French copyright law is governed by the French Intellectual Property Code, particularly Articles L111-1 to L343-7, and by the EU Copyright Directive of 2001, along with the other EU directives implemented into national law. 

As regards trade marks, there are two sets of statutory rules: French law for national trade marks (Intellectual Property Code, Articles L.711-1 to L.731-4), and European Union law for EU trade marks. French case law, developed by the courts, clarifies the outlines of these statutory rules and is largely influenced by European Union case law.

EU trade marks are regulated by Regulation (EU) 2017/1001 and Directive 2015/2436. In a similar way to the French system, the case law of the CJEU clarifies specific issues.

Aside from being a member of the EU, France is a signatory to the Paris Convention for the Protection of Industrial Property of 1883. France is also a signatory to the Madrid Protocol for trade marks. French law and the Paris Convention govern the rights of foreign trade mark or copyright holders in France.

The French system provides for different types of trade marks.

• Trade marks registered to designate goods and services. Trade marks are not limited to graphic representation; they may be verbal (word trade marks), figurative, of shape, position, sound, holographic, or even multimedia (INPI, Declaration No 2019-157).
• Guarantee trade marks (previously referred to as “certification” marks) aim at identifying the origin of goods and services of which some characteristics (eg, quality, material, manufacture) are guaranteed (Article L.715-1 of the French Intellectual Property Code).
• Collective trade marks are registered by a group (eg, manufacturers, producers, associations, public law entities) that authorises their use provided a specific set of rules – developed by the owners – is respected (Article L.715-6 of the French Intellectual Property Code).

In order to qualify for trade mark protection, the sign seeking registration shall be distinctive and not be:

• exclusively descriptive of even one of the characteristics of the designated goods and/or services;
• exclusively composed of elements/indications that have become part of the usual language;
• exclusively composed of the shape of the designated goods or other characteristics of the product that are dictated by the nature of the product, necessary to obtain a technical result, or bestow substantial value on the product;
• contrary to public order or illegal;
• protected by an appellation of origin, geographical indication, or plant variety;
• misleading or deceiving for the public; or
• filed in bad faith.

The applicant may demonstrate before the FTO acquired distinctiveness through intensive use. This requires substantial evidence showcasing the mark’s intensive use, establishing its function in identifying the goods’ origin. It is highly advisable to include surveys as part of the evidence to demonstrate consumer recognition and association with the mark.

Registration of a trade mark grants the owner ownership of the trade mark for the goods or services designated throughout the term of the mark. Article L713-2 of the French Intellectual Property Code provides that the use of a sign in the course of trade shall be prohibited unless authorised by the proprietor of the prior trade mark:

• if it is identical to the prior trade mark and used for goods or services identical to those for which the trade mark is registered; or
• if it is identical or similar to the trade mark and used for goods or services identical or similar to those for which the trade mark is registered, if there exists, in the mind of the public, a likelihood of confusion with the prior trade mark.

The French system does not require the applicant to use its mark in commerce before registration. However, revocation proceedings on the grounds of lack of genuine use can be filed by third parties as early as five years after the registration date.

If the case arises, the use must be established:

• for the sign covered by the trade mark registration (the use of a slightly different sign is admitted to prove genuine use, as long as it does not significantly alter the distinctiveness of the trade mark);
• within the territory of registration;
• within the relevant period of five years preceding the filing of the action;
• in relation to all the covered (or contested if the revocation action only targets part of the trade mark registration) goods and services; 
• as a trade mark and not in a merely descriptive way; and
• with an intensity that reflects genuine use in the course of trade (with regards to the category of the contested goods or services) and not a symbolic use that would be conducted in order to maintain the trade mark.

The proprietor is invited to submit invoices, press clippings, affidavits, brochures, catalogues, correspondence with vendors, or any other relevant dated document.

The use of symbols, such as TM or ®, which are derived from the US system, is completely optional in France. Their use has no legal bearing on whether the trade mark owner’s rights can be subject to opposition, as the Paris Convention clearly states.

A trade mark can also be protected by copyright in the case of logos, for example, but also in the case of slogans or trade marks that may constitute the title of a book or the name of a fictional character, provided that the sign meets the requirement of “originality” imposed by French copyright law. Opposition and invalidity claims against a trade mark can be based on prior copyrights.

Where a trade mark consists of a surname, it is not subject to a distinct rule. However, its validity is upheld as long as it does not cause prejudice to an individual bearing the same surname.

To initiate the revocation of the trade mark,  the affected party would have to prove that the trade mark is identical or highly similar to their name, that it creates an association in the public’s mind between the trade mark and the individual, and that this causes them harm or prejudice. This is not easy to prove, but it could be established, notably when a trade mark reproduces the name of a celebrity without their authorisation.

The scope of trade mark rights is not limited by copyrights. However, similarly to surnames, a trade mark could be revoked if it infringes a third party’s copyrights.

French law provides a non-exhaustive list of protected works, covering graphic works, photographic works, creations of seasonal clothing and accessories, as well as literary works, dramatic works, musical works, cinematographic works, works of fine art such as paintings and sculptures, plans, maps and sketches. 

However, this list is not comprehensive, so an uncategorised work of art can be protected if it meets the general requirement of originality. Industrial designs are also entitled to copyright protection provided they are original under French copyright law.

The protection is not limited to fixed works per se. However, in order to be protected, the work must have actually been completed/created. Mere concepts and ideas are not protectable as such.

Article L112-2 of the Intellectual Property Code provides a non-exhaustive list of protectable works under French law. Under French Law, a work must be original in order to benefit from copyright protection.

Protection is automatically awarded to original works upon the creation of the work, without any formality. There is therefore no public list or registry of protected works in France.

Originality under French copyright law is assessed by the courts and is understood to cover a work that bears the imprint (the expression) of the author’s personality. 

This criterion applies to all kinds of work – the type or form of the work is irrelevant, as is the “merit” of the author or the purpose of the work. 

In France, the author is a natural person (companies cannot be considered “authors” under French law, even though they may own the copyright) who is generally identified by their name.

To address the limitation of natural persons as authors, French law provides that unless proven otherwise, authorship belongs to the person or persons under whose name the work is disclosed, and it can be a company. There is a presumption of copyright ownership, in the absence of a claim by the author, in favour of the person who makes unequivocal use/disclosure of the original work under their name.

In case of authorship contestation, the only way to establish authorship is by submitting the assignment agreement between the parties, which has to meet a number of specific conditions (precise determination of scope, territory, duration of the assignment, for example). Hence, except for software and other specific and limited exceptions, there is no work-for-hire doctrine per se in France.

However, there are specific rules for collective works (ie, works created at the initiative of a natural or legal person who edits, publishes and discloses the work under its direction and name, and where the personal contribution of the various authors involved in its creation is merged into the overall work): the employer can be considered as the rights-holder if the work has been created at their initiative and under their control, if it is impossible to allocate separate rights to each contributor.

Finally, French law allows joint authorship when the work is “collaborative”; ie, a work created through the contribution of several natural persons (eg, a song). Each author is considered a “co-author”, and the creation gives rise to joint ownership of the work. The copyrights on a collaborative work are governed under a system of “indivision”, thus all acts that affect the use/disclosure of the work require the unanimous agreement of all the co-authors, including assignments, licensing, etc. However, an exception to this general rule are cases where the contribution of each author can be individualised from the overall work, in which case, each author may exercise their copyright on their own part of the work, provided it does not affect the overall work.

The specific economic rights granted to the copyright owner are listed and governed by Articles L122-1 et seq of the French Intellectual Property Code, and include the following:

• the right of representation, which is defined by law as the communication of the work to the public, by any means; and 
• the right of reproduction, which is defined by law as the material fixation of the work by any process that allows it to be communicated to the public in an indirect way.

Authors of graphic or plastic works benefit from an additional economic right, called droit de suite, which could be translated as “resale right”, which results in the right of the author to benefit from the proceeds of any sale of a work after the first transfer by the author or their successors in title, where a professional in the art market acts as a seller, buyer or intermediary. 

The moral rights granted to the copyright owner are listed and governed by Articles L121-1 et seq of the French Intellectual Property Code. They include the following: 

• the right of paternity, which entitles the author to request that their name be associated with the work; 
• the right to disclose the work, which allows the author to decide whether or not to make the work public (however, the author can no longer claim this right if they authorise the disclosure of the work);
• the right to respect for their work (right of integrity), which prohibits the distortion of the work in a way that affects its integrity or spirit; and
• the right to reconsider or withdraw the work from the public sphere (this right is limited by the obligation of the author to compensate the person that makes commercial use of the work for the economic prejudice caused by the withdrawal).

Moral rights are perpetual and inalienable (they cannot be waived in any way). They can only be held by the author and their heirs, or granted to a third party upon the death of the author, by virtue of testamentary provisions.

The duration of economic rights lasts the author’s whole life and up to 70 years after the death of the author. There are no specific circumstances under which French law provides for a non-consensual termination or shortening of rights vested in the author.

French law does not establish a different treatment for each economic right at issue, nor the type of copyrighted work.

However, the following specific rules apply, depending on the authors:

• for collaborative works (ie, works involving more than one author), the duration of the economic rights expires 70 years after the death of the last surviving author;
• for works published more than 70 years after the death of the author, a period of 25 years of protection begins, with the rights belonging to the owner of the material work;
• for works by authors who are declared to have died “for France”, there is an additional protection of 30 years; 
• for works by anonymous authors, the duration of the rights is 70 years, starting from the publication of the work; and
• for collective works, the duration is 70 years from the publication of the work.

The collective management of copyrights was created in France in the 18th century. There are legal societies that manage copyrights on behalf of right-holders for their benefit, whether under legal provisions or a contract.

As a matter of principle, the French system allows the existence of several collecting societies, but there is only one collecting society for each type of work. They mainly manage music and video. These societies can only manage economic rights.

The role of collecting societies is to manage copyrights or related rights on behalf of several right-holders for their collective benefit.

Collecting societies are required to prepare and make public an annual transparency report, including a special report on the use of amounts deducted for the purpose of providing social, cultural or educational services, resulting from the management of rights under a legal licence or compulsory collective management.

In addition, these companies must compile an electronic database of the amount, use and name of the beneficiaries of cultural actions.

Collecting societies must also publish updated information on their websites, including their status, the general regulations, standard contracts and tariffs, the list of members of their management, administrative and management bodies, the policy for the distribution of sums due to right-holders, the list of representation agreements and their signatories, the policy for the management of undistributable sums, and the procedures for handling consents and disputes. 

At least once a year, they must make information relating to their management available to each of the right-holders to whom they have allocated or paid income from the operation of their rights during the previous financial year.

In addition, upon request they must communicate the works or other protected objects they represent, the rights they manage (directly or under a representation agreement) and the territories covered.

Under French copyright law, protection is automatically awarded to original works upon the creation of the work, without any formality or notices or symbols. 

There is therefore no public list or registry of protected works in France.         

There is no applicable information in this jurisdiction.

There is no applicable information in this jurisdiction.

A copyright can also be protected by a trade mark, for example where the copyrighted work is a logo or a slogan (or even a sound, since trade marks can now be audio files as long as they are distinctive and ensure the essential function of a trade mark). 

It can also be protected by related rights such as design rights when the copyrighted work is a garment or a drawing, for example.

The French principle is that a trade mark cannot be protected merely by virtue of its use. Registration is the only way to benefit from trade mark rights. However, the use of a sign in the course of a commercial activity can result in two main situations.

The first situation involves unregistered well-known signs, under Article 6bis of the Paris Convention, although the case law is very strict on applying this concept. The sign may enjoy trade mark protection without registration provided that it has acquired a strong reputation among French consumers, and that these consumers spontaneously associate this sign with the goods and services for which it is used.

The second situation is the acquisition of distinctiveness through use (Article L.711-2 of the French Intellectual Property Code). In this case, intensive use, which guarantees the function of identifying the origin of the goods, does not confer protection as such, but makes it possible to obtain registration of the trade mark that is not inherently distinctive, thus in principle not inherently registrable.

The National Trade Mark Register, which is administered by the French Trade Mark Office (FTO), gathers all French trade marks.

Each new event related to a trade mark (eg, application, refusal, registration, limitation, assignment, licence, cancellation) is published in a Bulletin (BOPI) which is then incorporated into the National Trade Mark Register.

The FTO also maintains an online database of the trade mark rights that have effect in France and French Polynesia.

It is highly recommended to conduct an availability search before applying to register a mark.

French trade marks, as well as EU trade marks, are initially registered for a period of ten years, and this registration can be indefinitely renewed for subsequent ten-year periods.

Article R712-24 of the French Intellectual Property Code provides that French trade marks are renewable within the last six months of the ten-year period. More precisely, the renewal can be filed until the last day of the month of the trade mark filing.

After this term, French trade marks can still be subject to a late renewal for an additional “grace period” of six months after the term, subject to payment of an additional fee. After this additional period lapses, the trade mark can no longer be renewed and will definitively expire if it has not been renewed in due time.

The application to register a trade mark can be filed online on the FTO’s website. Any natural or legal person can file an application in their name and the applicant will not need to prove their identity. The applicant must identify the type of trade mark and the type of sign it seeks to register, and provide elements allowing to delimit the scope of the protection.

The requirement for graphic representation has been abandoned with the introduction of the PACTE Law in 2020, which considerably expanded the list of categories of signs that are eligible for trade mark protection. This list now includes word, figurative, shape, hologram, pattern, colour (single or combination), sound, motion, multimedia and position marks. Such categories are listed by Declaration 2019-157 of the FTO’s Director.

No proof of use or specimen of use is required to apply for a trade mark.

The filing of a trade mark application requires the payment of a fee to the FTO to be admissible (the fee varies depending on the number of designated classes and on whether the trade mark is extended to French Polynesia). Since the application can designate multiple classes of goods and services, the more classes the application covers, the more expensive the application will be.

The French system does not require the applicant to use its mark in commerce before the registration.

Unlike practices of some foreign offices, the FTO does not carry out an analysis of prior rights in its examination of an application for registration.

It only considers the regularity of the filing of the application (formal requirements), and the distinctiveness of the sign (Article L.711-2 of the French Intellectual Property Code). The FTO is becoming increasingly stricter on assessing distinctiveness of the sign.

However, third parties have the right to participate by filing observations before the FTO within two months of the publication of the trade mark application. Such observations may particularly relate to the lack of distinctiveness of the trade mark application.

The filing of observations does not open any adversarial proceeding, thus the trade mark applicant is not given the chance to respond. Moreover, the FTO does not respond to third-party observations, and does not necessarily take them into consideration when examining the trade mark application.

It is possible to revoke the application during the process of registration, partially or entirely (Article R.712-21 of the French Intellectual Property Code).

It is also possible to amend the list of goods and services, provided the amended list covers an equal scope or a restricted scope of protection compared to the initial list.

Under no circumstances will the applicant be able to extend protection beyond what has been covered at the time of filing, either for goods and services or for signs.

It is possible to divide a trade mark application in order to overcome a partial refusal or an opposition (Article R.712-27 of the French Intellectual Property Code).

The goods and services designated in the divisional application must necessarily be more restrictive than those of the initial application.

The consequences of providing incorrect information vary depending on the type of information that is incorrect. For instance, if there is a material error in the address of the trade mark owner, this can easily be corrected at any time by filing a request to rectify a material error before the FTO. However, if there is an error, for instance, in the information and/or documents provided to support a priority claim, the consequences would be more severe as the priority claim could be permanently rejected.

The FTO often determines the consequences of the error. However, occasionally a registration goes through and the error is later raised in court during a legal action for infringement, in which case the court would assess the error and its effect on the validity of the trade mark.

The registration of a trade mark can be refused by the FTO based on different absolute grounds of refusal, listed in Article L.711-2 of the French Intellectual Property Code:

• lack of inherent distinctiveness;
• misleading character;
• offence against public policy or morality;
• the sign is an emblem, national flag or any other intergovernmental sign according to Article 6 of the Paris Convention; and
• the sign was filed in bad faith by the applicant.

If the registration is provisionally refused, the FTO sets a time limit for submitting observations and/or providing additional evidence (eg, if distinctiveness can be proven by use).

However, it should be mentioned that the Office rarely reverses its initial refusal decision, and is becoming increasingly strict in assessing the distinctiveness of the signs. Should the FTO, after examining the applicant’s observations, uphold its refusal decision, the applicant may appeal the final decision of the FTO before the competent Court of Appeal within one month of the final refusal decision.

France has participated in the Madrid system since 1997.

Before registration, third parties may file an opposition against a trade mark application within two months after publication of the application.

There is no system of request for an extension of the time limit to file an opposition in France and no cooling-off period.

Revocation

Revocation proceedings on the grounds of lack of genuine use can only be filed from five years after the registration date.

Cancellation

The French system provides a rule known as “forfeiture by acquiescence”, according to which a third party may not challenge a registered trade mark whose use has been knowingly tolerated by the third party for more than five years.

There are no statutes of limitation for cancellation actions based on fraudulent filing/bad faith.

The legal grounds for filing an opposition to a trade mark application are listed in Articles L.712-4 and L.712-4-1 of the French Intellectual Property Code and are the following:

• prior trade marks; 
• prior trade marks enjoying a reputation – registered or unregistered;
• company name, trade name, commercial signs or domain names;
• geographical indications; and
• name, image or reputation of a local authority or a public establishment or public entity.

Cancellation

A trade mark may be revoked or cancelled on the basis of two sets of grounds: absolute grounds and relative grounds.

The absolute grounds for invalidation are the following (Article L.711-2 of the French Intellectual Property Code):

• the mark is devoid of distinctive character;
• the mark consists exclusively of elements which may designate a characteristic of the covered goods and services;
• the mark consists exclusively of the shape of the product dictated by its nature or technical function;
• the mark is a national emblem;
• the mark is contrary to public policy or morality;
• the mark deceives the public;
• the mark is a protected appellation of origin, geographical indication, or plant variety; and
• the mark was filed in bad faith.

The relative grounds for invalidation actions are based on prior rights (trade marks, well-known signs, copyrights, corporate names, domain names, public entity name, etc) and are listed in Article L.711-3 of the French Intellectual Property Code.

Any natural or legal person that owns an opposable prior right, amongst those listed in 5.2 Legal Grounds for Filing an Opposition or Cancellation, can file an opposition or cancellation action based on prior rights. As detailed, the claimant does not necessarily need to own a registered trade mark since other valid prior rights can be invoked. The claimant will be invited to prove their rights pertaining to the invoked prior rights.

Any natural or legal person can file a cancellation action based on absolute grounds of cancellation or revocation.

Claimants do not necessarily need to be represented, for instance by an attorney, before the FTO. 

Opposition fees before the FTO are EUR400 if the opposition is based on just one prior right, and EUR150 per additional prior right invoked in the course of the opposition. Cancellation fees before the FTO are EUR600.

The average attorney’s fees are very hard to determine since they vary from one profession to another and are not based on any objective harmonised schedule.

In opposition proceedings, the opponent has a period of two months from the publication of the trade mark to file a formal opposition against the contested trade mark application.

The opponent then has a period of one month, following the opposition deadline, to submit their written observations and any other relevant documents (including proof of the earlier rights claimed).

Then, the “adversarial” phase begins: the applicant and the opponent will be able to submit written arguments and/or jointly request suspensions if they are discussing a possible settlement. The decision is issued within three months of the end of the adversarial procedure. If no decision is issued, the opposition shall be deemed to have been rejected. 

Cancellation Procedure

Cancellation actions filed before the FTO have to be substantiated at the moment of filing. The adversarial phase is, then, identical to the adversarial phase in opposition proceedings.

Under Articles L.716-5 et seq of the French Intellectual Property Code, French courts have exclusive jurisdiction to hear invalidation and revocation actions when brought in connection with any other claim, or in a counterclaim falling within the jurisdiction of the courts (and in particular actions for infringement and unfair competition).

French courts also have jurisdiction to hear invalidation actions primarily based on the existence of prior copyrights, design and model rights and/or personality rights.

Revocation Procedure

Revocation actions for non-use are filed through an administrative form requesting the adverse party to submit evidence of genuine use. Once the owner of the contested trade mark has filed evidence and written submissions, the adversarial phase begins.

Partial Cancellation or Revocation

Partial revocation or invalidation is always possible, especially because the FTO and the courts assess their decisions with regard to each of the covered goods and services.

For example, a trade mark may be genuinely used for part of the covered goods only and remain in force for those goods; a sign may be devoid of distinctive character only for part of the covered goods and services.

The FTO’s decision can be contested before the competent Court of Appeal within one month from the notification of the FTO’s decision.

Once the formal appeal is filed, the appellant will have three months to file written observations in support of the appeal.

Revocation/cancellation proceedings can be filed against all or part of the trade mark registration. The scope of the action is determined by the initial claim and usually remains unchanged until the end of the proceedings (ie, the FTO’s or court’s decision).

The scope of the action can, however, be amended in some circumstances. The most common scenario is when the owner of the trade mark subject to the action voluntarily surrenders part of its trade mark rights, for instance by withdrawing part of the goods/services covered by its registration that is subject to the action. This will automatically alter the scope of the revocation/cancellation action.

Moreover, during legal actions before the courts, the claimant to the revocation/cancellation action could also abandon part of its initial claim or even add a new/additional claim before the written part of the proceedings is closed, thereby altering the scope of the action. 

French courts have exclusive jurisdiction to hear invalidation and revocation actions when brought in connection with any other claim, or in a counterclaim falling within the jurisdiction of the courts. In this case, all actions will be heard together.

This jurisdiction is especially useful in the case of actions for infringement and unfair competition.

Procedures Before the FTO

The FTO has exclusive jurisdiction to refuse, revoke or cancel marks that were filed fraudulently, based on Article L.711-2 of the French Intellectual Property Code as an absolute ground of refusal, as part of opposition or cancellation actions:

• based on bad faith – according to the first decisions of the FTO on this ground, bad faith is assessed similarly to fraud, namely:
1. when it is demonstrated that the applicant/owner of the fraudulent mark has filed said mark with malicious intent, (ie, with the intent of unduly appropriating benefits attached to the plaintiff/plaintiff’s activities, with the intent of depriving the plaintiff of a sign necessary to its activity, with the intent of hindering the plaintiff by opposing the ownership of the mark that was filed fraudulently, etc); and
2. when it is demonstrated that the applicant/owner knew about the use or rights of the plaintiff; or
• when a mark has been applied for by the agent or representative of the owner of a mark, in their own name and without the owner’s authorisation, unless the agent or representative justifies their action (Article L.711-3 of the French Intellectual Property Code, III°).

Procedures Before Courts

Courts have exclusive jurisdiction for actions to claim ownership of a mark filed fraudulently (action en revendication). By such action, the plaintiff does not seek cancellation, but assignment – by the courts – of the fraudulent mark (Article L.712-6 of the French Intellectual Property Code).

There are no specific procedures for assigning a trade mark or copyright, and you can even assign all or part of a trade mark before it is actually registered. The relevant provisions are those of general contract law, arising from the French Civil Code.

However, the assignment must be in writing to be valid. It must precisely identify the content of the assigned rights (assigned goods and services, duration, territory, promotional use, right to licence) and the assignment price.

In light of recent case law, a trade mark assignment must include consideration (an assignment price) that is consistent with the actual value of the trade mark. If the price is too low, or even non-existent (for example, where the trade mark is assigned for free or for a purely symbolic amount), the transaction may be recharacterised as a donation. Under French law, a donation must be executed before a Notary Public in order to be valid.

The FTO is not required to formally approve the assignment.

It is strongly recommended to execute licence agreements in writing, as mentioned.

French case law may admit the existence of tacit licences under certain conditions. However, in order to ensure that such licences are not perpetual, the trade mark owner may, at any time, terminate the tacit licence and request the cessation of exploitation of the sign within a reasonable period of time.

As regards exclusivity, licences can be exclusive, non-exclusive or similar to a sole licence if the licensor retains its own right to use the licensed trade mark.

The recording of trade mark assignment or licence agreements at the FTO is not, in itself, compulsory for the assignment/licence to be valid.

However, such recording is necessary and highly recommended especially because it is the only way for the licensee and/or assignee to enforce their rights against third parties.

Infringement proceedings are statute-barred within five years from the date of knowledge of the last infringing act. This is also reflected in case law, which has held that this five-year period runs from the last disputed action.

There is also a specific rule known as “forfeiture by acquiescence” in Article L.716-2-8, according to which a third party may not challenge a registered trade mark whose use has been knowingly tolerated by the third party for more than five years.

The main cause of action as regards trade mark and copyright would be infringement, as this can lead to:

• a prohibition on the use of the infringing sign in trade for identical or similar goods and services on the basis of their trade mark rights, or of the infringing work;
• the invalidation of the infringing trade mark if the sign at issue has been filed or registered; and
• compensation for the damage suffered as a result of the infringement, the likelihood of confusion, the damage to image and reputation, the dilution caused, etc.

As regards actions based on a well-known unregistered trade mark, the claimant may file a civil liability action (Article L.713-5 of the French Intellectual Property Code).

In parallel with civil infringement actions, the claimant may file a criminal action to obtain criminal sanctions. However, right-holders usually prefer civil proceedings due to the nature and specificities of intellectual property rights.

The factors that are taken into consideration when assessing trade mark infringement are essentially the following, which are assessed as a whole:

• the distinctiveness of the earlier trade mark;
• identity or similarity of the signs;
• identity or similarity (including complementarity) of the goods and services; and
• the relevant public and its level of awareness.

A copyrighted work is considered infringed as soon as the work is published, reproduced, represented or distributed in disregard of the laws and regulations relating to the copyright of the author.

Under French law, copyright infringement does not require an actual copy of the work; it is assessed by taking into account the similarities (and not the differences) between the original work and the defendant’s work. 

Therefore, the reproduction of only some of the original characteristics of a copyrighted work can be considered an infringement.

Trade mark infringement actions can be initiated by the owner of the trade mark, even if the trade mark is not yet registered (however it will affect the chances of success of the action). Copyright infringement actions can be initiated by the author of the copyrighted work or the owner of the copyright, if the latter is different from the author. In the absence of a claim by the authors, the courts recognise a presumption of ownership of the rights to the persons who make public use of the work.

Infringement actions can also be initiated by the exclusive licensee if (i) the licence agreement does not prohibit it, and (ii) a formal notice was sent to the licensor identifying the infringement and asking the licensor to act against the infringement, and the licensor did not respond in a reasonable time.

Non-exclusive licensees are not allowed to file infringement actions. They may, however, intervene in the action for infringement and have their own prejudice determined if an infringement action is initiated by the owner and/or the exclusive licensee.

Issuing a formal cease and desist letter is a legal prerequisite to filing an infringement lawsuit.

However, failure to send a letter of formal notice beforehand will not invalidate the action.

As regards restrictions on the owner asserting its rights, the owner may be liable for the following, depending on its behaviour:

• abusive action;
• denigration, if the owner publicly accuses the defendant of infringement without any court decision stating so; or
• obstruction of competition, in case of abusive action against distributors benefiting from the principle of exhaustion of rights.

Only ten regional courts have special jurisdiction for handling infringement proceedings: Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Strasbourg and Fort-de-France.

Before filing a lawsuit, some costs are necessarily incurred due to the execution of bailiff's reports, the drafting of a request for infringement seizure and the execution of counterfeit seizure operations by a bailiff, as well as the drafting and sending of a letter of formal notice.

Foreign copyright owners may bring infringement claims in France if the infringing acts are committed in France. However, an infringement lawsuit cannot be based on a foreign trade mark that does not have any effect in France.

There are no declaratory judgments in France.

There are no alternative forms of lawsuits for small claims.

Judges are not bound by the decisions of the FTO. They may use these decisions in the course of developing their motivations and take them into account in their assessment, but they are not bound by them.

The factors taken into account to establish infringement are set out in 7.3 Factors in Determining Infringement. There is no specific procedure, remedy or statute addressing bootlegging.

The specialised courts with exclusive jurisdiction are listed in 7.5 Lawsuit Procedure. Intellectual property cases are determined by specialised and technical judges rather than a jury, and the parties do not have any influence on who is the decision-maker.

The owner of a registered trade mark benefits from a presumption of validity, but it does not preclude the defendant from filing a cancellation/invalidity counterclaim. If the infringement action is based on a trade mark right, the plaintiff will have to demonstrate that the alleged infringer is using an identical/similar mark for identical/similar goods or services as those covered by the registration.

The costs of a civil action for trade mark infringement vary from case to case. The total cost of such legal action from start to finish is very difficult to assess and depends on the length and complexity of proceedings.

The defendant may claim that:

• the litigious sign is its family name;
• the litigious sign is descriptive or inherently non-distinctive; 
• the litigious sign was used in good faith prior to the trade mark registration as a business name, company name, commercial sign or domain name;
• the prior trade mark has not been genuinely used (if it has been registered for over five years);
• the trade mark invoked has become the generic term to describe the goods and services or a characteristic thereof; or
• the owner of the trade mark knew about and tolerated the litigious sign for over five years.

The defendant may also file a counterclaim for revocation of the prior trade mark on relative or absolute grounds.

The defendant may claim that:

• the legal action violated the statute of limitations;
• the work in which copyright is claimed is not original, and therefore does not benefit from the rights granted by copyright regulations;
• the plaintiff does not establish ownership of the work; or
• the contested use falls within one of the limited exceptions, including private copying.

Once the goods bearing the trade mark are put on the EEA market by the owner or with their consent, the owner is not entitled to oppose their advertisement or resale within this territory.

However, the exhaustion system will not apply when the trade mark owner justifies legitimate reasons (eg, alteration of the goods, inadequate reconditioning as regards to their quality, or the reputation of the trade mark for luxury goods). The mere existence of a selective distribution network is insufficient to establish a risk of market partitioning.

French law does not have an exhaustion doctrine with regard to copyrights. 

IP owners may request injunctive remedies of a different nature such as temporary prohibition on sale (which is very rare), seizure of litigious goods, provision on damages, blocking of social media accounts or communication of social media/website access, for example, if the claim is sufficiently detailed and the judge considers that the plaintiff has a significant chance of success. Preliminary injunctive remedies are issued at the plaintiff’s financial risk. This means that if the action is deemed unfounded, the plaintiff will have to compensate the defendant for all losses and harm caused by the injunctive remedies. The court can order the plaintiff to post a bond to cover this if applicable.

To obtain preliminary injunctive remedies, the trade mark and/or copyright owner would have to file a specific “urgency” action in which it will have to establish its IP rights, clearly identify the behaviour that it considers as infringing its IP rights, and prove that there is a matter of urgency that justifies granting preliminary injunctive remedies.

When determining the amount of monetary damages awarded, the courts assess:

• the negative economic consequences of the infringement for the trade mark owner (loss of earnings);
• the moral prejudice caused to the trade mark owner; and
• the benefits obtained by the defendant.

Where there are not enough elements to determine the above, the judge can alternatively allocate a lump sum. There are no punitive damages under French law.

The judge may order the losing party to reimburse the costs and expenses of proceedings (including attorney’s fees) to the other party. However, the allocated sum is a lump sum and does not, in most cases, correspond to the costs actually incurred.

The owner cannot obtain damages or other types of relief without initiating a procedure that necessitates notifying the defendant, followed by adversarial proceedings that allow the defendant to defend itself.

At the request of the owner, customs authorities can retain products that they suspect to be counterfeit. The right-holders are immediately notified of such detention. The public prosecutor is also informed of the said measure by the customs administration.

The right-holders then have a short amount of time to request destruction of the products, to initiate civil or criminal proceedings, or to file a complaint with the public prosecutor. 

For the purposes of initiating legal actions, the plaintiff may obtain from the customs administration the names and addresses of the consignor, the importer, the consignee of the detained goods or their holder, as well as images of these goods and information on their quantity, origin, provenance and destination.

Infringement decisions can be subject to an appeal before French courts of appeal and, more precisely, the court of appeal that has territorial jurisdiction depending on the court of first instance. The appeal is limited to the scope of the declaration of appeal filed by the appellant, combined with the scope of the cross-appeal filed by the respondent, if any.

The appeal must be filed within two months from the notification of the decision of first instance. The appeal proceeding normally lasts around a year and a half before a decision is issued.

Just as in many other countries around the world, French courts and offices are facing up to new issues relating to artificial intelligence and its impact on intellectual property. Should it be banned? Should it be regulated? Can a work generated using artificial intelligence tools be protected by copyright? No decisions on these issues have yet been made.

The French Statute LCEN of 21 June 2004 classifies different types of actors and their respective levels of liability, from the highest level of responsibility to the lowest, namely the publisher of the content, the host of the site, and the service provider. As regards internet service providers, they may be required to block counterfeiting content if actions against the publishers and hosts are unsuccessful.