In today’s competitive business environment, protecting franchise trademarks in France has become increasingly crucial for maintaining brand integrity and business success. This comprehensive guide explores the various aspects of trademark protection, enforcement mechanisms, and legal remedies available to franchisors operating in the French market.

French Legal Framework for Trademark Protection

As an intellectual property right, Trademark law confers on its holder a monopoly on a distinctive sign. This right is conditioned by filing and registering the sign with a competent authority. In France, two main protection systems coexist: national trademarks and European Union trademarks (EUTM). This coexistence reflects a complex legal structure governed by national and European norms as well as international commitments.

Key Legal Provisions

The legal framework applicable to trademarks define the terms of registration, the rights of proprietors and dispute resolution mechanisms, ensuring consistent and effective protection of trademarks :

  • The French Intellectual Property Code (IPC) : It is the main foundation of national trademark regulation since it defines the conditions of registration, the rights conferred on the proprietor, the causes of nullity and the infringement actions. 
  • 2017 EU Trademark Regulation (EUTMR) : It provides uniform protection in all Member States through a single procedure at the European Union Intellectual Property Office (EUIPO).
  • 2015 European Directive on National Marks : It harmonises national trade mark rights, including grounds for refusal, rights conferred and revocation or invalidity procedures.
  • Paris Convention for the Protection of Industrial Property (CUP) : It establishes fundamental principles such as the right of priority and protection against unfair competition.

Management and enforcement bodies

The authorities responsible for managing and enforcing trademark rights in France play a key role in the registration, monitoring, and protection of trademark holders’ rights. They also work to prevent abuses and provide solutions for potential disputes.

Enforcement Mechanisms

Administrative Procedures

Trademark law in France includes various administrative procedures that allow trademark holders to proactively protect their rights. The INPI mainly manages these procedures and provides trademark owners with the means to monitor, defend, and protect their rights against possible infringements.

Opposition Proceedings Against Conflicting Trademark Applications

This procedure allows the holder of a registered trademark to prevent the registration of a trademark that could infringe his rights. 

When is it used ? Opposition may be filed within 2 months of the publication of the application for registration of the trade mark in the Official Bulletin of Industrial Property (BOPI).

What are the criteria ? Opposition may be based on several criteria, including the similarity of the signs and of the goods/services concerned, as well as the likelihood of confusion for the public.

The INPI examines the arguments presented and refuses to register the conflicting mark if it finds the opposition to be well-founded.

Trademark Monitoring Services

INPI offers monitoring services that allow trademark owners to follow up on applications for registration of new trademarks that may constitute a violation of their rights.

  • Periodic monitoring : It consists of alerts for new trademark applications that resemble the trademark owner’s trademark. These alerts are particularly useful for quickly detecting counterfeiting attempts or similar registrations that could create a risk of confusion.
  • Personalised monitoring : The holder may define specific monitoring criteria, such as classes of goods or services or verbal and figurative signs, in order to receive notifications adapted to its protection needs.

For further information, you can refer to the INPI website

Registration of Trademark Rights in Customs Databases

French customs play a vital role in the fight against trademark counterfeiting. To make it easier to monitor counterfeit goods in circulation, trademark holders can register their trademark rights in customs databases.

The trademark holder must provide the administration with detailed information about the goods and distinctive signs protected by their trademark. After registration, customs authorities can check imported or exported goods to ensure they do not infringe trademark rights.

Legal Actions Available

French law offers several mechanisms to enforce trademark rights and combat unauthorized use. These include trademark infringement actions, customs seizure procedures and emergency injunctive relief through summary proceedings.

Trademark Infringement

Trademark law allows the trademark holder to prohibit the use or exploitation of its mark without its consent. Brand infringement occurs when a third party uses a sign identical or similar to the registered mark without authorisation. Therefore, the trademark holder may initiate proceedings if the following conditions are met :

  • Unauthorized use in the course of trade : The mark must have been used commercially to seek economic benefit, not in private or non-commercial contexts.
  • Infringement of the mark’s essential function : The use must interfere with the trademark’s primary role, which is to guarantee the origin of goods or services.
  • Risk of consumer confusion : The unauthorized use must create a likelihood of confusion, leading consumers to believe the goods or services originate from the trademark holder or an economically linked entity.

You can pursue trademark infringement actions through two distinct routes: civil proceedings and criminal proceedings.

Legal basis : Articles L.713-2  and L.713-3 of IPC

Civil Action 

Trademark holders often prefer pursuing civil infringement actions, as these generally offer higher compensation compared to criminal actions. When the court identifies infringement, it awards damages based on either a detailed evaluation of the actual harm suffered or a lump-sum calculation.

  • Jurisdiction
    • For EU trademarks, plaintiffs bring cases before the Paris Judicial Court at first instance and appeal them to the Paris Court of Appeal.
    • For national trademarks, plaintiffs file cases in one of ten designated judicial courts across France (Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Strasbourg, and Fort-de-France) and appeal to the corresponding appellate courts.
  • Evidence : The trademark holder must demonstrate that a violation of their rights occurred; they do not need to prove intent.
  • Statute of Limitations : Trademark holders must file actions within 5 years after discovering or reasonably being expected to discover the last infringing act.

Legal basis : Articles L.716-4-2 and L.716-4-10 of IPC

Criminal Proceedings in Cases of Counterfeiting

Under French law, authorities also recognize trademark infringement as a criminal offense. However, parties pursuing such cases often prioritize civil actions over criminal proceedings because civil actions typically result in higher compensation.

  • Jurisdiction : Cases are handled by correctional courts or, for more complex matters, by specialized economic and financial courts.
  • Evidence: Plaintiffs must demonstrate both the material element (evidence of infringement) and the moral element (intent to infringe).
    • Presumption of bad faith : the judges infer intent from the infringing act itself 
  • Statute of Limitations : Criminal actions must be filed within 6 years of the cessation of infringing acts.
  • Penalties : Convictions can result in fines of up to €400,000 and/or imprisonment for up to 4 years (Article L.716-9 CPI).

Legal basis : Article 121-3 of the Penal Code and article L.716-9 of IPC

Customs Seizure Procedures

Customs authorities are pivotal in preventing counterfeit goods from entering the market and complement judicial enforcement. They intervene directly by targeting the physical goods at issue :

  • Seizure or detention : Customs agents can detain goods suspected of being counterfeit, either on their own initiative or at the request of the trademark holder.
  • Test purchases (procédure du coup d’achat) : Customs agents may purchase counterfeit goods undercover to gather evidence of planned commercial distribution within the EU.

Legal basis : Articles L.716-8, L.713-3-2 and L.716-4-4 of the IPC.

Emergency Injunctive Relief Through Summary Proceedings

Trademark holders can act swiftly to prevent ongoing harm by seeking emergency injunctive relief through summary proceedings. This approach enables courts to impose urgent measures before deciding the substantive case, effectively mitigating the economic and reputational damage caused by ongoing trademark infringement.

  • Provisional measures : Judges can order the immediate cessation of the alleged infringing acts.
  • Financial guarantees : The court may require the plaintiff to provide a financial guarantee to compensate the defendant if it later deems the infringement claim unfounded.

Legal basis : Article L.716-4-6 of IPC 

French Court System Overview

Trademark cases in France are primarily handled by specialized courts :

  • The Paris Court of First Instance has exclusive jurisdiction over trademark matters
  • The Paris Court of Appeals handles appeals from first instance decisions
  • The Court of Cassation serves as the supreme court for final appeals

Legal Remedies

Trademark holders, including franchisors, have several legal remedies to protect their rights and seek redress for infringement. These remedies can be civil or criminal and are intended not only to protect the rights of the proprietors, but also to deter infringers.

Civil Remedies

Franchisors, like other trademark owners, can use a variety of legal remedies to assert their rights in the event of infringement. Indeed, civil actions are intended to remedy the harm suffered and deter trademark infringement :

Injunctive relief to stop infringement : The judge can order the infringer to immediately cease the unauthorized use of the mark under penalty of a fine (a financial penalty per day of delay). 

Monetary damages for economic losses : Trademark owners may seek damages to compensate for economic losses caused to them by the infringement, whether it be loss of sales, market share or any other form of financial loss.

Detailed assessment : The judge can calculate damages by considering the actual loss suffered by the proprietor of the mark, the undue enrichment of the infringer, or the amount that the infringer would have paid in the event of a lawful licence.

Lump-sum valuation : This method allows the judge to set a standard compensation, often based on the profits the infringer would have made if he had used the mark legally.

Legal basis : Article L.716-4-10 of IPC

Destruction of infringing goods :The competent authorities can seize counterfeit goods and materials used in their manufacture and either hand them over to the trademark holder for destruction or destroy them themselves.

Legal basis : Article L.716-4-11 of IPC 

Publication of court decisions : The court decision in the trademark infringement dispute is published. Typically, the publication appears in the press or other communication channels to signal the violation of trademark rights and the sanctions imposed on the infringer.

Legal basis : Article L.716-4-11 of IPC

Criminal Penalties

The court may publish decisions when serious trademark infringement offences occur, especially when it deems the infringement particularly harmful, which could lead to criminal sanctions. These sanctions include:

  • Fines : Jurisdiction imposes fines of up to €400,000 on natural persons and up to €2 million on legal persons (such as companies) to punish the seriousness of the offence and deter fraudulent behaviour.
  • Penalty : the counterfeiter can be sentenced to up to 4 years imprisonment.

Legal basis : Article L.716-9 of the IPC

Preventive Measures

Effective brand protection goes beyond reacting to infringements; it also involves proactively monitoring and implementing preventive measures. These practices enable quick detection of any unauthorized use of the brand, help maintain its value, and safeguard its reputation over the long term.

Trademark Monitoring

Continuous and ongoing market surveillance ensures the protection of your trademark against counterfeiting and infringements. You can implement various monitoring strategies:

Regular market surveillance : Market surveillance involves continuously monitoring products and services that may infringe trademark rights.

Observing newly launched products, registered trademarks, and competitive activities within the industry. 

Constant vigilance allows for the detection of counterfeit products or imitations before they significantly affect the brand.

Online monitoring services : play a crucial role in trademark monitoring by detecting unauthorized use of a trademark on the internet, as online platforms are key areas for such monitoring.

Customs watch programs : Trademark owners can register their trademarks with customs authorities, allowing for the seizure of infringing goods. This monitoring program ensures that counterfeit products do not freely circulate at import points.

Social media monitoring : It allows trademark holders to identify posts or pages that illegally use their protected marks, providing an opportunity for quick action to prevent damage to the brand’s image and reputation online. 

Contract Provisions

Businesses should embed trademark protection in commercial agreements, especially franchise contracts. Parties must include specific clauses in these agreements to ensure respect and protection of trademark rights throughout the contractual relationship:

  • Clear ownership rights statements : The franchisor must explicitly state in the franchise contract that they exclusively own the trademark rights, while the franchisee receives only a limited right to use the mark.
  • Usage guidelines and restrictions : It is essential to outline the conditions under which the franchisee may use the trademark. 
  • Quality control provisions : These clauses allow the franchisor to regularly monitor and inspect the franchisee’s operations to ensure that products meet brand standards and that the franchisee’s actions do not harm the brand’s reputation.
  • Post-termination obligations : After the franchise agreement ends, the franchisee must agree to immediately cease using the trademark, logos, or any other intellectual property associated with the brand. 

Conclusion

Protecting franchise trademarks in France requires a comprehensive approach combining preventive measures with effective enforcement strategies. Understanding the available legal tools and remedies is crucial for franchisors operating in the French market. While the French legal system offers strong protection for trademark rights, success often depends on implementing a proactive protection strategy and seeking appropriate legal counsel when needed.

For specific trademark protection needs in France, consult qualified legal professionals who specialize in French intellectual property law and franchise regulations.

Harley Miller Law Firm “HMLF”

Head office: 14th floor, HM Town Building, 412 Nguyen Thi Minh Khai, Ward 05, District 3, Ho Chi Minh City.

Phone number: +84 937215585

Website: hmlf.vn 

Email: [email protected]

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