counterfeit

Introduction

In the fashion industry, a motif may perform several functions. It may decorate a garment, but it may also indicate its commercial origin. The legal characterisation depends less on the label chosen by the seller than on how consumers will actually perceive the sign on the product.

In a judgment of 19 February 2026, the Paris Judicial Court applied this approach to T-shirts reproducing a stylised lion’s head close to the central figurative element of the semi-figurative Zelys Paris trademark. The decision provides useful guidance on trademark use, the comparison of a composite mark, the effect of a second trademark appearing on a label and, above all, the importance of evidence when seeking effective remedies (Paris Judicial Court, 3rd Chamber, 1st Section, February 19, 2026, Case No. 22/13133).

Facts: the reproduction of a stylised lion’s head on T-shirts

Two individuals jointly owned French semi-figurative trademark No. 4 520 372, filed on 30 January 2019 for goods including those in Classes 14, 18 and 25. The mark combined the words “Zelys Paris” with a stylised lion’s head surrounded by peripheral graphic elements.

The owners had granted non-exclusive licences to two companies active in the purchase and sale of clothing. After identifying T-shirts reproducing the lion motif, the licensees obtained authorisation to carry out an infringement seizure at the seller’s premises and subsequently brought trademark infringement proceedings. The licensees also relied on unfair competition and free-riding.

Two T-shirt references were at issue. Both reproduced the stylised lion’s head, while some models also displayed the word “Zelys” in the background. The colours, the words surrounding the design and certain peripheral elements nevertheless differed from the registered mark.

The seller mainly argued that the lion’s head was merely an ornamental element commonly used on garments and was therefore not used as a trademark. It further relied on the “Belman” label attached to the products, which, in its view, identified their actual commercial origin and excluded any likelihood of confusion.

Decision: the motif was used as a trademark and created a likelihood of confusion

1. The position and visibility of the motif established trademark use

The Court first examined the function actually performed by the contested signs. It observed that they appeared very prominently on the chest of the T-shirts, a position where many trademarks are commonly displayed. The average consumer could therefore perceive the motif as an indication of the commercial origin of the goods.

The allegedly decorative nature of the design was not sufficient to exclude infringement. The judgment does not establish that every motif placed on the chest automatically constitutes a trademark. Rather, it shows that position, size, visibility and the overall context of presentation must be assessed together.

2. The reproduction was not identical, but the imitation infringed the mark

The Court first rejected identical reproduction. The T-shirts did not reproduce every element of the registered mark, in particular the complete wording “Zelys Paris”, and some differences could not be regarded as insignificant.

It nevertheless found infringement by imitation. Visually, the stylised lion’s head was reproduced in its entirety. It was the central and most important element of the mark, while the differences mainly concerned colours, wording and peripheral ornamentation. The visual and conceptual similarity was considered high, despite low phonetic similarity.

According to the Court, consumers who do not necessarily see the signs side by side could interpret the differences as mere variations of the logo. They could therefore believe that the T-shirts originated from Zelys Paris or from an economically linked undertaking.

3. A label bearing another trademark did not remove the likelihood of confusion

The word “Belman” appearing on a label attached to the product did not alter the assessment. That indication was significantly less visible than the motif displayed on the chest and was therefore insufficient to prevent consumers from attributing an origin-identifying function to the stylised lion.

This finding is particularly relevant in fashion, where several signs may coexist on the same item: a manufacturer’s mark, a retailer’s mark, a collection name, a prominent graphic or a collaboration name. Adding another sign does not necessarily remove the risk created by the dominant reproduction of an earlier trademark.

4. Remedies were closely tied to the evidence actually produced

The defendant was held liable for trademark infringement. It was ordered to pay EUR 3,000 to each joint owner and to cease selling garments reproducing the stylised lion’s head, subject to a penalty of EUR 300 for each infringing item identified during a six-month period.

The damages nevertheless remained limited. The profits established by the evidence amounted to only EUR 170, and no evidence showed the existence of additional stock. The Court therefore refused to order destruction or confiscation and rejected publication of the judgment as disproportionate in light of the limited infringing volume.

ZS Diffusion was awarded EUR 170 for unfair competition after proving that it had marketed goods under the mark before the infringing acts. By contrast, the other licensee’s claims were dismissed because it failed to establish its own use of the trademark and the confusion affecting its business. The free-riding claims were also rejected because the alleged investments and reputation had not been sufficiently demonstrated.

Significance: practical lessons for the fashion industry

The decorative nature of a motif must be assessed in context

The decision confirms that there is no automatic divide between decoration and distinctiveness. The same graphic may be perceived as a mere ornament in one presentation and as a trademark in another. Its size, repetition, position, visual autonomy and sector practices may all influence that perception.

Businesses should therefore not assume that a graphic may be freely reproduced merely because it is used aesthetically on clothing. Clearance should cover existing figurative trademarks and the precise way in which the sign will be presented to the public.

A composite trademark may be enforced through its dominant figurative element

A mark combining words and a design must always be compared globally with the contested sign. The decision nevertheless demonstrates that the complete reproduction of its central figurative element may carry substantial weight even where the verbal elements are not copied.

Owners should identify visual components intended to be used independently and, where commercially justified, consider filing them as separate figurative trademarks. This may facilitate enforcement of an emblem regardless of later changes to the wording or graphic charter.

Evidence directly determines damages and available remedies

The most operational aspect of the judgment is the distinction between establishing infringement and quantifying its consequences. Even where infringement is recognised, the owner must document sales volumes, remaining stock, margins, the duration of marketing, harm to the mark and relevant expenditure in order to obtain substantial compensation.

Screenshots, invoices, purchase orders, bailiff reports, sales data, inventories and information obtained through an infringement seizure should be preserved and cross-referenced. Without such evidence, the court may limit damages and refuse measures such as destruction, confiscation or publication of the judgment.

Licensees must establish their own use and their own loss

A finding of infringement in favour of the owner does not automatically compensate every licensee. Each licensee must be able to establish its role in exploiting the trademark, the goods it markets, the investments it bears and its own loss.

Licence agreements should therefore organise the preservation of evidence of use, the reporting of sales figures, cooperation in infringement seizure proceedings and the allocation of enforcement and damages claims.

Digital monitoring remains essential

This decision highlights the critical importance of digital monitoring in protecting a trademark. Imitations of graphic motifs circulate rapidly on e-commerce websites, marketplaces and social media. Visual recognition tools may help detect variations close to a protected logo or graphic. They should nevertheless be combined with human legal review, as visual resemblance alone does not automatically establish trademark infringement.

• Register recurring figurative elements that genuinely identify the commercial origin of the brand.
• Preserve dated evidence showing how the motif is used on products and in advertising.
• Monitor new trademark filings, marketplaces, social media and retail websites.
• Immediately document volumes, prices, stock and sales channels when an infringement is identified.
• Include in licence agreements clear duties to provide evidence of use and cooperate in enforcement.

Conclusion

The judgment of February19, 2026 does not turn every motif appearing on a garment into a trademark. It does, however, confirm that the legal characterisation depends on consumer perception and the specific marketing context. A highly visible design placed where consumers commonly expect to see a source identifier may perform a trademark function and infringe an earlier right.

The decision also reminds owners and licensees not to overlook evidence. Protecting a motif, monitoring its reproduction and obtaining effective remedies are three separate steps, each of which depends on accurate documentation of use, the scale of the infringement and the resulting loss.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

How can you determine whether a graphic element should be protected through a separate trademark filing?

The answer depends on how the element is used over time. A separate filing may be appropriate where the design appears independently on products, packaging, stores or digital media, without always being accompanied by the brand name. Its stability, visibility to the public and ability to become an identifiable commercial reference should also be taken into account.

What evidence should be retained to enforce a figurative sign effectively?

The most useful evidence is that which shows how the public was actually exposed to the sign. Relevant materials may include catalogues, photographs of products and stores, packaging, advertising campaigns, social media posts, dated product pages, sales figures and documents relating to the creation of the design. These materials help establish use, visibility and commercial value.

Can the colour of a garment constitute a trademark in its own right?

Yes, subject to strict conditions. A colour may be registered as a trademark if it has acquired distinctiveness through use and enables consumers to identify the commercial origin of the product. The CJEU confirmed this principle in the Libertel judgment (C-104/01, 2003). The best-known example in the fashion industry is the Louboutin red sole, which the CJEU recognised as a valid trademark in 2018 (C-163/16) for the soles of high-heeled shoes.

Can an independent designer bring infringement proceedings without having registered a trademark?

A designer who does not own a registered trademark cannot bring an action on the basis of trademark law. However, they may rely on copyright protection, which arises automatically upon the creation of an original work, without any prior registration requirement. They may also bring an action for unfair competition or parasitism where a competitor unfairly benefits from their efforts or investment. These remedies are complementary and are often relied upon together in practice.

What time limits apply to trademark infringement actions in France?

A trademark infringement action must be brought within five years from the date on which the right holder became aware of the infringing acts, pursuant to Article L. 716-5 of the French Intellectual Property Code. This is a “rolling” limitation period, meaning that it runs separately from each distinct act of infringement. It is therefore essential to act promptly once an infringement is discovered, otherwise the claim may be held inadmissible.

This publication is intended to provide general guidance and highlight certain issues. It is not intended to apply to specific situations or to constitute legal advice.

Introduction

An infringement seizure, provided for in particular by Article L. 716-4-7 of the French Intellectual Property Code in trademark matters, is one of the most effective tools for gathering evidence of infringement quickly.

It is a judicial measure ordered by a judge and carried out without prior notice by a court-appointed enforcement officer. Within the limits set by the order, the officer may enter the premises of the targeted company, record the facts, describe or seize the disputed products, and collect certain commercial, technical or digital documents.

This measure may, however, provide access to information that goes beyond the scope of the dispute. An invoice may reveal prices negotiated with a supplier, purchasing arrangements or margin structures. A stock file may disclose available volumes, sales forecasts or forthcoming collections.

The challenge is therefore to preserve the effectiveness of the infringement seizure without allowing unjustified access to the targeted company’s strategic information. Trade-secret protection cannot be used to prevent the collection of necessary evidence, but it may justify targeted and proportionate safeguards.

What are the practical benefits of an infringement seizure?

For the rights holder, the value of an infringement seizure is very practical. It may identify the source of the goods, reconstruct manufacturing and distribution channels, assess the quantities placed on the market and quantify the loss suffered.

A well-prepared seizure can therefore turn a mere suspicion into a sufficiently documented case to seek an end to the infringing acts, obtain damages or enter negotiations from a position of strength.

The measure does not, however, create a general right of access to a competitor’s premises, documents or IT systems. The application must identify the material sought and explain its connection with the alleged infringement. Digital investigations must also be limited, for example by defined time periods, folders or keywords.

Where documents contain personal data or information unrelated to the dispute, only the data strictly necessary to establish the evidence should be collected or disclosed.

Which information may qualify as a trade secret?

Not all confidential information automatically benefits from trade-secret protection. Article L. 151-1 of the French Commercial Code sets out three cumulative conditions. The information must:

1. not be generally known or readily accessible to professionals in the sector;

2. have actual or potential commercial value because it is secret;

3. be subject to reasonable measures designed to preserve its confidentiality.

Confidentiality is not presumed

A company seeking protection for a document must show in practical terms how each item of information meets these conditions. It is not enough to label an entire file “confidential” or simply state that the documents are not public.

The company should identify the precise nature of the information, its economic or competitive value, the persons who can access it, the foreseeable consequences of disclosure and the measures implemented to protect it.

These measures may include confidentiality clauses, access restrictions, a document-classification policy, passwords, server segmentation or limits on downloading rights. Without such safeguards, a trade-secret claim may be rejected even where the information objectively has commercial value.

When sensitive documents are seized, their immediate disclosure may expose trade secrets. Provisional sequestration preserves their confidentiality while the judge decides how they should be disclosed.

How does provisional sequestration protect seized documents?

Provisional sequestration keeps sensitive documents temporarily in the custody of the court-appointed enforcement officer, without immediately disclosing them to the applicant. It does not remove the evidence: it gives the judge time to organise the disclosure of the documents to the party that requested the infringement seizure.

The judge may limit disclosure to selected information, require a redacted version or a summary, restrict access to a small number of people or examine the document alone. The French Supreme Court confirmed that the relevant statutory mechanism is provisional sequestration, rather than an improvised process of placing documents under seal (French Supreme Court, Commercial Chamber, February 1, 2023, No. 21-22.225).

For each document, the party asserting secrecy must prepare a complete version, a non-confidential version or a summary, together with a note explaining precisely why the information is secret. Action must be taken immediately: the regulatory framework provides a one-month period to request amendment or revocation of the order, failing which the sequestration may be lifted.

Sogema v. Crocs: what is the practical takeaway?

In 2024, Belgian customs blocked 4,932 pairs of shoes imported by Sogema because they were suspected of reproducing the protected shape of Crocs footwear. An infringement seizure then made it possible to collect several documents, including collection plans, product references, purchase prices, stock information and invoices.

Sogema sought to prevent disclosure of most of those documents, which it regarded as confidential. The Paris Judicial Court nevertheless required each document to be examined separately. For each one, Sogema had to provide a complete version, a version concealing the sensitive information or a summary, and explain precisely why the information should remain confidential (Paris Judicial Court, March 20, 2025, Case No. 24/09326).

Key point: it is not enough to claim that an entire file is confidential. The company must clearly identify the sensitive information and justify its protection document by document.

What action plan should be adopted?

For the company requesting the infringement seizure

The rights-holding company should prepare a precise application to obtain the useful evidence without going beyond what is necessary for the case.

• Identify the products, documents and time periods to be examined.
• Explain how each category of evidence may establish the infringement.
• Limit IT searches, in particular by keywords, dates or folders.
• Provide in the application for the possibility of placing sensitive documents discovered during the operation under provisional sequestration.
• After the seizure, commence court proceedings within the applicable period in order to preserve the effects of the measure.

For the company targeted by the infringement seizure

The targeted company should cooperate with the operation while protecting its confidential information.

• Check that the court-appointed enforcement officer strictly complies with the limits set by the order.
• Immediately identify documents containing sensitive information.
• Where possible, request that they be placed under provisional sequestration.
• Prepare versions concealing confidential information and explain why that information should be protected.
• Rapidly involve the legal, IT and finance teams, together with senior management, to ensure a coordinated response.

KEY TAKEAWAY
The strongest protection is prepared before a dispute arises. Mapping sensitive information, documenting access rights, using confidentiality clauses and establishing a response protocol all reduce the risk of disclosure.

Conclusion: anticipate to protect both the evidence and the company’s value

Infringement seizures and trade-secret protection are not incompatible. The balance depends on a precise court order, a properly organised sequestration process and an individual assessment of the confidentiality of each item.

We assist both rights holders and targeted companies with the preparation, execution and judicial follow-up of infringement seizures involving sensitive commercial, technical or digital documents.

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Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

How should a company prepare for a potential infringement seizure?

The company should identify sensitive information in advance, restrict access to strategic documents and establish an internal response protocol enabling the legal, IT, finance and senior management teams to act quickly.

Which mistakes can weaken a request for trade secret protection?

An overly broad request, the absence of evidence showing that confidentiality measures were in place, or the inability to explain the commercial value of the information may lead the court to reject the protection sought.

Who may access documents placed under provisional sequestration?

Access depends on the court’s decision. It may be restricted to the enforcement officer, an independent expert, the parties’ lawyers or a limited number of individuals subject to confidentiality obligations.

How should a company respond when the seizure involves a large volume of digital data?

The company should ensure that the searches remain within the limits of the court order and, where necessary, request that the data be filtered by keywords, time periods or specific folders to avoid collecting information unrelated to the dispute.

Can information disclosed during the seizure be used for other purposes?

The documents collected should remain connected to the subject matter of the proceedings and the evidential needs of the case. If the information is used improperly or for purposes unrelated to the dispute, the affected company may ask the court to restrict its disclosure or use.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Online counterfeiting is a persistent threat to brands and businesses worldwide. In response to this issue, technologies based on artificial intelligence (AI) have emerged as an innovative and effective solution, allowing for faster and more accurate detection of counterfeit products. However, while the capabilities of AI are undeniable, these technologies are not without limitations. It is crucial to understand these constraints in order to better harness their potential while anticipating their shortcomings.

Artificial intelligence: an innovative solution for online counterfeit detection

More efficient tools for identifying counterfeits

AI has radically transformed the way businesses can monitor their intellectual property rights. Through machine learning algorithms, AI enables the analysis of vast amounts of data from various online platforms, searching for counterfeit products. These tools can be programmed to search for similarities in logos, trademarks, product names, or even descriptions, in a more efficient manner than manual methods.

Improving responsiveness and accuracy in identifying violations

AI, thanks to its ability to analyze data in real-time, offers increased responsiveness for quickly identifying violations. Thousands of web pages, social networks, marketplaces, and even mobile applications are scanned in record time. These systems can identify counterfeit products almost instantly, allowing businesses to act quickly to have them removed.

AI has also demonstrated its ability to detect subtle counterfeits, often invisible to the human eye. It can identify slight variations in visual presentation or typographical errors with great precision, thus enhancing the effectiveness of protection systems.

Automating legal actions

It is also possible to envisage, to a certain extent, the automation of legal processes. Once a counterfeit has been detected, AI can generate cease and desist letters, removal requests, and even initiate procedures with the concerned platforms. This significantly cuts the time and costs involved in these procedures, enabling businesses to protect their rights more effectively.

The challenges and limitations of artificial intelligence in the fight against counterfeiting

A lack of contextual understanding

Although powerful, AI remains limited when it comes to understanding the context of a situation. AI can detect visual similarity in a product but cannot determine whether it is truly counterfeit or an authentic product sold outside official distribution channels, such as in the parallel market, where products are sold without the manufacturer’s approval. The lack of a real understanding of the market and business practices complicates the accurate analysis of data.

The complexity of counterfeit products

Counterfeit products are becoming increasingly difficult to identify, as counterfeiters employ advanced techniques to replicate genuine items. In the fashion sector, certain counterfeits are manufactured with materials that closely resemble those used in original pieces, further complicating detection efforts. Moreover, fraudulent websites and online marketplaces continually adjust their content to evade search-engine scrutiny, thereby making the task more complex for AI systems that rely chiefly on visual comparisons.

Ethical and legal challenges

Using AI to detect counterfeiting raises ethical and legal questions, particularly regarding data privacy. Indeed, these systems require the collection of massive amounts of information, which can conflict with regulations such as GDPR. Moreover, algorithmic biases can distort results, favoring certain brands.

These challenges require human oversight and increased transparency to ensure fairness and respect for users’ rights. It is also important to note that legal responsibility for AI actions is difficult to establish, particularly in the case of false detection.

The future of artificial intelligence: continuous improvement of detection systems

Technological evolution

AI technologies continue to evolve rapidly, particularly with deep learning, a technique that enables AI to simulate human cognitive processes to recognize complex patterns and improve counterfeit detection. This method, combined with image recognition, reduces errors even for slightly modified products. The integration of semantic analysis, which involves analyzing the meaning of words and phrases, and natural language processing, allows AI to better analyze textual content related to products. This enables it to detect inconsistencies in online descriptions, thus refining counterfeit detection.

The importance of collaboration between AI and humans

Despite the progress of AI, human expertise remains indispensable. These systems are particularly effective at processing large volumes of data and identifying visual patterns, but they often struggle to grasp the context, which is crucial for distinguishing a counterfeit from a legitimate reproduction or a product sold in the parallel market. Human experts, with their understanding of legal and commercial context, provide essential value in evaluating AI-generated results and ensuring more precise and ethical decisions.

Conclusion

We now believe that artificial intelligence offers very promising solutions for detecting online counterfeiting, and we use it on a daily basis. However, while it allows for the rapid and accurate detection of a large number of counterfeit products, it is subject to certain technological and ethical limitations. To overcome these obstacles, it is crucial to continuously improve AI technologies while integrating human expertise into their use.

Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What are the limitations of AI in detecting counterfeiting?
   AI lacks contextual understanding, which can lead to confusion between authentic products and legal or parallel copies. It can also generate false positives or false negatives.

2. What are the ethical challenges associated with using AI for counterfeit detection?
   Challenges include data privacy (GDPR), legal responsibility for AI actions, and the risk of algorithmic biases in decision-making.

3. Can AI systems replace human experts in detecting counterfeits?
   No, AI is effective for analysis, but human experts are necessary to interpret results and make contextual decisions.

4. Can AI improve responsiveness to online counterfeiting?
   Yes, AI can quickly detect counterfeits and react in real-time, speeding up the process of brand protection.