Trademark Infringement Action

A trademark infringement action is a legal proceeding initiated by the holder of a registered trademark against any party that reproduces, imitates, or uses the trademark without authorization in a way that infringes on its exclusive rights. The purpose of this action is to stop unauthorized use, obtain damages, and protect the distinctiveness of the trademark in the market.

Trademark infringement may result from:

• Total or partial reproduction of the trademark without authorization,

• Imitation creating a likelihood of confusion,

• Unauthorized use of an identical or similar trademark for identical or similar products/services.

Legal Framework in French Law

A trademark infringement action is governed by several provisions of the French Intellectual Property Code (CPI):

• Article L. 713-2 CPI: Prohibits the reproduction, use, or imitation of a registered trademark without the owner’s consent.

• Article L. 713-3 CPI: Punishes the use of an identical or similar trademark for similar products or services when there is a likelihood of confusion.

• Article L. 716-4 CPI: Establishes the civil and criminal penalties applicable in cases of trademark infringement.

• Article L. 716-5 CPI: Defines the calculation of damages in proven infringement cases.

• Article L. 332-1 CPI: Allows the trademark holder to request an infringement seizure (“saisie-contrefaçon”) to collect evidence before filing a lawsuit.

Conditions for Filing an Action

To be admissible, a trademark infringement action must meet the following conditions:

• A registered and valid trademark: The action can only be initiated for a legally protected trademark.

• A clear act of infringement: There must be unauthorized reproduction, imitation, or use of the trademark.

• Standing to sue: Only the rights holder or, in some cases, an exclusive licensee may initiate the lawsuit.

Procedure and Sanctions

A trademark infringement action is brought before the competent judicial court, often a specialized intellectual property court.

The rights holder may obtain:

• Damages, covering economic losses, moral damages, and unjust profits gained by the infringer.

• 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, including:

• Up to 4 years of imprisonment and a €400,000 fine (Article L. 716-9 CPI).

Infringement Seizure: A Key Evidence Tool

Article L. 332-1 CPI allows a trademark holder to request an infringement seizure (“saisie-contrefaçon”), a preliminary measure that enables the seizure of physical evidence before filing a lawsuit. This procedure, carried out with judicial authorization, is often crucial in proving infringement.

Defenses Available to the Alleged Infringer

An accused infringer may rely on several legal defenses, including:

• Invalidity of the trademark: Lack of distinctiveness or improper registration.

• Absence of infringement: No likelihood of confusion between the signs in question.

• Exhaustion of rights: If the products were legally placed on the market by the rights holder, the holder can no longer control their distribution.

Conclusion

A trademark infringement action is a key legal tool for defending exclusive rights and ensuring trademark protection. Given the financial and legal risks, both plaintiffs and defendants must conduct a thorough legal analysis before engaging in litigation.