Counterfeiting: how to react: the intellectual property lawyer in Paris answers

Copyright, Trademarks, Patents, Designs and Models how to sue or defend yourself in case of suspected infringement? The intellectual property lawyer in Paris will inform and advise you.


Patents, copyrights, trademarks, designs and models are intellectual property rights; the list is not exhaustive.

They are registered with intellectual property offices, and it is their registration with these offices that establishes their existence, except in the case of copyright, which can be proven by any means.

Registration with the offices is not a guarantee of the validity of the title. Your title may therefore be declared invalid by a court if it does not meet the required conditions of validity.

Should civil or criminal proceedings be used to stop and punish counterfeiting?

The criminal route implies that the public prosecutor, in charge of defending public order and society in general, takes charge of the case: the prosecutor therefore no longer has control over his or her case in order to settle a dispute.

In addition, in the context of criminal proceedings, the prosecutor must prove the intention to infringe, which can be difficult to prove.

The civil route avoids these disadvantages.

On the other hand, when there is mass counterfeiting or when the counterfeiters are not immediately identifiable, the criminal route may be preferred, which makes it possible to implement means of investigation and action such as customs and judicial police.


Counterfeit : 

What can be asked?

If your work, productions or signs are copied, you can sue the copier for counterfeiting or unfair competition (parasitism).

It is of course advisable to call on a lawyer specialising in intellectual property law to analyse the situation and determine the conditions under which you can proceed. 

Not all copying is actionable, and the scope of what you can claim (bans, compensation) is variable.

You can also request preventive prohibition measures, seizures, measures to produce information on the extent of the infringement.

Some fifteen directives and two regulations of the European Union apply to copyright. These texts implement the international treaties that exist on the subject (WIPO, APDIC, Rome, Berne).

In France, Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the digital single market and amending Directives 96/9/EC and 2001/29/EC, ("DANUM" Directive), has been transposed 


  • by Order No 2021-580 of 12 May 2021 as regards Articles 13 and 17: "providers of online content sharing services" may be liable for infringing content uploaded by their users;


  • by Law 2019-775 as regards Article 15, by creating a neighbouring right for the benefit of press agencies and publishers


The principles are the same for trademarks, patents and designs.


Counterfeiting: What are the defences?

A person suspected of infringement may defend himself by stating 

  • that he is the legitimate holder or user of the right (ownership dispute);
  • that the right being challenged is invalid, outdated or not applicable (e.g. outside the territory);
  • that it benefits from the application of an exception; 
  • (reduces the attack) that the infringement does not cause harm; 


Roquefeuil avocats, a law firm specialising in intellectual property law, can assist you in these matters.

See as well : Assignment of copyright

Remuneration for work and payment of royalties, the issues – the lawyer in intellectual property law answers

Patent: is software patentable?


Apart from intellectual property infringement, what can be sued, how to defend the intangible assets of the company? : 


Intellectual property can only sanction certain acts, and cannot prevent free competition.

A company may seek to protect its assets in areas other than intellectual property: 

  • action for unfair competition and parasitism ;
  • violation of trade secrets, business secrets ; 
  • breach of contract ...


The legal tools of marketing design


Brand, Appellation, Made in France, Label…


Protecting and promoting heritage and know-how


Marketing Design


Where and what to sell, with what brand image?


Logos, graphic charter, store scenography, packaging are all tools to create the image of the company, the service or the product.


The legal tools at the service of this image make it possible both to signify the quality of the product and to protect this image against usurpation, these are essentially trademarks, designs and models and signs of quality.




A trademark is a registered distinctive sign designating services or products.


It is a name or a design, a sound… under which these products and services will be distributed.


One can choose as a mark any normal sign that is not already taken.


The mark makes it possible to certify that such a product which bears a mark comes from such a company, owner of this mark.


If the product or service is successful, the brand will gain in reputation, and the products sold under this brand will sell more easily.


The heritage brand


The heritage brand is a brand that obeys the classic trademark system and that refers to the heritage and history of a country. It can be cultural, architectural, territorial, artisanal and industrial heritage.


It is a name that has a story that inserts itself into the history of this country.


The heritage brand is therefore made up of a name that is both prestigious in the country in question and with which an already old story is associated. Its holder promotes it by referring to this ancient story.


For example, the “Michelin” brand in France.


Other prestigious or widespread brands do not refer to an ancient story but to other values such as the values of sport or innovation, for example the brand “Nike”.


Heritage brands are therefore not necessarily suitable for all types of products. 


They seem suitable for the luxury sector or for the wine sector (the heritage brand is not depreciable there) and food.


They may possibly come up against indications of source (appellations and indications of origin), but in principle their anteriority prevails.


The heritage brand has great value because the products that carry it will sell easier and faster.


Hence the interest for the holder of the mark to protect this mark and to associate it with quality products.


It is a type of trademark with certain characteristics but which obeys the classic and general regime of trademarks in terms of filing, ownership, validity, forfeiture. 


The notion of notoriety is however attached to this type of brand: advantages: 


The “notorious” mark can do without a trademark registration and relates to specific products or services.


The “reputation” mark is a registered mark but can be opposed to those who would like to use it to cover goods and services other than those designated on registration, contrary to the principle of specialty which limits the mark to products and services named in the registration.

For example, Coca Cola on sodas can defend itself against a similar mark on shoes.


In a recent judgment, Com. June 22, 2022, FD, n° 20-19.025, the Court of Cassation limits the effects of reputation: this cannot exclude the use of the surname (Taittinger case).






“Because you are worth it” from L'Oréal. 


The slogan illustrates the brand, gives it meaning. Can it be protected as a trademark when it is a simple combination of common words? Yes, provided that the criterion of distinctiveness is respected, making it possible to avoid confusion with the signs and products of competitors, and that they can effectively designate a company, beyond the simple advertising effect.


See Article L. 711-1 of the Intellectual Property Code and Article 4 of Regulation No.oh 207/2009 on the community mark.


Non-traditional brands


Three-dimensional representations of the shape or packaging of products, colors, animated sequences, sounds or smells serve as original marks.


 the Singapore Treaty on the Law of Trademarks, which entered into force on March 16, 2009, establishes a multilateral framework for the definition of criteria relating to the reproduction of hologram, movement, color or position marks or marks consisting of signs not visible in trademark applications and registers.


Position marks


Trib. EU, 4 May 2022, Deichmann SE v. EUIPO – Munich SL, case. T-117/21:

The distinctive character of position marks in the field of sports shoes must be examined with regard to the average consumer, but in the absence of certainty, it may be presumed, in particular with regard to the existence of similar marks. Thus, unless the lack of distinctiveness is expressly demonstrated, the mark cannot be canceled.


Domain names


Trademarks are to be distinguished from domain names in that the latter serve primarily to designate a website address or internet service and not products or services.


The reservation of a domain name is therefore not equivalent to obtaining a trademark right.


The domain name can be registered as a trademark to designate certain products and services (suitable in particular with regard to the distribution of computer products or services), and one can be deprived of a domain name that would offend a trademark right.


designs and models 


Designs are used to protect a design or a model applied to a product.

They make it possible to shape a product.


They do not in themselves guarantee any quality or origin but allow a particular style to be given to a product (clothing, car, etc.), and a company to retain this style.


SIQOs (signs of quality and origin)


Unlike trademarks, SIQOs are not signs that an operator arbitrarily assigns to itself, but can be claimed by several operators under conditions of quality and origin, and precisely to allow these operators to certify the origin. or the quality of their products to the consumer.


They are created through complex administrative approval procedures, and operators wishing to take advantage of them are controlled by certifying bodies under the aegis, in France, of the INAO, for the food industry, and the INPI for industrial and artisanal products.


These official signs benefit from the assistance of administrative authorities (in particular INAO, DGCCRF) and defense organizations for their control, at national and European level, and at international level, with no particular time limit. 


These organizations can in particular oppose trademarks, with an international influence and action on the basis of international agreements and reciprocity.


In litigation, when feasible, the legal basis is that

– unfair competition (civil liability)

– intellectual property when the designation is the subject of a collective or certification mark, 

– specific texts applicable to PDOs, PGIs, etc. (European texts, rural code)

– misleading practices (consumer law)


A distinction is made between European signs and national signs, for agri-food products or industrial and artisanal products.


For the food industry including wines:


We note in particular: protected/controlled designations of origin, protected indications of origin, red label, traditional specialty guaranteed (TSG), organic farming (AB).


European signs: IGP (Protected Geographical Indication) and AOP (Protected Designation of Origin)


PGIs make it possible to indicate that an agricultural product comes from or has links with a particular region or place, PDO designating a stronger link, and the term attached “PGI” or “PDO” (with the official logo) means that this indication has been verified. It is a label of quality and origin meeting specifications and controlled by an approved body.


STG (“Traditional Specialty Guaranteed”), AB (“Organic Agriculture”) and label rouge are more centered on know-how than on a territory of origin.


In particular STG for recipes, excluding cooking recipes.


Unlike a standard quality label or mark, PDOs and PGIs are subject to their own legal regime, with the support and monitoring of dedicated public administrative authorities: in particular the INAO (National Institute of Origin and Quality) and the DGCCRF (Direction Générale de la Concurrence, Consumption et de la Repression des Frauds).


The delimited geographical areas, or even the parceled areas for certain PDOs, can also benefit from protection against any operation of development, town planning, equipment, construction, exploitation of the soil or subsoil or establishment of any economic activity likely to harm the production area or conditions, the quality or the image of the PDO or PGI product. 


National signs (France): AOC and IGP (Appellation d'Origine Contrôlée, Protected Geographical Indication)


The national signs are the national variation of the European signs, in particular AOC for the wines of France.


Industrial and artisanal products: Geographical indications: the example of Marseille soap 


To benefit from a geographical indication, the conditions of production or processing of the product must comply with specifications approved by decision of the Director General of the INPI, according to Articles L. 721-2 and L. 721-7 of the Code. intellectual property.


These specifications must specify the delimitation of the geographical area or of the specific place associated with the geographical indication, to which a specific quality, reputation or other characteristics of this product can essentially be attributed. 


The INPI ensures in particular that the perimeter of the zone or place makes it possible to guarantee that the characteristics of the product can effectively be attributed to the geographical zone associated with the geographical indication (article L. 721-3, al. 4 of the intellectual property code).


Court of Cassation, ch. com., March 16, 2022, 19-25.123

Soap Association of Marseille France c. INPI

(Rejection of appeal v. CA Paris, pole 5, 2nd ch., Nov. 22, 2019, 18/15257; The specifications must show a link between the name and the claimed geographical origin. The geographical indication cannot serve to protect know-how over a wider territory than that from which it originally originated.


AB “Organic farming”: quality linked to the environment


European regulations and its “AB” label make it possible to identify products from organic farming. 


Accompanied by the “AB” brand, they guarantee a production method that respects the environment and animal welfare. The rules governing the organic production method are the same throughout Europe, and imported products are subject to equivalent requirements.


Label rouge: promoting superior quality


The Red Label (LR) is awarded to foodstuffs or unprocessed agricultural products that have specific characteristics. 


Thanks to special production or manufacturing conditions, brought together in specifications, the labeled products offer a higher level of quality. The Label Rouge is a French sign but it does not exist only in France (prawns from Madagascar, Scottish salmon…). Examples: Label Rouge free-range lamb, Label Rouge Christmas trees, etc.


Industrial and artisanal products: Made in France


Companies can indicate the French origin of their products as "Made in France" or "Made in France", in compliance with customs rules.


This indication is optional: no provision provides for the obligation to affix an origin marking, except for certain agricultural or food products within the framework of health regulations.


To bear the mention of France origin, it is necessary to comply with European rules on “non-preferential origin”: the manufacturer can indicate as the origin of the product the one where the last substantial transformation took place. 



Article 39 of the Customs Code punishes disputed statements that may lead the consumer to believe that a product of third origin is of French origin when it does not meet the rules of non-preferential origin.


“1. Are prohibited on entry, excluded from the warehouse, transit and circulation, all foreign products, natural or manufactured, bearing either on themselves or on packaging, boxes, bales, envelopes, bands or labels, etc., a brand of products or services, a name, a sign or any indication likely to lead people to believe that they were made in France or that they are of French origin.

  1. This provision also applies to foreign products, manufactured or natural, obtained in a locality with the same name as a French locality, which do not bear, at the same time as the name of this locality, the name of the country of origin and the mention “Imported”, in clearly visible characters”


This notion of the origin of the goods is to be distinguished from the “Origine France Garantie” label, which is awarded by an independent organization and obeys specific specifications. 


Obtaining this label allows companies that choose to do so to promote their national production.


In concrete terms, to obtain this label, the manufactured product must meet the following two criteria:

  • the place where the product takes on its essential characteristics is located in France
  • 50% at least of the unit cost price is acquired in France


Grading systems


Downloadable product rating applications on smartphones are developing. They provide the consumer with quick and practical insight into the product, before the act of purchase. 


However, they regularly raise questions of unfair competition, deceptive practices with regard to consumers (articles L. 121-1 et seq. of the Consumer Code) and denigration of companies that are victims of poor ratings.


Thus the Yuka company, for its eponymous application, was condemned for having mentioned that nitrates are carcinogenic (T. com. Paris, May 25, 2021, No. 2021001119, Fed. of charcuterie manufacturers c/ YukaT. com Aix-en-Provence, September 13, 2021, No. 2021F004507)


The difficulty is that this type of application can have a real denigrating effect for such and such a company whose products nevertheless comply with the regulations.

Beyond the denigrating effect, the application can generate a panic effect among populations and generate out of proportion behavior.

Counterfeiting: how to react?


Platform workers

General conditions

Influencer and brand contract

Marketplaces and brands

Be accompanied by a trademark lawyer

Influencer and contract with a brand, the lawyer in intellectual property law in Paris answers

The influencer generally has a community on one or more social networks such as instagram, facebook, tiktok..

Brands can ask him to comment on their products or services.

When is there an operation of an advertising nature? The intellectual property lawyer answers you

The practice of influencer is very framed as soon as it is identified as "advertising", that is to say when the influencer and the brand have concluded an agreement, and the weight of the brand is felt.

The Court of Cassation recalls that "the fact that this message was relayed by the intervention of an Internet user for his "network of friends" did not cause it to lose its advertising character" (Cas. 1st civ., July 3 2013, no. 12-22.633).

Advertising is subject to the requirements resulting from the misleading or aggressive commercial practices of Articles L. 121-1 and following of the Consumer Code, to the identification obligations provided for by the law for confidence in the digital economy (L. no. 2004-575, June 21, 2004, said LCEN) and the fight against hidden advertising, as far as the French market is concerned.

What are the rights at stake to consider in a contract with a brand? The intellectual property lawyer intervenes

The influencer of course has image rights.

But more generally he has a right to the protection of all the attributes of his personality, such as his surname and first name.

The brand essentially has a trademark right, allowing it to capitalize on the reputation of its product or service.

Other service providers have copyright, such as the photographer or the producer/director.

This right allows them to claim compensation against the exploitation of their work, in addition to the remuneration they may have received for the performance of their service.

All of these rights must therefore be subject to negotiation and a contract in order to avoid the risk of claims as much as possible.

The law aimed at regulating the commercial exploitation of the image of children under 16 on online platforms has been published (L. No. 2020-1266, Oct. 19, 2020).

The rules of the labor code are now applicable to them (art. L. 7124-1 et seq.), thus forcing parents to request individual authorization or approval from the administration.

The latter also have the obligation to invest part of their child's income with the Caisse des dépôts et consignations until they reach majority or are emancipated.(art. L.7124-9).

In all cases, a declaration must be made, beyond certain thresholds of duration or number of videos or income derived from their distribution. (L. no. 2020-1266, art. 3).

At the same time, video-sharing platforms are strongly encouraged, under the aegis of ARCOM, to adopt charters favoring the information of minors on the consequences of the dissemination of their image on their private life as well as on the psychological risks. and resulting legal (L. no. 2020-1266, art. 4 and 5).

The law gives children a right to digital oblivion that they can exercise alone without their parents (L. no. 2020-1266, art. 6).


What are the pitfalls to avoid when drafting and negotiating the contract with the brand? The intellectual property lawyer in Paris assists you

At the start of a partnership, we don't necessarily have all the cards in hand to negotiate as best and fairly as possible.

It is therefore appropriate to provide for a more or less flexible contract review clause, allowing a contracting party to withdraw, at least under such and such conditions.

It is also a question of avoiding contracts that are too long or written too small, or referring to general conditions, which are often tricky or unclear.

However, unclear contracts are open to interpretation. They are therefore a source of discussion, most often to the advantage of the economically stronger co-contractor.

Counterfeiting: how to react?

NFTs and copyright

Platform workers

General conditions

Marketing Design

Marketplaces and brands

Be accompanied by a trademark lawyer

The liability of marketplaces and trademark law

Advertising and offering products that bear a sign identical or similar to the registered trademark of a third party without the latter's authorization constitutes trademark infringement.

To what extent can the marketplace through which branded products pass be worried about counterfeiting by the owner of the brand when an unscrupulous seller, not authorized by the brand, is rampant there?

When the platform is content to store and ship the products sold by third parties who use the platform to sell their goods, the CJEU considers that the marketplace cannot be liable for trademark infringement, in line with what is provided for in the Article 14 of Directive 2000/31/EC on electronic commerce, and with the clarification that the platform can always be notified to compel it to assume its responsibilities;

(CJEU, n°C-230/16, Judgment of the Court, Coty Germany GmbH v Parfümerie Akzente GmbH, December 6, 2017

The question referred to the Court of Justice of the European Union in the Louboutin / Amazon case would like to come back to this irresponsibility.

As part of its "Fulfillment by Amazon" program, Amazon is indeed more involved in the marketing of the third-party seller's product, including the performance of advertising and promotional activities, the provision of information to customers, the management of refunds of defective goods, payment for goods sold.


It could therefore be recognized as a part of the responsibility.

(Case C-148/21 –

In the draft DSA directive of December 15, 2022 ( (, the regime of non-liability of the platforms is however maintained for the most part, but reinforces the obligations of the latter:

They must not lead the average and reasonably informed consumer to believe that the product or service which is the subject of the transaction is provided by the online platform itself.

They must find out about the seller by collecting information beforehand (article 22) and provide more efficient alert systems (article 19) short, they must comply with a whole series of constraints which will be liable, in the event of a breach, to trigger their responsibility. To be continued.

On the subject of copyright: 

CJEU cases C‑682/18 and C‑683/18 Youtube, Cyando

Article 3 of Directive 2001/29/EC of May 22, 2001 on the harmonization of certain aspects of copyright and related rights in the information society;

Article 14 of Directive 200/31/EC of June 8, 2000 on electronic commerce;

With regard to these directives, the CJEU specifies that the liability of platforms in the online communication of content protected by copyright cannot be engaged if the platform is content with a neutral and technical role.

These clarifications do not concern the interpretation of the new Directive (EU) 2019/790 of 17 April 2019, article 17, on copyright and related rights in the digital single market.

Trademarks and Criminal Prosecutions

Platform workers

General conditions

Influencer and brand contract

Marketing Design

Be accompanied by a trademark lawyer

Labeling of food products – Labeling

The texts :

The labeling of food products is generally governed by the “INCO” regulation n°1169/2011. The food sector is the most regulated.

The law of the European Union is particularly present there through the regulations of direct application.

National laws can sometimes add to it if the regulation so provides, or outside the scope of the regulation, if they do not constitute the offense of obstructing Community trade.

The regulation indicates which are the mandatory information (sales name, ingredients, quantity, durability, name of the operator and indication of the batch, allergenic substances, instructions for use, nutritional declaration, origin), mandatory but specific to certain products , and optional that must respect constraints.

Among the special regulations are the following regulations:

– Nutritional or health qualities (RUE 1924/2006);

– Diets (RUE 609/2013) including infants;

– Valuing mentions and certification (French rural code);

– GMOs;

– Foodstuffs requiring special treatment: Preserves, Frozen foods, Ionizing radiation, Private label products;

– Official signs of quality and origin, with AOP, IGP, STG (RUE 1151:2012) (RUE 1308/2013 “single OCM” for viticulture), – Organic farming (RUE 834/2007), Label rouge ( rural code), involving compliance with specifications, official approvals and labeling constraints.

– Regulations by type of product including:

– Food supplements (RUE 2015/2283)(DUE 2002/46);

– Wines and spirits (RUE 110/2008);





for example :

2 years and 300,000 euros, and more depending on the aggravating circumstances, sometimes fines

(Consumer code, articles L454-1 and s; L132-2, R451-1, intellectual property code, penal code, public health code, etc.)

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Protected designation of origin Champagne and trademark law within the European Union, the issue of labeling

CJUE, 4th ch., 29 Jan. 2020, Sky PLC, C -371/18 – impact of the lack of precision of wording

In this judgment the CJEU confirms this strong trend: the lack of precision of the wording (designation of goods and services) of the mark, which can go so far as to use the wording of a class, does not really have an impact on the validity of the mark. On the other hand, this defect will be exploitable during an action for revocation of the trademark for failure to operate for five years.;jsessionid=7B34D7D85169E624DA19D7D07D34A8BE?text=&docid=222824&pageIndex=0&doclang=fr&mode=lst&dir=&occ=first&part=1&cid=8150221

A trademark owner can oppose the registration of a new trademark that he considers too close to his trademark. The applicant can then demand that this holder provide proof of genuine use of his earlier mark (art.47 EU Regulation 2017/1001). This proof is more or less heavy depending on the degree of homogeneity of the category of goods or services considered.

T-126/03 – Reckitt Benckiser (España) v OHIM – Aladdin (ALADIN),33371.html

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