As a reminder, it has long been established as jurisprudence that acts of counterfeit can be proven by all valid means(1). The process of infringement seizure is facultative. This exceptional recourse offered by the Intellectual Property Code(2) is without dispute the most thorough approach and the evidentiary method that is the most used for questions of counterfeit.
However, this procedure has very strict guidelines concerning both its authorization mechanisms and its terms of execution(3), and because of this its validity is very often challenged by alleged counterfeiters. Infringement seizure must be authorized by Order of the president of the Tribunal de grande instance (High Court) in response to a request presented to him. Judges are particularly keen to ensure that the terms of the Order are respected by the bailiff, and contravening the limits set by Order can lead to either the total or partial nullity of the infringement seizures.
The ruling by the Cour de cassation (Supreme Court) on February 12 2013(4) is an illustration of how keen judges are to ensure that the terms of the Court Order are respected. The Chamber of the Supreme Court sanctioned the patent holder, who had initiated the infringement seizure, with a fine of 100,000€ in damages and interest in favor of the alleged counterfeiter due to procedural abuses during the seizure.
The petitioner, the Vetrotech Saint-Gobain International (Vetrotech) Company, holder of a European patent relating to fire-resistant safety glass, alleged that the Interver Sécurité (Interver) Company manufactured and sold in France types of glass produced from characteristics described in one its patent applications. As a result, the Vetrotech Company requested an infringement seizure at Interver’s premises. Going beyond the terms of the High Court Order, the bailiff asked 24 questions relating to the processes used in the manufacture of the product. Confirming the initial decision, the Paris Appeal Court(5) ordered Vetrotech to pay 100,000€ in damages and interest to Inverter and partially nullified the minutes taken during the seizure.
Before the High Court, Vetrotech argued that indeed the bailiff had exceeded his mandate, but that was insufficient to be classed as an abuse for which their company could be found liable. The Chamber rejected this argument. According to the Court, the very existence of the fault is applicable to Vetrotech since this company had “inappropriately obtained information on the manufacturing procedures of a direct competitor via questions asked by the bailiff.”
The Court underlined in its ruling that infringement seizure is simply an evidentiary measure and the rights of alleged counterfeiters must be respected to the same extent as the rights of the alleged victims of counterfeit. The petitioner cannot take advantage of the seizure in order to inappropriately obtain information about its competitors. Infringement seizure cannot be a means of obtaining access to the premises of its competitors with the aim of discovering their secrets. In order to avoid the proliferation of such operations, their validity is strictly monitored by the Tribunals.
Our practical advice: since a bailiff’s procedural error can be imputed to the petitioner of infringement seizure, collaboration with qualified bailiffs is essential. All due care must be taken.
(1) Cass.civ, May 30 1927
(2) Article 332-1 and following of the ICC
(3) Law no2007-1544 of October 29 2007, known as anti-counterfeit law
(4) Cour de cassation February 12 2013 Vetrotech Saint-Gobain International AG v. ISG Interver Special Glass
(5) Paris Appeal Court June 22 2011