Anticounterfeiting law passed by French Senate
As regards infringement actions, the new law provides for an increase in the civil damages awarded to victims of infringement, taking into account to a greater degree the profit made by the infringer (Article 2), including the savings that he could have made due to the infringement. It should be noted that a lump sum can be allocated instead. In this case, the amount is higher than the amount of royalties/fees that would normally have been paid if authorisation had been requested from the rights holder.
The implementation of the right to information about counterfeiting (Article 3) is clarified and can be obtained before a condemnation on the merits. The infringement seizure proceeding for copyright is harmonised with those for IP rights (Article 4). Furthermore, the different limitation periods in the French IP Code are harmonised with the normal limitation period of five years.
Customs powers
The tools given to the customs authorities to fight counterfeiting are also strengthened.
The customs authorities are empowered to retain goods under the customs procedure of export, import or transhipment as well as goods owned for these purposes. The customs authorities can now operate on the basis of all IP rights, including geographical indications. Consequently, for the sake of harmonisation with European law, the procedure for detention under customs controls is extended to patents, plant variety rights and geographical indications, with the same wording for all these rights.
The French procedure of ‘coup d’achat’, in which a customs officer may establish evidence of infringement by purchasing goods, is extended to all IP rights and to copyright.
However, it is systematically specified that the procedure does not apply to goods in internal transit, and no provision is made for goods going to or coming from ‘third countries’, ie, non-members of the EU, and those circulating in transit within the EU to another third country (transit between third parties).
Moreover, the law formalises the communication of information by the customs authorities to the rights holder for the purpose of filing lawsuits, namely: the identity of the shippers, importers, recipients and goods registrants, and images of the goods as well as information about them. The 10-business-day period provided for initiating those actions may be extended for 10 additional business days upon receipt of a request by the applicant.
The law also formalises the goods-destruction procedure that is usually carried out by the customs authorities when the rights holder does not initiate legal action, even in the absence of a decision. Thus, all suspected counterfeit goods can be destroyed, under customs control, if the applicant for customs detention confirms in writing, within 10 days of the date of notification of the detention (three days for perishable goods) the counterfeiting character of the goods and agrees with their destruction. The holder of the goods also has to approve this destruction. If the goods holder remains silent, during the same 10 or three-day period, he shall be deemed to have approved the destruction.
In addition, the French procedure of ‘coup d’achat’, in which a customs officer may establish evidence of infringement by purchasing goods, is extended to all IP rights and to copyright. This procedure is particularly useful for fighting counterfeiting on the Internet.
Moreover, the law simplifies customs control in particularly sensitive premises. Access to postal operators and express freight companies’ premises is facilitated if it is likely that they hold packages containing, or seeming to contain, counterfeit goods.
The customs authorities also have access to the databases of these operators. Nevertheless, guaranties are provided to ensure that the purpose of these measures remains the search for customs offences.
The law is aimed at developing the legal arsenal for fighting counterfeiting and harmonising national legislation with Community law. However, the question is whether it is a genuine legislative reform or only a clarification of the law of October 29, 2007, harmonising French law with Directive 2004/48/EC of April 29, 2009 on the enforcement of IP rights.
It is noteworthy that the law is silent on the issue of transit between third parties. Nevertheless, on February 26, 2014, in the context of discussions on the draft amendments to the Trademark Directive and the Community Trademark Regulation, the EU parliament passed some provisions to allow customs authorities to detain, under some conditions, goods which are from third countries and which travel in transit through EU territory.
