A Guide To French Anti-Counterfeiting Law

Author:Ms Caroline Casalonga
Profession:Casalonga Avocats

Legal frameworkFrench regulationsIP regulation is codified within the French IP Code. The codewas amended by the Law of October 29 2007 against Infringement(1544/2007), which implemented the EU IP Rights EnforcementDirective (2004/48/EC). The amendment was followed by theapplication of Decrees 2008-624 and 2008-625 of June 27 2008.Articles 38, 215, 215*bis*, 323, 414, 426, 428 and 437of the Customs Code also apply.EU regulationsThe relevant EU regulations are as follows:the Council Resolution of March 13 2006 on a customs responseto the latest trends in counterfeiting and piracy (OJ C67, March 182006);Commission Regulation 1891/2004, laying down provisions for theimplementation of the EU Customs Regulation 1383/2003 (OJ L328,October 30 2004), amended to include two new member states (OJL261/12, October 6 2007);the EU IP Rights Enforcement Directive;the EU Customs Regulation (1383/2003) concerning customs actionagainst goods suspected of infringing certain IP rights and themeasures to be taken against goods found to have infringed suchrights; andCouncil Regulation 515/97 on mutual assistance betweenadministrative authorities of the member states, and cooperationbetween the latter and the commission to ensure the correctapplication of the law on customs and agricultural matters (OJ L82,March 22 1997).Border measuresThe customs authorities have broad investigative andanti-counterfeiting powers, including the right to seizecounterfeit products. They act not only at the borders, butthroughout the whole French territory. Any individual transportingproducts into or through France must have documents evidencing thegenuine origin of such products (eg, an agreement or invoice).Two types of measure can be taken by the customsauthorities:the detention procedure, subject to a preliminary customsapplication by the rights holder; andthe seizure procedure, limited to trademark and designinfringement.Customs detention procedureGenerally, prior to detaining any goods, the rights holder mustfile an application for action by the customs authorities. Suchapplication may be specifically for France or may be an EUapplication designating France among other member states. Whenfiling an EU customs application designating France, it isadvisable to file a translation thereof for the French customsauthorities. The application is valid for one year, renewable on anannual basis. It is recommended that all rights holders file suchan application for all their IP rights as this constitutes the mostefficient and cost-effective weapon against counterfeit goods.In the application the rights holder indicates the IP rightsconcerned and provides information on the authentic goods, as wellas any information that may help the customs authorities todetermine whether goods are genuine, including a report on thedifferences between authentic and infringing goods. The rightsholder must also sign an undertaking to pay all costs incurredthrough keeping goods under customs control, including destructioncosts.The application provides the customs authorities with usefulinformation for their investigations, including the contactinformation for the rights holder's representative (mostfrequently an attorney), who will be contacted to confirm whetherthe products detained are genuine.The customs authorities may detain all products that appear toinfringe declared IP rights. Furthermore, even if the IP right inquestion has not been declared, the customs authorities may detainsuspect goods for three working days, during which time the...

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