The French trade mark regulations include adequate protection for the holder of a trade mark, whose rights have been infringed. Preliminary measures, such as seizures, but also legal remedies and different penalties (civil and criminal) are offered by the French "system".
1. SANCTIONS FOR VIOLATION OF A RIGHT
1. Definition of infringement
Trade mark infringement is sanctioned in France by criminal law and civil law.
(a) Criminal law
- Direct infringement
Under French trade mark law, infringement acts are punished even if the cause is unknown. These infringement acts may be reproduction, imitation, utilisation, affixing, deletion, alteration of a trade mark in violation of the registered trade mark rights. The import or export of products covered by a counterfeit trade mark is also sanctioned in France.
- Indirect infringement
Infringement acts, such as the sale, offering of sale, providing or offering to provide products or services covered by a counterfeit trade mark, are punished when they are knowingly committed. Delivering a product or providing a service other than that which is requested under a registered trade mark is also prohibited.
(b) Civil law
Infringement is the result of any harm brought to the trade mark ownership; it does not matter whether or not there is a risk of confusion. For instance, the unauthorised reproduction of a trade mark for the same products or services as those described in the trade mark registration list, constitutes an infringement, even though the breach does not entail a risk of confusion. Furthermore, the unauthorised reproduction of a trade mark for similar products or services as those described in the registration constitutes an infringement.
A decision rendered by Court of Appeals of Paris in September 6, 2000, illustrates this point: the trade mark "CIA" was filed and registered for laundry, perfume and cosmetic products. The company, C&A France, licensee of the "C&A" trade mark, sued the owner of the trade mark "CIA" for infringement. The court conceded to this claim, considering that the signs were similar and intended for similar products. It reaffirmed that the essential purpose of the mark was to guarantee to the consumer the identity of the origin of the trade marked product, by allowing him/her to distinguish it from other products without confusion. Henceforth, the risk of confusion exists when the public may believe that the products come from a same company. The court thus decided that the similarity of the signs and products constituted a risk of confusion and that the "CIA" trade mark was an infringement on the "C&A" mark.
Another decision, rendered by the First Instance Court of Lyon in November 15, 1999, concerned the company, INTEL, owner of the trade mark "PENTIUM" for computers and microprocessors, which sued a company for infringement because it had filed, at the French Industrial Property Office, the "PENTIUM" trade mark to be used for software. Intel's claim was granted; the judges affirmed that harm was done to the trade mark right by the mere existence of its reproduction, regardless of the good faith of the infringing party. They therefore considered that the filing of the trade mark that had already been filed constituted its reproduction intended for similar products. Finally, they affirmed that the risk of confusion was not a condition of the infringement, but that such a risk existed in this case because of the similarity of the products for which it was intended.
2. The infringement action
Whereas the defendant may be any individual or legal entity that uses the trade mark without authorisation, the individuals or entites that may make a claim are the right holder, the co-owner or the assignee, provided that the assignment has been registered and the litigious acts were committed after the recording of the assignment. The exclusive licensee may bring an action following an unsuccessful summons served to the licensor and if not prohibited by a contractual clause.
The trade mark holder may bring an action from the date on which the trade mark applcation is published. The action may nevertheless be brought by the holder of a trade mark application once the certified copy of the application is notified to the alleged infringing party. In this case, the court will have to stay its judgement until the registration is published. The three-year prescription starts on the date of the unlawful act.
The claimant may prove what it alleges with any kind of proof, such as witnesses, written documents, etc. The specific mean of proof offered by French law is the seizure (saisie-contrefaçon), which does not require the hearing of both parties. Seizure may consist in either a real seizure (the alledgedly infringing products are hold by the court) or a descriptive seizure (the bailiff details precisely the facts of the allegedly fraudulent reproduction).
Request is made before the President of the First Instance Court of the place in which the infringement allegedly took place; the court orders an infringement seizure by which the claimant, along with the process server, enters the premises of the alleged infringing party. The process server must ask for the communication of any administrative, technical or financial documents, which prove the infringement and its scope. The claimant must serve a writ of summons to the defendant within 15 days; otherwise, the seizure is rendered null and void.
In a decision rendered in October 9, 2001, the French Supreme Court confirmed that the owner of a registered mark is entitled, by virtue of an order issued by the President of the First Instance Court, to proceed of the effective seizure of the goods that are marked in infringement of his rights.
The president of the court ruling on the matter may also be referred to and rule in a summary proceeding (injunctive relief) in order to temporarily prohibit the continuation of infringing acts or to subordinate the continuation of these acts to the establishment of a guarantee to the benefit of the claimant.
This request may only be granted provided that the action on the merits appears serious and if it is filed within a short time period when the acts become known (no more than 6 months from the discovery).
Two companies sued the company FLEURY-MICHON before the President of the First Instance Court, ruling in a summary proceeding, in order to immediately prohibit FLEURY-MICHON from continuing its infringing acts by imitating a complex trade mark. Stating that the Court must assess the serious nature of the claim on the merits, and therefore, in this case, on the existence of the risk of confusion in the public mind, in rendering its decision, the French Supreme Court considered, in a decision rendered in January 26, 1999, that the action on the merits did not seem serious, given the lack of similarities likely to create confusion in the public mind between the two trade marks. Consequently, the demand for prohibition was not granted.
II. THE DEFENDANT'S MEANS OF DEFENCES
The defendant's means of defence consist of the existence of the right on the trade mark that the claimant is taking advantage of.
1. The judicial forfeiture: action for forfeiture (or lack of use)
Any party (the defendant also) involved in an infringement suit may bring an action for forfeiture when the trade mark is not being commercialised.
The trade mark owner will have to prove a serious, public and continuous use of the trade mark for each product or service covered by the registration. The serious exploitation must have continued for five years.
If the action is successful, the trade mark owner loses its trade mark right from the date of expiration of the 5-year period of non-use. The trade mark will be taken off the national trade mark register and then the sign will be free to be used.
The Courrèges case is a good example to understand the action for forfeiture. The André Courrèges company required from the Supreme Court to confirm that the figurative trade mark (a flower) registered by the Mary Quant company has not been seriously used for 5 years. The Supreme Court rejected the action in October 9, 2001, by considering that Mary Quant company could justify of a public and unequivocal use.
In another decision involving the company Metro-Goldwyn-Mayer, the owner of several trade marks containing the initials "MGM", sued the owner of the trade mark "MGM INTERNATIONAL" for decline of its trade mark, claiming that this trade mark was not used. The First Instance Court of Grenoble, in a decision rendered on May 25, 2000, recalled the condition of a decline and the obligation for the trade mark owner to prove by any means the actual and unequivocal use of this trade mark. It was also considered that the actual use, consisting of establishing a relation between the trade mark and the consumer, did not require affixing the trade mark on the products or services and result from printing out tags, catalogues, advertisements, etc. With regard to these principles, the judges concluded that the trade mark in question had not been used for the legally required period of five years and for this reason, had to be cancelled.
2. Automatic forfeitures: debarment for allowance/tolerance and forfeiture for the trade mark degeneration
(a) the debarment for allowance/tolerance
The trade mark owner may lose its right to file an infringement action if he allowed the "use" of a later trade mark for five years. However, the later trade mark must be registered in good faith.
In a decision rendered in March 7, 2001, the Court of Appeals of Paris applied this rule. Two companies registered the same trade mark "LIVRES EN FETE" for the same products. The company which first registered its trade mark required from the Court to declare null and void the defendant’s trade mark. This request was refused since the trade mark has been registered in good faith and used during a period of five years, and no infringement action was possible.
In the above-mentioned MGM case, the company Metro-Goldwyn-Mayer also put forward the infringement of its trade marks by the trade mark "MGM INTERNATIONAL". The owner of the trade mark in question considered that such proceedings were not admissible since it had acquiesced to its use during a significant period of time (estoppel by tolerance). The judges, after restating the conditions for an estoppel by tolerance, established that after the registration of the trade mark "MGM INTERNATIONAL", Metro-Goldwyn-Mayer sent a registered letter, return receipt requested, to the owner of the trade mark in question asking them to discontinue use of this trade mark. The owner of the trade mark responded to this letter, but it did not bring about any results (neither action nor a response) for more than five years. The court therefore considered that the inaction of Metro-Goldwyn-Mayer rendered its infringement action inadmissible with regard to the "MGM INTERNATIONAL" trade mark.
(b) the forfeiture for the trade mark degeneration
The trade mark owner may automatically lose its right if its trade mark became non-distinctive or likely to deceive the consumer.
Before the First Instance Court of Grenoble, the owner of the trade mark THERMOS, sued three companies for trade mark infringement for selling products using the sign THERMOS. In defence, the latter put forward the decline of the THERMOS trade mark, claiming that it had degenerated and, due to its owner, becomes the customary name in the product business (an insulated bottle). They grounded their argument on the fact that the word THERMOS was in all dictionaries and was defined as an insulated bottle. The judges established, in a decision rendered in September 21, 2000, that the trade mark owner had on several occasions tried to point out that THERMOS was a registered trade mark and that it had actively defended its rights (infringement actions, objections, etc.). Consequently, they considered that the trade mark THERMOS was still valid.
On the contrary, the Paris Court of Appeals rendered a decision on October 19, 2001, admitting the revocation of the trade mark PINA COLADA, insofar as this sign has become the generic appellation of a cocktail and has consequently lost its distinctiveness.
This exceptional decision is justified by two factors the trade mark owner's behaviour. First, he has been considered to be completely passive with respect to the generalized use of his trade mark to designate a cocktail made of alcohol and fruit juice. Furthermore, he has never reacted against the use of his trade mark for a soundtrack, recipe books, Web sites dedicated to cocktails, bar menus, etc. He did not directly intervene and never organised campaigns to inform the consumers of a possible confusion.
3. Cancellation action
Within the context of an infringement action, the defendant may bring, as a counterclaim, a cancellation action when the registered trade mark no longer complies with the legal requirements for trade mark validity conditions (non-distinctive sign, deceptive, illegal sign, etc.). The main result of the cancellation is to make the trade mark right disappear; the trade mark is considered to have never existed. The cancellation judgement will be registered with the national trade mark register. The defendant may also contest the existence of the infringement, challenge of the materialness and/or the intentional nature.
III. PROGRESS AND SOLUTION OF THE ACTION
1. The judge's role
The judge must assess the infringement in consideration of the similarities existing between the trade mark and the allegedly infringing sign.
As an illustration, the owner of the trade mark "TUPPERWARE" sued the owner of the trade mark BETTERWARE in an infringement suit. This decision is interesting since it shows the steps taken by the judge in assessing an infringement. In this decision rendered in June 23, 2000, the Court of Appeals of Paris compared the products and retained what they identified as identical or similar. Next, they compared the two signs by placing them side-by-side and were then able to establish that they contained several similarities, both visually (same number of letters, of which six were identical; three syllables of which the last two were very similar; similar spelling with two central consonants – the "p" in one case and "t" in the other) as well as phonetically. Recognising furthermore the well-known nature of the TUPPERWARE trade mark, they therefore concluded that there was a risk of confusion in the features of the infringement by imitation.
(a) Criminal penalties
The criminal penalties include a maximum of two year jail sentence and a maximum of fine of 152,462 euros, even though such amount is barely imposed by courts. Furthermore, optional penalties may be imposed, consisting of confiscation and/or destruction of the products covered by a counterfeit trade mark, and the partial recovery of expenses.
(b) Civil penalties
The civil penalties include prohibition of the infringement, confiscation and/or destruction of the products covered by a counterfeit trade mark, as well as compensation for the damage suffered by the trade mark owner (usually from 7,700 to 76,300 euros).
Compensation depend on the actual loss suffered by the claimant; normal damages awarded approximate from 8,000 to 16,000 euros, depending on circumstances. For instance, in a case relating to the GUINOT company, which sold products bearing the same trade mark "PEAU NEUVE" as the CLARINS company, the Supreme Court, in a decision rendered in May 17, 2001, granted 37,090 euros to the claimant.
Publication of the judgment at the expense of the losing party, which usually costs from 1,600 to 15,300 euros, may also be obtained, and the defendant may be ordered to pay in partial expenses relating to the infringement action (the costs provided by Article 700 of the French Civil Procedure Code), usually from 800 to 4,600 euros.
(c) Lawyers' fees and duration for each action
According to a study published in May 2000 to the request of the French Ministry of Economy, Finance and Industry, consisting in the comparison of litigation costs for industrial property matters in various countries (the USA, the UK, Germany, Spain, Netherland and France), an action before the French First Instance Court is usually from 6,900 to 22,900 euros. Such action often lasts from ten months to one year and a half.
Lawyer's fees in France depend on the action that is chosen. For an injunctive relief (which lasts between 15 days and one month), the cost is usually from 3,100 to 9,200 euros. For a seizure, the cost is approximately between 2,300 and 4,600 euros, for a duration of two to fifteen days.
Lawyers' fees for an appeal procedure, lasting between one year and half and two years, will cost from 7,700 to 18,300 euros.
If the infringement suit is filed before a court located in the provinces, the lawyer concerned shall receive attorney's fees usually amounting to between 500 and 1,600 euros.
In the case of an infringement seizure the civil processor's fees run usually from 1,600 to 2,300 euros.
Written by Isabelle Leroux and Audrey Yayon-Dauvet. First published in issue no. 147 of Trademark World.