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.
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 ...