessary, affidavits.
French judges do not put much faith in documents emanating only from one party without any objective elements to corroborate them. This is why witnesses and private experts are rarely heard in court and why depositions and affidavits are less abundantly submitted than in certain other countries.
Courts do not appoint experts in ‘référé-interdiction’ proceedings. If an expert is needed, it means that the case is non obvious and the judge would dismiss it on the ground that the plaintiff fails to prove his action is likely to succeed.

8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?

There is no specific level of proof required for establishing infringement or validity in preliminary injunction proceedings. Infringement may be proven by any means.

8.8 How long do preliminary injunction proceedings typically last?

The procedure is expedited and the President will render his order within about one month.
If the judge finds that the case is not suited for preliminary injunction proceedings (for instance because of its complexity), but that the matter is urgent, he may directly fix a date for hearing the case on the merits (‘passerelle’). In principle, the judge who has ruled in the preliminary injunction proceedings should not hear the case on the merits.

8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?

The patent holder must imperatively file his lawsuit within 15 days from the date of the seizure, failing which the seizure becomes null and void. The defendant may petition to obtain the withdrawal of the saisie if he has reason for that.

9. Appeal procedure

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?

In main proceedings, an appeal may be filed with the Court of Appeal by any of the parties within a month after the judgment of the Tribunal de Grande Instance has been served on that party. The period is extended for an additional two months when the party is domiciled in a foreign country.
The appeal procedure usually prevents the enforcement of the judgment, unless the latter has expressly provided for immediate enforcement.
In preliminary injunction proceedings, the order issued by the President of the Tribunal de Grande Instance is also subject to appeal within a month after the judgment has been served on that party. However, such an order is generally provisionally enforceable irrespective of the appeal.
Judgments of the Court of Appeal may be reviewed by the Cour de Cassation, but only on the basis of violation of law since the French Supreme Court does not rule on the facts of the case. Instead, it reviews the manner in which the rule of law was applied to those facts. The appeal to the Supreme Court does not suspend the enforcement of the judgment of the Court of Appeal.

9.2 How long do appeal proceedings typically last?

Appeal proceedings typically last from 18 months to two years.

10. Litigation costs

10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?

A trade mark infringement procedure at the first instance court level costs between €10,000- €100,000.
Such costs mainly consist in attorneys’ (which are generally billed on an hourly basis) fees to which may be added experts’, translators’ and local attorneys’ fees, if necessary.
The costs depend upon the complexity of the facts and legal arguments, the number of seizures, the initiation of summary proceedings in addition to a lawsuit on the merits, the necessity of hiring one or more attorneys, the urgency, the follow-up and difficulties of the enforcement of the decision.
Costs are roughly similar at the appeal level.

10.2 Are costs recoverable from the losing party?

The court usually awards the plaintiff with damages under article 700 of the CCP which covers a portion of the recoverable costs. Experts appointed by the courts are generally paid by the defeated party.
It should be noted that this amount is routinely underestimated even though the Parisian courts seem to be aware of the problem and to try to give better compensation to the winning party. Providing the court with invoices helps to obtain better compensation.

11. Forthcoming Legislation

11.1 What are the important developing and emerging trends in your country’s trade mark law?

There is no significant developing and emerging trend in French trade mark law.
However, it must be noted that the Decree on civil proceedings which entered into force on 1 March 2006, introduced new procedural rules which should have an impact on day to day practice. It is however too early to assess their effects.

Patent legislation in the pipeline
France has not yet implemented EC Directive 2004/48 of 29 April 2004 on the enforcement of intellectual property rights. Even though the mechanisms advocated by the Directive (saisie-contrefaçon, specific interim relief…) already exist under French law, full implementation necessitates the amendment of the IPC on several procedural points.
The implementation deadline was 29 April 2006. A bill was officially presented before the Ministers’ Council on 7 February 2007, The French Senate voted on such bill on 19 September 2007 and the French Assemblée Nationale voted on it on 2 October 2007. The law should be fully passed by the end of October 2007.

12. Useful references

12.1 Please identify any useful works of reference relating to trade mark law and trade mark litigation in your country, including useful websites.

Textbooks
There are very few recent textbooks relating specifically to French trade mark law. Reference will therefore comprise general industrial property textbooks in which a part is dedicated to trade mark law.
Le nouveau droit français des marques, Paul Mathély, Ed. JNA, 1994
Droit de la propriété intellectuelle, Patrick Tafforeau, Gualino Editeur, Coll. Manuels, 2005
Droit de la propriété industrielle, J. Schmidt-Szalewski and J.L. Pierre, Litec, 3rd ed. 2003
Droit de la propriété industrielle, F. Pollaud-Dulian, Montchrestien, ed. 1999
Jugements et arrêts fondamentaux de la propriété intellectuelle, Jean-Luc Piotraut and Pierre-Jean Déchristé, TEC & DOC, 2002
Saisie-Contrefaçon, Pierre Véron, Dalloz, 2nd ed. 2005.

Periodicals
Propriété Industrielle Bulletin Documentaire, La Documentation Française (bimonthly)
Propriété industrielle, Editions du Jurisclasseur (monthly).

Encyclopaedia
Jurisclasseur Commercial – Marques (quarterly).

Websites
www.legifrance.gouv.fr: French official site for legal information: gives access to all French legislation, to the case law of the Cour de Cassation and a selection of lower courts’ case law.
www.inpi.fr: Website of the French Industrial Property Office.
www.irpi.ccip.fr: Website of the IRPI (an institute specialised in research on intellectual property).