General Principles

Principle

Proof of infringement may be established by any means (L615-5 CPI).

Burden of Proof

The burden of proving infringement lies with the proprietor of the rights under the principle actori incumbit probatio (9 CPC, as infringement is a matter of fact) (Regional Court of Paris, 3rd chamber, 2nd section, 29 November 2013, or Court of Appeal of Paris, Pole 5, 2nd chamber, 21 December 2012).

The burden of proof may exceptionally be reversed, at the court’s request, in the case of a process for obtaining a product (L615-5-1 CPI): the court may require the defendant to prove that the process used to obtain a product is different from the patented process (this request is at the court’s discretion, Regional Court of Paris, 3rd chamber, 1st section, 9 March 2005).

Purchase Inspection

A bailiff may be commissioned to carry out a purchase inspection.

Caution

Be aware that it is risky to ask the bailiff to make the purchase themselves, as this may result in the evidence being deemed inadmissible due to potential entrapment (i.e., provoking the infringement, Court of Appeal of Paris, 4 December 1862 or French Supreme Court, Civil Chamber 1, 20 March 2014, No. 12-18518).

Furthermore, the bailiff cannot act without disclosing their capacity (Article 17 of Decree No. 56-222 of 29 February 1956). Thus, in the case of a purchase inspection, if the bailiff performs the acts themselves, they must disclose their capacity at the time of purchase or when opening an online account (Court of Appeal of Paris, Pole 5, 1st chamber, 27 February 2013).

However, the judge hearing the application may validly authorize the bailiff to withhold their true identity (and delay notification of the order to the seller) until after the relevant observations have been made (French Supreme Court, 2nd Civil Chamber, 4 September 2014, No. 13-22971).

Description of a Purchase Made by a Third Party

Principle

It is nevertheless possible to send a third party to make the purchase, with the bailiff then verifying that the third party entered the store empty-handed and left with the product (Regional Court of Paris, 3rd chamber, 1st section, 31 May 2011). The bailiff may then prepare a descriptive report of the product and place it under seal for future use (Court of Appeal of Paris, Pole 5, 1st chamber, 7 November 2012).

May the Third Party Be the Patent Proprietor?

The third party may indeed be the patent proprietor or one of their employees: the impartiality of the purchaser is not required (Regional Court of Paris, 20 March 2014).

Disguised infringement seizure?

A purchase report is not necessarily a disguised infringement seizure (Court of Appeal of Paris, Pole 5, 1st ch. 7 November 2012), as these are mere material observations and not disguised investigations.

Indeed, the Ordinance of 2 November 1945 on the status of bailiffs provides:

They may, when commissioned by a court or at the request of private individuals, make purely material observations, excluding any opinion on the factual or legal consequences that may result therefrom

Benefit of such reports

Such a report is not necessarily very useful from a commercial standpoint. Indeed, one often tries to avoid suing sellers who could later be used to distribute « non-infringing » products.

However, if the manufacturer’s address is indicated on the box or in an instruction manual, this can be very useful.

Bailiff’s report (outside infringement seizure)

« Physical » report

It may happen that one wishes to have a bailiff’s report drawn up at a trade fair, market, etc., where an infringer is displaying their products.

This may seem like a good idea, especially since Article L615-5 IPC provides that infringement may be proven by any means.

Nevertheless, it is essential to ensure that this report does not turn into a disguised infringement seizure (Court of Appeal of Paris, Pole 5, 1st ch., 7 May 2014). In particular, the bailiff:

  • must remain in a public place and not on the infringers’ stands;
  • must not conduct an investigation (CA Paris, Pole 5, ch. 2, 30 Sept. 2022, Case No. 21/00511);
  • must not question the persons present;
  • may only make material observations;
  • must respect privacy (they may not listen to a conversation the infringer has with a customer on the stand).

Otherwise, the bailiff’s report will not be admissible.

Internet report

It is entirely possible for a bailiff to record observations on a website, for example.

However, such a report must be made with particular rigor and formality. For example, it is necessary to indicate:

  • the different software versions used
  • the computer references (e.g., serial number, etc.)
  • that the antivirus is up to date,
  • that the browsers’ cache has been cleared,
  • the IP address used;
  • etc.

In short, internet reports require particular expertise from the bailiff.

As an illustration, the Court of Appeal of Aix-en-Provence, 2nd ch., 15 September 2016, Case No. 2013/22133 invalidated reports on the grounds that the bailiff had not complied with the AFNOR standard NFZ67-147.

Although not all courts share this view (e.g., « Considering that the AFNOR standard NFZ67-147 […] is not mandatory and merely constitutes a collection of best practice recommendations« , Court of Appeal of Paris, Pole 5, Chamber 1, 27 February 2013), particular caution is advised.

Furthermore, it should be noted that French courts appear inclined to accept bailiff’s reports based on the website http://www.archive.org (the Wayback Machine) (Court of Appeal of Paris, Pole 5, 2nd ch., 4 October 2019, Case No. 17/10064).

Private Expertise

It is entirely possible to conduct private expert assessments on products alleged to be infringing, but such expert assessments cannot fully form the basis of judges’ decisions (violation of the « principle of loyalty of evidence » since this expertise is not adversarial, C. Cass. com., No. 11-28205, 29 Jan. 2013).

They may, however, convince a judge to authorize additional measures.

Infringement Seizures

Principle

Materiality of Infringement

The infringement seizure (L615-5 CPI) is an extraordinary measure under common law, the purpose of which is to establish the materiality of infringement (e.g., reproduction of technical means, objects of the claims of the asserted patent, or possibly the implementation of equivalent means).

Furthermore, the seizure may allow the proprietor to request the judge to order the seized party to produce, possibly under penalty, a document whose existence (but not content) has been proven by the infringement seizure.

Origin of Infringement

The infringement seizure may also allow « proceeding with any useful findings to establish the origin, consistency, and extent of the infringement » (R615-2 CPI).

To Prevent Infringement?

The infringement seizure is not intended to stop infringement: thus, it is not possible to seize all the stocks of the alleged infringer (C. Cass. com. No. 83-14146, 4 Jan. 1985) or the production tools.

History

The decree « relatif aux auteurs de découvertes utiles » of 31 December 1790 established a seizure-confiscation (i.e., which allowed actual seizure of production means and products) that was enshrined in law. A « bond » could be required in exchange for this seizure.

However, due to strong opposition, this seizure was quickly repealed (additional decree of 25 May 1791).

On 5 July 1844, these provisions were reintroduced into law, but the purpose of this seizure was more the preservation of evidence than the confiscation of production means (see the Manuel de l’inventeur, Blétry frères, 4th edition, 1881, which details this law).

Surprise Effect

The seizure is authorized upon petition by the proprietor (i.e., the order is not issued adversarially, as the seized party is not notified (L615-5 CPI).

This is logical since notifying the party in advance would deprive the seizure of its effectiveness: the seized party cannot invoke the fact that they were not notified in advance.

Different types of seizure available: actual seizures / descriptive seizures

The judge may be requested to order (L615-5 CPI):

  • an actual infringement seizure of products (without description),
  • a descriptive seizure with or without sampling (i.e., actual seizure with a description).

An actual seizure may prove indispensable if the object cannot be easily described. In such a case, the judge must only authorize the seizure of a small number of items (C. Cass. com., n°83-14146, 4 January 1985).

It may be advisable to offer payment of a price (or at least a proposal of payment) during the sampling or actual seizure to avoid any deposit.

The order should also provide that at least one of the seized samples may be handed over to the applicant. Otherwise, if a sample were indeed handed over to the latter, the bailiff would be deemed to have committed a fault.

The description made by the bailiff is deemed authentic (propiis verbis) until proven otherwise by an action for forgery (Court of Appeal of Paris, 4th ch., sect. B, 10 December 2004).

Photocopies and photographs are considered modes of description (Court of Appeal of Paris, 4th ch., sect. A, 24 November 2004).

For example, the bailiff is not entitled to request the surrender of documents from the seized party if no actual seizure has been authorized (C. Cass. com., 19 December 2006, n°05-14431).

Place of seizure

Principle

The seizure may take place in any location where evidence of infringement exists (L615-5 CPI).

The seizure may be carried out:

Case of a reseizure

However, if the previous seizure was annulled, it is only possible to reseize from the bailiff or at the court registry the items that were « actually » seized (Court of Appeal of Paris, 4th ch., 20 December 2000), i.e., it is impossible to reseize the report, the descriptions made, the photographs, or the photocopies (C. Cass. com., n°01-10807, 1 July 2003).

Multiple locations and yet-unknown locations

An infringement seizure may be requested in multiple locations simultaneously, potentially in a single request (Cour d’appel de Paris, ch 04, 30 May 2001).

The request may also seek authorization to continue the infringement seizure in any locations under the control of the same persons as those operating in the initial seizure location (Tribunal de Grande Instance de Paris, ch. 03, sect. 02, 21 September 2001), without further specification.

In such cases, the seizure must not be concluded in order to proceed in other locations (C. Cass. com., 21 January 2004, No. 02-14525).

Persons entitled to request an infringement seizure

An infringement seizure may be requested by any person entitled to bring an infringement action (L615-5 CPI).

Thus, the patent proprietor may act, as may the exclusive licensee (provided the license has been recorded in the National Register of Patents prior to the seizure request, Cour d’appel de Rennes, 2e ch. com., 24 February 2009).

The fact that the claimant has recently acquired their rights (e.g., purchase of a patent portfolio) does not prevent them from requesting an infringement seizure for acts occurring prior to the acquisition of those rights (Tribunal de Grande Instance de Paris, 3e ch., 1re sect., order of 17 December 2015, Case No. 15/12229).

The fact that the patent in question is the subject of a dispute regarding its proprietorship does not prevent the current proprietor from requesting an infringement seizure (Tribunal de Grande Instance de Paris, 3e ch., 1re sect., order of 11 February 2016, Case No. 15/15073).

Persons entitled to file the request

The request must be filed by a lawyer (Article 813 CPC, paragraph 1).

The lawyer must be authorized to act before the Paris Tribunal Judiciaire (i.e., be registered with the Paris Bar, e.g., as a postulating lawyer, Tribunal de grande instance de Paris, 3e ch., 2e sect., order of 6 June 2014; Provini et al v. Christophe P. et al).

Competent judge

If no proceedings are pending

The competent judge for patents, and for filing an infringement seizure request, is the President of the Paris Tribunal Judiciaire (L615-5 CPI together with D631-2 CPI together with D211-6 of the Judicial Organization Code).

If proceedings are pending

If proceedings are pending, the competent judge is the President of the chamber to which the case has been assigned (Article 812 of the Code of Civil Procedure, third paragraph, and Cour d’appel de Bordeaux, 1re ch. civ., sect. A, 3 February 2014, Cour d’appel de Paris, Pole 5, Chamber 2, 1 July 2016, Case No. 15/15933, which upheld the first-instance judgment): if the President of the Tribunal Judiciaire signs the request, the seizure may be annulled.

Some had argued that requesting an infringement seizure during pending proceedings was contrary to Directive 2004/48 and the TRIPS Agreement, but the Paris Court of Appeal disagreed with this interpretation (Cour d’appel de Paris, 29 June 2021, Pole 5, Chamber 1, Case No. 20/07030).

Conditions

Patent / Patent application

Patent in force ?

Infringement seizure does not appear to be available on the basis of an expired patent (C. Cass. com., n°09-72946, 14 December 2010).

This principle may seem surprising, as Article L615-5 IPC states that any person entitled to bring an infringement action may request seizure (and given that it is possible to bring an infringement action based on an expired patent, provided that there are non-time-barred acts of infringement).

Foreign patent ?

In principle, there is nothing to prevent the proprietor of a foreign patent from requesting an infringement seizure in France to establish evidence of acts of infringement (Article 7 of Directive 2004/48/EC of 29 April 2004 or Article 24 of the Brussels Convention and/or Article 24 of the Lugano Convention).

This may, however, appear slightly inconsistent with Article L615-5 IPC, as this article presupposes future litigation in France …

Furthermore, it is worth considering whether the provisional measure under Article 7 of Directive 2004/48/EC could constitute an infringement seizure. Indeed, there is much debate as to whether a seizure is a probative or conservatory measure. First, I draw the reader’s attention to the fact that the highest French court (CCass 14 March 2018, Case No. 16-19731) held that seizure under Article 145 (which is not, admittedly, an infringement seizure) was indeed a conservatory measure. Moreover, Directive 2004/48/EC refers to « provisional measures … to preserve relevant evidence« . Therefore, can it truly be considered a provisional measure? It increasingly resembles a probative measure.

Patent application

There is no obstacle to the proprietor of a patent application requesting an infringement seizure once the patent application has been published or notified to the alleged infringer (Article L615-5 IPC, as an infringement action is available in this case under Article L615-4 IPC – Paris Court of Appeal, 4th Chamber, Section A, 25 April 2001).

This case is explicitly mentioned in Article R615-2 IPC (a certified true copy is required).

Required evidence ?

Position of the French courts

Article L615-5 IPC does not require any evidence or prima facie evidence, and the judge does not appear to be able to refuse the request (« entitled to have proceedings carried out« ), as this is precisely the purpose of the seizure (Cass. com., No. 97-12699, 29 June 1999).

The applicant is not even required to mention previous seizures already carried out (Cass. com., No. 04-10105, 12 July 2005).

In practice, however, this may differ, and judges are reluctant to order a seizure based solely on the request of a patent proprietor (Paris Court of Appeal, Division 1, 3rd Chamber, 28 January 2014, « given that this is a measure of exceptional gravity, as it authorizes infringement seizure and access to a company’s documents in a non-adversarial manner, the request must not be based on mere assertions or allegations unsupported by at least some documentation« ).

A recent ruling by the Court of Cassation finally clarifies the situation: the texts do not require any prima facie evidence, as the purpose of the seizure (in this case, a seizure based on Article 145 of the Code of Civil Procedure, but in my view, this directly applies to infringement seizures) is precisely to obtain such evidence (C. Cass. com., 10 February 2015, No. 14-11909).

Interaction with EU law

One may nevertheless question the compliance of French law with Directive 2004/48/EC of 29 April 2004: indeed, Article 7 of this directive provides that measures may be ordered « upon an application by a party who has presented reasonably available evidence to support its claims« .

French law is silent on this point…

This then leads to the endless debate over the existence or not of the horizontal direct effect of directives in France, a debate that will not be developed here, as a full thesis could be written on the subject.

And above all, if we were to accept this direct effect, one might wonder whether these measures are indeed the seizures…

Provision of security

The judge may require the provision of security by the applicant in the event that the seizure proves to be abusive or where a physical seizure is authorized (L615-5 CPI).

This security must be provided before the seizure begins (R615-2-1 CPI).

This security may be a bank guarantee or a deposit made with the Caisse des Dépôts et Consignations (L518-19 Monetary and Financial Code).

Bailiff

The bailiff must, of course, have territorial jurisdiction: they may only execute the order within their district (Order No. 45-2592 of 2 November 1945, Art 1 together with Decree No. 56-222 of 29 February 1956, Art 5).

Care must be taken, as the order often authorizes the execution of the order « by any bailiff of their choice« : this wording may be interpreted by some judges as meaning « a single bailiff« . Consequently, the presence of two bailiffs may result in the nullity of the seizure (Rennes Court of Appeal, 2nd Commercial Chamber, 24 February 2009).

However, if only one of the bailiffs is acting in an official capacity, this does not pose a problem (the others being present to assist the first, Paris Court of First Instance, 3rd Chamber, 4th Section, 12 May 2016, Case No. 14/17816 or Cass. com No. 13-23416, 3 May 2016).

Selection of the expert

During the seizure, the bailiff may be assisted by experts (L615-5 CPI) to help assess the technical aspects specific to patents.

It is generally accepted that:

While there is no legal impediment to appointing the petitioner’s attorney as an expert (C. Cass. com., 18 Apr. 2000, n°97-19631), this nevertheless appears risky, as seizure reports have already been annulled due to the attorney failing to disclose their capacity (Court of Appeal of Rennes, 2nd com. ch., 10 January 2006). Thus, as a general rule, it is advisable to avoid…

The number of experts cannot be limited in the order, as there is no legal restriction (Court of Appeal of Paris, 4th ch., sect. A, 6 December 2006). However, it is necessary that the presence of the experts has been requested and authorized in the order.

Other persons assisting the bailiff

The bailiff may be assisted by any person, provided the order authorizes it (e.g., law enforcement, locksmith, etc. Regional Court of Paris, 3rd ch., 1st sect., 30 May 2007): the unauthorized presence of a person constitutes a formal defect, and a grievance must be raised to request the nullity of the seizure.

However, the presence of a bailiff’s clerk does not need to be explicitly mentioned, as they are a subordinate of the bailiff (Regional Court of Paris, 3rd ch., 1st sect., 30 May 2007).

If a technical task must be performed (e.g., disassembling a machine), the order may authorize the presence of technicians/mechanics: unlike an expert, it appears possible to appoint an employee of the seizor as a technician (provided that the seizure report specifies that this employee limited themselves to technical acts, Court of Appeal of Paris, Pole 5, 1st ch., 19 December 2012).

Filing of a petition

Identification of the proprietor and their rights

The proprietor must provide the President of the Paris Judicial Court with proof that their patent exists and is in force (see above).

The following must be attached:

If the petitioner is the proprietor of an exclusive license, it is important to produce documents proving that they have given formal notice to the proprietor of the rights (R615-2 IPC, paragraph 3) as well as their license agreement (R615-2 IPC, paragraph 2).

In the case of a « corporate » proprietor, attention must be paid to:

However, the courts have also held that the absence of these details (and not erroneous details as previously mentioned) was merely a formal defect for which it is necessary to provide evidence of prejudice (Paris Judicial Court, 26 May 2016, 3rd chamber, 4th section, order for retraction of interim relief, Case No. 16/03162).

It is not necessary for the order to include the name of the petitioner and the designation of the petition, as the order forms an integral part of the petition (Paris Judicial Court, 26 May 2016, 3rd chamber, 4th section, order for retraction of interim relief, Case No. 16/03162).

Signature of the petition by the attorney

The petition must be signed by the acting attorney.

Nevertheless, for some, this is a formal defect: in the absence of prejudice, the seizure will not be annulled (Court of Appeal of Aix-en-Provence, 2nd chamber, 5 December 2013 or Court of Appeal of Paris, 19 January 2016, Division 5, 1st chamber, Case No. 14/10676).

It should be noted that this is unusual since the Court of Cassation had indicated that this was a substantive nullity (C. Cass. com., 14 November 2006, No. 04-14865 or C. Cass. 2nd civ., 24 February 2005, No. 03-11718)…

Identification of the judge issuing the order

The judge who signs the order must be precisely identified (a formula such as « We, President, [… ] » is not sufficient, C. Cass. crim. No. 09-80599, 22 September 2009).

Indeed, Articles 454 CPC and 458 CPC emphasize that the absence of the judge’s name renders the order null and void (if the signature is clear, this may suffice, C. Cass. com., 21 March 2000, No. 97-18914).

The judge who signs, if not the president, is presumed to have received delegation from the president of the TGI to rule on the petition presented (Court of Appeal of Paris, ch. 04, 28 February 2001).

Identification of the seized object

The petition must enable the bailiff to identify the product to be seized or the process to be described (Court of Appeal of Paris, 4th ch., sect. B, 10 December 2004): it is possible to refer to the claims of the patent.

If the bailiff describes or seizes objects that may infringe other rights (patents, trademarks, etc., Court of Appeal of Paris, ch. 04, 23 September 1998) or if the bailiff seizes objects not in conformity with the order (C. Cass. com., 31 May 2005, No. 03-12162), the bailiff exceeds his powers, unless such seizure (or description) occurs incidentally during the seizure (or description) of the object specified in the order: this evidence may then be used in another infringement or unfair competition action.

Authorization for startup, disassembly, etc.

Generally, all possibilities should be considered in the petition: if the order does not explicitly permit the startup of a machine or its disassembly, the bailiff is not entitled to do so on his own initiative (Court of Appeal of Paris, 4th ch., sect. A, 15 December 2004).

Request for seizure of various documents

The petitioner may request that « any document relating » to the infringement be seized (Article L615-5 CPI, paragraph 2).

This very broad terminology covers:

  • technical documents, such as manufacturing files,
  • inventory lists,
  • advertising materials,
  • catalogs,
  • user manuals,
  • the MA application file (Court of Appeal of Paris, ch. 14, 16 January 1998), even if certain confidential elements should be redacted.

Furthermore, it is possible to request authorization for « any useful observation to establish the origin and extent of the infringement » (Article R615-2 CPI, paragraph 4). There is no basis to assert that the infringement seizure should only seek evidence of the materiality of the infringement (Court of Appeal of Paris, 29 June 2021, Pole 5, ch. 1, Case No. 20/07030).

Therefore, it is possible to seize accounting and commercial documents (invoices, correspondence, etc.).

It is possible that these documents (e.g., invoices) may reveal elements unrelated to the subject of the seizure. Seizing them does not in itself pose a problem: the seized party should have requested the removal of such information from the bailiff (Regional Court of Paris, 3rd ch., 4th sect., 28 October 2010 or Regional Court of Paris, 3rd ch., 2nd sect., 14 January 2011).

Request for seizure of infringement tools

It is possible to request the actual or descriptive seizure of the machines used to produce the « infringing » objects (L615-5 CPI, paragraph 3).

However, it should not be forgotten that this seizure is intended to gather evidence and does not serve to prevent the alleged infringer from continuing their acts.

Identification of the seized party?

It is not necessary to designate the name of the seized party in the petition if they are unknown to the petitioner, provided that the location of the seizure is precise.

Furthermore, it is advisable to avoid designating the seized party as the « alleged infringer » but rather as the « holder of the objects alleged to infringe« .

Identification of available remedies?

According to certain judges, Article 680 CPC, which requires the indication of available remedies and corresponding time limits, applies in principle only to judgments and not to orders.

Nevertheless, other judges consider that this indication is necessary and that the phrase « Reference will be made to us in case of difficulty » is not sufficient (Cour d’appel de Paris, 4e ch., sect. B, 11 April 2008).

In any event, this absence of a remedy does not constitute a substantive nullity (C. Cass. com., 14 January 2003, No. 01-01759), and a grievance must be raised by the aggrieved party: it is quite unlikely that a grievance could be raised since an appeal may be filed with the proceedings on the merits (Cour d’appel de Paris, 4e ch., sect. A, 12 January 2005).

Conduct of the seizure

Optional nature

The petitioner who has obtained an order allowing a seizure is not obliged to execute it or to execute all its measures (Cour d’appel de Paris, ch. 04, sect. B, 29 March 2002).

Bailiff

Article L615-5 CPI provides that « any bailiff » may carry out the seizure (at the petitioner’s choice): however, this bailiff must act within the limits of their territorial jurisdiction (i.e., their district).

Place of seizure

The infringement seizure must take place at the exact address indicated in the order.

If, unfortunately, the start of the operations begins 10 meters from this address, the seizure should be annulled for exceeding the bailiff’s authority (Tribunal de Grande Instance de Paris, 11 September 2014).

Presentation of the bailiff and experts

Before beginning the seizure, the bailiff must (on pain of nullity):

Service of the order and petition on the seized party

Service of the order and the petition

It is necessary to serve the order (copy of the original or the engrossed copy) and the petition on the seized party so that they may verify the extent of the bailiff’s powers (Article 495 CPC and R615-2-1 CPI, paragraph 2).

Service of one does not constitute service of the other (Paris Court of Appeal, 4th ch., sect. B, November 9, 2007).

The fact that the seized party allows the bailiff to enter their premises and proceed with the seizure does not constitute proof of service of the order (Paris Court of Appeal, 4th ch., sect. B, November 9, 2007).

In the event of failure to serve, the seizure may be declared null and void, and damages may be awarded (R615-2-1 CPI):

Nevertheless, if the seized party is absent, nothing appears to prevent the seizure from being carried out, but the presence of law enforcement is then indispensable (L142-1 Code of Civil Enforcement Procedures), and the order must be served by leaving a notice of visit at the person’s domicile (the copy may be collected at the bailiff’s office, Article 655 of the Code of Civil Procedure); however, I am not aware of any decision validating this mechanism.

Delivery of a copy

Service of the order must consist of the delivery of a copy and not merely the exhibition thereof (French Supreme Court, Commercial Chamber, December 19, 1977, No. 76-12389).

Person to whom service is made

Service of the order must be effected on the holder of the allegedly infringing items (Paris Court of Appeal, 4th ch., May 9, 2001) and not on the alleged infringer (Paris High Court, 3rd ch., 2nd sect., May 27, 2016, Case No. 13/01235).

In the case of a company, service must be made on its legal representative, on an « authorized signatory » of the latter, or on any other person authorized for this purpose (Article 654 of the Code of Civil Procedure), that is, according to case law:

Reasonable time period?

Historically, case law required that the bailiff allow a « reasonable time period » for the seized party between service of the order and the start of the operations (Tribunal de grande instance de Paris, 3e ch., 1re sect, 6 October 2009), even though some courts consider that, in the absence of a legal provision, seizure operations may begin immediately (Cour d’appel de Paris, 4e ch., sect. A, 22 February 2006).

A time period of 5 minutes was considered reasonable, given that the order was only 4 pages long (Cour d’appel de Paris, Pôle 5, 1re ch., 2 October 2013 ; Filmop c. Dit et al).

This service and the fact that a reasonable time period was allowed for the seized party to take notice must be recorded in the seizure report or in a separate document (though prior notification is not required, Tribunal de Grande Instance de Paris, ch. 03, 30 January 1998).

However, in a recent decision by the Cour de Cassation, the judges appear to consider that merely noting that this formality took place prior to the operations is sufficient (C. Cass. civ. 1, 19 March 2015, n°13-25311): we eagerly await the reaction of lower courts.

Service of other documents?

If security was required by the judge, the deposit document must also be presented (R615-2-1 CPI).

In principle, it is not necessary to provide the annexes to the petition that were presented to the judge. However, a copy of the patent invoked does no harm in order to allow the seized party to know which subject matter is targeted.

Limits on the bailiff’s powers during seizure

Principle

Due to the extraordinary nature of the seizure and the ex parte nature of the order, the authorization granted by the president in the order must be strictly interpreted (Cour d’appel de Paris, 4e ch., sect. B, 30 March 2007).

Search for evidence

The bailiff is authorized to search for evidence of infringement by examining all objects or documents located on the premises. They are the only one who may actively conduct this search (Cour d’appel de Paris, 4e ch., sect. B, 21 December 2007).

Prohibition of interrogations

While the bailiff may search for evidence, they have no specific right to interrogate the seized party (e.g., to obtain confessions (Tribunal de grande instance de Paris, 22 March 2022, RG n°18/4575) or to obtain details on how a process works, Cour d’appel de Paris, 4e ch., sect. B, 16 February 2007).

However, the bailiff may ask any question necessary to carry out their mission (Cour d’appel d’Orléans, ch. com, 29 January 2009): a boundary that, in practice, is difficult to define…

The boundary is all the more difficult to define since case law allows, in the event of complete silence from the seized party, to challenge the seizure order to modify it and, pursuant to R615-4 CPI and Article 11 CPC, to order, possibly under penalty, that a response be provided or a document be produced.

Authorized Sample Seizure

The order may authorize the seizure of a certain number of samples.

The seizure of a greater number of samples may be considered an excess of the powers conferred by the order on the bailiff.

However, the seizure of a number of samples fewer than the authorized number does not constitute an excess of the power conferred by the order, as this situation is rather favorable to the seized party (Cour d’appel de Paris, Pôle 5, 2e ch., 9 May 2014).

Drafting of the Seizure Report

Identification of the Bailiff and Seal

The bailiff’s first name, last name, signature, name of the firm (SCP), address of the firm (SCP), and status as partner must appear clearly on the seizure report (648 CPC) under penalty of nullity of the report (Cour d’Appel de Paris, 4e ch., 15 September 2000).

Nevertheless, this irregularity appears to be a formal irregularity, and the seized party must therefore demonstrate prejudice caused by this irregularity (Article 649 CPC together with 114 CPC): such prejudice may be the inability to verify the bailiff’s status (Cour d’Appel de Paris, 4e ch., 15 September 2000).

The same applies to the bailiff’s seal, which must be affixed to each page of the seizure report (Tribunal de grande instance de Paris, 3e ch., 1re sec.t, 30 September 2008): the formal irregularity may be corrected at any time.

Identification of the Seized Party

The bailiff has the authority to request that individuals present at the seizure location provide proof of their identity (and, where applicable, that of the legal entity holding the products alleged to be infringing), provided this is specified in the order under the authority of R615-2 CPI (as certain case law denies this even when such verification is carried out by a police commissioner, Cour d’appel de Paris, ch04, 21 September 2001).

Drafting of the report and descriptive seizure

There is no requirement regarding the format of the text: it may be typewritten, handwritten, or both (Cour d’appel de Paris, 4e ch., sect. B, 10 December 2004).

The fact that the bailiff uses the term « infringing » does not necessarily constitute an error, especially if the seized party itself uses this term (Tribunal de grande instance de Paris, 30 September 2009).

The fact that the bailiff directly incorporates and endorses in their report the handwritten observations of the expert or the IP representative may result in the nullity of the seizure (« role reversal« , Tribunal de Grande Instance de Paris, 3e ch., 1er sect., 26 October 2010). It should nevertheless be noted that the bailiff may incorporate the expert’s statements, provided they clearly distinguish these from their own statements (testimonial value) (C. Cass. com., 21 March 2000, n°97-18914).

In particular, to avoid the judge considering that the bailiff was influenced by the expert, it is advisable to avoid using vocabulary that is too « technical » or constitutes an interpretation in the descriptive section (e.g., « these two edges form a median wing« , C. Cass. civ. ch. com, 29 September 2015, n°14-12430).

Furthermore, if the bailiff is unable to carry out the description (e.g., very complex object requiring laboratory analysis), they are not obliged to do so (« no one is bound to do the impossible » Cour d’appel de Paris, 4e ch., sect. B, 10 September 2004), but they must avoid describing things that clearly could only have been described by the expert (e.g., description of a non-visible object or a process when the machine was not turned on).

The bailiff may record the statements of the seized party (if spontaneous), but has no obligation to do so, even if the seized party wishes to record a protest.

Assistance of law enforcement

It is possible to request that the bailiff be authorized to seek the assistance of law enforcement (Cour d’appel de Paris, 4e ch., sect. B, 11 April 2008), even before the start of operations and even without resistance from the seized party (C. Cass. com, n°90-17782, 30 June 1992).

Introduction of an object on site

To introduce an « infringing » object into the premises of the seized party, it is essential to obtain express authorization in the order (C. Cass. com, n°08-20486, 29 September 2009).

Furthermore, to be able to show the introduced object and question the persons present in order to gather their spontaneous statements regarding the alleged acts of infringement, the bailiff must also have been « expressly and specifically authorized » to do so (C. Cass. civ 1, n°08-10656, 2 April 2009).

Otherwise, this introduction constitutes a fundamental nullity (Tribunal de grande instance de Paris, 3e ch., 1re sect., 19 June 2014): no prejudice needs to be demonstrated to annul the seizures.

The situation would be different if the object had been discovered on site (C. Cass. com. n°08-18598, 7 July 2009).

If authorization is given to the bailiff to introduce an object on site but it is the expert who introduces it, this does not appear to pose a problem since the expert works under the supervision of the bailiff (Cour d’appel de Paris, pôle 5, 2e ch., 28 February 2014).

Confidential documents

Historical Approach

The seizure must not allow spying on a competitor and accessing trade secrets (C. Cass. com., n°07-15075, 8 July 2008).

Such misuse of the procedure may be sanctioned by damages (C. Cass. com., 12 February 2013, n°11-26361).

Furthermore, the confidential nature of the seized documents is not a ground for opposing the seizure (Tribunal de Grande Instance de Paris, ch. 03, 4 July 1997). The seized party may, however, notify the bailiff that these documents are confidential or fall outside the scope of the order. In this case, the bailiff must, as a precaution, place them under provisional sequestration without transmitting them to the patent proprietor.

The seized party or the seizing party may then refer the matter to the President of the Tribunal de Grande Instance de Paris (appeal under Article R615-4 CPI) or the order judge (retraction summary proceedings to amend the order) to have them rule on the accessibility of these documents to the patent proprietor (Cour d’appel de Lyon, ch. 01, 23 September 1999).

In order to rule, the judge may call upon an expert to distinguish, among the confidential information and documents, those that are necessary to prove infringement from those that are unrelated (Tribunal de Grande Instance de Paris, ch. 03, 4 July 1997).

The difficulty of this expertise lies in the fact that it cannot be fully adversarial due to the secrecy surrounding these documents: thus, to avoid any issues, it is advisable to allow the parties’ representatives, bound by confidentiality, to be present during the expertise (Tribunal de Grande Instance de Paris, ch. 03, 31 October 2000).

Approach Related to the Trade Secrets Law

The 2018 Trade Secrets Law has somewhat impacted infringement seizures without calling into question the historical approach.

Indeed, the judge may (but is not obliged to) order the automatic placement (i.e., directly in the order) of the seized items under provisional sequestration (Article R153-1 of the French Commercial Code together with Article R623-51 CPI).

Of course, if the claimant does not propose it, it is quite likely that the judge will not include it in the order.

So, you may ask me why the claimant would request it?

Excellent question, as it initially seems to be to their disadvantage.

In reality, I do not think so. Indeed, requesting it changes the regime for lifting secrecy: whereas in the historical approach, the claimant had to intervene to convince the judge to lift the secrecy, here, it is up to the seized party to convince the judge (Article R153-3 of the French Commercial Code) that the documents are indeed confidential within a one-month period (Article R153-1 of the French Commercial Code together with Article R623-51 CPI).

Interaction Between the Expert and the Seized Party

If an expert may assist the bailiff in their mission (see above, regarding the quality of this expert), the roles must not be reversed (C. Cass. com. n°08-11235, 3 March 2009): the expert may not directly request the seized party to provide documents or answer certain questions.

Interaction Between the Expert and the Bailiff

The expert may, of course, discuss with the bailiff: the latter must not be influenced by the expert’s technical remarks. At the very least, they must clearly distinguish in their report between the expert’s statements and their own findings (Tribunal de grande instance de Paris, 5 May 2009 or Tribunal de grande instance de Paris, 30 September 2009).

Discretion afforded to the seized party

The seized party is on their own premises: they may invite any person they wish into their company (e.g., attorney, IP representative).

Furthermore, the seized party is not required to be cooperative:

  • they are not required to open the doors to the premises,
  • they are not required to assist the seizing party,
  • they are not obligated to answer questions and may prohibit their employees from responding.

However, this discretion is limited when the judge so orders or when the bailiff requests the communication of a sufficiently specific object or document (Article 10 of the Civil Code, Article 11 of the Code of Civil Procedure, Article R615-4 of the Intellectual Property Code).

Incidents during the seizure

Resistance from the seized party (e.g., cutting off electricity, physical obstruction, etc.) constitutes actionable misconduct.

Extension of operations

The seizure is not required to be limited to a single day: the bailiff may continue operations as long as necessary, even allowing several days to pass between seizure days (Paris Court of First Instance, Division 03, Section 03, June 25, 2002).

Regarding the conduct of the seizure before 6:00 AM and after 9:00 PM, it is advisable to include this option in the order, as it is normally not permitted without judicial authorization (Article L141-1 of the Code of Civil Enforcement Procedures; no exception is possible if the premises are also used as a dwelling).

Even if the order authorizes it, there must be a valid reason to continue operations during the night. Otherwise, the seizure may be annulled (Paris Court of Appeal, Division 5, Chamber 1, June 29, 2022, Case No. 21/06171).

If the person to whom the order was served is not present during the extension of operations, it does not appear necessary to re-serve the order or to indicate in the report that the order was handed to the person present during the extension so that they may take note of the bailiff’s powers (Paris Court of First Instance, 3rd Chamber, 1st Section, June 18, 2015, contradicting the order of Paris Court of First Instance, May 7, 2014 issued in the same case).

Failure of the seizure

The seizing party may « come up empty-handed. »

In such a case, they may well request a new order to carry out another infringement seizure at the same premises, hoping to be more successful the next time (French Supreme Court, Commercial Chamber, July 8, 2008, No. 07-15075).

Nevertheless, in the event of too many unjustified seizures, the seizing party may incur civil liability.

Delivery of the seizure report

At the end of the seizure, the bailiff must deliver a copy of the seizure report to the holder of the seized items (R615-2-1 CPI, paragraph 2) (and not to the infringer) and record this in the report or in a separate document.

If the bailiff is unable to serve the report, they must state this in the report and leave a calling card (656 CPC).

Case law allows the bailiff a few days (short period) to finalize the report and serve it subsequently on the person subject to the seizure (Tribunal de Grande Instance de Paris, 3rd ch., 13 January 2012): care must be taken to clearly indicate the date of delivery to avoid nullity. This subsequent delivery is possible because the code does not provide for any time limit (Court of Appeal of Paris, 4 March 2016, Case No. 15/10592).

This delivery may be made against the signature of the person subject to the seizure, but this is not mandatory (Tribunal de Grande Instance de Paris, 3rd ch., 13 January 2012).

While photocopies should be attached to the report, photographs may be notified to the person subject to the seizure by a subsequent act of the bailiff before being attached to the second original (Court of Appeal of Paris, 4th ch., sect. A, 12 November 2003).

Failure to deliver the report constitutes a formal irregularity requiring proof of prejudice (Court of Appeal of Rennes, 2nd com. ch., 10 January 2006 or Court of Appeal of Paris, Pole 5, 2nd ch., 3 July 2009).

Substantive actions

Time limit

If an infringement seizure is carried out, it is necessary to initiate a substantive action within a time limit of 20 working days or 31 calendar days (L615-5 CPI, paragraph 5, together with R615-3 CPI).

Calculation of time limits

Regarding the calculation of time limits:

Otherwise, the entire infringement seizure is annulled (including the descriptive seizure, L615-5 CPI, paragraph, by analogy Cour d’appel de Paris, 30 September 2022, Pole 5, Chamber 2, n° RG 21/00511).

Multiple seizures

In case of multiple seizures, each one triggers a time limit (C. Cass. com., 3 June 2003, n°01-14214).

Existing Merits Action

It is entirely possible to request a seizure while a merits action is already pending.

At first instance, this request must be filed with the president of the chamber seized and not with the president of the Paris Judicial Court (C. Cass. com. n°05-19782, 26 March 2008, as Article 812 CPC applies) by indicating that an action is already pending (Article 494 CPC and Article 813 CPC).

If the seizure is requested on appeal, the application must be made to the first president (C. Cass. com., 14 September 2010, n°09-16854 and Article 958 CPC).

Of course, if a merits action had already been initiated, there is no obligation to file a merits action (C. Cass. com n°91-18049, 26 October 1993) and it is not necessary to re-file.

It would nevertheless appear necessary:

Person to Sue

There is no obligation to sue the holder of the seized goods (indeed, the seizure at a carrier may have revealed the name of the actual infringer, Paris Judicial Court, 3rd chamber, 15 June 1999): any third party may therefore be sued.

Validity of the Summons

Nevertheless, it is necessary that this summons be valid (Paris Court of Appeal, 4th chamber, 20 June 2001).

If the summons was valid but becomes lapsed (e.g., failure to file a copy of the summons with the registry within four months, Article 757 CPC), the seizure may also be declared null and void.

However, if the claimant files with the wrong court, it is considered that the deadline has still been met (Douai Court of Appeal, 12 February 2008), as the case is transferred to the correct court within the same proceedings.

Case of a Seizure Requested on the Basis of Several Rights

In this scenario, it appears necessary that the summons cover all the rights on the basis of which the seizure was requested (Paris Court of Appeal, 4th chamber, 24 November 2000).

Multiple Summonses

If the proprietor wishes to initiate several actions against multiple infringers, it is only necessary that one of these actions comply with the aforementioned summons deadline (C. Cass. civ. com. chamber, 7 July 2015, n°14-12733).

It is therefore not necessary for all actions to be initiated within the summons deadline.

Use of evidence

Evidence obtained from an infringement seizure may be used:

A seizure carried out on the basis of a design may serve to prove infringement of a patent of which the applicant is the proprietor (Cour d’appel de Paris, pôle 5, 2e ch., 13 November 2009).

Of course, the probative value of the seizure is significant when objects or samples have actually been seized or photographs taken, because even if the bailiff misclassifies the items in the seizure report (Tribunal de Grande Instance de Paris, ch. 03, 13 June 1997), the judge may correct the possible error himself.

However, if the seized objects are opened and handled (e.g., a bag opened and then resealed), they may lose their probative value (Cour d’appel Paris, ch. 04, 18 May 2001).

Similarly, if the precise and detailed statements of the person encountered at the place of the seizure cannot be considered as an admission by a legal representative of the company, they nevertheless have informational value (Cour d’appel de Paris, ch04, 21 September 2001).

Fate of seized objects

In the context of an actual seizure, the seized objects remain, of course, the property of the person against whom the seizure was carried out (the seizure having as its sole purpose the preservation of evidence and not confiscation).

The risks of loss or deterioration of the seized object lie with the seizor (T. civ. Seine, 5 December 1872).

If the infringement action is ultimately found to be unfounded, it is possible to request the lifting of the sampling or actual seizure and the return of the objects placed under seal (C. Cass. com., No. 01-14945, 23 April 2003). This lifting extends to copies of documents made (Tribunal de grande instance de Paris, 3e ch., 1re sect., 2 May 2007) and to any photographs taken.

Of course, the return of the seized objects gives rise to a claim by the person against whom the seizure was carried out against the seizor: the refund of the price paid, where applicable.

Costs of the seizure

The costs of the seizure (bailiff’s fees, photographer, locksmith, etc.) are borne by the seizor and are incurred under Article 700 of the Code of Civil Procedure (Tribunal de Grande Instance de Paris, 3e ch., 1re sect., 9 March 2010).

Available remedies

Falsity claim

Probative value of the seizure report

A seizure report has the value of an authentic instrument (Cour d’appel de Paris, ch. 04 sect. A, 15 January 2003) and therefore has significant probative value.

Falsity claim and offense of forgery

The falsity claim procedure allows challenging the presumption of evidence.

This falsity claim does not necessarily mean that the bailiff has committed the offense of forgery under Article 441-4 of the Penal Code (i.e., questioning the bailiff due to fraud on his part).

In this context, the forgery lies only in the inaccuracy of the bailiff’s findings and not in bad faith.

Examples of Errors Justifying a Motion to Discredit Evidence

A motion to discredit evidence may be raised when the bailiff:

  • « assesses » facts rather than merely recording them;
  • states that the patent is being reproduced (role of the judge);
  • uses technical terms that presume infringement.
Proof of Falsity

Proof of falsity may be established by demonstrating that the bailiff was not in a position to record the material facts he claimed to have observed (Tribunal de Grande Instance de Paris, 6 October 2000), for example by using the annexed photographs (Tribunal de Grande Instance de Paris, 19 March 1999).

Procedure for Filing a Motion to Discredit Evidence

To file a motion to discredit evidence, it may be done:

  • incidentally in an existing proceeding on the merits (i.e., motion to discredit evidence under Articles 306 CPC to 312 CPC);
  • as a principal action (Article 314 CPC).

A motion to discredit evidence results in communication to the public prosecutor (303 CPC) and may lead to a hearing of the bailiff (304 CPC) and/or an investigation (308 CPC).

If a motion to discredit evidence is filed but is unsuccessful, a civil fine of up to €3,000 may be imposed, and the claimant may potentially be ordered to pay damages (305 CPC).

Consequence

In most cases, the judge orders that only the erroneous parts of the report be disregarded (Tribunal de Grande Instance de Paris, 19 March 1999).

Available Remedies for the Applicant if the Application Is Not Granted

The ex parte order may be appealed « if the application is not granted » (Article 496 CPC), which covers both the case where the judge rejects the application outright and the case where the judge grants only part of the application.

The appeal period is fifteen days (Article 496 CPC) from the date of the order’s issuance (C. Cass. 2e civ., 16 May 1990, No. 89-10243).

The remedy is first examined by the judge who issued the order (grace appeal), and if he does not wish to amend his order, he forwards the appeal to the court of appeal (952 CPC).

Motion to Set Aside the Order

Interested Third Party

Any interested third party (e.g., the party subject to the seizure, the infringer, the proprietor of a trade secret, etc.) may request before the judge who granted the order (496 CPC) to retract it (the judge in charge of case management is therefore incompetent, as the nullity of the seizure is not a nullity of the proceedings (the seizure being distinct from the proceedings on the merits) or an incident terminating the proceedings, Cour d’appel de Paris, Pôle 5, 1re ch., 12 December 2012).

The judge may retract the order but may also modify it or leave it unchanged (497 CPC).

The third party may, in particular, request:

This summary proceeding serves to challenge only the conditions under which the order was granted and not the conditions of the seizure’s execution (Cour d’appel de Paris, ch. 14, 6 December 1999) or the validity of the patent or the infringement (only the judge on the merits is competent, L615-17 IPC).

This retraction may thus be based on:

Applicant

The applicant may also initiate summary proceedings for retraction to address a difficulty arising during the seizure or to request a measure to supplement the evidence (R615-4 IPC) (e.g., they may request the removal of seals placed by the bailiff during the seizure, as the documents were marked as confidential, Cour d’appel de Lyon, ch. 01, 23 September 1999).

Procedure

The proceedings then become adversarial (cf. TRIPS Agreement, Article 50, 4°).

The motion to set aside is a summary proceeding and not a procedure « in the form of summary proceedings » (Paris Court of Appeal, Division 1, 2nd Chamber, 27 April 2011 in the sense that it does not address the merits, i.e., the invalidity of the seizure reports).

However, it is not a « full » summary proceeding (« heard as in summary proceedings« , French Supreme Court, Commercial Chamber, No. 80-12276, 24 September 1981): this procedure is not subject to the substantive conditions of Articles 808 CCP and 809 CCP (urgency, absence of serious challenge, existence of a manifestly unlawful disturbance or risk of imminent harm) (French Supreme Court, Commercial Chamber, No. 99-10076, 9 October 2001).

There is no real time limit for filing a motion to set aside (French Supreme Court, 2nd Civil Chamber, No. 01-11536, 17 October 2002).

The motion to set aside may be filed even if the case is already pending before the court (French Supreme Court, 2nd Civil Chamber, No. 89-18207, 26 November 1990).

New Order

The fact that an order has been set aside does not mean that the proprietor cannot immediately request a new order (French Supreme Court, Commercial Chamber, No. 07-15075, 8 July 2008).

Appeal

An appeal is also available against the potential setting aside of the order (Article 490 CCP).

The time limit for appeal is fifteen days (Article 490 CCP).

Consequence of the Setting Aside of a Seizure

It may happen that the seizure order is set aside after the seizure operations have been carried out.

In this case, the seizure report and the seized documents can no longer be used (Paris Court of Appeal, 23 September 2014).

Request for Nullity of the Seizure

Principle

When the rules governing the seizure have not been followed, it is possible to request the nullity of the seizure.

This request for nullity of the seizure may target (French Supreme Court, 1st Civil Chamber, No. 11-18045, 14 November 2012):

  • The fact that the claimant did not initiate proceedings on the merits within the prescribed time limits (nullity incurred by operation of law even in the absence of prejudice, Article L615-5 IPC);
  • The conditions of the seizure process:
    • Substantive nullities, which are incurred even in the absence of prejudice (Article 117 CCP, where the bailiff who performed certain acts lacked the authority to do so);
    • Formal nullities, which are incurred only if the applicant can demonstrate prejudice;
  • The conditions for granting the order (jurisdiction of the judge, evidence, proprietorship, etc.) (see above)
Focus on substantive nullities

A substantive nullity may be:

The nullity of the seizure for substantive irregularity is declared ex officio, without the need to demonstrate prejudice (119 CPC). The judge may raise it ex officio if it constitutes a matter of public policy (120 CPC).

Furthermore, the substantive irregularity may result in only partial nullity (e.g., for the portion where the bailiff exceeded their powers, Cour d’appel de Paris, ch. 04, 23 September 1998).

It is not possible to remedy a substantive irregularity before the judgment is rendered under the mechanism of Article 121 CPC (C. Cass. com., 31 Oct. 2006, No. 05-11149).

Although certain case law had indicated that an objection of nullity of the seizure must be raised before any defense on the merits under penalty of inadmissibility (C. Cass. com. No. 98-19503, 25 April 2001), it actually appears possible to request the nullity of a seizure (substantive defect) at any time (C. Cass. com. No. 08-18732, 19 January 2010), as it is not a procedural objection within the meaning of Articles 73 CPC and 74 CPC. (Cour d’appel de Paris, Pôle 5, 1st ch., 28 March 2012).

This nullity may also be requested on appeal because it does not constitute a new claim but a new argument (Cour d’appel de Paris, ch. 04, 23 September 1998).

Focus on formal nullities

A formal nullity sanctions the non-compliance with a requirement of the law or the order.

The party invoking a formal irregularity must demonstrate prejudice (114 CPC) that is personal (and not prejudice against a third party, Cour d’appel de Paris, Pôle 5, 2nd ch., 23 October 2015, Case No. 14/06720).

The existence or absence of prejudice is subject to the sovereign assessment of the trial judge (C. Cass. 2nd civ., 25 January 2000, No. 97-12620).

Nevertheless, the prejudice must be specific and not merely consist in the fact that the seized party could not know the content of the authorizations granted by the order (C. Cass. 2nd civ., 29 May 1991, No. 90-10713).

A procedural nullity may be:

Nullities arising from procedural irregularities must be raised in limine litis (i.e., before any substantive defense or plea of inadmissibility) (74 CPC and 112 CPC – C. Cass. com., 25 April 2001, No. 98-19503), but this may be requested, possibly after a request for expertise (since it is not a substantive defense); otherwise, they are inadmissible.

A procedural irregularity may also result in partial nullity.

A procedural nullity may be cured at any time (115 CPC).

Competent court

The nullity of the seizure is sought before the Paris Judicial Court (Tribunal de Grande Instance de Paris, 3e ch., 1re sect., 9 March 2010) or before the Paris Court of Appeal on appeal: grounds for nullity constitute a defense on the merits and not a procedural exception (C. Cass. com., 19 January 2010, n°08-18732), so it is not necessary to raise the nullity in limite litis.

As with any defense on the merits, the competent court is not the pre-trial judge but the judge on the merits (Tribunal de Grande Instance de Paris, order of the pre-trial judge, 29 October 2015, Case No. 15/01383).

Persons who may request nullity

This action is not reserved for the seized party and may therefore be requested by any person with a legitimate interest (except for nullity related to the claimant’s failure to initiate proceedings on the merits, as Article L615-5 IPC reserves this for the seized party).

Appeal

An appeal against the decision on the nullity of the seizure is available together with the judgment on the merits, even if this nullity is treated as an incidental matter and ruled upon before a decision on the merits (Paris Court of Appeal, ch. 04, sect. A, 14 March 2001).

Effects of nullity

The effect of the nullity of a seizure is the disappearance of the evidence, which can no longer be used (9 CPC and C. Cass. com., 1 July 2003, n°01-10807), even though it is accepted that samples and objects actually seized may be reseized from the bailiff (C. Cass. com., n°07-15075, 8 July 2008) or the registry (Paris Court of Appeal, 4th ch., 20 December 2000).

Abuse and misuse of procedure

A request for an evidentiary measure under Article 145 CPC was deemed a disguised infringement seizure where an infringement seizure would have been clearly more appropriate (Paris Court of Appeal, ch. 04, sect. A, 27 March 2002): the existence of a more specific investigatory measure provided for in the Industrial Property Code prima facie precludes recourse to the more general provision of the Code of Civil Procedure (French Supreme Court, 1st civ. ch., No. 11-20531, 28 November 2012).

A test purchase is not necessarily a disguised infringement seizure (Paris Court of Appeal, Pole 5, 1st ch., 7 November 2012), as it involves mere factual observations and not disguised investigations. However, in the case of a test purchase, if the bailiff performs the acts themselves, they must disclose their capacity when making the purchase or opening the online account (Paris Court of Appeal, Pole 5, 1st ch., 27 February 2013 or French Supreme Court, 1st civ. ch., 20 March 2014, No. 12-18518), unless the bailiff acts pursuant to an order from the judge hearing the application and said order authorizes them to disclose their true identity only after making the relevant observations (French Supreme Court, 2nd civ. ch., 4 September 2014, No. 13-22971).

The seizure must not be used to spy on a competitor and access trade secrets (French Supreme Court, com. ch., No. 07-15075, 8 July 2008). Such misuse of procedure may be sanctioned by damages (French Supreme Court, com. ch., 12 February 2013, No. 11-26361).

Furthermore, abuse may exist if the seizing party gives undue and unnecessary publicity to the seizure (e.g., decision to carry out the seizure at a trade fair, ostentatiously, to discredit competitors in the eyes of customers, Orléans Court of Appeal, com. ch., 10 July 2003).

In the case of repeated seizures without particular reason, the seizing party may also be sanctioned (French Supreme Court, com. ch., No. 96-10576, 27 January 1998).

Parallel unfair competition

In the case of parallel unfair competition proceedings, one may question whether the framework of the infringement seizure can be used to gather the evidence necessary for the proceedings.

While certain courts have already accepted an application motivated by both infringement and unfair competition (provided that the alleged facts are distinct, Paris Court of First Instance, 3rd ch., 1st sect., 8 November 2011), this seems surprising.

Nevertheless, if the proprietor preferred to file two separate applications (as a precaution) on the two different grounds (unfair competition and infringement), both seizures (seizure under Article 145 and infringement seizure) would need to be requested from the same judge: the President of the Paris Court of First Instance (normally, the seizure under Article 145 is requested from the President of the Commercial Court, French Supreme Court, com. ch., No. 11-23216, 20 November 2012).

Right of information

Additionally, it is possible to request extensive information relating to infringement. Thus, it is possible to obtain information on the origin of the infringement, the distribution networks used, etc. (L615-5-2).

This right of information is granted by the judge (on the merits or in summary proceedings), possibly under penalty.

It is not necessary for a main action to have already been initiated or for infringement to have already been adjudicated in order to request access to information enabling the « determination of the origin and distribution networks of the products or processes » (due to the new wording of L615-5-2): it is entirely possible to request this from the judge in charge of preparatory proceedings (for example, via a procedural exception).

Furthermore, it is entirely possible to exercise this right even if the patent in question has expired (but only if the facts targeted by this request are not time-barred, French Supreme Court, com. ch., 21 October 2014, No. 13-15435).

Additional evidentiary measures

It is also possible to request « any additional evidentiary measures » (L615-5-1-1 IPC) even if no infringement seizure has been requested.

Generally speaking, it appears that the Paris Judicial Court is somewhat reluctant regarding this new provision and grants the requested measures only very rarely.