Intellectual property infringement lawyers
As lawyers specialising in French intellectual property law, we advise and assist you in defending your intellectual property rights, including trade marks, patents, software, copyright and designs.
Identifying the problem: a third party is infringing your rights
You discover that a third party is infringing your intellectual property rights. For example, someone is displaying your photographs online without permission, reproducing a sculpture you created on keyrings sold in supermarkets, or infringing one of your patents. Alternatively, a former employee may have set up a competing company that reuses the source code of software they developed while working for you. What should you do?
Taking action with an intellectual property infringement lawyer
Assessing the strength of your rights
The first step is to seek assistance from an intellectual property infringement lawyer to establish the existence and strength of your rights.
For a patent, this includes checking that the annual renewal fees required to keep it in force have been paid. For trade marks and registered designs, it is necessary to check whether renewal is approaching. Trade marks can be renewed indefinitely every ten years, while registered designs can be renewed every five years, up to a maximum of 25 years. For copyright, including software, the originality requirement must be satisfied.
Another important consideration is the precise scope of your rights. For example, a trade mark that strongly alludes to the qualities of the relevant goods or services will have a limited scope of protection. We also check whether your trade mark registration covers the goods and services central to your business that are being copied.
Similarly, in patent infringement matters, the scope of protection must be assessed through a detailed examination of the patent claims, which define the protection afforded by the patent.
Preserving evidence of infringement
Before taking action, we strongly recommend securing evidence of the conduct identified. For example, you can arrange for a judicial officer to draw up an official report documenting the infringement online or at physical premises, provided those premises are publicly accessible or the owner has authorised access.
Another option is a court-authorised evidence-gathering procedure known in France as a saisie-contrefaçon. Subject to prior judicial authorisation, this procedure allows a judicial officer to enter the alleged infringer’s or distributor’s premises without their consent or advance notice, to gather evidence of the alleged infringement.
The application may seek authorisation for the judicial officer to carry out investigations to establish the infringement, obtain statements from the party concerned about an allegedly infringing item, and inspect computers with the assistance of an IT expert.
Once the procedure has been carried out, particular attention must be paid to the statutory deadlines for bringing court proceedings. Failure to meet these deadlines will invalidate the seizure procedure.
Depending on the circumstances, these evidence-preservation measures may be taken before sending a cease-and-desist letter or commencing infringement proceedings. The appropriate approach will depend on the risk of evidence disappearing and your willingness to pursue the matter if the other party refuses to stop the infringement voluntarily.
Sending a cease-and-desist letter through your lawyer
Do you need an intellectual property infringement lawyer to prepare and send a letter demanding that the infringement stop and seeking compensation for the harm suffered? We can assist you with this process.
Particular care must be taken when drafting this letter, as it lays the foundations for your enforcement strategy.
Depending on the urgency of the matter, this attempt to reach an amicable resolution may prove successful and bring the dispute to a swift conclusion, particularly through a settlement agreement.
Bringing infringement proceedings if an amicable resolution cannot be reached
If attempts to resolve the dispute amicably fail, or urgent action is required, an intellectual property infringement lawyer can help you bring court proceedings to enforce your rights.
If the court rules in your favour, you may obtain an order requiring the infringement to stop, backed by financial penalties for non-compliance, compensation for the harm suffered, including lost profits, financial losses and non-material damage, or an order requiring the infringer to publish the judgment on their website.
Depending on the urgency, the appropriate route may be ordinary proceedings on the merits, interim proceedings (référé), or expedited proceedings on the merits (procédure à jour fixe) where the infringement must be stopped quickly.
Particular attention must be paid to the choice of court, as not all courts have jurisdiction over intellectual property disputes. For example, the Paris Judicial Court has exclusive jurisdiction over infringement actions concerning French national patents.