Counterfeit action

Contents

Chapter 1. Who can act as counterfeit?

Section 1.1. Principle

Section 1.2. The owner of the patent

Section 1.3. A co-owner

Section 1.4. A licensee

1.4.1. The exclusive licensee

1) Principle

2) Notice

3) Registration of the license

4) Is the holder then deprived of a future action?

1.4.2. The licensee of #8217; office or compulsory

1.4.3. The simple licensee

Chapter 2. Against whom to act?

Section 2.1. Any unauthorized person

Section 2.2. A licensee

Section 2.3. A third party authorized by a single co-owner

Section 2.4. A licensee authorized by a holder, the latter having stolen the invention

Section 2.5. The natural person leader?

Chapter 3. What are the grounds for counterfeiting?

Section 3.1. A French patent

3.1.1. Principle

3.1.2. Patent application

3.1.3. Importance of the date of publication

3.1.4. Case of & #8217; an enlargement after publication

Section 3.2. A European patent

3.2.1. Principle

3.2.2. A European patent application

1) Principle

2) Coexistence of #8217; a French patent and #8217; a European application

Section 3.3. Based on #8217; international application (PCT)

Chapter 4. When can we act?

Section 4.1. During the life of the patent

Section 4.2. Prescription

4.2.1. Civil prescription

4.2.2. Suspension of the civil prescription

1) Principle

2) Puzzle for fun

4.2.3. Criminal prescription

Chapter 5. Legal action

Section 5.1. Jurisdiction

5.1.1. In civil matters

1) Principle

2) Clarification of the jurisdiction of the Courts of Appeal since November 1, 2009

5.1.2. In criminal matters

Section 5.2. L & #8217; proceedings on the merits

5.2.1. The language of the instance

5.2.2. L & #8217; assignment

5.2.3. The preparation

5.2.4. Means & #8220; delaying tactics & #8221; possible

Chapter 6. Civil sanctions

Section 6.1. Prohibition under penalty

Section 6.2. Reminder of the commercial circuits

Section 6.3. Confiscation

Section 6.4. Destruction

Section 6.5. Judgment advertising

Section 6.6. Damages and interests

6.6.1. Principle

6.6.2. Plate

6.6.3. Plate and license registration

6.6.4. History of the damage assessment

6.6.5. Resistance to counterfeiting

6.6.6. Punitive damages and interests?

Chapter 7. Penal sanctions

Section 7.1. Principle

Section 7.2. Reinforcement of the penalty in case of recidivism

Section 7.3. Reinforcement of the penalty in the case of a licensee

Section 7.4. Reinforcement of the sanction in certain other cases

Section 7.5. Complementary penalties

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Chapter 1. Who can act as counterfeit?

Section 1.1. Principle

The action for infringement may be brought by (L615-2 CPI):

  • the owner of the patent,
  • the exclusive licensee, and
  • the licensee of #8217; office or compulsory.

Section 1.2. The owner of the patent

The owner of the patent (or patentee) may be the one who filed the patent application, but he may also be the one who later acquired the patent.

To identify the patent holder, it is useful to look at the registrations made to the RNB (National Patent Register maintained by the & #8217; INPI) or to the REB (European Patent Register maintained by the & #8217; EPO). Indeed, assignments, legacies, etc. must be registered in one of these registers under penalty of & #8217;unenforceability (L613-9 CPI).

Thus, if the records do not mention any assignment:

  • either there was effectively no transfer and the owner is the one indicated on the patent specification;
  • or there has been an assignment and the owner of the patent has forgotten to register the assignment in one of these registers. In this case, the owner is inadmissible to act until #8217; he has not corrected the registers.

Normally, infringement acts prior to the transfer can only be prosecuted by the former owner of the patent.

It is possible, however, that the assignment provides that the assignee may exercise the rights of the assignor for the period preceding the assignment: subrogation in the rights of the assignor (C. cass. c. com, January 11, 2000, No. 97-10838). If the transfer did not provide for subrogation, the new holder cannot continue the facts prior to the transfer. However, it seems possible to & #8217; establish a & #8220;confirming act of assignment& #8221; at any time which will confirm the intention of the parties on the day of the transfer (it will be necessary to register of course Court of & #8217; Appeal of Paris, Pôle 5, 2e ch., March 15, 2019, RG n ° 17/02639)

In any event, the registration of the transfer makes the action of the new owner possible, but does not condition the calculation of the damage: in fact, the Paris Court of Appeal considers that & #8220;the rule of #8217; unenforceability provided for in article #8217; [L613-9 CPI] cannot have the effect of allowing the infringer to infringe the patent with impunity as long as the transcription of the assignment is not carried out” (Cour d & #8217; Appeal of Paris, Pôle 5, 1re ch., October 5, 2011).

In the context of a universal succession (inheritance, company merger, etc.), subrogation is automatic. However, this does not exempt registration & #8217; so that you can make your rights enforceable!

Section 1.3. A co-owner

A patent may belong to more than one person. We are talking about the co-owners of the patent.

The law provides for a suppletive regime (L613-29 CPI) governing the relations between the co-owners (special agreements may replace this suppletive regime).

This suppletive scheme provides forL613-29 CPI) that one of the co-owners can initiate an action for infringement without the agreement of the other co-owners. However, it is still necessary to notify the action to the other co-owners in order to give them the possibility of joining it and of taking advantage of it.

If the co-owner can act alone, he can only claim the part of the damages which is due to him. In other words, it is not subrogated in the rights of co-owners not present.

The court adjourns (L613-29 CPI b)) as long as the proof of this notification has not been brought to court. A priori, this proof must be provided within 2 years (386 CPC), but the counterfeiter may request a shorter period of time for the pre-trial judge.

Section 1.4. A licensee

1.4.1. The exclusive licensee

1) Principle

The exclusive licensee is a specific licensee: the owner of the patent guarantees him exclusivity in a given territory (here, France) and during a given period.

2) Notice

In order to prosecute a third party for infringement, the exclusive licensee must put in residence the holder of the patent d & #8217; act (L615-2 CPI). Otherwise, the action is inadmissible (Paris District Court, c. 03, 03 July 1998).

However, it is possible to provide for other terms in the license agreement (& #8220;unless otherwise stipulated in the license agreement” , L615-2 CPI).

In practice, the formalism of the formal notice is not always necessary, especially if everyone agrees: thus, case law accepts that the owner of the patent can indicate to the licensee that he consents to this action without necessarily have been & #8220; formal notice & #8221; (Paris District Court, c. 03, March 13, 1998). For example, the patentee may authorize the licensee to act in infringement:

Conversely, the owner of the patent may object in the contract to the licensee being able to take any action for infringement. In this case, the patentee may have to initiate the infringement action himself. Indeed, if he refuses to initiate the action, his contractual responsibility vis-à-vis his licensee could be engaged (guarantee of non-eviction of the article #8217; 1628 of the Civil Code).

3) Registration of the license

In order for the licensee's action to infringe the license to be admissible, it is however necessary that the license has been the subject of a registration in the GNI (#8217;L613-9 CPI).

We often forget this last formality when the license is granted to a daughter company (the parent company being the owner of the patent), or when the patent holder is the manager of a company and when he & #8220; authorizes & #8221; his company to exploit the patent:

  • if the company exploiting the patent attacks an infringer, it will be inadmissible because it does not have a registered license;
  • if the head of the enterprise attacks the infringer, his damages will be very low, because he does not exploit his patent directly (and that the license granted is often free). However, the company exploiting the patent may make & #8220; an intervention & #8221; to the authority to obtain compensation.

However, this registration can be very late because it only conditions the quality to act in infringement and not the damage base (C. Cass. c. com., February 18, 2004, No. 02-16703): it is only important that the license be registered at the time the judge rules (CA d & #8217; Aix en Provence, April 3, 2014).

It should be noted a contrary judgment of the Court of Appeal of Paris which thinks that this registration conditions the basis of counterfeiting (Cour d & #8217; Appeal of Paris, Pôle 5, 1re ch., June 2, 2010, RG n ° 2007/16086): I think this judgment makes no sense because the article L613-9 CPI provides that a simple unregistered licensee may intervene to obtain compensation for the damage which is specific to him.

4) Is the holder then deprived of a future action?

It is possible to wonder whether the holder subsequently retains the possibility of bringing an action against the infringer (who will, for example, have been convicted for the first time in a proceeding against the exclusive licensee).

In my opinion, the writing of the article L615-2 CPI does not allow & #8217; prohibit the holder of the patent from & #8217; bring an action for infringement on the grounds that & #8217; he / she & #8217; would not have exercised it when & #8217; it was put in default by the licensee.

To interpret this article in this way would amount to recognizing a sort of substitution of the holder by the exclusive licensee, and this in total contradiction with the principle of French procedure & #8220;no one pleads by attorney” .

Likewise, the authority of res judicata does not make it possible to prohibit the holder from acting, at the end of an action brought by its exclusive licensee: the identity of the parties not being respected (1351 Civil Code).

Therefore, if the action of the owner cannot be dismissed, it seems that the judge will have to be very careful when determining the damages: he will have to avoid that the same damage is not repaired twice, while juggling with the calculation methods proposed by l & #8217; article L615-7 CPI !

The first decisions in this area are eagerly awaited ...

1.4.2. The licensee of #8217; office or compulsory

The licensing regime for office & compulsory or identical is identical (L615-2) to the exclusive license with regard to the infringement action (except that the holder cannot provide for derogating clauses in a license contract).

1.4.3. The simple licensee

The non-exclusive licensee cannot take action for infringement (L615-2 CPI).

He may, however, intervene in the action and have his damage established (1240 of the Civil Code) if an action for infringement is initiated by another person.

Proof of the existence of the license must be made (Cour d & #8217; Appeal of Paris, Pôle 5, 2e ch., May 16, 2014; Knauf Insulation c. Saint-Gobain Isover).

Chapter 2. Against whom to act?

Section 2.1. Any unauthorized person

If an unauthorized third party performs one of the acts mentioned in & #8217; article & #8220;Infringements& #8221; , it is possible to act against it.

Section 2.2. A licensee

Is it possible to infringe on your own licensee?

The question may arise if a licensee does not comply with his license agreement (for example, he manufactures too many products). Is he a counterfeiter or is he just a contractual fault?

Article L613-8 CPI answers this question: a breach of the limits imposed by the license is an infringement.

Section 2.3. A third party authorized by a single co-owner

If one of the co-owners wishes to grant a license to a third party, and if & #8217; we are in the supplementary regime of & #8217; article L613-29 CPIit is essential to notify the draft license to the other co-owners (L613-29 CPI c)): they may object within 3 months (by paying the price of the license).

If notification n & #8217; does not take place, the license is unenforceable to other co-owners (C. cass. c. com. March 15, 2011, No. 09-71934).

Thus, if the license is valid, the non-notified co-owners may sue the licensees authorized to operate by the first co-owner for infringement. Of course, these licensees will be able to call the first co-owner as a guarantee in order to avoid bearing the entire burden of the penalty.

It is also possible to legally force the termination of past license agreements (Cour d & #8217; Appeal of Paris, Pôle 5, 2e ch., May 24, 2013).

Section 2.4. A licensee authorized by a holder, the latter having stolen the invention

If a person (s & #8217; being stolen his invention) claims ownership of & #8217; a patent with a court (on the basis of & #8217; article L611-8 CPI) and if this claim is successful, all licenses having been granted by the former owner will have been granted without right and will therefore be void.

The new owner can therefore, in theory, sue the licensees of the former owner for infringement. Of course, licensees will be able to call the former owner as a guarantee in order to avoid bearing the entire burden of the penalty.

The new owner may also request the transfer of licenses (District Court of Strasbourg, 1st c. civ., December 6, 2004, this is strange, considering that we have just indicated that the licenses were void for the absence of an object.

Section 2.5. The natural person leader?

In certain situations, the company selling the counterfeit products is an LLC with a share capital of a few hundred euros. Therefore, it can be difficult to obtain compensation…

We can then ask ourselves if it is possible to turn against the manager of the company.

The Court of Appeal of Aix seems to consider that this is possible on the visa of the article. L223-22 of the French Commercial Code. Indeed, according to her, the acts of counterfeiting committed by a company manager constitute an intentional fault of a particular gravity which, consequently, is detachable from its social functions (Court of & #8217; Appeal of & #8217; Aix, October 30, 2014).

It is still necessary that the fault intentional be clear (ie & #8220;intentional fault of a particular severity, incompatible with the exercise of its functions” , C. Cass, com, May 12, 2015, No. 14-13024).

Chapter 3. What are the grounds for counterfeiting?

Section 3.1. A French patent

3.1.1. Principle

The owner of a patent can act for infringement in France (L615-2 CPI).

3.1.2. Patent application

An action for infringement may be initiated on the basis of & #8217; a patent application (L615-4 CPI), but the judge will have to stay until #8217; the issuance of a patent (#8217;L615-4 CPIlast paragraph).

An action based on a patent application can allow the prescription to be stopped (2241 of the Civil Code).

However, if no patent is ever granted, a counterclaim for abuse of process may be brought!

3.1.3. Importance of the date of publication

Only facts subsequent to publication (or notification to the alleged infringer) may be prosecuted (L615-4 CPIparagraph (1) (C. Cass. com. of March 26, 1985, No. 83-12290).

3.1.4. Case of & #8217; an enlargement after publication

In addition, if the set of claims is expanded after this publication (or notification), the facts & #8220;counterfeited& #8221; cannot be prosecuted (L615-4 CPIparagraph 2).

In order to make this new game more enforceable, it is useful to have it republished by INPI (or to renotify it), but this republication or this renotification does not have the effect of making claims enforceable retroactively (Paris District Court, 3rd Ch., 3rd Sect. October 21, 2003).

Section 3.2. A European patent

3.2.1. Principle

A European patent has, from the publication of its grant statement, the same effects as #8217; a French patent (A64 (1) EPC).

A European patent can therefore be used in the same way in France (if it is validated in France and if the translation of the claims is provided to INPI, 1PI38217; L614-9 CPI).

A full translation of the patent must be provided to the competent court (L614-7 CPI) at his request or that of the alleged infringer.

3.2.2. A European patent application

1) Principle

It is entirely possible to bring an action for infringement on the basis of a European patent application (#8217;L614-9 CPI paragraph 1) as of its publication by l & #8217; EPO (and subject to providing, if necessary, to 1PI38217; INPI the translation of the claims or to notify it to the alleged infringer, L614-9 CPI paragraph 2)

It therefore does not seem possible to act before a French court before the publication of his request by the office (e.g. after notification from the claim infringer) contrary to what is possible for a French request (L615-4 CPIparagraph 1).

2) Coexistence of #8217; a French patent and #8217; a European application

If ever the European patent application relates to the same invention as & #8217; a French patent (eg priority application), you must decide:

  • if you use the European patent application:
    • the judge will refuse to give a decision immediately and will suspend his decision until the European patent is granted (L615-4 CPI);
  • if you use the French patent:

The only way to unblock the situation is to withdraw the designation of France in the European patent application (District Court of Strasbourg, 1st c. civ., June 8, 2009): the judge will not be bound by the provisions of article #8217; L614-15 CPI and may render a judgment on the basis of the French patent.

Section 3.3. Based on #8217; international application (PCT)

A PCT application, from the date of publication of the international application, confers the same protection as that granted by a French application (A29.1 PCT together L614-24 CPI together A153 EPC) if the PCT application enters the European phase (and subject to supplying, if necessary, to INTP38217; INPI with the translation of the claims or to notify it to the alleged infringer, L614-9 CPI paragraph 2).

Chapter 4. When can we act?

Section 4.1. During the life of the patent

It is possible to bring an action to prosecute any infringing act carried out during the period of validity of the patent (L611-2 CPI).

There is no condition as to the validity of the title on the day of the initiation of the action: it may be forfeited (as long as acts of counterfeiting are not time-barred)!

Section 4.2. Prescription

4.2.1. Civil prescription

Infringement acts are prescribed by 5 years civil (L615-8 CPIbefore 11 March 2014, the prescription was to 3 years).

4.2.2. Suspension of the civil prescription

1) Principle

It must be recognized that prescription n & #8217; is not really an easy concept.

Indeed, the article 2239 of the Civil Code provides that the limitation period is suspended if the judge grants a request for an investigative measure. In this case, it appears that the counterfeiting seizure is a measure of instruction (#8217;report of the court of cassation of 2012).

Moreover, this same article 2239 of the Civil Code , provides that the limitation period begins to run again after the execution of the instruction measure for a minimum period of 6 months.

Okay, you're a bit lost & #8230; c & #8217; is normal:

  • if you obtain a forgery-seizure order on the last day of the limitation period, roughly, the period will be suspended as long as you have not completed the seizure and
  • once the entry has been made, it will restart until #8217; your assignment (because the #8217; assignment must occur well before the additional period of 6 months, see proof of counterfeiting).
2) Puzzle for fun

As you know, I very much like to ask me questions.

The question I ask here is: the suspension of the prescription, ok ... but against which prescription?

In fact, an infringement seizure requested to seize A in the context of & #8217; a lawsuit against & #8217; does it stop B stop the limitation period concerning the acts of company C?

My opinion is that this suspension cannot be general and should only concern the acts for which seizure is requested & #8230; but failing to & #8217; to have found case law on the subject & #8230;

4.2.3. Criminal prescription

Infringement acts are prescribed by 6 years criminal (8 CPPbefore 1 March 2017, the prescription was 3 years).

Chapter 5. Legal action

Section 5.1. Jurisdiction

5.1.1. In civil matters

1) Principle

Only the Tribunal de Grande Instance of Paris is competent for actions for infringement or invalidity (L615-17 CPI together D211-6 Code de l & #8217; judicial organization) including for related unfair competition matters.

In addition, the TGI de Paris is also competent to authorize:

The Paris Court of Appeal has jurisdiction on appeal (Court of Appeal of Paris, Pole 5, 1st ch., June 20, 2012).

2) Clarification of the jurisdiction of the Courts of Appeal since November 1, 2009

The application of the 2009 decree granting exclusive jurisdiction to the Paris Court of Law on patent issues has raised questions to determine the competent court of appeal in case of appeal of a judgment rendered by a provincial court of law entered before the 1st November 2009.

For the Court of Cassation (C. Cass. com., March 3, 2015, No. 14-10568), nothing is indicated in the Decree No. 2009-1205 of 9 October 2009 concerning an exclusive jurisdiction of the Paris Court of Appeal: only the jurisdiction of the TGI of Paris is recognized for the patents.

Therefore, it is appropriate to apply the general principles of Article R311-3 of the Code of Judicial Organization according to which the Court of Appeal is competent to know the decisions of the Intermediate Courts located in its jurisdiction.

5.1.2. In criminal matters

Article L615-17 CPI mentioning only & #8220;civil actions& #8221; , you would think that & #8217;Conversely, the rules of conventional procedures apply and that l & #8217; all correctional courts are competent ratione materiae to know criminal actions in forgery.

The Court of Cassation confirmed this point with regard to the mark (C. Cass. Crim., June 19, 2013, No. 12-84533): the special rules of jurisdiction of the intellectual property code only apply to 1 civil law.

Section 5.2. L & #8217; proceedings on the merits

5.2.1. The language of the instance

The courts rely on Article 111 of #8217;Ordinance of Villers-Cotterêts d & #8217; August 1539 to be able to dismiss foreign language plays (Court of Appeal of Paris, pole 1, 2nd chapter, March 21st, 2012).

Article 111 of the Villers-Cotterêts Ordinance of August 1539
Article 111 of the Villers-Cotterêts Ordinance of August 1539 Article 111 of #8217; Villers-Cotterêts ordinance of #8217; August 1539

However, formally, l & #8217;Ordinance of Villers-Cotterêts d & #8217; August 1539 only applies to procedural acts (ie documents drawn up by the judges) and that it is for the trial judge, in exercising his sovereign power, to assess the probative value of the elements which are to him submitted (C. cass ch. com, May 24, 2011, No. 10-18608).

Thus, it is entirely possible that a jurisdiction will be flexible (#8217;C. cass. c. com., January 7, 2014, No. 12-25955, even if & #8217; do not count on it too much).

5.2.2. L & #8217; assignment

The assignment is also called & #8220; exploit d & #8217; bailiff & #8221; .

Article 56 CPC provides that the summons must contain the subject of the request with the statement of legal and factual means.

This assignment contains in particular:

  • the quality and designation of the parties,
  • indications on the court of appearance (here, the TGI of Paris),
  • an invitation to establish a lawyer (902 CPC):
    • within 15 days (failing that, there is normally a non-adversarial judgment, but this is rarely put into practice immediately).
    • under 2 months for foreigners,
  • l & #8217; succinct statement of reasons,
  • l & #8217; statement of the requests and the reasons for the request (including the cessation of counterfeiting and compensation for the damage in order to be certain of stopping the prescription for these two actions).

At this stage, the court is not aware of the summons. You must therefore file a copy of the summons to court: this filing is called the & #8220; referral to the court & #8221; .

Care must be taken when assigning

5.2.3. The preparation

This preparation is carried out before ... the preparation judge.

He is responsible for following the procedure, verifying that the requested documents are transmitted between the parties, etc.

Exceptions are raised before this magistrate (771 CPC) (but not the ends of inadmissibility, C. Cass, Opinion No. 0060012P of November 13, 2006).

This judge fixes the calendar for the handing over of the entries and fixes the closure which ends the exchange of the entries.

5.2.4. Means & #8220; delaying tactics & #8221; possible

As a means to & #8220; delay & #8221; a procedure, it is possible to:

  • request a stay of proceedings, by right (c & #8217; that is to say that the judge cannot refuse it to you), if you are summoned by a co-owner, without there having been a notification sent to his other co-owners. This stay is provided for in b) of article 1 L613-29 CPI ;
  • request a stay of proceedings, by right, if you are assigned on the basis of & #8217; a French patent and if a European patent application is pending and this European patent application was filed by the same inventor of the French patent (or its successor in title), as & #8217; it targets the same invention and that it benefits from priority (L614-15 CPI);
  • request a stay of proceedings, by right, if the assignment is based on a simple patent application and not a patent (L615-4 CPI);
  • if a European patent is granted, but an opposition is pending, it is possible to request a stay of proceedings for & #8220; the proper administration of justice & #8221; (principle of civil procedure). However, judges do not often grant this stay considering that the opposition is too slow #8221; . Note that if you are finally condemned and the patent is finally declared null during the opposition, you cannot be reimbursed for damages paid in the name of the principle of res judicata (1).C. cass. ass. pl. February 17, 2012, No. 10-24282);
  • if a claim action is taken, you can request a stay, but this is not compulsory, as in the previous case.

Chapter 6. Civil sanctions

Section 6.1. Prohibition under penalty

This prohibition is not explicitly provided for by the code, but is based on the articles L613-3 and L613-4.

L & #8217; periodic penalty payment makes it possible to ensure the enforceability of the judge's decision (imperium of the judge). This is sort of a condemnation for the future. It is set according to the price of the object to dissuade the counterfeiter from continuing the counterfeiting.

If this periodic penalty payment has to be paid to the patent holder, it is not automatic. Indeed, to collect the penalty, it is necessary to ask the judge for the execution of & #8220; to liquidate & #8221; this one (art 35 of the Law 91-650 of July 9, 1991). The judge can moderate it by l & #8217; increase according to the good faith of the infringer and the difficulties encountered (art 36 of the Law 91-650 of July 9, 1991).

If the judgment is finally set aside by a court of appeal or the Court of Cassation, it is necessary to reimburse the perceived penalty payment.

Section 6.2. Reminder of the commercial circuits

It is possible to request the recall of counterfeit goods from commercial channels (L615-7-1 CPI).

However, it is not very clear what exactly the concept of & #8220; commercial circuits & #8221; :

  • Is it the circuits located in France?
  • Does this cover only the branches of the condemned company?
  • Does this apply to products that have been purchased by distributors?

Section 6.3. Confiscation

Confiscation is a very old sanction, already present in the decree "relating to the authors of useful discoveries" of December 31, 1790 (see & #8217; article 12).

Two theories oppose confiscation:

  • Should confiscation be used to prevent the continuation of counterfeiting?
  • Should confiscation be used to compensate the rights owner?

If under the empire of the law of 1968, the first theory largely dominated the law, the law was modified in 1978 and today, the confiscation is clearly for the benefit of the holder of the rights (L615-7-1).

Section 6.4. Destruction

The destruction of counterfeit goods is also possible (L615-7-1):

This destruction is done at the expense of the counterfeiter.

Section 6.5. Judgment advertising

If publicity of the judgment can be ordered by the judge (L615-7-1), one must know reason to keep!

For example, denigration consists of:

  • qu & #8217; it is reported the actions of & #8217; a counterfeiter without court decision;
  • qu & #8217; it is reported & #8217; a truncated court decision;
  • qu & #8217; rowdy or provocative commercial advertising takes as its theme a court decision, even final, condemning a competitor.

However, the simple fact of sending an email to its customers simply informing them of a judgment (even if not final) is not in itself unfair (Court of & #8217; Appeal of Paris, Pôle 1, Ch. 2, June 16, 2016, RG n ° 15/068473).

Section 6.6. Damages and interests

6.6.1. Principle

Damages find their legal basis in article #8217; 1240 of the Civil Code.

6.6.2. Plate

Since March 11, 2014, the judge has new instructions to calculate damages and interest (L615-7 CPI).

The judge must take into account distinctly (L615-7 CPI):

  • negative economic consequences, including:
    • the shortfall and
    • the loss suffered;
  • the moral damage;
  • the profits made by the counterfeiter, including the investment savings:
    • intellectuals,
    • materials and
    • promotional.

In addition, the rights holder may prefer to be compensated on the basis of a lump sum indemnity which must be higher than the price of a license which would have been requested (L615-7 CPIlast paragraph).

The latter option should probably be ruled out if the action is brought by the exclusive licensee.

6.6.3. Plate and license registration

The & #8217; registration of a license is not a condition for calculating the damage base.

This registration only conditions the quality to act in infringement and not the damage base (C. Cass. c. com., February 18, 2004, No. 02-16703): it is only important that the license be registered at the time the judge rules (CA d & #8217; Aix en Provence, April 3, 2014).

It should be noted a contrary judgment of the Court of Appeal of Paris which thinks that this registration conditions the basis of counterfeiting (Cour d & #8217; Appeal of Paris, Pôle 5, 1re ch., June 2, 2010, RG n ° 2007/16086): I think this judgment makes no sense because the article L613-9 CPI provides that a simple unregistered licensee may intervene to obtain compensation for the damage which is specific to him.

6.6.4. History of the damage assessment

Previously, the judge only looked at the prejudice suffered by the rights holder.

Very early on, case law was faced with the following dilemma: if the patentee is an individual and the infringer is a very large multinational, it is likely that the infringer will be able to derive very large benefits from the infringement (from the made of its power and its commercial circuits). On the other hand, the patentee (very small) cannot reach the same markets as his counterfeiter.

For a very long time, jurisprudence has remained true to itself: there is no derogation from ordinary law and only the damage must be repaired (C. cass. com January 8, 1963, Mitchell fishing mills case)

6.6.5. Resistance to counterfeiting

It sometimes happens that the judge accepts to compensate the commercial efforts which were necessary for the patentee to fight commercially against the infringer, for example in & #8220;limiting price increase” (C. cass. c. com. May 23, 1995 No. 93-18527, Chlortoluron case).

6.6.6. Punitive damages and interests?

The French approach has always refused the concept of & #8220; punitive damages & #8221 ;.

Nevertheless, it should be recalled that this concept of & #8220; punitive damages & #8221; n & #8217; is absolutely not contrary to European law (Decision of the CJEU C-367/15).

The CJEU also notes that the simple payment of a hypothetical royalty is not capable of guaranteeing compensation for the entire damage suffered because it would neither ensure the reimbursement of any costs linked to research and to #8217; identification of possible acts of counterfeiting or compensation for possible moral prejudice, or the payment of interest on the amounts due.

Chapter 7. Penal sanctions

Section 7.1. Principle

Counterfeiting is penalized (L615-14 CPI, paragraph 1, 1st sentence):

  • d & #8217; a fine of up to #8217; 300 k € ;
  • from a sentence of up to #8217; 3 years imprisonment.

Section 7.2. Reinforcement of the penalty in case of recidivism

In the event of a second offense, the penalty may be doubled (L615-14-1 CPI).

Section 7.3. Reinforcement of the penalty in the case of a licensee

If the counterfeiter was dismissed, the penalty can also be doubled (L615-14-1 CPI).

Section 7.4. Reinforcement of the sanction in certain other cases

In addition, the sanction may be increased (L615-14 CPI, paragraph 1, 2nd sentence):

  • if the counterfeit is dangerous to health, or
  • whether the infringement was made on the Internet, or
  • if the counterfeiting was carried out in an organized band

Counterfeiting is then penalized (L615-14 CPI, paragraph 1, 2nd sentence):

  • d & #8217; a fine of up to #8217; 500 k € ;
  • from a sentence of up to #8217; 5 years imprisonment.

Section 7.5. Complementary penalties

On an ancillary basis, it is possible for the judge to order (#8217;L615-14-2 CPI):

  • the counterfeiter to withdraw, at their expense, commercial channels objects deemed counterfeit;
  • destruction of counterfeit goods;
  • delivery of counterfeit goods to the holder;
  • damages and interest;
  • l & #8217; display of the judgment.

3 Comments:

  1. New article 8 CPP since March 1, 2017: prescription of criminal offenses = 6 years now.

  2. On the Chapter on competence:

    & #8220; Only the Tribunal de Grande Instance de Paris is competent for infringement or nullity actions (L615-17 CPI32 together D211-6 CPI33) including for related questions of unfair competition. & #8221;

    Correction: L & #8217; article D211-6 cited comes from the code of the judicial organization and not of the CPI.

    Site very well done, congratulations and thank you.

    Regards,
    Julien Pied

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