WHAT IS COUNTERFEITING?
Counterfeiting is an illegal act which infringes the rights arising from an intellectual property title, copyright, or from a related right (for example, the manufacture, distribution, sale or offers for sale, import or export of a counterfeit product, imitation, reproduction, or the affixation of a counterfeit trademark, etc.).
Counterfeiting is also the term generally used to designate a counterfeit product.
It should be noted that in France, the mere fact of filing a trademark identical or similar to an earlier trademark may constitute an act of counterfeiting.
If I do not defend myself against counterfeiting, not only will I suffer short-term harm, as my own products or services will sell less well, but also in the long-term, I risk allowing my own products and services to depreciate.
I AM A VICTIM OF COUNTERFEITING, HOW CAN I PROVE IT?
The burden of proving counterfeiting rests with the party who starts the infringement. There are several ways to prove it:
- “saisie de contrefaçon ”(seizure practise specific to French laws) is a complex operation which must meet the specific requirements of the French Intellectual Property Code and which may be used for matters of patent, trademarks, design, copyright, or software. A “saisie de contrefaçon” , carried out by a bailiff, must be authorised by an order given by a presiding judge of the First Instance Court. It may impose not only the confiscation of the counterfeit goods but also de financial and commercial records, and gather testimony. The “saisie de contrefaçon“ must be followed within 20 working days or 31 calendar days (for trademarks and patents) by a summons of the counterfeiter to appear before the court. The French patent and trademark attorney handles this procedure and his presence during a confiscation is essential.
- The bailiff’s report
- The customs seizure
WHAT SANCTIONS ARE APPLIED TO COUNTERFEITING?
An infringement action generally results in:
- A ban on continuing the counterfeiting, under financial penalty
- The confiscation, or even destruction, of the counterfeit products and their means of manufacture
- The publication of the judgement
- The awarding of damages according to the direct or indirect harm, and commercial difficulties, suffered by the rights owner.
These civil sanctions apply to infringements of patents, trademarks, designs, and copyrights, but criminal sanctions may also apply.
ARE MY INTELLECTUAL PROPERTY RIGHTS ENDANGERED BY THE INTERNET?
Intellectual property law applies on the Internet, just as it does to any other media or broadcast medium. The use on a site of a trademark sign, or the use of a domain name reproducing a trademark, constitute counterfeits, in the same way that the reproduction of a work of the mind on the Internet constitutes an infringement of copyright.
Respect for the rights of third parties calls for constant vigilance on the part of title owners, not only with regard to the competition, but also with regard to licensees, distributors, etc. Proofreading and the drawing up of new clauses is necessary for certain contracts.
New problems related in particular to conflicts between domain names and trademarks are the object of abundant case law and the means of urgency that must be taken to stop misuse.
French patent and trademark attorneys are there to assist you in defending your rights.
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