FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
6.2 Rights of Prevailing Defendants Firstly, before French courts and the UPC, in the case of preliminary action, the enforcement of an injunction can be conditional on a financial pro- vision from the claimant, to ensure compensa- tion to the defendant if the infringement action is subsequently rejected or the measures annulled. Secondly, prevailing defendants in any type of action can request the recovery of the costs incurred in the proceedings (see 8.3 Responsi- bility for Paying the Costs of Litigation ). The winning defendants may also claim com- pensation for the damages caused by reckless and/or vexatious proceedings by the claimant. 6.3 Types of Remedies In France and before the UPC, the same rem- edies – which are listed in 6.1 Remedies for the Patentee – apply to each type of technical IP right. 6.4 Injunctions Pending Appeal In France, since 1 January 2020, provisional enforcement is now available as of right. There- fore, unless otherwise provided, all decisions issued by the court are immediately enforceable (ie, despite a pending appeal). In the case of an appeal, provisional enforce- ment may only be lifted by the president of the Court of Appeal and in very specific situations. Before the UPC, decisions have provisional enforcement, and an appeal does generally not have a suspensive effect (except on validity) unless the Court of Appeal decides otherwise upon request of one of the parties. For example, in Koninklijke Philips v Belkin, after the Munich Local Division ordered a permanent injunction against Belkin and its directors, Belkin filed an
separate proceedings from the one on validity and infringement. However, in a decision dated 16 January 2025 in Fives v REEL, the Court of Appeal of the UPC ruled that the UPC has jurisdiction over actions for damages following a decision issued by a national court of a contracting member state that a European patent has been infringed and that the infringer has an obligation to compensate for damages arising from the infringement. On 28 January 2025, the Dusseldorf Local Divi- sion ruled in Fujifilm v Kodak that the UPC can determine questions of infringement of UK des- ignations of European patents. Recall and Destruction French law and the UPCA allow judges to order the recall of infringing products from their dis- tribution channels and their destruction, carried out at the expense of the infringer. Publication French courts and the UPC can also order the publication of the decision, at the expense of the infringer, in full or in part, in public media. In any event, the claimant may publish the judgment in whole or in part on its own website, without the prior court’s authorisation. However, the claimant must act carefully when publishing the judgment in order to avoid any claim for unfair competition by denigration. Criminal Remedies In criminal proceedings, wilful infringement is required for a successful outcome, which may lead to criminal sanctions of up to three years of imprisonment and a fine of up to EUR300,000 (Article L.615-1, IPC). For legal entities, the fine can amount to up to five times the amount set for individuals (Article 131-38, Criminal Code).
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