A Guide To French Anti-Counterfeiting Law

Author:Ms Caroline Casalonga
Profession:Casalonga Avocats
 
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Legal framework

French regulations

IP regulation is codified within the French IP Code. The code

was amended by the Law of October 29 2007 against Infringement

(1544/2007), which implemented the EU IP Rights Enforcement

Directive (2004/48/EC). The amendment was followed by the

application of Decrees 2008-624 and 2008-625 of June 27 2008.

Articles 38, 215, 215*bis*, 323, 414, 426, 428 and 437

of the Customs Code also apply.

EU regulations

The relevant EU regulations are as follows:

the Council Resolution of March 13 2006 on a customs response

to the latest trends in counterfeiting and piracy (OJ C67, March 18

2006);

Commission Regulation 1891/2004, laying down provisions for the

implementation of the EU Customs Regulation 1383/2003 (OJ L328,

October 30 2004), amended to include two new member states (OJ

L261/12, October 6 2007);

the EU IP Rights Enforcement Directive;

the EU Customs Regulation (1383/2003) concerning customs action

against goods suspected of infringing certain IP rights and the

measures to be taken against goods found to have infringed such

rights; and

Council Regulation 515/97 on mutual assistance between

administrative authorities of the member states, and cooperation

between the latter and the commission to ensure the correct

application of the law on customs and agricultural matters (OJ L82,

March 22 1997).

Border measures

The customs authorities have broad investigative and

anti-counterfeiting powers, including the right to seize

counterfeit products. They act not only at the borders, but

throughout the whole French territory. Any individual transporting

products into or through France must have documents evidencing the

genuine origin of such products (eg, an agreement or invoice).

Two types of measure can be taken by the customs

authorities:

the detention procedure, subject to a preliminary customs

application by the rights holder; and

the seizure procedure, limited to trademark and design

infringement.

Customs detention procedure

Generally, prior to detaining any goods, the rights holder must

file an application for action by the customs authorities. Such

application may be specifically for France or may be an EU

application designating France among other member states. When

filing an EU customs application designating France, it is

advisable to file a translation thereof for the French customs

authorities. The application is valid for one year, renewable on an

annual basis. It is recommended that all rights holders file such

an application for all their IP rights as this constitutes the most

efficient and cost-effective weapon against counterfeit goods.

In the application the rights holder indicates the IP rights

concerned and provides information on the authentic goods, as well

as any information that may help the customs authorities to

determine whether goods are genuine, including a report on the

differences between authentic and infringing goods. The rights

holder must also sign an undertaking to pay all costs incurred

through keeping goods under customs control, including destruction

costs.

The application provides the customs authorities with useful

information for their investigations, including the contact

information for the rights holder's representative (most

frequently an attorney), who will be contacted to confirm whether

the products detained are genuine.

The customs authorities may detain all products that appear to

infringe declared IP rights. Furthermore, even if the IP right in

question has not been declared, the customs authorities may detain

suspect goods for three working days, during which time the...

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