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A clearer path for customs procedures in France

Globalization as well as an increased focus on cutting costs at both Fortune 500 companies and SMEs have spurred significant interest in Customs procedures to fight counterfeiting.

Often it is less important to stop the source, since it can usually resume production easily from another remote location, than to stop the fake goods from reaching consumers. Even if this means targeting 'the end of the line', the market is protected.

Within the European Union, customs proceedings are a common recourse for companies looking to guard against counterfeits.

The yearly reports from the European Commission on "EU Customs enforcement of intellectual property rights" show intense activity with over 70,000 procedures and 41,000 articles involved in 2016.

In the European Union, based on the EU Regulation No. 608/2013 of the European Parliament of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights, right holders and licensees who are exclusive licensees in at least two member states and who have been officially authorised by the right-holder can submit applications to the Custom Authorities asking them to monitor the goods crossing the border for potential infringements, and hold them in custody if they find any allegedly infringing goods for the entire European Union. The declarant or holder of the goods is to be immediately informed as well as the right holder. Following the notice, the decision holder has 10 days to inform the customs that he or she engaged in legal proceedings, otherwise Customs would have to release the goods. The regulation does not deal with 'small packages' (fewer than two kilograms), and it is to be applied at the external borders of the EU, not at borders in between member states. Custom authorities can also proceed spontaneously. French Customs can also act within the French territory for goods that have already entered in the EU territory. Very clearly the intend of this legislation is to prevent massive international massive infringement.

Currently, right holders can benefit from the latest statutory and case law to enforce their rights in customs proceedings.

Since the "trademark package" which involves the European Union Trade Mark Regulation (EU) 2015/2424 and the Trade Mark Directive (EU) 2015/2436 goods in transit in the EU will be able to be stopped if they may infringe on rights in the country of final destination.

The latest case law in France, probably based on public policy considerations, also shows a simplification of the procedure for right holders.

Thus, last March 7, 2018, the Commercial Section of the French Supreme Court (case n°16-24851) quashed a ruling from the Appellate Court that had ordered the release of allegedly infringing goods based on the fact that Custom Authorities had considered the goods to be infringing based only on the right-holders declarations. The Commercial Section of the French Supreme Court stated that according to the law, customs offenses could by proven by any means, and that the Appellate Court, which acknowledged that the customs agents had recorded the declarations of the right holders confirming the infringement, had violated the law. Furthermore, the Supreme Court ordered the publication of this ruling on its Bulletin, indicating it is the correct legal interpretation that must be followed by all lower courts. From a practical point of view, this is a very significant ruling, since it facilitates the proceedings for right holders. In many cases, establishing the infringement can be very burdensome and can lead to extended expert proceedings.

A couple of days later, the Criminal Section of the French Supreme Court on March 20, 2018 (case n°16-84564) quashed a ruling from the Appellate Court that had dismissed a design infringement complaint following customs proceedings, considering that the design right holder had to show a definite date of putting into the market of the original design, while the right-holder had filed evidence regarding the sales of the original design. The Supreme Court also ordered the publication of this ruling on its bulletin. Apparently, Courts should be very cautious before dismissing too quickly the right-holder's evidence.

In another matter regarding design infringement, last April 4, 2018, the Criminal Section of the French Supreme Court (case n°16-87414) dismissed an appeal filed by defendants who were arguing the reproduction of certain features of the original designs. The Supreme Court held that the lower courts were free to appreciate the overall visual impression of both the original and the infringing products. The Supreme Court also pointed out that the lower court was right to consider that the intentional element of the criminal law offence was established by the fact that the defendant was a professional in the field.