FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
7.8 Effect of Trade Mark and Copyright Office Decisions Judges are not bound by the decisions of the FTO. They may use these decisions in the course of devel - oping their motivations and take them into account in their assessment, but they are not bound by them. 7.9 Counterfeiting and Bootlegging The factors taken into account to establish infringe - ment are set out in 7.3 Factors in Determining Infringement . There is no specific procedure, remedy or statute addressing bootlegging. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings The specialised courts with exclusive jurisdiction are listed in 7.5 Lawsuit Procedure . Intellectual property cases are determined by specialised and technical judges rather than a jury, and the parties do not have any influence on who is the decision-maker. 8.2 Effect of Registration The owner of a registered trade mark benefits from a presumption of validity, but it does not preclude the defendant from filing a cancellation/invalidity counter - claim. If the infringement action is based on a trade mark right, the plaintiff will have to demonstrate that the alleged infringer is using an identical/similar mark for identical/similar goods or services as those cov - ered by the registration. 8.3 Costs of Litigating Infringement Actions The costs of a civil action for trade mark infringement vary from case to case. The total cost of such legal action from start to finish is very difficult to assess and depends on the length and complexity of pro - ceedings. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement The defendant may claim that:
Issuing a formal cease and desist letter is a legal pre - requisite to filing an infringement lawsuit. However, failure to send a letter of formal notice beforehand will not invalidate the action. As regards restrictions on the owner asserting its rights, the owner may be liable for the following, depending on its behaviour: • abusive action; • denigration, if the owner publicly accuses the defendant of infringement without any court deci - sion stating so; or • obstruction of competition, in case of abusive action against distributors benefiting from the prin - ciple of exhaustion of rights. 7.5 Lawsuit Procedure Only ten regional courts have special jurisdiction for handling infringement proceedings: Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Strasbourg and Fort-de-France. Before filing a lawsuit, some costs are necessarily incurred due to the execution of bailiff’s reports, the drafting of a request for infringement seizure and the execution of counterfeit seizure operations by a bailiff, as well as the drafting and sending of a letter of formal notice. Foreign copyright owners may bring infringement claims in France if the infringing acts are committed in France. However, an infringement lawsuit cannot be based on a foreign trade mark that does not have any effect in France. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants There are no declaratory judgments in France. 7.7 Small Claims There are no alternative forms of lawsuits for small claims.
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