FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
10. Remedies 10.1 Injunctive Remedies
• the litigious sign is its family name; • the litigious sign is descriptive or inherently non- distinctive; • the litigious sign was used in good faith prior to the trade mark registration as a business name, com - pany name, commercial sign or domain name; • the prior trade mark has not been genuinely used (if it has been registered for over five years); • the trade mark invoked has become the generic term to describe the goods and services or a char - acteristic thereof; or • the owner of the trade mark knew about and toler- ated the litigious sign for over five years. The defendant may also file a counterclaim for revo - cation of the prior trade mark on relative or absolute grounds. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The defendant may claim that: • the legal action violated the statute of limitations; • the work in which copyright is claimed is not origi - nal, and therefore does not benefit from the rights granted by copyright regulations; • the plaintiff does not establish ownership of the work; or • the contested use falls within one of the limited exceptions, including private copying. 9.3 Exhaustion Once the goods bearing the trade mark are put on the EEA market by the owner or with their consent, the owner is not entitled to oppose their advertisement or resale within this territory. However, the exhaustion system will not apply when the trade mark owner justifies legitimate reasons (eg, alteration of the goods, inadequate reconditioning as regards to their quality, or the reputation of the trade mark for luxury goods). The mere existence of a selec - tive distribution network is insufficient to establish a risk of market partitioning. French law does not have an exhaustion doctrine with regard to copyrights.
IP owners may request injunctive remedies of a dif - ferent nature such as temporary prohibition on sale (which is very rare), seizure of litigious goods, provi - sion on damages, blocking of social media accounts or communication of social media/website access, for example, if the claim is sufficiently detailed and the judge considers that the plaintiff has a significant chance of success. Preliminary injunctive remedies are issued at the plaintiff’s financial risk. This means that if the action is deemed unfounded, the plaintiff will have to compensate the defendant for all losses and harm caused by the injunctive remedies. The court can order the plaintiff to post a bond to cover this if applicable. To obtain preliminary injunctive remedies, the trade mark and/or copyright owner would have to file a spe - cific “urgency” action in which it will have to establish its IP rights, clearly identify the behaviour that it con - siders as infringing its IP rights, and prove that there is a matter of urgency that justifies granting preliminary injunctive remedies. 10.2 Monetary Remedies When determining the amount of monetary damages awarded, the courts assess: • the negative economic consequences of the infringement for the trade mark owner (loss of earnings); • the moral prejudice caused to the trade mark owner; and • the benefits obtained by the defendant. Where there are not enough elements to determine the above, the judge can alternatively allocate a lump sum. There are no punitive damages under French law. 10.3 Attorneys’ Fees and Costs The judge may order the losing party to reimburse the costs and expenses of proceedings (including attor - ney’s fees) to the other party. However, the allocated sum is a lump sum and does not, in most cases, cor - respond to the costs actually incurred.
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