Procedure

France

Preliminary injunction proceedings. A trade mark owner can file for a preliminary injunction, through inter partes or ex parte proceedings, with the competent Civil Court. Urgency is only a requirement for ex parte injunctions. The court can issue a preliminary injunction where the evidence reasonably accessible to the claimant demonstrates a likelihood of infringement of the claimant's rights or an imminent threat of such infringement. In a preliminary injunction proceeding, the court may only grant an interim injunction, and the trade mark owner must file main proceedings within 20 working days or 31 calendar days from the date of the decision, whichever the longer.

Main proceedings. Main proceedings on the merits of the case can be filed after, simultaneously with, or without preliminary injunction proceedings. The court may issue an injunction on the merits ordering the infringer to cease all infringing acts, the recall, seizing or destruction of all infringing goods, the publication of the ruling and, damages to the trade mark owner. The trade mark owner may request the court, in cases of urgency and through ex parte proceedings, to be authorized to file for expedited proceedings on the merits.

Warning letter. While not mandatory, it is common practice for a trade mark owner to send a warning letter to the infringer before initiating infringement proceedings. This warning letter serves a double purpose: it can establish that the infringer has been made aware of the infringement; it can also be an opportunity for the parties to resolve the dispute amicably by reaching a settlement before resorting to litigation.

First instance. Proceedings for infringement of French trade marks have to be brought before the Civil Courts (Tribunaux Judiciaires) having specific jurisdiction over these matters, namely the Civil Courts of Bordeaux, Fort-de-France, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes and Strasbourg. The choice between these different jurisdictions is subject to French procedural rules. Trade mark infringement proceedings in relation to EU trade marks can only be brought before the Civil Court of Paris. Preliminary injunction proceedings can be brought before the president of each of these jurisdictions, but the president of the Civil Court of Paris has sole jurisdiction over preliminary injunction proceedings relating to EU trade marks.

Court of Appeal. First instance decisions may be appealed to the competent Court of Appeal. Appeals on the merits of the case may be lodged within one month from service of the first instance decision. As for inter partes preliminary injunctions, appeals must be filed within 15 days from service. The Court of Appeal has jurisdiction to review decisions on both factual and legal grounds. Importantly, where an ex parte preliminary injunction has been granted, the defendant may request the withdrawal of the injunction before the judge who issued it, with no statutory timeframe being attached to such a recourse. As with main proceedings, first instance decisions are immediately effective, notwithstanding any appeal, except as otherwise provided in said decisions. Preliminary injunctions are always (of themselves) immediately effective.

Any means of proof is admissible in both preliminary injunction and main proceedings. The parties may therefore rely on documentation, witness testimony, expert reports, and any other relevant materials that have been obtained lawfully and are admissible under French procedural rules.

The burden of proof lies with the trade mark owner, which is the claimant in the proceedings and who bears the burden of evidencing the infringement (actori incumbit probatio).

Before initiating the main proceedings, a trade mark owner can file ex parte seizure (saisie-contrefaçon) proceedings in order to obtain evidence of the infringement. The trade mark owner may obtain either a detailed description of the infringing goods drawn up by the bailiff in charge of the seizure or the seized goods themselves with all related documentation.

In main proceedings based on the merits, the general standard of proof applies, and all relevant facts must be evidenced.

In preliminary injunction proceedings, a less strict standard of proof applies; a likelihood of infringement of the trade mark owner's rights may be sufficient for the court to issue a preliminary injunction.

Discovery does not exist under French laws. However, preliminary injunction and ex parte seizure proceedings enable the trade mark owner to preserve or find evidence.

An ex parte preliminary injunction can be granted within a few days of filing. An inter partes preliminary injunction can be granted within a few weeks, depending on the court's schedule. A decision by the Court of Appeal regarding an appealed preliminary injunction decision may be given within a few months.

A judgment in main proceedings can usually be expected within 18 or 24 months from filing. Appeal proceedings last on average three years. However, the length of proceedings always depends on the complexity of the case and the agenda of the court.

Discovery does not exist under French laws. However, preliminary injunction and ex parte seizure proceedings enable the trade mark owner to preserve or find evidence.

An ex parte preliminary injunction can be granted within a few days of filing. An inter partes preliminary injunction can be granted within a few weeks, depending on the court's schedule. A decision by the Court of Appeal regarding an appealed preliminary injunction decision may be given within a few months.

A judgment in main proceedings can usually be expected within 18 or 24 months from filing. Appeal proceedings last on average three years. However, the length of proceedings always depends on the complexity of the case and the agenda of the court.

The court will generally order the unsuccessful party to pay the other party's court fees. If the successful party is the claimant, the costs to be paid by the defendant also include the costs linked to the initiation of the proceedings (eg bailiff costs).

The court may further order the unsuccessful party to pay defence costs incurred by the other party, including attorneys’ fees. The amount of such costs is assessed on a case-by-case basis by the court. In practice, they may be considered low when compared to the actual defence costs incurred.