FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
There is also a specific rule known as “forfeiture by acquiescence” in Article L.716-2-8, accord - ing 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 ser - vices 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 reputa - tion, the dilution caused, etc. As regards actions based on a well-known unregistered trade mark, the claimant may file a civil liability action (Article L.713-5 of the French Intellectual Property Code). In parallel with civil infringement actions, the claimant may file a criminal action to obtain criminal sanctions. However, right-holders usu - ally prefer civil proceedings 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 complementa - rity) 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, rep - resented 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 differences) between the original work and the defendant’s work. Therefore, the reproduction of only some of the original characteristics of a copyrighted work can be considered 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). Copy - right infringement actions can be initiated by the author of the copyrighted work or the owner of the copyright, if the latter is different from the author. In the absence of a claim by the authors, the courts entrust a presumption of ownership 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 agree - ment does not prohibit it, and (ii) a formal notice was sent to the licensor identifying the infringe - ment and asking the licensor to act against the
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