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Precedent on Opposition and Cancellation Proceedings – 2024

Written by Dreyfus27/01/2025

In the dynamic landscape of intellectual property law, opposition and cancellation proceedings serve as vital instruments for ensuring trademark registries maintain integrity and relevance. In 2024, the INPI (Institut National de la Propriété Industrielle) and French courts delivered landmark decisions that clarified procedural subtleties and substantive grounds for action. This article explores key decisions, offering practitioners and businesses critical insights into the latest trends shaping French IP litigation.

Key Procedural Elements in Cancellation and Opposition

Non-use Cancellation and Evidence Requirements

Cancellation for non-use remains a critical aspect of trademark disputes. Recent decisions reflect the broad evidentiary approach adopted by the INPI. Undated documents such as marketing materials and screenshots, when evaluated collectively with dated items, have been deemed admissible (e.g., INPI, 2 May 2024, Bob dépannage!). This leniency underscores the need for comprehensive and detailed records of use.

However, the geographical scope of use remains tightly interpreted. For instance, evidence targeting a non-French market (Swiss company) in English were deemed insufficient to establish French usage (INPI, 11 March 2024, Bureau d’Idées), reminding trademark holders of the importance of local relevance.

Procedural Standing and Abuse of Rights

A consistent theme in 2024 decisions is the public interest nature of cancellation proceedings, obviating the need for claimants to demonstrate personal interest. This principle highlights the role of such proceedings in ensuring the integrity of trademark registries and was reaffirmed in CA Paris, 24 April 2024, Vape, which emphasized the role of these actions in cleansing the registry.

Claims of abuse of rights require substantial evidence of malicious intent. In MySunbed (INPI, 27 May 2024), the INPI rejected bad faith allegations where the claimant’s actions were not clearly aimed at harming the trademark holder, setting a high bar for abuse-related defenses.

Temporal Scope and Legal Framework

The temporal application of law remains pivotal in cancellation actions. Decisions such as Cavalride (INPI, 3 April 2024) reiterated that trademarks are assessed based on the legal framework at their filing date, making historical legal research an indispensable tool for practitioners.

Grounds for Cancellation: Absolute and Relative

Distinctiveness, Deceptiveness, and Public Order

Distinctiveness remains a cornerstone of trademark registrability. The MySunbed case (27 May 2024) highlighted the evolving standards of consumer perception, particularly concerning basic English terms used in France (INPI, 27 May 2024). Meanwhile, decisions on deceptiveness emphasized the need for claimants to demonstrate misleading potential at the time of filing, rather than relying on post-registration evidence (INPI, 3 April 2024, NL 22-0199).

Public order considerations were addressed in cases like NL 23-0089, where the INPI dismissed claims that a trademark contravened legal restrictions, focusing on whether actual prohibitions existed at the time of filing (INPI, 18 March 2024).

Renown and Parasitic Intentions

Proving renown remains challenging, as it requires robust evidence such as prior judicial recognition or extensive consumer exposure (INPI, 12 July 2024, Immo Angels). Meanwhile, allegations of parasitic intent require clear links between the litgious trademark and a recognizable external reference, as demonstrated in the Cadault case (INPI, 29 April 2024).

Case Law Insights: Trends in French IP Litigation

French IP precedent in 2024 reveals a pro-business tilt, particularly in its evidentiary flexibility for proving use. However, the INPI’s stringent standards for distinctiveness and renown ensure that frivolous registrations face robust scrutiny. This balanced approach promotes a competitive yet fair trademark ecosystem.

Additionally, courts have shown increasing sophistication in addressing linguistic and cultural nuances. The La Chicha Loca case, for instance, highlighted the growing recognition of diverse public perceptions based on regional language comprehension (INPI, 26 January 2024).

Conclusion & Takeaway

The decisions of 2024 underscore the importance of strategic preparation in opposition and cancellation proceedings. Practitioners must anticipate evidentiary hurdles, leverage historical legal contexts, and adapt arguments to evolving standards of distinctiveness and public perception. Key takeaways include:

  • The INPI increasingly emphasizes public interest in cancellation actions.
  • Successful cancellation claims demand comprehensive, evidence-backed arguments, particularly regarding distinctiveness and renown.
  • Cultural and linguistic contexts play a growing role in trademark disputes.

At Dreyfus Law Firm, we are uniquely equipped to guide clients through the complexities of trademark disputes, leveraging our expertise and a global network of IP specialists. Whether navigating opposition, cancellation, or broader trademark strategy, we ensure robust protection for your intellectual property assets.

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Unfair Competition and Parasitism: Developments in Case Law

Written by Dreyfus21/01/2025

Unfair competition and parasitism remain dynamic areas of intellectual property law, continuously shaped by evolving case law. Recent decisions in French courts underscore the nuanced legal landscape, offering valuable insights for businesses navigating these challenges. This article explores recent relevant cases, focusing on distinctions from infringement, damage assessments, statutes of limitations, and the presumption of harm, while addressing economic consequences such as workforce poaching.

 

The commercialization of products, a distinct approach from infringement: Likelihood of confusion and the “Product Range Effect” – Cour de cassation, Chambre civile 1, 25 May 2023, n°22-14.651

In a recent case, the French Court affirmed that marketing an entire range of products designed to imitate a competitor’s can constitute acts of both unfair competition and parasitism. These acts are distinct from infringement, particularly when deliberate efforts create a likelihood of confusion for consumers. This decision highlights the courts’ focus on the “effect of range”, where the imitation of an entire line magnifies the competitive harm.

Victims of such practices now have dual recourse—an action for infringement alongside unfair competition claims—provided they can establish distinct facts supporting each claim. This dual strategy strengthens the enforcement of intellectual property rights.

Assessing damages in unfair competition cases: A proportional and tailored approach – Cour de cassation, Chambre commerciale, 5 June 2024, n°23-22.122

 

This decision clarified the framework for calculating damages in unfair competition cases. The court emphasized that damages should reflect the undue advantage gained by the infringer, adjusted to account for the respective market volumes of the parties involved. This ensures a proportional remedy aligned with the victim’s actual harm, avoiding excessive awards.

Additionally, the court rejected a constitutional challenge to Article 1240 of the Civil Code, affirming its compatibility with constitutional rights and freedoms.

This decision reinforces the importance of meticulously quantifying the infringer’s financial gains while balancing equitable restitution for the victim.

Statutes of limitations in unfair competition actions: clarity on timeframes – Cour de cassation, Chambre commerciale, n°18-19.153

 

In this case, the court addressed the statute of limitations for unfair competition claims. While such actions often involve ongoing misconduct, the five-year limitation begins when the victim becomes aware or should reasonably have become aware of the acts in question. This approach balances the need for legal certainty with the realities of discovering illicit practices.

Companies should diligently monitor their markets to identify potential infringements promptly, ensuring timely legal action.

Presumption of harm in unfair competition and denigration cases: easing the burden of proof – Paris Court of Appeal, October 4th 2023, n°21/22383

 

The Paris Court of Appeal’s ruling reiterated that acts of unfair competition or denigration inherently presume harm to the victim. Whether the damage is economic or moral, the mere establishment of unfair practices suffices to presume injury, obviating the need for exhaustive proof.

This presumption facilitates swift remedies for victims, enabling them to focus on mitigating business impacts without extensive evidentiary requirements.

Economic consequences, workforce poaching and business disruption : the Case of mass recruitment – Cour de cassation, Chambre commerciale, April 13th 2023, n°22-12.808

 

A striking example of the economic fallout from unfair competition is the poaching of a competitor’s workforce. In a significant case, the court deemed the large-scale recruitment of key personnel—constituting a substantial portion of managerial staff—to be a deliberate tactic causing operational disarray. Such actions were classified as unfair competition due to their disruptive intent and effects.

Businesses affected by mass recruitment strategies can seek legal redress, particularly when such actions undermine their operational stability.

Conclusion

The evolving jurisprudence surrounding unfair competition and parasitism underscores the judiciary’s commitment to protecting fair business practices. Key developments highlight the courts’ nuanced approach to addressing product mimicry, tailored damage assessments, clear limitation periods, presumptions of harm, and economic impacts like workforce poaching. By staying informed and adopting proactive strategies, businesses can effectively safeguard their intellectual property and market position.

At Dreyfus, we provide you with a team of recognized experts to:

  • Identify acts of unfair competition and parasitism.
  • Develop tailored legal strategies to protect your interests.
  • Represent you effectively before the competent courts.

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Do not let unfair competition harm your business. Reach out to Dreyfus for personalized advice and protect your rights with an effective strategy.

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Securing Creations: The Blueprint to French Intellectual Property Dispute Resolution

Written by Dreyfus05/11/2024

French intellectual property (IP) law, deeply rooted in civil law tradition, is designed to ensure robust protection and enforcement of IP rights. The French legal framework for intellectual property disputes encompasses civil and criminal remedies, specialized courts, and a highly structured procedural system. This article delves into the intricacies of IP dispute resolution in France, focusing on trademark enforcement, litigation procedures, available remedies, and alternative dispute resolution (ADR) mechanisms while highlighting the essential balance between civil and criminal liabilities in IP infringement cases.

Trademark Enforcement in French Law

Trademark protection in France is governed by the Intellectual Property Code, which outlines the legal avenues available to trademark owners in cases of infringement. The law offers a dual approach whereby acts of infringement can be classified as both criminal and civil offenses. In most cases, trademark disputes are handled by civil courts. However, certain violations may lead to criminal prosecution.

 

For criminal liability, the stakes are high. Trademark infringement can result in substantial penalties, with fines reaching up to 400,000 euros and imprisonment for up to four years for individuals. Legal entities may face fines of up to 2 million euros. While these penalties underline the seriousness with which France views IP violations, the majority of trademark disputes remain within the civil court system, with ten designated courts spread across France, including key jurisdictions like Paris, Marseille, and Lyon.

 

Procedural Pathways in IP Disputes

A trademark infringement lawsuit in France typically begins with a writ of summons, a procedural document laying out the nature of the dispute, legal arguments, and remedies sought. The summons must also contain evidence of the claimant’s attempt to resolve the issue amicably before resorting to litigation. Once filed, both parties are required to be represented by legal counsel throughout the proceedings.

 

The civil litigation process is notably distinct in France due to the absence of a discovery phase. Instead, a claimant can request a search and seizure procedure commonly referred to as “saisie-contrefaçon.” This powerful mechanism enables the claimant, with the assistance of a bailiff, to collect evidence of infringement, including seizing goods and related documents. To initiate this procedure, the claimant must first obtain court authorization, which is granted upon showing a reasonable suspicion of IP infringement. Once the “saisie-contrefaçon” is completed, the claimant has a strict timeline, typically 20 business days or 31 calendar days, to file the main proceedings, failing which the evidence seized may become inadmissible.

 

French courts also adhere to a stringent timeline for rendering decisions in first-instance proceedings, with judgments typically issued within 24 months. This relatively predictable timeframe particularly appeals to right holders seeking timely enforcement of their rights.

 

Burden of Proof and Remedies

As in most civil legal systems, the burden of proof in French IP law lies with the claimant. This responsibility extends to establishing both the occurrence of the infringing act and the likelihood of continued or imminent infringement. In some cases, particularly when seeking provisional relief, such as a preliminary injunction, the claimant must demonstrate that the trademark violation appears likely or is about to occur.

 

French courts offer both provisional and permanent remedies. Provisional remedies can be awarded during injunctive proceedings and may include an order prohibiting further infringement, the seizure of suspect goods, or a requirement for the infringer to provide financial guarantees. Permanent remedies are granted once the court rules on the merits of the case, which may involve the destruction or recall of infringing goods, as well as orders to cease all infringing activities. Additionally, monetary remedies are calculated based on the economic harm caused to the trademark owner, the profits made by the infringer, and any moral damages. However, French law does not provide for punitive damages, and courts retain discretion when determining the final award.

 

Alternative Dispute Resolution: A Growing Trend

While litigation remains the primary method for resolving IP disputes in France, alternative dispute resolution (ADR) techniques, such as mediation and conciliation, are slowly gaining traction. The French government and courts are actively encouraging the use of ADR as a cost-effective, confidential, and flexible means of resolving IP conflicts. One of the key advantages of ADR lies in its ability to preserve business relationships while offering swift resolution, as parties can enter into ADR before or after litigation has commenced.

 

That said, ADR, in the context of intellectual property disputes, carries certain limitations. For instance, rights holders seeking immediate relief, such as a preliminary injunction or seizure order, must rely on the courts, as ADR mechanisms do not provide such enforceable interim measures. Despite these limitations, the growth of ADR signals a shift toward more collaborative methods of resolving trademark and other IP disputes in France.

 

Conclusion

French intellectual property dispute resolution offers a comprehensive, well-structured system that balances civil and criminal liabilities, provides robust enforcement mechanisms, and promotes alternative means of conflict resolution. Trademark owners benefit from clearly defined procedural rules, access to specialized courts, and a range of both provisional and permanent remedies. As the role of ADR continues to grow, the flexibility of the French system ensures that right holders can tailor their enforcement strategies to the unique demands of each case. Through a combination of litigation, administrative enforcement, and ADR, France remains a key jurisdiction for the protection of intellectual property rights.

 

With our team’s mastery of French Intellectual Property Law Dispute Resolution, trademark enforcement, civil and criminal litigation, procedural efficiency, and the nuanced application of search and seizure procedures “saisie-contrefaçon”, Dreyfus Law Firm provides clients with a decisive edge in safeguarding their intellectual property rights. The firm’s intimate understanding of the French legal landscape and its strategic use of provisional and permanent remedies ensure swift and effective resolution of IP disputes. Companies seeking to protect their valuable assets can trust Dreyfus Law Firm to deliver robust defense strategies, minimize litigation costs, and, where appropriate, navigate alternative dispute resolution methods to achieve favorable outcomes. Their expertise in this complex area of law makes them the optimal choice for businesses aiming to secure their intellectual property in the competitive French market.

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