Bailiff’s report and legal intern: the Court of Cassation overturns its jurisprudence

On May 12, 2025, the Joint Chamber of the Court of cassation reversed its case law, ruling that the fact that, in the context of a bailiff’s report of purchase, the third-party purchaser was a trainee at the applicant’s law firm did not, in principle, render the report null and void.

In this case, Rimowa claimed that Intersod and HP Design had marketed a suitcase that reproduced the original features of one of its designs. Rimowa had its lawyers draw up a bailiff’s report of purchase, in which the third-party purchaser was a trainee at the law firm in question.

While the first instance judges, relying on traditional case law of the Court of cassation in matters of seizure for infringement, ruled that the purchase report was null and void, the Court of appeal recognized its validity and ruled that the defendants had committed acts of copyright infringement and unfair competition against Rimowa.

Intersod took the case to the Court of cassation, arguing that the purchase report had no probative value because the third-party purchaser was not an independent party, given that he was a trainee at the applicant’s law firm.

The Court of cassation, reversing its previous case law (Cass. Civ. 1, 25 January 2017, No. 15-25.210), upheld the Court of appeal’s ruling, considering that: “the absence of sufficient guarantees of independence of the third-party purchaser in relation to the applicant is not such as rendering the purchase report null and void. In such a case, it is for the court to assess whether, in the light of all the evidence submitted to it, this lack of independence affects the probative value of the agreement.”

In other words, the alleged lack of independence of the trainee does not, in principle, invalidate the purchase report, in the absence of evidence of a maneuver or other facts demonstrating the lack of objectivity of the observations set out in the report. This approach, which differs from those adopted in relation to seizure of infringing goods, is justified in the case of purchase reports because this evidentiary measure is less intrusive than seizure of infringing goods. The validity of the report therefore depends on the judge’s assessment.

The argument pursuing the purchase agreement was null and void is therefore rejected. However, the appeal is dismissed, as the Court of appeal also found the defendants guilty of unfair competition without establishing the existence of facts distinct from those alleged in relation to the infringement.

Court of cassation, Joint Chamber May 12, 2025, No. 22-20.739

Birkenstock sole trademark cancellation upheld on appeal

On September 9, 2014, the company Ockenfels Brands, that markets Birkenstock shoe models, filed an application for registration of a French trademark with the INPI for a geometric pattern embossed on the sole, which is bordered by straps on both sides. Initially, the INPI refused to register this application. Following a decision of the Paris Court of appeal, the trademark was ultimately registered on September 14, 2018. The Court ruled that the trademark had an intrinsic distinctive character, as the relevant public clearly perceived the pattern on the sole as an indication of the product’s commercial origin. Furthermore, it had acquired distinctive character through use prior to its registration.

In 2019, Gold Star, an Italian company that sells shoes with a similar sole, brought an action against Ockenfels Brands before the Paris Court, seeking a declaration of invalidity of the trademark, arguing that it infringed its business.

At first instance, the claim for the invalidity of the Birkenstock sole trademark was upheld.

On appeal, the Italian company’s argument that the trademark was imposed solely by the product’s shape or technical functionality was rejected, as it had been in the first instance. While the design of a shoe’s sole is important for the grip of a shoe, the judges ruled that it was not demonstrated here that the sole’s surface patterns had any technical function in this regard.

However, the second argument based on trademark’s lack of distinctiveness was upheld on appeal and led to the cancellation of the Birkenstock sole trademark, as it was in first instance. The Court of appeal emphasized that the sole and the decorative motifs evoking a wave and a hypnotic character are not particularly memorable for the relevant public who will perceive it as a decorative element rather than a distinctive sign. Consequently, the sole does not constitute “a distinctive feature of the trademark, so that it is incapable of identifying the origin of the goods it designates.”

The Paris Court of appeal thus departs from its 2018 decision when the trademark was registered, ruling this time that Birkenstock failed to demonstrate that the sign had acquired distinctive character through its use by providing evidence of continuous, intense, long-term use of the sign as a trademark involving a significant proportion of the relevant public between the trademark’s filing and the Italian company’s application for its invalidity in June 2019.

Cour of appeal, Paris January 24, 2025 RG no. 23/19434

Easybreath mask: Decathlon stays afloat against Delta-Sport

The validity of the designs protecting Decathlon’s Easybreath mask has already been upheld by the French courts and has now been confirmed once again, this time by the General Court of the European Union.

In two rulings issued on June 4, 2025, the General Court of the European Union upheld the decisions of the Cancellation Division and the Board of Appeal of the EUIPO (European Union Intellectual Property Office), which had upheld the validity of the Community designs, registered since November 6, 2013, for the Easybreath diving mask, marketed by Decathlon since 2014. The invalidity of the designs had been requested by its German competitor Delta-Sport.

These masks, used for snorkeling, are unique for their full-face design and integrated snorkel, offering a unique all-in-one experience.

A saving aesthetic bias

Delta Sport argued before the General Court of the European Union that the characteristics of Decathlon’s designs were limited in their appearance to what was necessary for their technical function, meaning they could not claim protection under design law. It referred to Article 8(1) of European Regulation No. 6/2002, which states that a Community design shall not confer any rights on the appearance of a product that is solely dictated by its technical function.

The EUIPO’s decisions ruled that the mask had certain aesthetic features that were not exclusively dictated by the technical requirements of a diving mask.

Similarly, the Court noted the following characteristics:

“an oval peripheral frame surrounding the face;

a transparent, flat window in the upper part, rising in the nose area and gradually narrowing towards the chin, inserted into the peripheral frame;

a skirt consisting of a partition above the mouth and nose, in the shape of an inverted “V,” with a valve on the left and one on the right, a cover with slits being provided in the chin area;

a semi-circular, flat snorkel which becomes significantly thicker from the middle to the upper end, fitted with a cap at the end; the snorkel is positioned at the top, in the middle of the frame, and inclined at an angle of 45 degrees to the frame;

an X-shaped head strap connected in the middle, attached to the mask by two fastening eyelets located on the sides, slightly above the chin” (point 33).

The Court emphasized that, while some of the mask’s features were linked to the technical function required of a diving mask, the aforementioned characteristics were not exclusively linked to that function, and that “in addition to the presence of colors in the contested design, at least two characteristics of its appearance presented considerations other than technical ones,” namely the oval shape of the mask and the shape of the head strap attachment (paragraph 35).

The Court’s judgment also refers to the design process behind the diving mask, as well as the collaboration with a design company, reinforcing the evidence of an aesthetic bias on the part of Decathlon’s teams.

Confirmation of the individual character of the designs

Delta-Sport also claimed that the design had been disclosed earlier in a patent application published in 1995, which included drawings that it claimed reproduced the design. It argued that these drawings constituted prior art that destroyed the individual character of the registered Community designs.

The General Court of the European Union also rejected this argument, noting several differences between the illustrations in the patents and the designs, which did not allow it to conclude that the diving mask lacked individual character.

Converging case law on the validity of the Easybreath design

This decision is therefore in accordance with that handed down by the Paris Court of appeal on January 28, 2022, confirmed by a ruling of the Commercial Chamber of the Court of Cassation on June 26, 2024, in the case of infringement of the Easybreath masks between Decathlon and Intersport.

The French courts had previously recognized the validity of the same Community design No. 002526699-0001.

While the judges found that there was no infringement of the design due to sufficient differences creating a different overall visual impression, they nevertheless ruled in favor of Decathlon, finding Intersport guilty of parasitism. The Court considered that Intersport had taken unfair advantage of the commercial success of the Easybreath mask by marketing similar designs without assuming the investment and efforts related to its development and promotion.

TUE, June 4, 2025, T-1060/23 and T-10601/23, Delta Sport

Luxury bag counterfeiting network and reminder of the principles of compensation for counterfeiting damages

In a ruling dated May 27, 2025, the Court of Cassation upheld the appeal convictions of several defendants involved in an organized network manufacturing and reselling bags that infringed the rights of Hermès.

The appellants argued that the damages awarded were punitive in nature and contested their accumulation with the criminal penalties. The High Court dismissed this argument on the basis that the sole purpose of damages is to compensate for the harm caused by infringement of the intellectual property rights of the civil parties and that it can be awarded alongside criminal penalties without being punitive in nature and without contravening Articles 49 and 50 of the Charter of Fundamental Rights of the EU.

Regarding the damages subsequently awarded to two entities of the Hermès group, the defendants argued that they could not be held jointly and severally responsible for the award of damages for the material loss corresponding to the unlawful profits, on the ground that the sum had no causal link with the acts personally alleged against some of the defendants, and that some of them had not personally received the unlawful profits.

The Court rejected this argument, pointing out that the contested decision refers to article 480-1 of the Code of Criminal Procedure, stating that individuals convicted of the same offense are jointly and severally responsible for restitution and damages, “joint and several liability being imposed on the judge as a legal consequence of the conviction.” In that case, the offenses of which the defendants are individually referred are connected and indivisible and, since this is an organized network, “it is irrelevant that some of the perpetrators do not know each other or are not all prosecuted for the same offenses.”

If, at this stage, there are no grounds for sharing liability, the co-perpetrators may subsequently bring recourse proceedings against each other.

Finally, the applicants alleged that the Court of appeal had violated Articles L.716-4-10 and L. 331-1-3 of the Intellectual Property Code, which provide, in essence, that in order to determine damages, the Court shall take into consideration either the negative consequences of the infringement, including the profits made by the infringer, or, alternatively, the amount of royalties lost. However, according to the appellants, the Court of appeal had ordered them to pay a total of €601,020 in respect of the profits generated by the acts of infringement and €24,040 in respect of the loss of royalties that would have been due if a license had been granted.

The Court of Cassation rejected this argument: these sums were not awarded cumulatively but were intended to compensate for two different types of damage suffered by two separate entities: on the one hand, the damage suffered by the company operating the trademarks on the basis of the unlawful profit derived from the infringement and, on the other hand, the damage suffered by the company holding the rights in respect of the loss of royalties.

Court of cassation Crim, May 27, 2025, No. 23-86.955

Trade secret protection was rejected in the absence of an appeal for revocation within one month.

On May 14, 2025, the Court of Cassation issued a new ruling that clarified the scope of trade secret protection.

OGF accused Pompes Funèbres du Vignoble of unfair competition. The Commercial Court authorized OGF to send a bailiff to the defendant’s registered office to collect documents, based on article 145 of the Code of Civil Procedure.

The order stipulated that the documents collected be placed under provisional escrow. This measure is ordered ex officio by the judge and is based on article R. 153-1 of the Commercial Code, which aims to protect trade secrecy. The seizure was carried out by the bailiff on August 4, 2022.

Even though it had not taken any action to seek the withdrawal of the order, Pompes Funèbres du Vignoble attempted to oppose the lifting of the escrow, as provided for in Article R. 153-1, arguing in proceedings initiated by OGF that trade secrecy should continue to apply, given the extreme confidentiality of the seized documents.

However, the lifting of the escrow was confirmed by the Bordeaux Court of appeal on October 4, 2023. Rejecting the argument based on the protection of trade secrets, the Court noted that Pompes Funèbres du Vignoble had not filed a request to withdraw the order within one month of its notification.

The Court of Cassation dismissed Pompes Funèbres du Vignoble’s appeal, stating that when no request to modify or withdraw the order has been submitted by the defendant within one month, he is no longer entitled to rely on the protection afforded by trade secret law.

This literal application of article R.153-1 of the Commercial Code aims to strike a balance between protecting the defendant’s trade secrets and enabling the plaintiff to search for evidence.

Court of cassation, May 14, 2025 – No. 23-23.897

Universal found guilty of infringing performers’ rights

The Paris Court of appeal recently heard a dispute between SPEDIDAM, a society responsible for collecting and distributing performers’ rights, and Universal.

In 2007, seventy-three performers gave a concert dedicated to composer Lalo Schifrin. The performers concluded a fixed-term contract providing for the concert to be recorded for archival purposes only and confirmed their agreement to this end by signing an attendance sheet issued by SPEDIDAM for archival purposes.

In 2016, nine years later, Universal released and marketed a record reproducing this recording.

Considering that no authorization for secondary use had been granted by SPEDIDAM and no remuneration had been paid to the performers following this commercialization, SPEDIDAM sued Universal before the Paris Court of Justice on February 17, 2022. Universal brought the concert organizer into the proceedings as a third party to obtain its guarantee.

In a judgment dated October 11, 2023, the Paris Court confirmed the unlawful nature of the exploitation and recognized the infringement of the seventy-three performers’ related rights. It ordered Universal to pay €45,000 in compensation.

On appeal, Universal claimed the exploitation rights to the recording, which it believed it was held by virtue of a license agreement with the association organizing the concert.

In its decision of May 23, 2025, the Paris Court of Appeal upheld the infringement of performers’ neighboring rights but overturned the judgment to distinguish between two separate heads of compensation: €45,000 in damages to compensate for the individual harm suffered by the performers and €5,000 for the collective harm suffered by the performing arts profession, as sought by SPEDIDAM.

This decision serves as a reminder that Universal, as a professional in the sector, could not rely on the license agreement concluded with the concert organizer to exempt itself from respecting performers’ rights.

The license agreement did not indicate that the performers had authorized the exploitation, and it was Universal’s responsibility to ensure that such authorization existed.

Paris Court of appeal, Chamber 2, May 23, 2025, No. 23/17959