November Lovells Trademark and Design Right Enforcement in the European Union Part I France Marie-Aimée de Dampierre, Paris

November Lovells Introduction : Tendency toward the Harmonization of IP rights Trademark rights Directive n° 89/104 of 21 December 1988 to approximate the laws of the Member States relating to trademarks to be implemented in the EU countries by 31 December 1992 Directive implemented in France by the law of 4 January 1991 as codified in Part VII of the Intellectual Property Code (« IPC ») on French trademarks Regulation n° 40/94 of 20 December 1993 on Community Trademarks

November Lovells Design rights Directive n° 98/71/EC of 13 October 1998 on the legal protection of designs to be implemented in the EU countries by 28 October 2001 Directive implemented in France by the law of 25 July 2001 as codified in Part V of the IPC on French designs Regulation n° 6/2002 of 12 December 2001 on Community Designs

November Lovells All of them : –Directives –National laws of the Member States including France and Germany –EU Regulations contain similar provisions concerning the acquisition of IP rights in particular trademark rights and design rights and their enforcement in the EU countries

November Lovells The civil aspect of enforcement of design rights The alternative: either enforcing design rights before civil courts or before criminal courts Asked to concentrate on the civil aspect of enforcement of design rights

November Lovells Applicable law in France : –French design registrations: Part V of the French IPC on designs –Community design registrations the protection of which is sought in France: both the regulation n° 6/2002 on Community Designs and Part V of the French IPC on designs

November Lovells Jurisdiction : Civil Commercial Court French design registration: court of the defendant’s domicile, or the court where the infringing acts took place Community Design registration: specialized court to be designated by 6 March 2005 more likely the Paris Commercial Court

November Lovells First step: obtaining evidence of infringement Evidence: definition The plaintiff must provide indisputable evidence of the infringing acts To do so, the plaintiff will file dated material into court bearing one or more reproductions of the alleged infringing design and showing its main characteristics

November Lovells Evidence : practical aspects –Catalogues, brochures, leaflets –Bailiff supervised purchases : At a retail store On the internet –Customs retention

November Lovells –Infringement seizure: obtaining: an ex-parte order authorizing Descriptive seizure or full seizure of the stocks of the infringing items Giving access to the infringer’s accounts ie: obtaining information in particular: –name of the supplier –quantities of infringing items bought –turnover figure realized NB: Legal proceedings for design infringement to be instituted within 15 days following the date of the seizure

November Lovells Second step : drafting the claims The law: –The plaintiff must show that the defendant « has made, offered, put on the market, imported, exported or used a product in which the design is incorporated or to which it is applied, or stocked such a product for those purposes » without the consent of the owner of the design rights –« The protection conferred by the registration of a design shall be extended to any design which does not produce to the informed observer a different overall visual impression »

November Lovells Practical aspects –the plaintiff must provide evidence of its design rights : ie by filing into court registration certificates bearing reproductions of its design and showing its main characteristics –the plaintiff must demonstrate to the court that the main characteristics of its design have been reproduced by the infringing design, hence providing evidence of the infringement

November Lovells French case law examples Yellow Look / Oxyde Genuine Design Infringing Design

November Lovells Genuine design Infringing Design

November Lovells Tsé-Tsé Genuine Design Infringing Design

November Lovells Limitation of the rights conferred by a design acts permitted: –acts done privately and for non-commercial purposes –acts done for experimental purposes –acts of reproduction for the purposes of making citations or for teaching

November Lovells Third step : possible defences Lack of validity of the design –lack of novelty –lack of individual character –the design conflicts with a prior right of the defendant (trade mark rights, author’s rights etc.)

November Lovells Tsé Plaintiff’ Design Prior rights used to challenge the plaintiff’s design rights

November Lovells Exhaustion of rights The rights conferred by a design shall not extend to acts relating to a product in which a design protected by a design registration is incorporated or to which it is applied, when the product has been put on the market in the Community by the holder of the design or with his consent.

November Lovells Rights of prior use –a right of prior use shall exist for any third party who has in good faith commenced use or has made serious and effective preparations to use a design –the right of prior use shall entitle the third to exploit the design for the purposes for which its use had been effected, or for which serious and effective preparation had been made Fraud When a design or a model has been filed, either fraudulently with respect to the rights of another person or in violation of a statutory or contractual obligation, any person who believes he has a right in the design or model may claim ownership by bringing legal proceedings before a court. recently implemented law: therefore no case law in France Similar provisions in the French patent and/or trade mark laws

November Lovells Remedies available Cessation of the infringing acts under a penalty fine and with provisional execution at first instance Confiscation of the infringing items Damages: tendency to increase the amount of damages subject to certain conditions Publication orders Partial reimbursement of legal fees

November Lovells Real life example: Enforcing trade mark and design rights in France and Germany (the French perspective) The Lumilite case: Infringement of lamp torches (trademark rights and design rights infringed)

November Lovells - the Community trade marks at issue

November Lovells the Design registration (French design and German design registrations) at issue

November Lovells Obtaining evidence of the infringing acts and attempts to obtain the cessation of the infringing acts before a court order was even rendered: Excellent example of cooperation between the Paris and Dusseldorf offices –infringement seizure considered in France, had to be delayed to record recent changes of ownership of the Community Trademarks and National Designs –in between a fair took place in Cologne where infringing items were advertised by the former distributor: intervention of our Dusseldorf office

November Lovells –the infringement seizure in France: genuine products sold after the expiration of the sell-off period counterfeits

November Lovells

genuine torches manufactured by other companies under a third party trade mark DORCY and the commercial name Lumilite