CELINE v. MANGO: two million euros in damages on the grounds of parasitism for the reproduction of CELINE’s flagship products

The dispute opposed CELINE to MANGO and PUNTO FA, which were accused of reproducing a number of successful items from several of the luxury brand’s collections.
In first instance before the Commercial Court of Paris on September 20th, 2021, CELINE had obtained cessation of the marketing of the disputed models and damages of 1,500,000 euros as compensation for the damage suffered.
In its decision of November 10th, 2023, the Court of Appeal of Paris upheld the aforementioned judgment, holding that the CELINE items in question constituted “flagship products of company CELINE that enjoy a certain reputation, characterizing individualized economic values”.
MANGO’s reproduction of several items from the same collection was considered characterizing a range effect.
It was also noted that MANGO had marketed the disputed products at the same time as CELINE, close to the fashion shows that revealed the items to the public. In this respect, the judges held that MANGO’s repeated reproduction of articles from the CELINE collection could not have been fortuitous. As a result, MANGO had unduly benefited from the investment in and reputation of the CELINE products.
The Court of Appeal condemned MANGO’s actions as parasitic and ordered MANGO to pay 2,000,000 euros in damages to compensate for the economic and moral damage suffered by CELINE.
Cout of Appeal of Paris, November 10th, 2023, No.21/19126

UPC: first decision rendered by the Paris Central Division and definition of the concept of “same parties”

On November 13th, 2023, the Paris-based UPC Central Division rendered its first decision in a dispute between Edwards Lifesciences Corporation and Meril Italy. Edwards Lifesciences had brought infringement proceedings against Meril India (Meril Italy’s parent company) and Meril Germany before the Munich Local Division. Meril Italy subsequently brought an action for revocation of Edwards Lifesciences’ patent, this time before the Central Division. It was in the context of this second action that Edwards Lifesciences argued that the Central Division lacked jurisdiction to rule on the validity of its patent.
It relied on Article 33(4) of the Agreement on a Unified Patent Court, which provides that, although an action for revocation of a patent must be brought before the Central Division, if an infringement action “has been brought between the same parties in respect of the same patent before a local or regional division”, the related revocation action may only be brought before that local or regional division.
The Central Division therefore had to interpret the concept of “same parties”. It noted, in the light of the Italian law applicable to it, that Meril Italy had a legal personality distinct from that of Meril India, and that there was nothing to suggest that it was merely a “straw man”. It therefore held that the action for revocation of Edwards Lifesciences’ patent did not involve the same parties as the infringement action pending before the Munich Local Division.
It also rejected Edwards Lifesciences’ argument relating to the risk of contradictory decisions by the two Divisions seized of the same patent due to the existence, in the rules applicable to the UPC, of various provisions allowing, at the discretion of the Judges, the referral of the entire case to the Central Division or a stay of proceedings by the Local Division in the interests of the proper administration of justice.
This decision is likely to encourage the multiplication of proceedings relating to the same patent, in the presence of groups of companies spread across Europe, for reasons of judicial strategy. The discretionary power of the UPC divisions to refer the case back or stay proceedings should give rise to interesting case law.
UPC, Central Division, Paris, 1st instance, November 13th, 2023

Inadmissibility of summary proceedings based on a simple patent application

In its decision of November 22nd, 2023, the Court of Appeal of Paris reaffirmed the inadmissibility of a summary proceedings action based on a patent application, and not on a granted patent, confirming the case law handed down in this respect in another case between BIOGARAN and NOVARTIS in a decision of March 22nd, 2023 (No.22/11165). These two decisions go against a much-criticized order of the Court of First Instance of June 3rd, 2022, which had ruled that an action for preliminary injunction by the owner of a patent application that had not yet been granted was admissible (No.22/52718).
The dispute that gave rise to the judgment of November 22nd, 2023 was between SHARK ROBOTICS and ELWEDYS against ANGATEC, all of which specialized in the design and sale of assistance robots. One of the plaintiffs, ELWEDYS, was the owner of several not yet granted patent applications, which it claimed were likely to be infringed.
As in first instance, the Court of Appeal, reading Articles L. 615-3, L. 613-1 and L. 615-4 of the French Intellectual Property Code in conjunction, ruled that while the owner of a patent application may bring an infringement action on the merits (with the judge being required to stay the proceedings until the patent is granted), French law does not allow this owner to bring an action for preliminary injunction. It justifies this position in particular by reference in Article L. 615-3 on summary proceedings to the concept of “title”, which in the Code corresponds to a granted patent.
Case law therefore reverts to its traditional solution, according to which the absence of a registered title precludes summary proceedings.
Court of Appeal of Paris, November 22th, 2023, No.22/19275

The limitation period for a civil action for infringement runs from the day on which the plaintiff knew or should have known the facts enabling him to bring the action

In a decision of November 15th, 2023, the Court of Cassation recalled that the five-year limitation period for copyright infringement runs from the day on which the plaintiff knew or should have known the facts enabling him to bring the action.
In this case, a sculptor and painter was approached in 1985 by the director of a museum to create a work entitled “The Horse Fountain”. The artist subsequently discovered that reproductions of his work had been made without his permission. He sued the infringers and the Court of Appeal of Douai ruled on December 17th, 2008, that a sculpture was infringing.
In 2020, the artist, having noted that said sculpture was still on display, brought an application for interim measures on March 5th, 2021, against the company that owned the sculpture before the Court of First Instance of Lille, seeking to put an end to the obviously unlawful disturbance resulting from the infringement of his rights and to obtain compensation for his damage.
The defendant company argued that the infringement action was time-barred on the basis of Article 2224 of the Civil Code, which provides that “personal or movable actions are time-barred after five years from the day on which the holder of a right knew or should have known the facts enabling him to exercise it”.
Conversely, the artist argued that the infringement in this case was the result of a continuous offence, so that the starting point should be the date on which the infringing acts ceased, and not the date on which they were discovered.
The Court of Cassation upheld the appeal decision insofar as it held that the limitation period in this case had begun to run on December 17th, 2008, the date on which the Court of Appeal of Douai had retained the infringing nature of the exhibited work. The summary proceedings brought on March 5th, 2021, were therefore time-barred as of December 17th, 2013 even though the infringement, through the continued exhibition of the unauthorized reproduction of the work, had continued over time.
Cass, Civ1, November 15th, 2023, No.22-23.266

Infringement seizure: loyalty at the application stage

In its decision of December 6th, 2023, the Court of Cassation reiterates the essential principle incumbent on the applicant of a request for infringement seizure, that of respect for loyalty.
In this case, PUMA accused CARREFOUR of marketing tennis shoes reproducing a figurative element on the side of the model, which had been registered as a trademark by CARREFOUR.
CARREFOUR was sued for a trademark infringement, following an infringement seizure carried out in its shops, at the request of companies PUMA.
CARREFOUR sought to have the infringement seizure operations declared null and void, holding that companies PUMA had not provided all the information enabling the judge “to fully grasp the issues at stake in the proceedings (…) or to make an informed assessment of the applicants’ legitimate interest in resorting to such a measure”.
In its application, PUMA did not specify that CARREFOUR was the owner of French and European trademarks for the figurative sign in question or that it had brought opposition proceedings against these applications before the French and European bodies, which ruled out any imitation of the PUMA trademarks and ruled out the likelihood of confusion.
On the basis of Article L. 716-7, now L. 716-4-7, paragraphs 1 and 2, of the French Intellectual Property Code, read in the light of Article 3 of Directive 2004/48/EC of April 29th, 2004, the Court of Cassation recalls the European requirements of proportionality and loyalty of the measures necessary to ensure respect of the intellectual property rights and to assess the validity of the application.
It is therefore incumbent on the claimant to demonstrate loyalty when setting out the facts of the claim and to present the judge with all the objective facts enabling him to fully exercise his power to assess the circumstances of the case; even though, in this case, the French judge is not bound by the administrative decisions of the Institutes.
As a result, the Court of Cassation upheld the nullity of the infringement seizure reports due to lack of loyalty.
Cass, com. December 6th, 2023, No.22-11.071