FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Infringement proceedings are statute-barred within five years from the date of knowledge of the last infringing act. This is also reflected in case law, which has held that this five-year period runs from the last disputed action. There is also a specific rule known as “forfeiture by acquiescence” in Article L.716-2-8, according to which a third party may not challenge a registered trade mark whose use has been knowingly tolerated by the third party for more than five years. 7.2 Legal Claims for Infringement Lawsuits and Their Standards The main cause of action as regards trade mark and copyright would be infringement, as this can lead to: • a prohibition on the use of the infringing sign in trade for identical or similar goods and services on the basis of their trade mark rights, or of the infringing work; • the invalidation of the infringing trade mark if the sign at issue has been filed or registered; and • compensation for the damage suffered as a result of the infringement, the likelihood of confusion, the damage to image and reputation, the dilution caused, etc. As regards actions based on a well-known unregis - tered trade mark, the claimant may file a civil liability action (Article L.713-5 of the French Intellectual Prop - erty Code). In parallel with civil infringement actions, the claimant may file a criminal action to obtain criminal sanctions. However, right-holders usually prefer civil proceed - ings due to the nature and specificities of intellectual property rights. 7.3 Factors in Determining Infringement The factors that are taken into consideration when assessing trade mark infringement are essentially the following, which are assessed as a whole:
• the distinctiveness of the earlier trade mark; • identity or similarity of the signs; • identity or similarity (including complementarity) of the goods and services; and • the relevant public and its level of awareness. A copyrighted work is considered infringed as soon as the work is published, reproduced, represented or distributed in disregard of the laws and regulations relating to the copyright of the author. Under French law, copyright infringement does not require an actual copy of the work; it is assessed by taking into account the similarities (and not the differ - ences) between the original work and the defendant’s work. Therefore, the reproduction of only some of the origi - nal characteristics of a copyrighted work can be con - sidered an infringement. 7.4 Prerequisites and Restrictions to Filing a Lawsuit Trade mark infringement actions can be initiated by the owner of the trade mark, even if the trade mark is not yet registered (however it will affect the chances of success of the action). Copyright infringement actions can be initiated by the author of the copyrighted work or the owner of the copyright, if the latter is differ - ent from the author. In the absence of a claim by the authors, the courts recognise a presumption of own - ership of the rights to the persons who make public use of the work. Infringement actions can also be initiated by the exclusive licensee if (i) the licence agreement does not prohibit it, and (ii) a formal notice was sent to the licensor identifying the infringement and asking the licensor to act against the infringement, and the licen - sor did not respond in a reasonable time. Non-exclusive licensees are not allowed to file infringement actions. They may, however, intervene in the action for infringement and have their own preju - dice determined if an infringement action is initiated by the owner and/or the exclusive licensee.
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