THE INFRINGEMENT COMPLAINT IS PREPARED BY AN ATTORNEY AND SERVED BY A BAILIFF
The infringement complaint is a legal document served by a bailiff. This complaint typically follows a cease and desist letter from the plaintiff holding prior rights to a trademark or copyright, for example.
The complaint is the legal document that initiates an infringement lawsuit. The bailiff provides the claimant’s attorney with a second original or certified copy of the document served on the defendant.
The GOMIS & LACKER law firm is composed of attorneys specialized in intellectual property and experts in trademark law and copyright law.
THE COMPLAINT IS TRANSMITTED TO THE COURT BY THE PLAINTIFF AND INITIATES PROCEEDINGS
The claimant’s attorney transmits the duplicate of the complaint received from the bailiff to the court. This document, accompanied by a case filing form, informs the court that it has been seized and that the case should be scheduled for a hearing date.
The complaint may be a complaint for summary proceedings, which allows claimants to obtain urgent measures. In the case of a complaint on the merits—meaning standard proceedings—the timeframe to obtain a decision ranges from 12 to 18 months. Expedited proceedings have the same effects as standard proceedings on the merits but follow a faster procedure. Expedited proceedings require special authorization from the President of the District Court, which must be requested by motion.
The complaint is the document prepared by the claimant’s attorney that sets out the legal grounds and the facts on which the claimant relies to seize the court. The claimant must also indicate in the complaint the evidence they intend to rely upon. If the defendant does not enter an appearance, the claimant cannot make additional claims or base their lawsuit on evidence not referenced in the initial complaint, unless they file a new complaint.
THE INFRINGEMENT COMPLAINT IS BASED ON INTELLECTUAL PROPERTY RIGHTS
The infringement complaint is based on intellectual property rights. These may include copyrights, related rights, trademark rights, design rights, or patent rights.
The purpose of an infringement action is to preserve the monopoly granted by industrial property titles or by copyrights or related rights. The infringement action often requires the judge to assess the validity and scope of these rights.
TRADEMARK INFRINGEMENT COMPLAINT
The trademark infringement complaint is the document by which the holder of rights to a French trademark, an international trademark, or an EU trademark (formerly known as a Community trademark) informs the opposing party of their intention to assert their rights before the courts to obtain recognition that these rights have been infringed. The defendant has 15 days to appoint counsel.
COPYRIGHT INFRINGEMENT COMPLAINT
The copyright infringement complaint is a legal document aimed at obtaining court recognition of the originality of a work in order to secure protection under copyright law and to prohibit or obtain compensation for the infringement caused by the defendant’s reproduction or communication to the public of the work. It seeks recognition of the damages suffered as a result of the infringing acts.
In copyright matters, only the District Court normally has jurisdiction (with the exception of the labor court in certain cases).
THE INFRINGEMENT COMPLAINT BEFORE THE COMPETENT DISTRICT COURT
The French trademark infringement complaint is very similar to the EU trademark infringement complaint. The only significant distinction is that for EU trademark matters, only the Paris District Court has jurisdiction. For French trademarks, other courts may also have jurisdiction. The jurisdiction of the District Court is determined by numerous factors, including the place where the damage occurred.
For an act of infringement occurring on a website targeting the French public, the infringing act is deemed to take place at all points in the territory from which the website is accessible—this can be established by a bailiff’s report. There may therefore be several courts with concurrent jurisdiction, with the choice being a matter of litigation strategy for the claimant.
TIMELINE OF PROCEEDINGS BEFORE THE DISTRICT COURT
The duration of infringement proceedings before the Paris District Court is approximately one year.
| Type of Proceedings | Timeline | Purpose |
|---|---|---|
| Summary proceedings | 2-4 weeks | Urgent preliminary measures |
| Expedited proceedings | 6-9 months | Full decision, faster procedure |
| Standard proceedings on the merits | 12-18 months | Full decision, complete procedure |
1/ COMPLAINT SERVED BY BAILIFF
The defendant’s attorney has 15 days to notify the court that they will represent the defendant—meaning they have 15 days to enter an appearance and therefore send their notice of appearance to the opposing attorney and to the court.
The time limit to enter an appearance is extended by one month when the defendant is located in French overseas territories and by two months when located abroad. The two-month extension accounts for the fact that service may not become effective until well beyond the 15-day period.
2/ DISCLOSURE OF EVIDENCE BY THE CLAIMANT’S ATTORNEY
The next step is the disclosure of evidence referenced in the complaint by the claimant’s attorney to the defendant’s attorney.
Once this disclosure has been made, the defendant’s attorney responds to the arguments in the complaint by way of responsive briefs within 6 weeks. They may request additional time from the Court, known as a continuance.
3/ DEFENDANT’S BRIEFS
The claimant may then respond in turn and produce additional evidence if applicable.
THE ATTORNEY, INFRINGEMENT, AND DOMAIN NAMES
Infringement of a domain name does not in itself constitute counterfeiting/infringement. The term infringement refers only to the violation of copyrights, related rights, trademark rights, design rights, or patent rights. A domain name as such cannot infringe a patent or designs alone. However, its content could potentially infringe other intellectual property rights. Thus, a domain name may infringe and therefore constitute infringement of a work protected by copyright or a trademark.
PRIOR RIGHTS ARE A CONDITION FOR INFRINGEMENT
Infringement only occurs if the intellectual property rights asserted by the claimant predate those of the defendant.
PRIOR RIGHTS AND DOMAIN NAMES
To determine whether there is infringement, it is first necessary to establish who holds the prior rights as between the domain name and the trademark. The effective date of a trademark is normally its filing date. By exception and by application of international conventions, a French trademark may retroact to the priority date claimed at the time of filing. This maximum period is six months.
The effective date for the commencement of protection afforded by a domain name is the date from which the domain name was used. A domain name that was simply registered with a registrar without being used would not entitle its holder to protection. If the trademark predates the domain name, for the domain name to infringe that trademark, according to the French Supreme Court’s Locatour decision, the domain name must be used for goods and services identical or similar to those covered by the trademark registration asserted by the claimant. Well-known trademarks benefit from a specific regime.
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With over 20 years of experience in intellectual property litigation, the GOMIS & LACKER law firm can assist you with trademark and copyright infringement matters before French courts.
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