The French Parliament has recently passed a new law relating to infringement of intellectual property rights. Enacted on March 11th, 2014. The effect of this law is to harmonize numerous provisions applicable to the various intellectual property rights which were previously subject to different rules. It also clarifies some of the unclear dispositions contained in the previous infringement law dated October 29th, 2007.
Noteworthy provisions include:
- The statutes of limitations for civil infringement proceedings are harmonized to 5 years for all IP rights. The statutes of limitations were previously of either 3 or 5 years: 3 years for patents, trademarks and designs, and 5 years for authors’ rights.
- Discovery proceedings (“saisie-contrefaçon”) are harmonized for all intellectual property rights. The new legislation erases some specificities relating to authors rights, such as the possibility that the discovery proceedings be performed by a police officer at the request of the allegedly infringed party. Now, only the President of the “Tribunal de Grande Instance” may order discovery proceedings.
- The right to information for the infringed party is strengthened: a court having jurisdiction in the subject matter may, including by way of summary judgment, order a party to communicate information and documents relating to the allegedly infringing products before the court rules on the infringement itself;
- The method of calculation of damages awarded to the rights holder has been clarified. Courts will have to separately take into account the negative consequences of the infringement on the infringed party, which may include not only economic and actual losses but also other damages such as moral damages which may have been suffered because of the infringement) as well as profits made by the infringer. Courts may also, at the infringed party’s request, grant him or her a lump sum of money, which must be greater than the amount of royalties the infringer would have had to pay had he requested authorization from the rights holder to exploit the intellectual property rights.
This law also permits French customs to act more efficiently by improving, amongst other things, the procedures for detention under customs control.
While we obviously have to wait and see how courts will implement this new legislation, it would appear that such changes are beneficial for professionals and rights holders given that it simplifies a plaintiff’s legal recourse against infringing third parties.