FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
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 cancella - tion/invalidity counterclaim. If the infringement action is based on a trade mark right, the plaintiff will have to demonstrate that the alleged infring - er is using an identical/similar mark for identical/ similar goods or services as those covered by the registration. 8.3 Costs of Litigating Infringement Actions The costs of a civil action for trade mark infringe - ment vary from case to case. The total cost of such legal action from start to finish is very dif - ficult to assess and depends on the length and complexity of proceedings. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement The defendant may claim that: • 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, company 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 ser - vices or a characteristic thereof; or • the owner of the trade mark knew about and tolerated the litigious sign for over five years.
The defendant may also file a counterclaim for revocation 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 limita - tions; • the work in which copyright is claimed is not original, 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 lim - ited 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 selective distribution network is insufficient to establish a risk of mar - ket partitioning. French law does not have an exhaustion doc - trine with regard to copyrights.
10. Remedies 10.1 Injunctive Remedies
IP owners may request injunctive remedies of a different nature such as temporary prohibition
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