Infringement Action

An infringement action is a legal proceeding that allows an intellectual property rights holder (trademark, patent, design, copyright, etc.) to sue any party that exploits their rights without authorization. Infringement constitutes a direct violation of the exclusive rights granted by law and may result in both civil and criminal sanctions.

An infringement action can be brought against any infringer, including manufacturers, distributors, users, or service providers facilitating the dissemination of infringing content.

Legal Basis

An infringement action is governed by various provisions of the French Intellectual Property Code (CPI), depending on the specific rights involved:

Trademark Law

• Article L. 713-2 CPI: Prohibits the reproduction, use, or imitation of a registered trademark without authorization.
• Article L. 716-4 CPI: Specifies the penalties for trademark infringement.

Patent Law

• Article L. 613-3 CPI: Defines acts that constitute patent infringement.
• Article L. 615-1 CPI: Details the penalties for patent infringement.

Design and Model Law

• Article L. 513-4 CPI: Penalizes the unauthorized use of a protected design or model.
• Article L. 521-1 CPI: Sets forth the applicable sanctions in cases of design infringement.

Copyright and Related Rights

• Article L. 122-4 CPI: Prohibits the reproduction or representation of a work without the author’s permission.
• Article L. 335-2 CPI: Provides for criminal sanctions in cases of copyright infringement.

Domain Names and Other Distinctive Signs

• If the use of a domain name, company name, or trade name infringes a prior protected right, an unfair competition claim may also be considered alongside an infringement action.

Conditions for Filing an Action

To be admissible, an infringement action must meet several conditions:

• A valid right: The trademark, patent, or copyright must be valid and enforceable.
• A clear infringement: The alleged act must violate the rights granted by registration or law.
• Standing to sue: The action is reserved for the rights holder or, under certain conditions, an exclusive licensee.

Procedure and Sanctions

An infringement action is filed before the competent judicial court, often a specialized intellectual property court.

The rights holder may seek:

• Damages covering economic losses (e.g., lost revenue), moral damages, and unjust profits gained by the infringer (Article L. 331-1-3 CPI).
• An injunction under penalty of fines to prevent further infringement.
• Destruction of counterfeit products and production tools used in the infringement.
• Publication of the court’s decision at the infringer’s expense.

In cases of intentional infringement, criminal penalties may also apply:

• Up to 4 years of imprisonment and a €400,000 fine for trademark or patent infringement (Articles L. 716-9 and L. 615-14 CPI).
• Up to 3 years of imprisonment and a €300,000 fine for copyright infringement (Article L. 335-2 CPI).

Infringement Seizure: A Key Evidence Tool

Article L. 332-1 CPI allows a rights holder to request an infringement seizure (“saisie-contrefaçon”) to gather material evidence before initiating legal proceedings. This measure, carried out with judicial authorization, is often decisive in proving the existence of infringement.

Defenses Available to the Alleged Infringer

An accused infringer may rely on several defenses, including:

• Invalidity of the right invoked (e.g., lack of novelty for a patent, lack of distinctiveness for a trademark, or lack of originality for a work).
• Absence of infringement, by demonstrating that the accused product or service does not reproduce the protected features.
• Exhaustion of rights, if the product was legally placed on the market with the rights holder’s consent and can no longer be controlled by them.

Conclusion

An infringement action is a key legal mechanism for protecting intellectual property rights and preventing unauthorized exploitation. Given the potential for substantial financial and criminal consequences, both plaintiffs and defendants should ensure a thorough legal and factual analysis before engaging in litigation.