Proof of counterfeiting may be all means (L615-5 CPI).
Burden of proof
Proof of infringement is the responsibility of the owner of the rights according to the principle actori incumbit probatio »(9 CPCbecause counterfeiting is a problem of fact) (Paris District Court, 3rd Division, 2nd Sect., 29 November 2013, or Court of Appeal of Paris, Pole 5, 2nd ch. December 21, 2012).
The burden of proof may exceptionally be reversed, at the request of the court, 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 application is at the discretion of the court, Paris District Court, 3rd Division, 1st Sect., March 9, 2005).
It is possible to ask a bailiff to make a purchase report.
Attention, it is dangerous to ask the bailiff to make the purchase itself under penalty of nullity of the evidence, because this approach could be considered as dolosive (ie provocation of the counterfeit, Court of Appeal of Paris, December 4, 1862 or C. Cass. Civ. 1, March 20, 2014, No. 12-18518).
Moreover, the bailiff can not act without declaring his quality (art 17 of decree n ° 56-222 of February 29, 1956). Thus, in the event of a purchase report, and if the bailiff carries out the acts himself, it is necessary for him to decline his quality when buying / opening the account on the Internet (Court of Appeal of Paris, Pole 5, 1st ch., February 27, 2013).
Nevertheless, the motions judge may validly authorize the bailiff to disclose his true identity (and delay the notification of the order to the seller) only after having made the relevant findings (C. Cass., 2nd ch. civ., September 4, 2014, No. 13-22971).
Description of the purchase made by a third party
Nevertheless, it seems possible to send a third party to make the purchase, the usher then notes that this third entered the store empty-handed, and that it came out with the product (Paris District Court, 3rd Division, 1st Sect., May 31, 2011). The bailiff can then make a descriptive PV of this product and put it under seal for later use (Court of Appeal of Paris, Pole 5, 1st ch. November 7, 2012).
Can the third party be the patentee?
It is quite possible that the third party is the patentee himself or one of his employees: the impartiality of the buyers is not required (Paris District Court, March 20, 2014).
A purchase report is not necessarily a disguised seizure-forgery (Court of Appeal of Paris, Pole 5, 1st ch. November 7, 2012), because they are mere material findings and not disguised investigations.
Indeed, theOrdinance of 2 November 1945 on the status of bailiffs has:
They may, committed by justice or at the request of individuals, make purely material findings, exclusive of any opinion on the consequences of fact or law that may result
Interest of such findings
This finding is not necessarily very interesting from a commercial point of view. Indeed, we often try to avoid suing the sellers who could later serve to sell "non-infringing" products.
However, if the manufacturer's address is indicated on the box or on a notice, this can be very useful.
Bailiff's report (excluding seizure-counterfeiting)
It may happen that one wishes to make establish a report of usher in a fair, a market, etc. in which a counterfeiter exposes his products.
This may seem like a good idea especially since the article L615-5 CPI provides that counterfeiting can be proven by any means.
Nevertheless, it is important to pay does not turn into a counterfeit seizure disguised (Court of Appeal of Paris, Pole 5, 1st ch., May 7, 2014). In particular, the usher:
- must remain in a public place and not on the stands of counterfeiters;
- must not make an inquiry;
- must not interview those present;
- can only make material findings;
- must respect privacy (he can only listen to a conversation that the counterfeiter has with a customer on the stand).
Otherwise, the report of the bailiff will not be admissible.
Findings on the Internet
It is quite possible that the bailiff notices things on a website for example.
However, it is necessary to carry out this observation with a rigor and a particular formalism. For example, it should be indicated:
- the different software versions used
- computer references (eg serial number, etc.)
- the fact that the antivirus is up to date,
- the browser cache has been flushed,
- the IP address used;
In short, the findings on the Internet require special skill on the part of the bailiff.
As an illustration, the Court of Appeal of Aix-en-Provence, 2nd c., September 15, 2016, RG No. 2013/22133 invalidated findings on the grounds that the bailiff had failed to comply with Afnor NFZ67-147.
Although not all jurisdictions share this view (eg Considering that the standard Afnor NFZ67-147 [...] is not mandatory and constitutes only a collection of recommendations of good practice », Paris Court of Appeal, Pole 5, Chamber 1, February 27, 2013), it is advisable to be particularly careful.
In addition, it should be noted that French courts seem inclined to accept bailiff's reports based on the site http://www.archive.org (the Wayback Machine) (Paris Court of Appeal, Pole 5, 2nd ch., October 4, 2019, RG n ° 17/10064).
It is quite possible to carry out non-contradictory private appraisals on counterfeit products, but such expert appraisals can not fully substantiate the decision of the judges (violation of principle of fairness of proof Because this expertise is not contradictory, C. Cass. com., n ° 11-28205, Jan 29, 2013).
They can nevertheless convince a judge to authorize additional measures.
Materiality of counterfeiting
Counterfeit seizure (L615-5 CPI) is an exorbitant action of common law, the purpose of which is to establish materiality of counterfeiting (eg reproduction of the technical means, objects of the claimed patent claims, or possibly the implementation of equivalent means).
In addition, the seizure can make it possible to ask the judge to order the person to seize, possibly under penalty, a piece whose existence (but not the content) has been proved by the seizure-counterfeit.
Origin of counterfeiting
The counterfeit seizure may also allow make any relevant finding with a view to establishing the origin, consistency and extent of the infringement " (R615-2 CPI).
To prevent counterfeiting?
The seizure-counterfeit is not intended to stop the counterfeiting: thus, it is not possible to seize all the stocks of the alleged counterfeiter (C. Cass. com. No. 83-14146, January 4, 1985) or the production tools.
The decree "relating to the authors of useful discoveries" of December 31, 1790 established a seizure-confiscation (ie that allowed a real seizure of the means of production and products) was inscribed in the law. A "surety" could be requested in return for this seizure.
But in the face of strong opposition, this seizure is quickly repealed (additional decree of May 25, 1791).
On July 5, 1844, these provisions are reintroduced into law, but the purpose of this seizure is more the preservation of the evidence than the confiscation of the means of production (see Manual of the inventor, Blétry brothers, 4th edition, 1881 which details this law).
The seizure is authorized at the request of the holder (ie the order is not made contradictory, the garnishee not being warned (L615-5 CPI).
This makes sense since the fact of prevention would deprive the seizure of its effectiveness: the seized person can not rely on the fact that he has not been warned in advance.
Different types of entry possible: actual entry / descriptive entry
It is possible to ask the judge to order (L615-5 CPI):
- a real forgery of the products (without description),
- a descriptive entry with or without sampling (ie actual entry with a description).
Actual capture may be necessary if the object can not be easily described. In this case, the judge must only allow a seizure of a small number of coins (C. Cass. com., No. 83-14146, January 4, 1985).
It may be wise to propose the payment of a price (or at least a payment proposal) at the time of sample entry or at the time of actual entry to avoid any deposit.
It must also be provided in the order that at least one of the samples seized may be given to the applicant. Otherwise, if a sample was actually given to the latter, it will be considered that the bailiff has committed a fault.
The description made by the bailiff is authentic (propiis verbis) until false registration (Court of Appeal of Paris, 4th ch., Sect. B, December 10, 2004).
It is considered that photocopies and photographs are modes of description (Court of Appeal of Paris, 4th ch., Sect. A, 24 November 2004).
For example, he is not entitled to ask the seized party for delivery of documents if no real seizure has been authorized (C. Cass. com., December 19, 2006, No. 05-14431).
Place of seizure
Seizure may be made in any place where there is evidence of counterfeiting (L615-5 CPI).
In particular, the capture can very well be done:
- in the premises of the counterfeiter;
- in premises not belonging to the infringer (eg the keeper, as long as there is no intention to harm, Court of Appeal of Paris, ch. 04, October 25, 2000);
- in the customs premises (C. Cass. com., Oct. 26, 1999, No. 96-20488);
- in the hands of the bailiff following a purchase report (Court of Appeal of Paris, pole 5, 2nd chapter, April 26, 2013);
- in premises of a bailiff who possess certain documents seized during a previous infringement seizure (C. Cass. com., No. 07-15075, July 8, 2008);
- at the registry of a court (Court of Appeal of Paris, 4th ch., December 20, 2000).
Nevertheless, if the previous seizure had been canceled, it is only possible to return to the bailiff or the registry that the objects seized "really" (Court of Appeal of Paris, 4th ch., December 20, 2000) ie it is impossible to re-enter the PV, the descriptions made, the photographs, the photocopies (C. Cass. com., No. 01-10807, July 1st. 2003).
Several places and places still unknown
A seizure can be requested in several places at the same time, possibly in the same request (Court of Appeal of Paris, ch 04, May 30, 2001).
The request may also request authorization to continue the infringement seizure in any place depending on the same persons as those carrying out their activity in the initial place of seizure (Paris District Court, c. 03, sect. 02, September 21, 2001), without further precision.
In this case, the seizure must not be closed in order to continue in other places (C. Cass. com., January 21, 2004, No. 02-14525)
Person who can request a counterfeit seizure
An infringement seizure may be requested by any person entitled to bring infringement proceedings (L615-5 CPI).
Thus, the patentee can act but also the exclusive licensee (if his license was registered in the GNI earlier at the request of seizure, Rennes Court of Appeal, 2nd c. com., February 24, 2009).
The fact that the applicant has just acquired his rights (eg purchase of a patent portfolio) does not prevent him from requesting an infringement for acts prior to the acquisition of these (Paris Court of First Instance, 3rd c., 1st Sect., Interim order, December 17, 2015, RG n ° 15/12229).
The fact that the patent in question is the subject of a dispute concerning its ownership does not prevent the current owner from requesting an infringement (Court of First Instance of Paris, 3rd ch., 1st sect., Injunction order, February 11th, 2016, RG n ° 15/15073).
Person who can make the request
The request must be submitted by a lawyer (Article 813 CPCparagraph 1).
The latter must be competent to act before the TGI of Paris (ie to be registered with the Paris Bar, eg to be a candidate lawyer, Paris District Court, 3rd c., 2nd Sect., Order, 6 June 2014; Provini et al c. Christophe P. et al)
If no proceeding is in progress
The competent judge, for patents, and to submit an application for seizure-infringement, is the president of the tribunal de Grande Instance of Paris (L615-5 CPI together D631-2 CPI together D211-6 of the Code of Judicial Organization).
If an instance is in progress
If a proceeding is in progress, the competent judge is the president of the chamber before which the case was distributed (812 Code of Civil Procedure, Third paragraph, and Court of Appeal of Bordeaux, 1st c. civ., sect. A, February 3, 2014, Paris Court of Appeal, Pole 5, Chamber 2, July 1, 2016 RG 15/15933 who has validated the judgment of first instance): if the president of the TGI signs the request, the seizure can be canceled.
Patent / Patent application
Patent in force?
The seizure-counterfeiting does not seem to be able to be requested on the basis of an expired patent (C. Cass. com., n ° 09-72946, December 14, 2010).
This principle may seem surprising because the article L615-5 CPI indicates that any person who may act in infringement may request a seizure (and knowing that it is possible to act in infringement with an expired patent provided that there are acts of counterfeit not prescribed).
A priori, nothing prevents the owner of a foreign patent from being able to request an infringement seizure in France to establish proof of acts of infringement (Article 7 of the Directive 2004/48 / EC of April 29, 2004 or article 24 of the Brussels Convention and / or Article 24 of the Lugano Convention).
This may seem, however, in slight contradiction with the article L615-5 CPI because this article presupposes an upcoming dispute in France ...
In addition, it is possible to wonder about the provisional measure of Article 7 of the Directive 2004/48 / EC could be an infringement seizure. Indeed, there is a lot of discussion indicating that a seizure is an evidential or protective measure. First of all, I draw the reader's attention to the fact that the highest French court (CCass March 14, 2018, RG n ° 16-19731) considered that the seizure 145 (which is certainly not an infringement seizure) was indeed a protective measure. In addition, the Directive 2004/48 / EC Talk about " provisional measures ... to preserve relevant evidence". Therefore, can we really speak of a provisional measure? It's starting to look a lot like a probationary measure.
There is nothing to prevent the holder of a patent application from requesting an infringement seizure from the time the patent application was published or was notified to the person seized (L615-5 CPI because the action for infringement is open in this case according to L615-4 CPI - Court of Appeal of Paris, ch. 04 sect.A, April 25, 2001).
Moreover, this case is explicitly mentioned in R615-2 CPI (a certified copy is required).
Position of the French judge
Article L615-5 CPI does not impose any proof or no beginning of proof and the judge does not seem to be able to refuse entitled to proceed"), Because precisely this is the purpose of the seizure (Cass. com., No. 97-12699, June 29, 1999).
The applicant does not even have to recall the previous entries he has already made (Cass. com., No. 04-10105, July 12, 2005)
However, in practice this may be different and judges are reluctant to order a seizure on the simple request of a patent holder (Court of Appeal of Paris, Pole 1, 3e ch., January 28, 2014, " as it is a measure of exceptional gravity, since it allows the seizure of counterfeiting and the access to documents of a company in a non-adversarial manner, the request should not be based on mere non-contradictory assertions or allegations. supported by a minimum of parts").
A recent judgment of the Court of Cassation finally clarifies the situation: the texts do not provide any proof of proof because precisely the seizure (here a seizure based on theArticle 145 of the Code of Civil Procedure but this is transposed, in my opinion, directly to counterfeit seizures) is intended to report them (C. Cass com, February 10, 2015, No. 14-11909).
Interaction with Community law
We can nevertheless wonder about the conformity of the French law with the Directive 2004/48 / EC of April 29, 2004: in fact, article 7 of this directive provides that the measures may be ordered " at the request of a party who has reasonably accessible evidence to substantiate his allegations ».
French law is silent on this point ...
We then come back to the endless debate about the existence or not of thehorizontal direct effect directives in France, debate that we will not develop here, because a complete thesis can be made on the subject.
And especially if we were to retain this direct effect, one could wonder if these measures are indeed seizures ...
The judge can ask for a guarantee from the seizor in the event that the seizure turns out to be abusive or if a real seizure is authorized (L615-5 CPI).
This guarantee must be paid before the start of the seizure (R615-2-1 CPI).
This guarantee can be a bank guarantee or a deposit made with the Caisse des Dépôts et Consignations (L518-19 Monetary and Financial Code).
The bailiff must of course be territorially competent: he can execute the order only within his jurisdiction (Order No. 45-2592 of November 2, 1945, art 1 together Decree No. 56-222 of 29 February 1956, art 5).
We must be careful because the order often allows the execution of the order " by any usher of his choice ": This turn of phrase can be interpreted by some magistrates as meaning" a single bailiff ». Therefore the presence of two bailiffs, may result in the nullity of the seizure (Rennes Court of Appeal, 2nd c. com., February 24, 2009).
However, if only one of the ushers is instrumental, this is not a problem (the others are present to assist the first, Paris District Court, 3rd Division, 4th Sect., 12 May 2016, RG No. 14/17816 or C. Cass. com n ° 13-23416, May 3, 2016).
Choice of expert
During the seizure, it is possible for the bailiff to be assisted by experts (L615-5 CPI) to help him understand the technical aspects of patents.
It is commonly accepted that:
- may be designated as an expert:
- an expert in a court;
- a Patent Attorney:
- even that of the seizing C. Cass. com., No. 03-15871, March 8, 2005because the profession's code of ethics imposes on the profession " dignity, conscience, independence and probity "
- possibly accompanied by a "trainee council" (Court of Appeal of Paris, 4th ch., Sect. A, December 3, 2008) who is subject to the same rules of professional conduct;
- it is better to avoid that this council has carried out expert opinions in this same case because some judges seem very fussy… (Paris Court of Appeal, Pole 5, Chamber 1, March 27, 2018, No. 17/18710) ;
- a graduate engineer in a specific field (Court of Appeal of Paris, 4th ch., Sect. A, December 6, 2006);
- a technician employed by a client company of the applicant (Paris District Court, May 5, 2009);
- can not be designated as an expert:
- seizing him or the worker of the seizor (C. Cass. com., No. 02-20330, April 28, 2004) (under the authority of article 6-1 ECHR)
- a non-independent part (C. Cass. com., No. 97-21404 97-22141 97-22392 97-22430, July 6, 2000).
If, in principle, nothing precludes the appointment of the applicant's lawyer as an expert (C. Cass. com., Apr. 18, 2000, No. 97-19631), this seems dangerous, because VPs have already been canceled because the lawyer did not decline his quality (Rennes Court of Appeal, 2nd c. com., January 10, 2006). So in general, it should be avoided ...
The number of experts can not be limited in the ordinance because there are no restrictions in the law (Court of Appeal of Paris, 4th ch., Sect. A, December 6, 2006). Nevertheless, it is necessary that the presence of the experts has been requested and authorized in the order.
Others assisting the bailiff
The bailiff may be assisted by any person, if the order authorizes it (ie the police force, locksmith, etc.). Paris District Court, 3rd Division, 1st Sect., May 30, 2007): the unauthorized presence of a person is a nullity of form and a grievance must be invoked to request the nullity of the seizure.
Nevertheless, the presence of a bailiff clerk does not need to be explicitly mentioned because he is a subordinate of the usher (Paris District Court, 3rd Division, 1st Sect., May 30, 2007).
If a technical task is to be performed (eg disassembly of a machine), the order may authorize the presence of technicians / mechanics: unlike the expert, it seems possible to designate as a technician an agent of the seizor (provided that the PV mentions that this agent is limited to his technical acts, Court of Appeal of Paris, Pole 5, 1st ch., December 19, 2012).
Submission of a motion
Identification of the holder and his rights
The holder must provide the president of the TGI Paris with proof that his patent exists and is in force (see above).
So, must be attached:
- a copy of the patent or patent application (R615-2 CPIparagraph 2):
- the statement of payment of annuities (C. Cass. com. No. 07-14709, January 29, 2008), unless the patent has been issued for less than one year (Paris District Court, 3rd c., 2nd Sect., Order, 6 June 2014; Provini et al c. Christophe P. et al);
- where appropriate the chain of rights of successive patentees »(C. Cass. com. No. 07-14709, January 29, 2008).
If the applicant is the holder of an exclusive license, it is important to produce the documents proving that he has given notice to the owner of the rights (R615-2 CPIparagraph 3) and its license agreement (R615-2 CPIparagraph 2).
In case of "legal entity" holder, care must be taken:
- the designation of the company (RCS number and social form, C. Cass. com. No. 07-14709, January 29, 2008): a bad legal person is indicated, it is not a simple material error and can not therefore be corrected;
- in the hands of the representative of the company requesting the seizure (C. Cass. com. n ° 07-14457, June 3rd, 2008): he must be able to engage society.
However, the judges also considered that the absence of these mentions (and not erroneous mentions as above) was only a defect of form for which it is necessary to prove a grievance (Paris Court of First Instance, 26 May 2016, 3rd c., 4th Sect., Order of summary revocation, RG n ° 16/03162).
It is not useful for the order to show the name of the petitioner and the designation of the petition because the order is consistent with the petition (Paris Court of First Instance, 26 May 2016, 3rd c., 4th Sect., Order of summary revocation, RG n ° 16/03162).
Signature of the request by the lawyer
The request must be signed by the applicant lawyer.
However, for some a technical defect: in the absence of a complaint, the seizure will not be canceled (Court of Appeal of Aix-en-Provence, 2nd c., December 5, 2013 or Court of Appeal of Paris, January 19, 2016, Pole 5, 1st ch., RG n ° 14/10676).
It should be noted that this is strange since the Court of Cassation indicated that it was a substantive nullity (C. Cass. com., November 14, 2006, No. 04-14865 or C. Cass. 2nd civ., February 24, 2005, No. 03-11718)…
Identification of the motions judge on the order
The judge who signed the order must be specifically identified (a formula such as We, president, [...] " is not enough, C. Cass. crim. No. 09-80599, September 22, 2009).
Indeed, articles 454 CPC and 458 CPC stresses that the absence of the name of the judge renders the order null (if the signature is clear, this may be enough C. Cass. com., March 21, 2000, No. 97-18914).
The signatory judge, if he is not the president, is presumed to have received the delegation of the president of the TGI to rule on the request presented to him (Court of Appeal of Paris, ch. 04, February 28, 2001).
Identification of the object seized
The request must allow the bailiff to identify the product to be seized or the process to be described (Court of Appeal of Paris, 4th ch., Sect. B, December 10, 2004): it is possible to refer to the claims of the patent.
If the bailiff describes or seizes objects likely to infringe other rights (patents, trademarks, etc., Court of Appeal of Paris, ch. 04, September 23, 1998) or if the bailiff seizes items that do not comply with the order (C. Cass. com., May 31, 2005, No. 03-12162), the bailiff exceeds his powers, unless this seizure (respectively this description) occurs, incidentally, during the seizure (respectively this description) of the object referred to in the order: this evidence may then be used in another action for infringement or unfair competition.
Authorization to start up, dismantle, etc.
Generally speaking, all possibilities in the application should be considered: if the order does not explicitly allow the start-up of a machine or its disassembly, the bailiff is not entitled to do so on his own command (Court of Appeal of Paris, 4th ch., Sect. A, December 15, 2004)
Request to seize various documents
The seizer may request that " any document relating to Counterfeit can be seized (L615-5 CPIparagraph 2).
This very broad terminology covers:
- technical documents, such as production records,
- inventory lists,
- advertising printed matter,
- the catalogs,
- instructions for use,
- the MA application file (Court of Appeal of Paris, ch.14, 16 January 1998), although some confidential elements agree to be masked.
Moreover, it is possible to ask to authorize "Any relevant finding with a view to establishing the origin and extent of the infringement »(R615-2 CPIparagraph 4).
Therefore, it is possible to enter accounting and commercial documents (invoices, correspondence, etc.).
It is possible that these documents (eg invoices) will reveal elements that have nothing to do with the object of the input. The fact of seizing them is not in itself a problem: the seized person should have requested the withdrawal of this information to the usher (Paris District Court, 3rd Division, 4th Sect., October 28, 2010 or Paris District Court, 3rd Division, 2nd Sect., January 14, 2011).
Request to seize counterfeit tools
It is possible to request the actual or descriptive seizure of the machines used to produce the "counterfeit" objects (L615-5 CPIparagraph 3).
However, it must not be forgotten that this seizure is intended to constitute evidence and is not used to prevent the alleged infringer from continuing his actions.
Identification of the person seized?
It is not necessary to designate in the query the name of the seizure if it is unknown to the seizor, as long as the location of the seizure is precise.
In addition, the seizure must not be designated by the " alleged counterfeiter "But rather the" holder of counterfeit goods ».
Identification of means of redress?
According to some judges, the article 680 CPC which imposes the indication of the means of appeal and the corresponding time limits of recourse concerns a priori only the judgments and not the ordinances.
However, other judges consider that this indication is necessary and that the formula " It will be referred to us in case of difficulty " it's not enough (Court of Appeal of Paris, 4th ch., Sect. B, April 11, 2008).
In any event, this lack of a remedy does not constitute a substantive nullity (C. Cass. com., January 14, 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 court on the merits (Court of Appeal of Paris, 4th ch., Sect. A, January 12, 2005).
The applicant having obtained an order permitting a seizure is not obliged to execute it or to carry out all its measures (Court of Appeal of Paris, ch. 04, sect. B, March 29, 2002).
Article L615-5 CPI provides that all usher "May realize the seizure (at the option of the applicant): nevertheless, this usher must act within the limits of its territorial jurisdiction (ie its jurisdiction).
Place of seizure
The counterfeit seizure must take place at the exact address indicated in the order.
If unfortunately, the beginning of the operations begins at 10m of this address, it is advisable to cancel the seizure for exceeding the power of the usher (Paris District Court, September 11, 2014).
Presentation of the bailiff and experts
Before starting the seizure, the bailiff must (on pain of nullity):
- to present oneself (C. Cass. Company, July 5, 1995, No. 92-40050), and
- introduce the different experts to the seizure (Court of Appeal of Paris, ch04, sect. A, May 14, 2002).
Service of order and motion on garnishee
Service of order and motion
It is necessary to serve the seizure onorder (copy of the minute or the big one) and the request seized so that the latter can verify the extent of the usher's powers (Article 495 CPC and R615-2-1 CPI paragraph 2).
The meaning of one does not mean the meaning of the other (Court of Appeal of Paris, 4th ch., Sect. B, 9 November 2007).
The fact that the seized party lets the usher into his premises and lets him seize is not proof of the service of the order (Court of Appeal of Paris, 4th ch., Sect. B, 9 November 2007).
In case of non-service, the nullity of the seizure is incurred and damages may be payable (R615-2-1 CPI):
- some consider that it is a defect of form and that the seized person will thus have to justify a grievance caused by this irregularity (Court of Appeal of Paris, 4th ch., Sect. B, 9 November 2007),
- others consider it to be a substantive fault (Paris District Court, 3rd Division, 4th Sect., March 17, 2016, RG No. 14/12684).
Nevertheless, in the absence of the party seized, nothing seems to prevent seizure, but the presence of law enforcement is essential (L142-1 Code of Civil Enforcement Procedures) and a service of the order must be made by the filing of a notice of passage at the person's home (the copy may be withdrawn from the bailiff's study, Article 655 Code of Civil Procedure): for all that, I do not know of any decision that validates this mechanism.
Delivery of a copy
The service of the order must consist of a delivery of a copy and not merely a display of it (C. Cass. com., December 19, 1977, No. 76-12389).
Person to whom service is made
The service of the order must be made to the holder of the objects claimed to be infringing (Court of Appeal of Paris, ch. 04, May 9, 2001) and not to the alleged infringer (Paris District Court, 3rd Division, 2nd Sect., May 27, 2016, RG No. 13/01235).
In the case of a corporation, it must be served on its legal representative, on a "proxy" of the latter or on any other person authorized to do so (Article 654 of the Code of Civil Procedure), ie, according to the case law:
- to the manager and not to the production manager present (Paris District Court, c. 03, June 16, 2000);
- to a secretary who did not object and who could call her management toCourt of Appeal of Paris, Pole 5, 1st ch., October 2, 2013; Filmop c. Dit et al);
- or to any person indicating that he is authorized (because the usher does not have to check this point, C. Cass. 2nd civ., May 29, 1991, No. 90-10713) even if that person is outside of society (Paris District Court, 3rd Division, 2nd Sect., June 18, 2004).
Reasonable delay ?
Historically, the case law required that the bailiff leave a " reasonable delay In the seizure between the meaning of the order and the beginning of the transactions (Paris Tribunal de Grande Instance, 3rd c., 1st Sect, 6 October 2009) even though some jurisdictions believe that, in the absence of a legal requirement, foreclosure transactions can begin immediately (Court of Appeal of Paris, 4th ch., Sect. A, February 22, 2006).
Was considered reasonable a delay of 5 minutes, knowing that the order was only 4 pages (Court of Appeal of Paris, Pole 5, 1st ch., October 2, 2013; Filmop c. Dit et al).
This meaning and the fact that a reasonable period of time has been left to the seized to become acquainted with it must be noted in the seizure report or in a separate document (but no prior notification is required, Paris District Court, c. 03, January 30, 1998).
Nevertheless, in a recent decision of the Court of Cassation, the judges seem to consider that only the mention of the fact that this formality took place prior to the operations is sufficient (C. Cass. Civ. 1, March 19, 2015, No. 13-25311): we look forward to the reaction of the lower courts.
Meaning of other documents?
If a guarantee has been requested by the judge, the act of deposit must also be presented (R615-2-1 CPI).
A priori, it is not necessary to submit the documents annexed to the application which have been presented to the judge. Nevertheless, a copy of the patent relied upon does not do any harm in order to allow the person to know what object is intended.
Limitation of the powers of the bailiff during the seizure
It is because of the exorbitant nature of the seizure and because of the non-adversarial nature of the order that the authorization given by the president in the order must be strictly interpreted (Court of Appeal of Paris, 4th ch., Sect. B, March 30, 2007).
The bailiff is authorized to look for evidence of counterfeiting by examining all the objects or documents in the premises. He is the only one who can actively search (Court of Appeal of Paris, 4th ch., Sect. B, December 21, 2007).
Prohibition of interrogations
If the bailiff can search for the evidence, he has no specific right to question the person seized (eg to obtain confessions or to obtain details about the operation of a process, Court of Appeal of Paris, 4th ch., Sect. B, February 16, 2007).
On the other hand, the bailiff can ask any question necessary for the accomplishment of his mission (Court of Appeal of Orleans, ch. com, January 29, 2009): border, in practice, difficult to define ...
Border all the more difficult to define that the jurisprudence authorizes, in case of complete silence of the seized, to appeal against the order of seizure to modify it and, under the R615-4 CPI, and article 11 CPC, order, possibly under penalty, to answer or to communicate a piece.
Entry of authorized samples
The order may authorize the seizure of a number of samples.
The seizure of a greater number of samples may be considered as exceeding the powers conferred by the order on the bailiff.
Nevertheless, the seizure of a number of samples lower than the authorized number is not an excess of the power conferred by the order, because this situation is rather favorable to the seized (Court of Appeal of Paris, Pole 5, 2nd chapter, May 9, 2014).
Writing of the seizure report
Identification of the bailiff and stamp
The surname, first name, signature, name of the CPS, address of the CPS and associate status of the bailiff must appear clearly on the entry form (648 CPC) under pain of nullity of this one (Court of Appeal of Paris, 4th ch., September 15, 2000).
Nevertheless, this irregularity seems to be an irregularity of form and the seized person will thus have to justify a grievance caused by this irregularity (article 649 CPC together 114 CPC): this complaint may be the non possibility of checking the quality of bailiff (Court of Appeal of Paris, 4th ch., September 15, 2000).
The same applies to the usher's stamp which he must affix on each of the documents of the seizure report (Paris District Court, 3rd c., 1st year, 30 September 2008): irregularity of shape can be corrected at any time.
Identification of the person seized
The bailiff has the power to ask people on the scene of the seizure to prove their identity (and possibly that of the legal person holding the products alleged infringement), so it should be specified in the order under the visa of the R615-2 CPI (because some jurisprudence refuses even if this verification would be made by a police commissioner, Court of Appeal of Paris, ch04, September 21, 2001).
Report writing and descriptive entry
There is no requirement for text format: it can be typed or manuscript or both (Court of Appeal of Paris, 4th ch., Sect. B, December 10, 2004).
The fact that the bailiff uses the term " counterfeiting Does not necessarily constitute a fault, especially if the seized person uses the termParis District Court, September 30, 2009).
The fact that the bailiff takes over directly and in his PV the handwritten findings of the expert or the CPI may result in the nullity of the seizure (" role reversal », Tribunal de Grande Instance of Paris, 3rd c., 1st Sect., October 26, 2010). It should be noted, however, that the bailiff's acceptance of the expert's comments is possible, as long as the bailiff distinguishes them from his own words (testimony value) (C. Cass. com., March 21, 2000, No. 97-18914).
In particular, and in order to avoid that the judge considers that the bailiff has been influenced by the expert, it should be avoided that the vocabulary used in the descriptive part is too "technical" or constitutes an interpretation ( ex. these two edges form a middle wing », C. Cass. Civ. c. com, September 29, 2015, No. 14-12430).
Moreover, if the bailiff is not able to carry out the description (eg very complex object to be analyzed in the laboratory), he is not obliged to do so (« the impossible no one is bound " Court of Appeal of Paris, 4th ch., Sect. B, September 10, 2004) but it is necessary to avoid that the usher describes things which, obviously, could only be described by the expert (eg description of a non-visible object or a process whereas the machine was not started).
The bailiff has the opportunity to record the seizure (if it is a spontaneous statement), but has no obligation to do so even when the garnishee wishes to record a protest.
It is possible to ask that the bailiff may request the help of the police (Court of Appeal of Paris, 4th ch., Sect. B, April 11, 2008) even before the commencement of operations and even without resistance of theC. Cass. com, No. 90-17782, June 30, 1992).
Introduction of an object on site
In order to introduce into the premises of the seized a "counterfeit" object, it is essential to obtain the express authorization in the order (C. Cass. com, No. 08-20486, September 29, 2009).
Moreover, in order to be able to show the object introduced and to question the persons present in order to collect their spontaneous declarations as to the acts of infringement, the usher also seems to have had to be " expressly and specifically authorized »(C. Cass. civ 1, No. 08-10656, April 2, 2009).
Otherwise, this introduction constitutes a fundamental nullity (Paris District Court, 3rd Division, 1st Sect., 19 June 2014): no grievance has to be shown in order to cancel the seizures.
It would be different if the object had been discovered on the spot (C. Cass. com. No. 08-18598, July 7, 2009).
If an authorization is given to the bailiff to introduce an object on site but it is the expert who introduces it, this does not seem to be a problem since the expert works under the control of the bailiff (Court of Appeal of Paris, pole 5, 2nd chapter, February 28, 2014).
The seizure must not allow to spy on its competitor and to access factory secrets (C. Cass. com., No. 07-15075, July 8, 2008).
Such misuse of the procedure may be punishable by damages (C. Cass. com., February 12, 2013, No. 11-26361).
In addition, the confidential nature of the documents seized is not a reason to oppose the seizure (Paris District Court, c. 03, July 4, 1997). The garnishee may nevertheless notify the bailiff that these documents are confidential or go beyond the scope of the order. In this case, the bailiff must, out of prudence, place them in temporary sequestration without transmitting them to the patent holder.
The seized or the seized can then seize the president of the Tribunal de Grande Instance of Paris (appeal of the article R615-4 CPI) or the judge of the order (referred to as a retraction to amend the order) in order to have it rule on the accessibility of these documents to the patentee (Court of Appeal of Lyon, ch. 01, September 23, 1999).
In order to be able to decide, the judge can call on an expert to distinguish, among the information and confidential documents, those which are necessary to the proof of the counterfeiting of those who are foreigners (Paris District Court, c. 03, July 4, 1997).
The difficulty of this expertise is that it can not be totally contradictory because of the secrecy surrounding these documents: thus, to avoid any problem, it is advisable to allow the advice of the parties, subject to confidentiality, to be present during the meeting. expertise (Paris District Court, c. 03, October 31, 2000).
Approach related to the “trade secrets” law
The 2018 business secrecy law has somewhat impacted the infringement seizure without calling into question the historical approach.
Indeed, the judge can (but it is not an obligation) request the compulsory placement (that is to say directly in the order) the placement under provisional sequestration of the seized documents (R153-1 of the Commercial Code together R623-51 CPI).
Of course, if the plaintiff does not propose it, it is quite likely that the judge will not add it in the order.
So you're going to ask me why the requester would ask?
Excellent question because it seems to serve him at first glance.
In reality I don't think so. Indeed, asking for it makes it possible to change the regime for lifting the secrecy: whereas in the historical approach, the applicant had to intervene to convince the judge to lift the secrecy, here, it is up to the party seised to convince the judge (R153-3 of the Commercial Code) that the documents are confidential within one month (R153-1 of the Commercial Code together R623-51 CPI).
Expert and foreclosure interaction
If an expert can assist the bailiff in his mission (see above, for the quality of this expert), the roles must not be reversed (C. Cass. com. No. 08-11235, March 3, 2009): the expert can not directly ask the seized person to provide documents or answer certain questions.
Interaction of the expert and the bailiff
The expert can of course discuss with the usher: the latter must not let himself be influenced by the technical statements of the expert. At least, he must clearly distinguish in his PV the comments of the expert and his own findings (Paris District Court, May 5, 2009 or Paris District Court, September 30, 2009).
Latitudes left to seized
The seized is at home: he can bring any person he wants in his business (eg lawyer, IP consulting).
Moreover, the seizure does not have to be cooperative:
- he does not have to open the doors of the premises,
- he does not have to help the seizing,
- he is not obliged to answer questions, and may forbid his employees to answer.
Incidents during seizure
Resistance on the part of the person seized (eg power cut, physical impediment, etc.) is a reprehensible fault.
Extension of operations
The seizure does not have to be limited to one day: the bailiff can continue his operations as long as necessary, even allowing a few days to pass between the days when the seizure takes place (High Court of Paris, ch03, sect. 03, June 25, 2002).
Regarding the progress of the seizure before 6am and after 9 pm, it is better to foresee this option in the ordinance, because normally it is not possible except authorization of the judge (L141-1 Code of Civil Enforcement Proceduresno derogation is possible if the premises also serve as a dwelling).
If the person who was served with the order is not present at the time of the extension of operations, it does not appear necessary to re-serve the order or indicate in the minutes that the order has been given to the person present during the extension so that it acquainted with the powers of the usher (Paris District Court, 3rd Division, 1st Sect., June 18, 2015 contradicting the order of the Paris District Court, May 7, 2014 rendered in the same case).
It may happen that the seizor makes " White cabbage ».
In this case, he may very well ask for an order for a new forgery seizure in the same place, hoping to be luckier the next time (C. Cass. com., July 8, 2008, No. 07-15075).
Nevertheless, in case of too many unjustified seizures, the seizor exposes his civil liability.
Delivery of the seizure report
At the end of the seizure, the bailiff must give a copy of the seizure report to the holder of the seized objects (R615-2-1 CPI, paragraph 2) (and not the infringer) and mention it in this or in a separate act.
If it can not be served, the bailiff must indicate this in his minutes and leave a notice (656 CPC).
The jurisprudence admits that the bailiff can take a few days (short delay) to finalize his PV and then serve it on the garnishee (Tribunal de Grande Instance of Paris, 3rd c., 13th January 2012): you must be careful to indicate the date of the discount to avoid incurring nullity. This postponement is possible because the code does not provide for any delay (Court of Appeal of Paris, March 4, 2016, RG n ° 15/10592)
This discount can be done against the signature of the seized, but this is not obligatory (Tribunal de Grande Instance of Paris, 3rd c., 13th January 2012).
If it is advisable to attach the photocopies to the PV, the photographs may be notified to the person seized by a later act of the bailiff before being annexed to the second original (Court of Appeal of Paris, 4th ch., Sect. A, November 12, 2003).
Failure to remit is an irregularity requiring the demonstration of a grievance (Rennes Court of Appeal, 2nd c. com., January 10, 2006 or Court of Appeal of Paris, pole 5, 2nd chapter, July 3rd, 2009).
Actions at the bottom
Calculation of time limits
Concerning the calculation of the deadlines:
- the date of departure is the date of the seizure (640 CPC) and not the date of the order (C. Cass. Civ. 1, March 19, 2015, No. 13-25311);
- more precisely, the date of the seizure is the closing date of the seizure report by the bailiff (C. Cass. com. No. 76-12414 May 2, 1978).
- the date of entry should not be taken into account to count the number of days (641 CPC);
- the deadline is extended in case of WE or public holidays (642 CPC);
- the period expires on the last day of the deadline at midnight (642 CPC);
- the end date of the deadline is:
- the meaning of the summons or summons and not the referral to the court (Paris District Court, c. 03, February 12, 1997 or Court of Appeal of Paris, 4th ch., Sect. B, December 15, 2006);
- transmission by the bailiff to the requested foreign entity of the summons accompanied by a translation into the foreign language pursuant to Articles 8 and 9 of the Regulation (EC) No 1393/2007 of 13 November 2007 (Paris District Court, 3rd c., 2nd Sect., December 5, 2008);
- the civil suit complaint (C. Cass. Crim., 29 February 2000, No. 99-82048), but since the reform of 2007 which submits the civil party application to a period of three months (85 CPP), we can ask the interest of this option.
Otherwise, the entire counterfeit entry is canceled (including the entry description, L615-5 CPIparagraph 5).
Plurality of seizures
In the case of a plurality of entries, each sends a delay (C. Cass. com., June 3, 2003, No. 01-14214).
Action already existing
It is quite possible to request a seizure while an action on the merits is already engaged.
At first instance, this request must be made to the President of the Chamber and not to the President of the Tribunal de Grande Instance in Paris (C. Cass. com. No. 05-19782, March 26, 2008because the article 812 CPC applies) indicating that an action is already pending (494 CPC and 813 CPC).
Of course, if an action on the merits had already been initiated, the obligation to assign the merits does not exist (C. Cass. com No. 91-18049, October 26, 1993) and there is no need to reassign.
It would still seem necessary:
- to indicate in the request for seizure that a proceeding on the merits has already begun (C. Cass. com. No. 05-19782, March 26, 2008);
- to provide a new conclusion game after the seizure (Paris District Court, 3rd Division, 1st Sect., September 30, 2008, which is surprising since the law is silent on this point).
Person to assign
There is no obligation to assign the holder of the objects seized (indeed, the seizure at a carrier could highlight the name of the real counterfeiter, Paris District Court, c. 03, June 15, 1999): any third party can therefore be assigned.
Validity of the assignment
However, it is necessary that this assignment be valid (Court of Appeal of Paris, ch. 04, June 20, 2001).
If the assignment was valid but lapsed (eg failure to surrender within four months a copy of the summons to the registry, 757 CPC), the nullity of the seizure is also incurred.
Nevertheless, if the seizor deceives himself of jurisdiction, it is considered that the deadline was nevertheless respected (Douai Court of Appeal, February 12, 2008), because the case is returned to the correct jurisdiction, in the same instance.
Case of a seizure requested on the basis of several titles
In this case, it seems necessary that the summons should cover all the titles on the basis of which a seizure was requested (Court of Appeal of Paris, ch. 04, 24 November 2000).
If the holder wishes to take several actions against several counterfeiters, it is only necessary that only one of these actions comply with the aforementioned assignment period (C. Cass. Civ. c. com., July 7, 2015, No. 14-12733).
It is therefore not necessary for all actions to be commenced within the assignment period.
Use of evidence
Evidence from the forgery seizure may be used:
- during the proceedings on the merits (L615-5 CPI);
- in a foreign procedure (even if the report of seizure does not necessarily have the probative force of an authentic instrument) (Paris Court of Appeal, pole 5, room 2, October 4, 2019, RG n ° 18/23117);
- against a third party to the seizure (Court of Appeal of Aix-en-Provence, ch. 12 February 1999);
- by a third party in the same instance;
- in another instance, opposing the same parties on the basis of the same patent.
A seizure executed on the basis of a model may be used to prove infringement of a patent held by the plaintiff (Court of Appeal of Paris, pole 5, 2nd ch. , November 13, 2009).
Of course, the probative force of the seizure is important when objects or samples have actually been seized or photographs taken, because even if the usher is mistaken in his PV (Paris District Court, c. 03, June 13, 1997), the judge may correct the error itself by itself.
Nevertheless, if the objects seized are opened, manipulated (eg open bag then closed), they may lose their probative value (Court of Appeal Paris, ch. 04, May 18, 2001).
Similarly, if the precise and detailed statements of the person encountered at the place of seizure can not be valid as an admission of a legal representative of the company, they are none the less valuable information (Court of Appeal of Paris, ch04, September 21, 2001).
Fate of seized items
In the context of an actual seizure, the seized objects remain of course the property of the seized (the seizure having for sole purpose the preservation of the proof and not confiscation).
The risks of loss or deterioration of the seized object weigh on the seizing (T. civ. Seine, December 5, 1872).
If the infringement action is ultimately found to be unfounded, it is possible to request the release of the samples or the actual seizure and the return of the objects placed under seal (C. Cass. com., No. 01-14945 April 23, 2003). This release extends to the copies of the documents produced (Paris District Court, 3rd Division, 1st Sect., May 2, 2007) and any photograph taken.
Of course, the return of seized objects gives rise to a claim against the seizor: the return of the price paid, if any
The costs of seizure (bailiff, photographer, locksmith, etc.) are the responsibility of the seizor and are incurred under Article 700 CPC (Paris District Court, 3rd Division, 1st Sect., March 9, 2010)
Evidence of the seizure report
A seizure report has the value of an authentic deed (Court of Appeal of Paris, ch. 04 sect. A, January 15, 2003) and therefore has significant probative value.
Registration of forgery and offense of forgery
The procedure offake inscription allows to seek to reverse the presumption of the evidence.
This fake inscription does not necessarily mean that the bailiff has committed a forgery offense of the article 441-4 of the Penal Code (ie questioning the usher because of a fraud of it).
In this context, the false lies only in the inaccuracy of the findings of the bailiff and not in bad faith.
Examples of errors justifying a false registration
A fake entry may be raised when the bailiff:
- "Appreciates" facts rather than observes them;
- indicates that the patent is reproduced (role of the judge);
- uses technical terms that presume counterfeiting.
Proof of forgery
Proof of the forgery may be made by showing that the bailiff was unable to ascertain the material facts that he has stated (Paris District Court, 6 October 2000) for example by using the attached photographs (Paris District Court, March 19, 1999).
To make a fake inscription, it is possible to make it:
- incidentally in an existing substantive procedure (ie incident of false articles 306 CPC at 312 CPC);
- Mainly (Article 314 CPC).
If a false entry is made, but it is unsuccessful, a civil fine up to 3000 € can be imposed and the plaintiff can possibly be ordered to pay damages (305 CPC).
Most often, the judge orders that only the erroneous parts of the PV are discarded (Paris District Court, March 19, 1999).
Appeal open to the applicant if the request is not granted
The order on the motion may be appealed " if the request is not granted "(Article 496 CPC): this therefore covers the case where the judge rejects the application in its entirety and the case where the judge allows only part of the application.
The appeal is first examined by the judge of the motion (free appeal) and if he does not wish to modify his order, he transmits the appeal to the Court of Appeal (952 CPC).
Third party interested
Any interested third party (eg seized, counterfeiter, owner of a trade secret, etc.) may apply to the judge who granted the order (496 CPC) to retract it (the pre-trial judge is therefore incompetent, because a nullity of the seizure is not a procedural nullity (the seizure being distinct from the proceedings on the merits) or an incident terminating the proceedings. 'instance, Court of Appeal of Paris, Pole 5, 1st ch., December 12, 2012).
The judge may retract his order, but he may also modify or leave it unchanged (497 CPC).
Thus, the third party may in particular ask:
- the outright withdrawal of the prescription;
- the sequestration of certain coins (1961 civil code) (R615-4 CPI);
- a measure of sorting the pieces (Court of Appeal of Toulouse, ch. 02, April 5, 2000);
- the payment of the price of the coins seized;
This referral is not used to question than the conditions for granting the order and not the conditions of the procedure of the seizure (Court of Appeal of Paris, ch. December 14, 6, 1999) or the validity of the patent or the infringement (only the judge of the merits is competent, L615-17 CPI).
This retraction can thus be based on:
- the jurisdiction of the judge (Paris District Court, c. 03, June 14, 2000),
- the ownership of the patent,
- lack of justification of the rights of the seizingC. Cass. com., No. 07-14709, January 29, 2008),
- the serious challenge to the right to use the patent (eg a seizure by a licensee who claimed that the alleged infringement was within the scope of his license, C. Cass. com., No. 92-20704, December 13, 1994);
- lack of loyalty (Paris District Court, 3rd c., 3rd Sect., Summary order, March 29, 2013);
- the exhaustion of the right (C. Cass. com, No. 08-12139, June 9, 2009);
The seizer himself may introduce the interim order in retraction, to settle a difficulty that occurred during the seizure or to request a measure of a nature to complete the evidence (R615-4 CPI) (eg he may request the lifting of the seals put in place by the bailiff at the time of the seizure, because the documents were indicated as being confidential, Court of Appeal of Lyon, ch. 01, September 23, 1999).
The debate then becomes contradictory (cf. TRIPS agreementsArticle 50, 4 °).
The interim withdrawal is a summary and not a procedure in the form of the referred »(Court of Appeal of Paris, Pole 1, 2nd chapter, April 27, 2011 in the sense that it does not know the substance, that is to say the nullity of the PV of seizures).
However, this is not a reference " full »(« seized as in matters of interim », C. Cass. com., No. 80-12276, 24 September 1981): this procedure is not subject to the substantive conditions of the articles 808 CPC and 809 CPC (urgency, lack of serious challenge, existence of a manifestly unlawful disorder or risk of imminent harm) (C. Cass. com., No. 99-10076, October 9, 2001).
There is not really any time limit to form an interim order (C. Cass. 2nd civ., No. 01-11536, October 17, 2002).
Retraction can occur even if the case is already pending before the court (C. Cass. 2nd civ., N ° 89-18207, November 26, 1990).
The fact that an order is retracted does not mean that the holder can not ask for a new order again (C. Cass. com., No. 07-15075, July 8, 2008).
An appeal is also open against the possible withdrawal of the order (490 CPC).
The appeal period is fifteen days (490 CPC).
Consequence of the withdrawal on a seizure carried out
It may happen that the attachment order is retracted after the seizure operations.
In this case, the entry PV and the seized documents can no longer be used (Court of Appeal of Paris, September 23, 2014).
Request for nullity of the seizure
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 mayC. Cass. 1st civ., No. 11-18045, November 14, 2012):
- the fact that the plaintiff did not appeal the merits within the prescribed time limits (automatic nullity incurred even in the absence of a grievance, L615-5 CPI);
- the conditions of the procedure of the entry:
- the substantive nullities that are incurred even in the absence of a grievance (Article 117 CPCthe bailiff who performed certain acts did not have the power to do so);
- formal nullities that are only incurred if the applicant can justify a grievance;
- the conditions for granting the order (jurisdiction of the judge, evidence, title, etc.) (see above)
- if for a time it was not possible to request the nullity of the seizure for a problem relating to the granting of the order, the Court of Cassation validated this request for nullity before the judges of the merits (C. Cass. com, March 17, 2015, No. 13-15862).
Focus on substantive nullities
A background void can be:
- the fact that the judge granting the order is not competent (Paris District Court, c. 03, June 14, 2000);
- the request must be signed by the applicant lawyer (C. Cass. com., November 14, 2006, No. 04-14865 or C. Cass. 2nd civ., February 24, 2005, No. 03-11718);
- the fact that the title was not submitted at the same time as the application (Court of Appeal of Paris, 4th ch., Sect. A, May 12, 2004);
- the fact that the applicant is not entitled to request a seizure:
- the applicant is not the holder (Paris District Court, 3rd Division, 2nd Sect., April 15, 2005) even if, oddly, the Court of Cassation indicates that this is not a vice if the assignment is not registered (C. Cass. com., No. 92-14435, May 24, 1994);
- the applicant has not published an assignment or license to GNI (C. Cass. com., Oct. 31, 2006, No. 05-11149);
- the applicant is a simple and non-exclusive licensee;
- the lack of power of the representative of the company (eg power given to the CEO to represent the company in court voted by the GA, but the statutes have not been updated and published in the RCS, C. Cass. com., June 3, 2008, No. 07-14457)
- the applicant does not exist (eg company not yet registered, wrong name, C. Cass. com., January 29, 2008, No. 07-14709, the holder disappeared following a cancellation of the RCS, Paris District Court, 3rd Division, 2nd Sect., April 6, 2007)
- the title does not exist (has ceased to produce its effects, Paris District Court, c. 03, May 5, 1999 or is fallen, Court of Appeal of Paris, 4th ch., Sect. A, May 12, 2004), but its subsequent cancellation of the title does not render the seizure null and void (Paris District Court, 3rd Division, 2nd Sect., June 18, 2004);
- the title is not opposable (eg unpublished application, Court of Appeal of Paris, ch. 04 sect.A, April 25, 2001, non-notified amended claims Paris District Court, 3rd Division, 2nd Sect., April 6, 2007);
- the fact that the bailiff made a seizure outside his jurisdiction (C. Cass. 2nd civ., June 6, 2013, No. 12-17771);
- the fact that no guarantee was made despite the judge's request;
- the fact that the bailiff remakes a seizure after the close of operations (C. Cass. com., January 21, 2004, No. 02-14525);
- the fact that the bailiff exceeds the authorization conferred by the order (Court of Appeal of Paris, 4th ch., Sect. A, March 10, 2004), ex. arrest, seizure of stocks without authorization,
- the fact that the applicant is present (see above, C. Cass. 1st civ., July 6, 2000, No. 97-21404)
The nullity of the seizure for substantive irregularity is pronounced ex officio, without it being necessary to justify a grievance (119 CPC). The judge may raise it ex officio if it is of a public order (120 CPC).
Moreover, it is possible that the substantive irregularity leads only to a partial nullity (eg for the part for which the bailiff has exceeded his powers, Court of Appeal of Paris, ch. 04, September 23, 1998).
Even if certain jurisprudence had indicated that it was necessary to raise an exception of nullity of the seizure before any defense on the ground under penalty of inadmissibility (C. Cass. com. No. 98-19503, April 25, 2001), it seems in reality possible to request the nullity of a seizure (substantive defect) at any time (C. Cass. com. n ° 08-18732, January 19th, 2010), because it is not a procedural exception within the meaning of Articles 73 CPC and 74 CPC. (Court of Appeal of Paris, Pole 5, 1st ch., March 28, 2012).
This invalidity can also be requested on appeal because it does not constitute a new request, but a new means (Court of Appeal of Paris, ch. 04, September 23, 1998).
Focus on nullities of form
Formal invalidity sanctions the non-observance of a requirement of the law or ordinance.
Any person who alleges an irregularity of form must avail himself of a grievance (114 CPC) staff (not a grievance against a third party, Court of Appeal of Paris, Pole 5, 2nd ch. October 23, 2015, RG No. 14/06720).
The existence or absence of a grievance is a matter for the sovereign judgment of the trial court (C. Cass. 2nd civ., January 25, 2000, n ° 97-12620).
Nevertheless, the grievance must be precise and not simply consist in the fact that the person seized could not know the content of the authorizations conferred by the order (C. Cass. 2nd civ., May 29, 1991, No. 90-10713).
A nullity of form can be:
- non-delivery of the order (see above, C. Cass. 2nd civ., N ° 90-10713, May 29, 1991);
- the unauthorized presence of a person during the seizure to help the usher (except clerk of bailiff, eg a locksmith, Paris District Court, 3rd Division, 1st Sect., May 30, 2007);
- the non-delivery of the proof of constitution of guarantee (C. Cass. com., March 14, 1888);
- the lack of mention, at the time of the presentation of the application, and if a court of law is pending, of the court seised (Court of Appeal of Paris, ch. 04 sect. A, November 27, 2002);
- the fact that, if the order specifies the quality of the expert (eg IP consulting), this quality has not been respected;
- the fact that payment of the prescribed price has not been made (Court of Appeal of Paris, Pole 5, 1st ch., November 25, 2009);
- the fact that the first original, the second original and the copy served are not identical
- but a grievance may rarely be invoked if the difference between the originals is minimal (Court of Appeal of Paris, ch. 04 sect. A, January 15, 2003);
- the fact that the PV does not mention the name of the seized person (648 CPC);
- the fact that the PV does not mention the date of the seizure (648 CPC) which causes prejudice to the person being assigned since it can not verify the time limits for assignment (Paris District Court, 3rd Division, 1st Sect., December 17, 2003) unless the person assigned was present during the seizure (Court of Appeal of Paris, Pole 5, 2nd chapter, June 18, 2010);
- the fact that some photographs annexed to the PV do not include the visa of the usher (Paris District Court, 3rd c., 1st year, 30 September 2008);
- the lack of identification of the bailiff (see above, 649 CPC and C .Cass. com., No. 95-15804, October 20, 1998) even if the order is illegibly signed by the bailiff (C. Cass. com., December 19, 2006, No. 05-14431);
- the grievance may be the impossibility for the person seised to verify whether the natural person who came to his home actually had the title of bailiff (Court of Appeal of Paris, 4th ch., Sect. A, March 10, 2004);
- the non-publication by the INPI of the translation of the claims (Court of Appeal of Paris, ch. December 14, 1997), knowing that the notification of the translation before starting the seizure cure this irregularity;
- the failure to remit to the seizure of the report of seizure provided for in the article R615-2-1 CPI ;
- the grievance may be the inability of the garnishee to appeal in retraction before the judge of the seizure;
Nullities resulting from irregularities of form must be asked in limine litis (ie before any substantive means or any other purpose)74 CPC and 112 CPC - C. Cass. com., April 25, 2001, No. 98-19503), but this can be requested, possibly, after a request for expertise (because is not a defense on the merits) otherwise they are inadmissible.
An irregularity of form may also result in partial invalidity.
A nullity of form can be covered at any time (115 CPC).
The nullity of the seizure is before the TGI of Paris (Paris District Court, 3rd Division, 1st Sect., March 9, 2010) or in the Paris Court of Appeal, on appeal: the means of nullity constitute a defense on the merits and not a procedural objection (C. Cass. com., January 19, 2010, No. 08-18732, it is not necessary to raise the nullity in limit litis).
Like any defense on the merits, the competent judge is not the pre-trial judge but the judge of the merits (Tribunal de Grande Instance of Paris, order of the judge of the pre-trial, October 29, 2015, RG n ° 15 / 01383).
Persons who may request nullity
This action is not reserved to the garnishee and can therefore be requested by any person who has a legitimate interest (except for the invalidity related to the defect for the plaintiff to have used the substance, because the article L615-5 CPI the reservation to the seized).
The appeal of the decision of nullity of the seizure is opened with the judgment at the bottom, even if this nullity would be treated like an incident and judged before saying right on the bottom (Court of Appeal of Paris, ch. 04, sect. A, March 14, 2001).
Effects of invalidity
The effect of the invalidity of a seizure is the disappearance of the proof, which can no longer be used (9 CPC and C. Cass. com., July 1, 2003, No. 01-10807) even if it is admitted that the samples and the objects actually seized may be returned to the hands of the bailiff (C. Cass. com., No. 07-15075, July 8, 2008) or the Registry (Court of Appeal of Paris, 4th ch., December 20, 2000).
Abuse and abuse of process
Was considered a forgery seizure disguised a seizure requested under Article 145 CPCs whereas clearly a seizure-counterfeit would have been more appropriate (Court of Appeal of Paris, ch. 04, sect. A, March 27, 2002): the existence of a more specific investigative measure provided for in the Industrial Property Code excludes a priori the recourse to the more general text of the Code of Civil Procedure (C. Cass. 1e civ, n ° 11-20531, November 28th, 2012).
A purchase report is not necessarily a disguised seizure-forgery (Court of Appeal of Paris, Pole 5, 1st ch. November 7, 2012), because they are mere material findings and not disguised investigations. However, in the event of a purchase report, and if the bailiff carries out the acts himself, it is necessary for him to decline his quality when the account is purchased / opened on the Internet (Court of Appeal of Paris, Pole 5, 1st ch., February 27, 2013 or C. Cass. Civ. c. civ 1, March 20, 2014, No. 12-18518) unless the bailiff acts under an order of the motions judge and the bailiff authorizes the bailiff to disclose his true identity only after making the relevant findings (C. Cass., 2nd ch. civ., September 4, 2014, No. 13-22971).
The seizure must not allow to spy on its competitor and to access factory secrets (C. Cass. com., No. 07-15075, July 8, 2008). Such misuse of the procedure may be punishable by damages (C. Cass. com., February 12, 2013, No. 11-26361).
In addition, there may be an abuse if the seizor gives an important and unnecessary advertisement to the seizure (eg decision to make the seizure in a fair, ostensibly, to discredit the competitors with the customers, Court of Appeal of Orleans, ch. com., July 10, 2003).
In the event of repeated seizures without any particular reason, the seizor may also be punished (C. Cass. com., No. 96-10576, January 27, 1998).
Unfair parallel competition
In the case of a parallel competition procedure, one may wonder whether the framework of the counterfeiting seizure can be used to find the evidence necessary for the procedure.
If certain courts have already accepted a request motivated by counterfeiting and unfair competition (as long as the facts alleged are distinct, Paris District Court, 3rd Division, 1st Sect., November 8, 2011), this seems amazing.
Nevertheless, if the holder preferred to support two separate motions (for prudence) on the two different bases (unfair competition and counterfeiting), the two entries should be requested (entry " 145 And the counterfeit seizure) to the same judge: to the president of the Paris District Court (normally the seizure 145 wonders the president of the commercial court, C. Cass. com., No. 11-23216, November 20, 2012).
Right of information
Additionally, it is possible to request a lot of information about counterfeiting. Thus, it is possible to obtain information on the origin of counterfeiting, the distribution networks used, etc. (L615-5-2).
This right of information is granted by the judge (of the merits or the summary court), possibly under penalty.
It is not necessary that an action on the merits is already engaged or that an infringement is already judged in order to be able to request access to information allowing " determine the origin and distribution networks of products or processes "(Due to the new wording of L615-5-2): it is quite possible to ask the judge of the pre-trial (for example, via an exception).
Moreover, it is quite possible to use this right even if the patent in question has expired (but only if the facts covered by this application are not prescribed, C. Cass, ch. com., October 21, 2014, No. 13-15435).
Additional instructional measures
It is also possible to ask " any further instructions »(L615-5-1-1 CPI) even if no counterfeit seizure has been requested.
In general, it seems that the TGI of Paris is a little afraid of this new article and very rarely gives the requested measures.