Businesses that wish to register a mark, design, model, patent, etc must make sure beforehand that their sign is not already the intellectual property of a third party!
Otherwise, they risk unintentional infringement. Infringement is a criminal misdemeanor in France as well as in many other countries. Besides the criminal dimension, an infringer risks legal action before the Crown Court (TGI) with jurisdiction and/or be obligated to pay out damages to remedy the harm caused. It is therefore necessary to do some research in advance before any submissions and to contact an intellectual property lawyer for advice on how to proceed. Lawyers Picovschi will protect you from unintentional infringement.
How can you find out if a sign is already registered and protected in France or abroad?
It is a good idea to contract legal counsel with a lawyer who specializes in intellectual property law in order to conduct prior research. Indeed, this lawyer is an expert in the databases that ensure sound results. It is crucial to conduct research in the concerned country but also to expand the research to other countries, particularly if the design, model, mark, or patent will be used in multiple countries.
It is equally important for all companies that wish to register a domain name or to create a logo to carry out such research, for these are just as susceptible to provoking infringement claims if similar names or logos existed prior.
An intellectual property lawyer provides a detailed report of their findings to their client and presents the possible risks of registering the mark, design, model, or patent.
Infringement of the different types of intellectual property
Patent infringement
When it comes to patents, infringement comes in the form of reproduction if there are uncanny similarities to essential elements to a degree that a consumer would not be able to distinguish between the descriptions of the two patents (Lyon Court of Appeals, July 2, 1998).
There is “upgrading” infringement if the patent in question constitutes an upgraded version of a prior patent that reproduces its essential elements (Nancy Court of Appeals, May 29, 1998).
Furthermore, if two patents are different but they have an identical function and produce the same result, this would be called infringement by equivalence.
Infringement of a design or model
One considers two designs or models identical if they are only differentiated by insignificant details.
This is also the case for production, supply, marketing, importation, exportation, and ownership of products that incorporate the registered design or model—these all constitute acts of infringement.
Trademark infringement
If one uses a preexisting mark exactly to design similar products or services, that is infringement by reproduction. If the two marks are similar, that is infringement by imitation. It could include phonetic, visual, or other intellectual property-type similarities.
There is also infringement if there is non-authorized usage of the mark or if the mark is affixed on products that are not owned by the trademark-holder.
In addition, infringement by substitution occurs when a person deliberately delivers a different brand of product or service than that which was demanded.
Therefore, one must be very vigilant in order to avoid these problems and it is important to call a lawyer if there is any doubt, because the costs are high. To avoid being confronted by this situation, legal and profession council are especially useful.
Infringement penalties and consequences
Generally, the penalty incurred as a result of infringement is paying damages after having reviewed the relevant civil liabilities before one of the nine Crown Courts in France.
However, it could also encompass criminal penalties, because the penal code that references the intellectual property code considers infringement as a misdemeanor. The infringer risks penalties of imprisonment or large fines.
It is worth noting that these actions can be pursued conjointly.
Furthermore, if there are other facts that are not relevant to the infringement case, it is not rare for the infringer to also be charged with unfair competition, in the form of parasitism.
Therefore, the risks are real, so if a business is interested in the law of intellectual property that has already been filed, it must talk and negotiate with the title-holder. In order to obtain a fair agreement, it is essential to entrust this task with an intellectual property lawyer who will defend your interests and also draft the agreement.
How can you use signs already registered by a third party?
It is possible to negotiate with a title-holder to contract their sign. Indeed, sales and licensing contracts are real possibilities.
Sales contracts
The intellectual property code authorizes a title-holder to contract sales of property rights of a mark, design, model, or patent. The sales have to be written and published in a register to be enforceable by the third party. The contract can be partial or total. The title-holder can contract the rights at a cost or for free. It facilitates the transfer of the mark as intellectual property to the contracted party, which is then free to use it.
Licensing contracts
A patent or mark can be contracted out for total or partial, and exclusive or non-exclusive usage.
A patent is protected for a duration of 20 years, and once this period has past, the invention falls into the public domain and can be used freely.
For designs and models, the duration of protection is 25 years, renewable by the title-holder.
When it comes to trademarks, registration with INPI is worth 10 years, but it is renewable. If not renewed or if the trademark holder forfeits this right by not using the mark on any products or services for five years, the trademark goes back into the public domain and can be registered again.
There are therefore some lawful ways to use intellectual property that has already been filed without committing infringement. To be aware of the subtleties involved, do not hesitate to call an intellectual property lawyer. Lawyers Picovschi is dedicated to defending contractual freedom but also to the intellectual property rights of title-holders, and will do everything possible to respond to your needs.
