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Gaëlle Bloret-Pucci, Partner, and her team decipher the latest news in the field of intellectual property:

In 2022, brand new edition of the Jurisclasseur encyclopedia of Criminal Business Law dedicated to trademark infringement.

Gaëlle Bloret-Pucci, Partner in the Intellectual Property Department of BCTG Avocats, and Hervé Bonnard, Professor of Law at the University of Burgundy and honorary member of the Paris Bar, have completely revised the Jurisclasseur (LexisNexis) Criminal Business Law booklet on trademark infringement.

The purpose was to integrate the last legislative reforms and important case law relating to the rules of prosecution applicable to trademark infringement, so as to enable practitioners, as well as students studying industrial property law, to find all the keys to understanding and relevant references in this area of law.

This reference book contains the following information:

  • Civil tort and criminal offence of trademark infringement (V. n° 1 to 8): the definition of the material element of the criminal offence of infringement is carried out by reference to the civil infringement of the trademark right (V. n° 10 to 48).
  • The criminal offence thus covers reproduction and imitation of a trademark (see nos. 10 to 32), and use of the genuine trademark that infringes the exclusive rights conferred on its owner by the registration (see nos. 33 to 45).
  • The ‘generic’ offence of Article L. 716-10, paragraph 1c constitutes an unintentional offence. This is the criminal offence of negligence assessed in concreto (see nos. 50 to 56).
  • The other specific offences require intentional fault (see nos. 57 to 63).
  • The severity of the repression increases according to the degree of organization of the delinquent activity (see n° 64 to 72).
  • The advantage of public action lies in the increased access to evidence through the investigative powers of the public prosecutor and/or the examining magistrate (see n° 73 to 87).
  • The civil action makes it possible to obtain the cessation of acts of trademark infringement and compensation for the damage suffered by the owner (see nos. 89 to 99).
  • The referral to the criminal courts does not prevent a referral to the civil courts within summary proceedings or on request in order to obtain provisional measures.
  • The criminal court does not have jurisdiction to declare the invalidity or revocation of a trademark. In this case, the judge will declare the offence null and void (see n° 100 to 106).
  • When invoked before a civil judge, trademark infringement tends to evolve towards an objective liability where fault is assessed in abstracto (see n° 107 to 146).

On the admissibility of the request for interim measures based on a simple patent application

In an interim order issued on June 3rd, 2022, the President of the High Court of Paris ruled that the request for provisional measures by companies NOVARTIS was admissible, even though it was based on a patent that had not yet been granted.

In this case, companies NOVARTIS sued generic company BIOGARAN in summary proceeding to prevent the imminent launch on the market of a drug containing FINGOLIMOD, a generic of NOVARTIS’ GILENYA. BIOGARAN had indeed requested the issuance of a price for its generic, as well as its registration on the list of pharmaceutical specialties reimbursable to the social security. It had also indicated to the Economic Committee for Health Products (“CEPS”) that it had undertaken to market its generic within six months from the publication in the Official Journal of the aforementioned registration.

Even though Article L. 615-3 of the French Intellectual Property Code restricts this summary proceeding to the holder of the right to bring an infringement action, and refers to the “rights conferred by the title“, the Judge, referring to Articles L. 613-1 and L. 615-4 of the same Code from which he deduced that the infringement action is possible as soon as the patent application is published, considered that the term “title” referred both to the patent granted and the published application.

In parallel, the claim jointly brought by company NOVARTIS PHARMA, simple operator of GYLENIA in France, which was not based on Article L. 615-3 but on unfair competition and article 1240 of the French Civil code, was judged admissible alongside the holder of the right.

The Judge nevertheless rejected the requests for interim measures, given the seriously questionable validity of the patent application at issue, for lack of novelty. At the examination stage, this patent application had indeed been initially rejected by the EPO for this reason, a decision which had been reversed by the Board of Appeal.

This interim order goes against the traditional interpretation of case law in France, according to which a simple patent application cannot be the basis for a request for interim measures.

Misleading commercial practices and non-granted patent: sanctioned use of the expression “Patented Innovation – Brevetée”

Company LABORATOIRES EPL PERRON RIGOT, licensee of a patent for a depilatory composition granted in 2019, was brought before the Commercial Court by company MSC FILLE AU PLURIEL, on the basis of unfair commercial practices.

It was accused of manufacturing and marketing depilatory products bearing the words “PATENTED INNOVATION – BREVETEE”, while at the time of the disputed facts (in 2017), the patent in question had not been issued. The plaintiff also accused the company of having represented, on a catalog intended for consumers, a timeline referring to the filing of various patents between 1972 and 2014.

The Court of Appeal, in a decision dated March 30th, 2022, ordered company LABORATOIRES EPL PERRON RIGOT to pay 10,000 euros as damages for misleading commercial practices. It considered that the litigious mention “PATENTED INNOVATION – BREVETEE” was misleading as much on the rights of the company as on the substantial qualities of the products in question, insofar as the patent in question had not yet been granted. It also noted that the reality of the filing of the patents mentioned in the timeline had not been demonstrated. These elements were, according to the Court, “likely to substantially alter the economic behavior of the normally informed and reasonably attentive consumer“, and likely to give company LABORATOIRES EPL PERRON RIGOT an undue competitive advantage.

This position appears severe with regard to the principle of retroactive protection of the patent at the time of its grant, while a patent application (in essence not yet granted) may be the basis for requests for seizure-infringement, or even interim measures.

The composition of a product can be protected by business secrecy, provided that it can be established that this information is indeed secret

In a dispute between the producer of a “GOLDEN MILK” drink and one of its competitors and former business partners, the Court of Appeal of Aix-en-Provence, in a decision dated May 12th, 2022, rejected all the claims based on the infringement of the trade secret relating to the composition of this rehydrated drink.

The Court recalled that it was up to the plaintiff, invoking the trade secret on the recipe of its drink, to demonstrate that it fulfilled the three conditions of protection set forth in article L. 151-1 of the French Commercial Code. It also specified that the infringement of the trade secret had to be obvious, the provisional measures in question being requested before the interim Judge.

Although not excluding protection of the composition of a product by trade secret as a matter of principle, the Court of Appeal noted that in this case, the drink GOLDEN MILK was based “on a legendary recipe of Indian yogis, completed by a set of very specific active ingredients“, implying that this drink resulted from a traditional composition, at best improved, belonging to the public domain. The Court therefore rejected any protection of the recipe of this drink by business secrecy, specifying that the existence of a confidentiality agreement previously signed between the parties concerning this recipe was not sufficient to qualify it as a trade secret.

Jurisdiction of the French Judge to rule on the infringement action of the owner of a European trademark against the customs declarant of goods in transit in France

This case has its origin in a customs detention carried out by customs of Sète, concerning 2,660 oil filters suspected infringe the SCANIA trademark of Swedish company SCANIA. The litigious products originated from Turkey and had for final destination Spain. Their holder was company ETABLISSEMENT CLEMENT DUFLOT, having its head office in France.

Company SCANIA sued all the companies involved (French, Turkish and Spanish companies) before the High court of Paris for trademark infringement. The defendants then brought an objection before the Procedural Judge on the grounds of lack of territorial jurisdiction in favor of the Spanish Judge.

By an order of March 26th, 2021, the Procedural Judge rejected this objection of lack of jurisdiction, which was confirmed by the Court of Appeal of Paris on January 15th, 2022. The Court, by a combined application of Article 9 §4 of Regulation (EU) 2017/1001 on the European Union trademark, interpreted in the light of Recital 16, and Article 125 of the Regulation, in its paragraphs 1 and 5, held that company ETABLISSEMENT CLEMENT DUFLOT had actively participated in the operations and procedure for the detention of the litigious products by customs. It also noted that this company had been mandated by the companies importing and exporting the litigious products to carry out the transit formalities in their name and on their behalf. Finally, it noted that all the claims, being part of the same factual and legal situation, were “so closely related that it is in the interest to examine them and have them judged together“, in order to avoid divergent solutions between the different courts.

In view of all these elements, the Court of Appeal, noting that the disputed facts had been committed in France, and that the customs declarant ETABLISSEMENT DUFLOT had its head office in France, confirmed the jurisdiction of the High Court of Paris to rule on the infringement action thus initiated, as the European Trademark Court. The Court therefore has jurisdiction to rule on all the facts in dispute, which contain numerous foreign elements.

See also...