On 13 March 2014, a new law (Nr 2014-315) came into force to strengthen the fight against counterfeiting. This law aims at providing tougher penalties for counterfeiters and clarifies certain provisions of the French Intellectual Property Code (Code de la Propriété Intellectuelle).
What are the main changes introduced by this law?
- The right of information procedure has been simplified. A request for information may now be raised before any judgment on the merits for counterfeiting, including before the Judge in charge of interim proceedings (juge des référés). The list of documents and information that may be requested has been removed. Hence judges are now free to determine the scope of their investigatory measures.
- When allocating damages, the court must separately take into consideration:
– “negative economic consequences (…) including profits and losses incurred”;
– “non-pecuniary loss”; and
– “profits earned by the infringer, including savings on intellectual, material and advertising investments”.
The legislation sought tougher and more accurate penalties by demanding a clear distinction between the different levels of harm. Applicants must now show the harm suffered and may no longer seek compensation without justification.
- The statute of limitation to initiate counterfeiting proceedings has been extended to five years for all Intellectual Property actions. Previously, copyright infringement actions were subject to a 5 year limitation and patents and trademarks actions to a 3 year limitation. This extension ensures better protection and takes into consideration the interests of right owners.
- Custom officers have been granted additional rights; they can now deal with counterfeiting of designations and geographical indications as well as goods in transit.
- Infringement seizure proceedings have been harmonized for all intellectual property rights. The court may order any legally admissible investigatory measure, even without an infringement seizure. Further, a new Article (art L332-2 Intellectual Property Code (Code de la Propriété Intellectuelle, CPI)) has created an offence in case of non-compliance with the deadline to initiate proceedings after the performance of a seizure in copyright infringement.
The law adopted on 11 March 2014 awards new privileges to right owners in the fight against counterfeiting. One must now hope for a strict and efficient implementation of the new provisions of the French Intellectual Property Code (Code de la Propriété Intellectuelle).