Enforcement & Litigation
When a client's mark is copied or imitated in France or elsewhere in the EU, the playbook differs from US practice in ways that matter. Here is how French courts define infringement, what remedies are available, and how to sequence your response.
French law — the term is contrefaçon de marque — covers two distinct situations, and it is worth keeping them apart when you brief a client.
The first is the one everyone pictures: goods or services sold under a mark without the owner’s authorization. Typically, these are fake products — copies of the originals that do not come from the trademark owner.
The second is broader and is where most contested cases live: using a name or sign that is identical or similar to an earlier mark, for identical or similar goods or services. There is no need for a counterfeit package or a fake product. Selling genuine, non-copied products under a sign that imitates someone else’s registered mark is infringement all the same.
One point that regularly surprises US clients: in civil infringement matters, good faith is irrelevant. The defendant’s intent, knowledge, or innocent adoption of the sign does not defeat a civil infringement claim in France.
Where the signs and the goods are identical, the analysis is short. The harder — and more common — question is imitation: the use of a sign that is similar, but not identical, to the registered mark.
French decision-makers assess similarity from three angles: visual, phonetic, and conceptual (what French practice calls “intellectual” similarity). Imitation is established when the signs are similar and create a likelihood of confusion.
Two real decisions illustrate how far this reaches:
The practical lesson for US counsel: do not assume a French or EU court will see the differences your client sees. Sequences of letters, sound patterns, and meaning — including meaning across languages — all count.
Trademark disputes in France belong exclusively to the judicial courts (tribunaux judiciaires), and representation by a French attorney (avocat) is mandatory there — only an avocat can validly represent a trademark owner before the Judicial Court. For EU trademark infringement claims, the Paris Judicial Court has exclusive jurisdiction as France’s EU trademark court, which is one reason a significant share of European enforcement work runs through Paris counsel.
There is no US-style discovery in France. You cannot count on document requests and depositions to build your case after filing. Evidence is assembled before and outside the courtroom — which is why the French system gives rights holders dedicated tools, including the saisie-contrefaçon, an evidence-seizure procedure with no direct US equivalent, covered in the evidence section below.
A successful infringement action before the French courts can deliver:
Enforcement strategy differs depending on whether the infringement is online or involves physical distribution of products — the takedown levers, the evidence, and the defendants you can reach are not the same.
Litigation is rarely the first move. A French infringement suit is a heavy procedure: it takes time and investment — attorney fees, bailiff costs, expert costs, procedural charges — to prove infringement, and roughly one to two years to obtain a first-instance judgment, sometimes longer. It is best treated as one option among several:
The limitation period for trademark infringement in France is five years. Article L716-4-2 of the French Intellectual Property Code provides (free translation): “The infringement action is time-barred five years from the day the right holder knew or should have known the last fact enabling him to exercise it.” Infringement is generally treated as a continuing wrong — renewed each day it goes on — but damages for older acts can slip away, and delay weakens both leverage and remedies. If a US client has known about a French infringement for years, that history needs to be on the table at the first call.
Our role is typically to act as French litigation and enforcement counsel alongside US in-house teams or outside counsel: assessing the strength of the French or EU rights, securing evidence, sending or answering demand letters, and litigating before the French courts, including the Paris Judicial Court in EU trademark cases. Julien Lacker has litigated trademark cases in France for more than twenty years, including ten years within a US law firm — which helps when translating French procedure into terms a US legal department can act on.
Facing an infringement issue in France or the EU? Contact us to discuss the fastest sensible route to stopping it.
Sending or answering a French trademark cease-and-desist (mise en demeure): content, confidentiality rules, and how to respond — for US counsel.
No discovery in France: how infringement evidence is really built — bailiff reports, saisie-contrefaçon, online proof — explained for US counsel.
Suing for trademark infringement in France: the writ of summons, procedure and timeline, damages practice, loser-pays costs, and appeals — for US counsel.
Settlement, coexistence agreements, and mediation in French and EU trademark disputes: when to negotiate, how confidentiality helps, and what deals hold.